Ex parte Krein et al.

Board of Patent Appeals and Interferences

Oct 29, 1997

07815694 (B.P.A.I. Oct. 29, 1997)

Application for patent filed December 30, 1991.1
1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM T. KREIN
and STEVEN G. ROSKOWSKI
_____________
Appeal No. 95-5030
Application 07/815,6941
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-30. No claim has been
allowed.
References relied on by the Examiner
Miro 5,220,653 Jun. 15, 1993
Fava et al. (Fava) 5,167,019 Nov. 24, 1992
Appeal No. 95-5030
Application 07/815,694
2
Sakon et al. (Sakon) 1-246664 Oct. 2, 1989
(Japanese Kokai)
The Rejections on Appeal
Claims 1-30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Sakon. This rejection was first entered in the
examiner's answer (Paper No. 11).
Claims 1-29 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fava and Miro (Paper No. 5).
We assume that claim 30 also stands finally rejected under
35 U.S.C. § 103 as being unpatentable over Fava and Miro.
Although the cover page of the final rejection identified only
claims 1-29 as having been rejected, the markings on the file
jacket indicate that claim 30 has also been rejected. The appeal
brief also regards claim 30 as having been rejected.
The Invention
This invention relates to computer interconnect circuitry.
In particular, the order of data transmission through the
interconnect circuitry is maintained. Claims 1, 17 and 25 are
the sole independent claims, of which, claim 25 appears to be the
broadest and reads as follows:
25. A method for controlling transmission of
information in a computer interconnect controlled by a control
Appeal No. 95-5030
Application 07/815,694
3
circuit, said method comprising:
sending a signal from a first device coupled to a
source of data to a second device which receives data from said
first device, said signal indicating that data is ready for
transfer to said second device;
storing information relating to said data, said
information including information indicating the order in which
the information was received by the control circuit;
incrementing the information indicating the order
in which the information was received by the control circuit; and
sending data to said second device in the order of
receipt by the control circuit.
Claim 1 further recites a plurality of buffers for storing
the information relating to the data for transfer, and claim 17
further recites that the information stored in the plurality of
buffers include information for designating a priority for the
data ready for transfer.
Note that claims 2, 17 and 26 have been amended in a paper
concurrently filed with the appellants' reply brief.
Opinion
We do not sustain the obviousness rejection of claims 1-30
over Fava and Miro.
We sustain the rejection of claims 1 and 25 as being
anticipated by Sakon.
We do not sustain the rejection of claims 2-24 and 26-30 as
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Application 07/815,694
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being anticipated by Sakon.
The obviousness rejection of claims 1-30
We do not sustain the rejection of claims 1-30 under
35 U.S.C. § 103 as being unpatentable over Fava and Miro. The
appellants' appeal brief raises many issues concerning the
rejection of claims 1-30 as being unpatentable over Fava and
Miro. The examiner's answer enters a new ground of rejection of
claims 1-30 under 35 U.S.C. § 102(b) as being anticipated by
Sakon, and states at 7:
Applicant's arguments with respect to
claims 1-30 have been considered but are
deemed to be moot in view of the new grounds
of rejection.
We disagree with the examiner's above-stated position. The
fact that a new ground of rejection has been entered for the same
claims does not render moot the appellants' arguments directed to
the original ground of rejection. The original ground of
rejection has not been withdrawn. If the examiner had intended
to withdraw the obviousness ground of rejection, it has not been
done in a sufficiently clear manner. We do not assume that the
rejection has been withdrawn.
The appellants make several arguments with regard to the
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obviousness ground of rejection. The arguments are based on the
following correct observations with regard to Fava and Miro.
Fava discloses a computer interconnect apparatus with a
distributor through which information is passed between a
plurality of elements. Fava does not disclose storing
information indicating the order in which information was
received. Instead, Fava discloses a round robin arbitration
scheme and does not send data in the order of receipt.
