Ex Parte Lee

Board of Patent Appeals and Interferences

Sep 17, 2003

09318980 (B.P.A.I. Sep. 17, 2003)

1
The Oral Hearing scheduled for August 21, 2003 was waived by appellant
in a communication received, via facsimile, on August 21, 2003.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SANG-JIN LEE
____________
Appeal No. 2002-1832
Application No. 09/318,980
____________
ON BRIEF1
____________
Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
LEVY, 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 1-16, which are all of the
claims pending in this application.

Appeal No. 2002-1832
Application No. 09/318,980
Page 2
BACKGROUND
Appellant's invention relates to a computer including a
memory having system information stored therein, and a repair
system and method using a computer communications network. An
understanding of the invention can be derived from a reading of
exemplary claims 1 and 4, which are reproduced as follows:
1. A computer, comprising:
a central processing unit for processing application
programs;
a first memory for storing programs which initialize and
test the computer when the computer is turned on;
a second memory having system information stored therein;
a monitor for displaying information which is manipulated by
the programs; and
a modem for transferring the stored system information to a
host computer on a request of the host computer via a
communication network.
4. A repair method for a computer, comprising the steps of:
connecting a user’s computer to a host computer via a
computer communication network;
transferring system information stored in a memory of the
user’s computer from the user’s computer to the host computer
upon a request of the host computer;
transferring a repair program according to the system
information from the host computer to the user’s computer; and
repairing the user’s computer with the repair program.
Appeal No. 2002-1832
Application No. 09/318,980
Page 3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Emerson et al. (Emerson) 5,438,528 Aug. 1, 1995
Bizzarri 5,732,268 Mar. 24, 1998
Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Emerson.
Claims 3, 4, and 7-16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Emerson in view of Bizzarri.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 14, mailed
February 8, 2002) for the examiner's complete reasoning in
support of the rejections, and to appellant's brief (Paper No.
13, filed December 10, 2001) and reply brief (Paper No. 16, filed
April 2, 2002) for appellant's arguments thereagainst. Only
those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered. See 37
CFR 1.192(a).
Appeal No. 2002-1832
Application No. 09/318,980
Page 4
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, appellant's arguments set forth in the
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer. Upon consideration of the record before us, we reverse.
We begin with the rejection of claims 1, 2, 5, and 6 under
35 U.S.C. § 102(b). To anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
We begin with independent claim 1. The examiner's position
(answer, page 4) is that Emerson teaches the claimed computer
system. The examiner relies upon the CPU of figure 4, the memory
storing the BIOS, a monitor, and the modem of figure 5A for
transferring system information to a host computer; see figure 4.
Appeal No. 2002-1832
Application No. 09/318,980
Page 5
Appellant asserts (brief, page 8) that network expansion
board (NEB) 2 acts as an intermediary between a plurality of LANs
and a peripheral device such as a printer, and (reply brief, page
2) that NEB 2 is not a computer. It is argued (brief, page 6)
that the examiner equates the NEB with appellant's computer in
need of repair, and that the examiner turns to the whole LAN
configuration to find any missing parts to reject appellant's
claims. Appellant submits (brief, page 9) that NEB 2 of Emerson
fails to include a monitor, as recited in claim 1. With respect
to the examiner's assertion that 58 of Emerson is a modem,
appellant points out that 58 of Emerson is a modem for a
plurality of LANs, and not part of a single PC, as in appellant's
claim 1. Appellant additionally points to table 1 of Emerson,
which lists the major hardware elements of NEB 2, and argues that
if NEB 2 included a monitor and modem, why aren't they listed in
table 1? The examiner responds (answer, page 11) that the modem
and monitor are shown in figures 1 and 2, and asserts (id.) that
the modem transfers data among the PCS, server, and backbone
network devices, including "displaying PCS devices."
From our review of Emerson, we find that Emerson is directed
to testing an interactive circuit board in a LAN (col. 1,
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Application No. 09/318,980
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lines 1-4). The invention relates to a circuit board which is
coupled to a peripheral such as a printer. The prior art
required a server for the printer (col. 1, lines 30-32). The
circuit board eliminates the necessity of dedicating a personal
computer to manage the peripheral (col. 1, lines 11-16). Figure
1 represents a LAN, and shows a Network Expansion Board (NEB) 2
coupled to printer 4 (col. 4, lines 27-30). The NEB provides
functionalities that used to require a PC (col. 12, lines 10-12,
col. 13, lines 1-10, and col. 6, line 55). Printer information
is displayed on the administrator's PC 14 (col. 7, lines 38-43).
In one aspect of the invention, the board is tested. After a
power-on-self-test is completed, a test program is loaded onto
