Ex parte KOSER et al.

Board of Patent Appeals and Interferences

Jan 28, 1998

08095033 (B.P.A.I. Jan. 28, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte LEONARD W. KOSER,
MARY C. MANGES, FRANCES M. RING,
CYNTHIA A. ROGERS, MICHAEL J. SNYDER,
and, JOHN J. VRIEZEN
_______________
Appeal No. 95-3535
Application 08/095,0331
_______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH, and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 32 through 42, the only claims pending in the application.
The invention is directed to a computer system having a
downward compatibility function. More specifically, a unit of
data from an upper level release computer is allowed to operate

1 Application for patent filed July 20, 1993. According to
appellants this application is a continuation of Application
07/401,210, filed August 31, 1989, now abandoned.
Appeal No. 95-3535
Application No. 08/095,033
2
on a lower level release computer without requiring any
modifications to be made to the lower level release computer.
Representative independent claim 32 is reproduced as
follows:
32. A method in a data processing system having multiple
computers operating at diverse release levels for transferring a
unit of data having an executable portion from a computer
operating at release level N to a computer operating at a release
level N - M, wherein M is greater than zero and less than N, said
method comprising the data processing system implemented steps
of:
designating a unit of data having an executable portion
within a computer operating at release level N;
specifying an intent to transfer said designated unit of
data having an executable portion from said computer operating at
release level N to a computer operating at release level N - M;
automatically converting said executable portion of said
unit of data from operation at said release level N to operation
at said release level N - M in response to said specifying of
said intent to transfer said designated unit of data; and
thereafter transferring said converted designated unit of
data to said computer operating at said release level N - M
wherein said converted designated unit of data will execute
properly within said computer operating at said release level N -
M.
The examiner relies on admitted prior art [APA] set forth at
pages 2-3 of the instant specification.
Claims 32 through 42 stand rejected under 35 U.S.C.
' 103 as unpatentable over APA.
Reference is made to the brief and answer for the respective
positions of appellants and the examiner.
Appeal No. 95-3535
Application No. 08/095,033
3
OPINION
We will not sustain the rejection of claims 32 through 42
under 35 U.S.C. ' 103 because, in our view, the examiner has not
set forth a prima facie case of obviousness.
The examiner takes the position that since appellants admit,
at page 3 of the specification, that it was known to convert data
of upper level release systems to data of lower level release
systems where the operation is being performed at the lower level
release system, the only difference between the instant claimed
invention and that which is admitted to have been well known is
that, in the former, “the conversion is installed in the later
version computer instead of in the earlier version computer”
[page 3-answer].
Identifying the sole issue, with which we agree, as whether
it would have been obvious to install the conversion circuit and
have the conversion done at the later version computer (upper
level) instead of at the earlier version computer, the examiner
reaches the conclusion, erroneously, in our view, considering the
applied prior art, that it would have been obvious “to have the
conversion done at the newly relaesed [sic, released] system
because the old system, then, do not have to be recalled and
modified” [page 4-answer].
As simple as the solution may appear in hindsight, nothing
in the prior art identified at pages 2-3 of the specification
suggests performing the conversion at the later version level in
Appeal No. 95-3535
Application No. 08/095,033
4
response to an intent to transfer the designated data and prior
to the transfer. While there may, in fact, exist some prior art
reason why doing this would have been obvious, within the meaning
of 35 U.S.C. ' 103, the APA identified by the examiner suggests
no such reason and the examiner’s rationale for making the
required modification to the APA, i.e., so that the old systems
would not have to be recalled and modified, is not persuasive
because it was appellants, themselves, who taught this reason and
the examiner has pointed to nothing in the APA which indicated
that artisans recognized that it would have been helpful to
perform the conversion at the later version level rather than at
the older version level in order not to have to recall and modify
each of the older version level computers.
Accordingly, the examiner’s decision rejecting claims 32
through 42 under 35 U.S.C. ' 103 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )
Appeal No. 95-3535
Application No. 08/095,033
5
Andrew J. Dillon
Felsman, Bradley, Gunter & Dillon
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