With respect to Miro, the appellants note that while Miro
discloses a FIFO service queue to store disk drive I/O requests
(column 7, lines 51-54), the inputs to the FIFO service queue are
taken from a set of ten (10) holding queues each having a
different assigned priority with respect to received I/O requests
(column 3, lines 37-68). The appellants note (Br. at 12) that a
request directed to a given disk drive is entered into the
particular holding queue having a service priority corresponding
to the priority class of tasks of such requests. In that regard,
see column 3, lines 41-44, of Miro. Items from the holding
queues are moved to the FIFO service queue on the basis of
priority classes rather than the time order of receipt in the
arbitration or control circuit. On that basis, the appellants
argue that although Miro's control circuit includes a FIFO
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service queue, Miro would not have suggested circuitry which
maintains the order of transmission of information by storing
information indicating the order of receipt and sending such
information according to the order of receipt. In our view, the
argument is reasonable and the examiner has provided no response.
The appellants also note that neither Fava nor Miro
discloses or reasonably suggests incrementing the information
indicating the order in which the information was received. In
this context and in light of the specification, incrementing the
order means updating the order of receipt as new items come in.
According to the appellants, since neither Fava nor Miro store
the order in which information is received, neither updates that
stored information. Again, this argument appears reasonable. We
find that Miro's arbitration or control circuit is not simply the
FIFO service queue, but includes the prioritized holding queues.
With respect to all of the foregoing arguments regarding
Fava and Miro, the examiner has provided no response, except to
say, in an advisory Office action (Paper No. 8 at 3), that:
(B) Applicants argue on page 3
paragraph 2 that Fava et al nor Miro
discloses a "plurality of buffers for storing
information relating to data, the information
including information indicating the order in
which the information was received by the
control circuitry . . ." This is a basic
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characteristic in any networking system.
(See. IEEE 802 + standards for LAN's) . . . .
Such limitations to information regarding
data [sic, is] in not patentable over IEEE
standards nor over the prior art of Fava et
al in view of Miro.
The appellants disagree that the limitation at issue is a
basic characteristic of any networking system and notes that the
examiner has not furnished a copy of any IEEE publication or
alternative form of evidence relating to IEEE standards to the
appellants (Br. at 14-15). We will not simply take the
examiner's word as sufficient evidentiary support for an
important finding of fact, where the appellants have challenged
the examiner's position and discussed examples inconsistent with
the examiner's position. In In re Ahlert, 424 F.2d 1088, 1091,
165 USPQ 418, 420 (CCPA 1970), the Federal Circuit has stated:
Assertions of technical facts in areas of
esoteric technology must always be supported
by citation to some reference work recognized
as standard in the pertinent art and the
appellant given, in the Patent Office, the
opportunity to challenge the correctness of
the assertion or the notoriety or repute of
the cited reference.
Even though the examiner has referred to IEEE standards as
having certain features, no IEEE publication or other IEEE type
prior art has been included in the basis of the rejection. We
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note that all prior art references on which the examiner relies
in support of a rejection should be positively recited in the
stated ground of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3,
166 USPQ 406, 407 n.3 (CCPA 1970). Thus, here, no IEEE standard
can be relied upon in support of the examiner's rejection, not to
mention that no such reference has even been furnished by the
examiner for anyone's consideration.
Claims 1, 17 and 25 are the only independent claims. All
other claims depend directly or indirectly from one of claims 1,
17 and 25. For the foregoing reasons, we cannot sustain the
rejection of claims 1-30 under 35 U.S.C. § 103 as being
unpatentable over Fava and Miro.
The anticipation rejection of claims 1-30
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention. In
re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990); Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987);
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Appeal No. 95-5030
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Except for independent claims 1 and 25, each of the claims
on appeal, in our view, includes at least one limitation or claim
feature which is not disclosed, either expressly, inherently, or
implicitly, by Sakon. We point out this feature specifically
with respect to claim 2, claim 17, and claim 26, and simply note
that all other claims on appeal, aside from independent claims 1
and 25, depend ultimately from one of claims 2, 17 and 26 and
thus include the feature which we find missing in Sakon.
Claim 2 depends from independent claim 1 and further
requires the information relating to the data to be transferred
to include information for "designating a priority" for the data
ready to transfer, and specifies that the order of receipt is an
order of receipt "within a given priority."
Claim 17 is an independent claim and recites that the
information relating to the data for transfer includes
information for "designating a priority" for the data ready for
transfer, and specifies a means for sending "for said
[designated] priority," the information in the order of receipt.
Claim 26 depends from independent claim 25 and further
requires the information relating to the data to be transferred
to include information for "designating a priority" for the data
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ready for transfer, and specifies the maintaining of the order of
transfer "within each particular priority level."
In our view, each of claims 2, 17 and 26, either expressly
or implicitly requires multiple levels of priority wherein the
order of transfer for each priority level is in accordance with
the order of receipt by the control circuit. We recognize that
claim 17 does not expressly state "each" priority level.
However, we regard as unreasonable considering the language
"designating a priority level" and "sending, for said priority
. . . in the order of receipt" of claim 17 as having been met
where all transfer requests have the same priority and are
handled on a "first come first served" basis in sequential order.
The appellants are correct in noting that Sakon does not
disclose multiple levels of priority for the data transfer
requests. Rather, the data transfer requests are handled simply
in their sequential order of receipt. As is illustrated in
Figures 3B and 3C of Sakon, while there are three different data
input devices and the transfer requests are maintained separately
for each device, the requests are served in their overall order
of receipt with respect to all three input devices. In
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discussing its Figure 3B, Sakon states (at 8):
It can be seen from this figure that
regardless of the specific data input unit,
the input data are appended with the order
numbers according to the input order.
. . .
Figure 3(C) illustrates the state after
reading of the data with order number 1 by
means of data input unit (10). In this case,
the data of data input unit (2) are made up
of data "8" with order number 2 and data "5"
with order number 4, while the others are
determined to be unchanged.
With regard to conventional systems, Sakon describes that the
actual order of input is ignored (page 8, lines 21-26).
According to Sakon, its disclosed method avoids the problem
(page 8, line 27).
The "1," "2," and "3" designations in the first column of
the tables shown in Figures 3B and 3C of Sakon indicate the
corresponding input device numbers, not different levels of
priority. Note that in Figure 3B, the first item actually served
is the item "2" from input device number 2 because it is first in
the overall order of receipt. The designation beneath the data
"2" shows that that element is first or "1" in the order of
receipt.
The examiner is erroneous in finding that Sakon "does NOT
Appeal No. 95-5030
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put equal weight for each input device" (supp. answer at 7). The
examiner's quotation of the paragraph in Sakon from the bottom of
page 11 to the top of page 12 is also misplaced (supp. answer at
7). The text does not suggest that the different input devices
are assigned different priority levels. Note that even in the
middle of the quoted text appears the statement "and the unit
corresponding to the earliest input is stored in temporary memory
unit (12) of input unit number." Also, the immediately following
paragraph appearing on page 12 of Sakon, discusses comparing the
order of receipt of data from different input units and appears
to indicate that the operations of Figure 7 are for determining
the unit number having the earliest input data item. The
determined unit number is stored in the input unit number
temporary memory unit. As is indicated in lines 11-16 on page 13
of Sakon, the input unit number stored in the input unit number
temporary memory unit governs which input unit will be read next.
In summary, the examiner has failed to demonstrate, on a
prima facie basis, that the three different input devices of
Sakon are assigned different levels of intrinsic priority or that
data is transferred on any basis other than the order of receipt.
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For these reasons, we do not sustain the rejection of claims 2-24
and 26-30 under 35 U.S.C. § 102 as being anticipated by Sakon.
Claims 1 and 25, on the other hand, do not require a
plurality of levels of priority. Rather, all they require is the
keeping of information indicating the order of receipt and the
sending of information according to their order of receipt.
Our decision is based solely on the arguments raised by the
appellants. We offer no opinion on arguments which could have
been raised but which were not set forth in the appeal brief.
The appellants essentially raise two arguments with regard to
claims 1 and 25. First, the appellants argue that Sakon does not
disclose incrementing the order in which the information was
received by the control circuit. As we discussed earlier, in the
context of the appellants' invention, incrementing means updating
the order as new items are received.
According to the appellants, Sakon simply generates a
sequential order number and assigns it to each new item. In that
manner, the appellants argue that the previously generated order
numbers and attached to previously received items are never
changed or modified and thus are never "incremented" as is
required by claims 1 and 25. We are not persuaded by the
appellants' argument, because Sakon discloses the use of header
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and tail pointers to keep track of the items received from each
input data device, and each new entry for each input device
causes an updating of the corresponding tail pointer. See Sakon
at page 6, lines 10-18. Sakon on page 11 describes the
initializing of the head position and tail position pointers for
each input data memory unit.
With reference to Sakon's Figure 3B, we agree that the order
numbers are necessary to keep track and maintain the order of
receipt of data across all three data input devices. In other
words, the second item from input device number 2 may not be the
second item received overall. However, neither claim 1 nor 25
requires plural data input devices. Both claims require only a
source of data for transfer, e.g., a single data input device.
From that perspective, the head and tail position pointers of
Sakon are sufficient to maintain order for a single input device
and the order numbers of Sakon which apply to items from all
three input devices are irrelevant. It would appear that even
without the benefit of order numbers, the head and tail position
pointers for each input data memory would reveal which items are
prior to which items from the same input device. Since Sakon
discloses updating the tail position pointer as each new item is
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processed, in our view the claim feature of incrementing the
information indicating the order of receipt is satisfied.
The discussion in the supplemental examiner's answer on page
3 about connectionless packet switched networks in general is not
supported by citation to any specific prior art reference. Also,
the stated ground of rejection is anticipation over the single
reference Sakon, not any prior art pertaining to connectionless
packet switched networks. The appellants petitioned to have that
portion of the supplemental answer excised and the petition was
denied on the ground that it did not serve as the basis of any
ground of rejection. In our view, such assertions by the
examiner without proper citation and inclusion in the ground of
rejection is improper and has no place in this appeal.
The appellants argue (Reply at 3) that Sakon does not
disclose sending a signal from a first device coupled to a source
of data to a second device which receives data from said first
device, which signal indicates that data is ready for transfer to
the second device. The appellants further state (Reply at 4)
that because Sakon performs its own examination to determine the
presence or absence of incoming data, there is no reason for
Sakon to send a data transfer ready signal and it would not be
inherent in Sakon's device to send a data transfer ready signal.
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Responding to the appellants' argument, the examiner stated
(supp. answer at 6):
First, such a signal designating an
initiation of a transfer is well known in the
art of I/O processing which is known as
"handshaking". Furthermore, in a networking
environment such handshaking is pefromed
[sic, performed] at the data link layer by
sending supervisory frame to initiate a
transfer which is essentially the same thing
as saying "I have something to send, are you
ready". As claimed, such limitations are not
distinct from interface(s) to a plurality of
input units to a computer terminal for
inventory management. Such a system would
use normal protocol for sending the
appropriate signals to initiate a transfer.
Thus, any interface would receive a ready
signal from an input unit to relay a signal
to the receiving unit (i.e. computer terminal
through the interface "interconnect
circuitry") the sending unit has something to
send. Sakon et al teaches such a system.
In addition, because of a lack of
distinctions in the claims, the data
processing device taught by Sakon et al is
construed as a receiving unit (second device)
connected to a plurality of input devices
through an interconnect circuitry (nos. 6-8,
Fig. 1). When the data processing device
determines that there is a presence/absence
of data in memory unit 11 such a deter-
mination can be construed as sending a signal
[from] a first device to a second device.
Thus, it is evident that in the supplemental examiner's
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answer the examiner made a specific finding that although not
explicitly described, the normal protocol for transferring data
from Sakon's input devices includes a "handshaking" signal which
informs the interface that data is ready for transfer. In the
supplemental answer, the examiner also made known for the first
time his particular position on claim interpretation with regard
to what would constitute sending a signal to the second device.
The appellants filed no response to the newly stated finding
and conclusions of the examiner contained in the supplemental
examiner's answer. Thus, on this record, it can only be
considered that the specific finding of the examiner is
uncontroverted and that his claim interpretation is not refuted.
We will sustain the rejection of claims 1 and 25 under
35 U.S.C. § 102 as being anticipated by Sakon.
Conclusion
The rejection of claims 1-30 under 35 U.S.C. § 103 as being
unpatentable over Fava and Miro is reversed.
The rejection of claims 1 and 25 under 35 U.S.C. § 102 as
being anticipated by Sakon is affirmed.
The rejection of claims 2-24 and 26-30 under 35 U.S.C. § 102
as being anticipated by Sakon is reversed.
Appeal No. 95-5030
Application 07/815,694
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-5030
Application 07/815,694
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