the board. The test is executed and the results are outputted to
a test computer, which will script additional tests in accordance
with the test results. In addition, after rescripting further
test modules, PC1 can locate the problem and debug NEB 2
(col. 56, 54-59). After completion of the test program, an
operational program is downloaded onto the board and is loaded
into an EPROM on the board (col. 2, lines 24-50). Information
from the NEB 2 to the LAN is limited to printer status
information (col. 13, line 62, and col. 21, line 68 through
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Application No. 09/318,980
Page 7
col. 22, line 6. The network administrator's PC 14 includes a
program that functions to initialize, configure and reconfigure
the printer 4 attached to the NEB 2 (col. 15, lines 46-52). In
addition, an LED failure/diagnosis light is provided on either
the NEB or the printer (col. 17, line 15), and the NEB status is
displayed on the administrator's PC (col. 18, lines 34-37). In
addition NEB 2 is mounted in printer 4 (col. col. 1, line 38 and
col. 10, line 58).
From the disclosure of Emerson, we find that NEB 2 is a
network expansion board that is mounted inside printer 4 and is
not a computer. We note that as shown in figure 3,
microprocessor 108 is listed as including a "Reduced Instruction
Set Computer (col. 8, lines 42 and 43). However, we find that
108 functions as a microprocessor, and in any event, is located
in printer 4 and not in NEB 2. Thus, from the disclosure of
Emerson, we find that NEB 2 is not a computer as asserted by the
examiner. In addition, we find that NEB 2, which is located
within printer 4, does not have a monitor or a modem. As shown
in figure 3, NEB 2 connects to printer through a SCSI interface
100, and does not have a monitor. Although NEB 2 is disclosed as
having an LED light, we find that an LED is not a monitor.
Although the PCs in figure 1 are disclosed as having monitors, we
Appeal No. 2002-1832
Application No. 09/318,980
Page 8
find no disclosure that NEB 2 has a monitor. In addition, we
note that Emerson discloses that NEB 2 is directly connected to
LAN 6 via LAN interface 101 (col. 8, line 28 and 29). Although
the examiner is correct that the system includes modem 58,
(figure 2) we find no disclosure in Emerson, and none has been
pointed to by the examiner, that would teach or suggest
connecting NEB 2 to the modem for transferring stored system
information to a host computer on a request of the host computer,
as required by claim 1. Moreover, although Emerson discloses
plural PCS having monitors, Emerson is directed to control of the
printer using the NEB to provide the functionality of a server
PC, and does not disclose communication of system information
from a network PC to the administrator's PC, upon request from
the administrator's PC.
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of claim 1.
Accordingly, the rejection of claim 1, and claims 2, 5, and 6,
which depend therefrom, under 35 U.S.C. § 102(b) is reversed.
We turn next to the rejection of claims 3, 4, and 7-16 under
35 U.S.C. § 103(a) as unpatentable over Emerson in view of
Bizzarri. In rejecting claims under 35 U.S.C. § 103, it is
Appeal No. 2002-1832
Application No. 09/318,980
Page 9
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
Appeal No. 2002-1832
Application No. 09/318,980
Page 10
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We begin with independent claims 3 and 4. The examiner's
position (answer, pages 6 and 7) is that Emerson does not
explicitly teach "first and second modems on request of host
computer" nor "a system repair program." To make up for these
deficiencies in Emerson, the examiner turns to Bizzarri for a
teaching of a computer system having a program used to diagnose
and repair computer systems. The examiner asserts (answer, pages
6 and 7) that it would have been obvious to provide the method
and apparatus for testing computers via a networking environment
as disclosed by Emerson to include the computer repair or
diagnosing program as taught by Bizzarri. According to the
examiner, by utilizing this approach, any error occurring in the
computer system can be identified, detected, corrected or
repaired. The examiner further asserts (answer, page 15) that
the use of a repair program is well known and does not require
"undue experiment."
Appellant asserts (brief, pages 13 and 14) that Bizzarri is
directed to telephone diagnostic and repair during the booting of
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a computer running on BIOS. Appellant notes that claims 3 and 4
require transferring a repair program from a host computer to a
user's computer, the repair program being based or according to
system information sent from the user's computer to the host
computer. It is argued that neither Emerson nor Bizzarri, taken
singly or in combination, teach or suggest repairing a computer
based on system information previously sent from the user's
computer to the host computer. Appellant further argues that in
Emerson, if NEB 2 fails, no repair is attempted. Appellant
submits that the phrase "system information" should be read in
light of the specification; i.e., to include keyboard, video
card, modem, sound card, model and serial number of a computer,
etc. It is further argued (reply brief, page 6) that Emerson
does not repair anything, especially a computer, and that (reply
brief, pages 6 and 7) Bizzarri teaches a second computer
repairing a first computer when the first computer is in BIOS and
cannot boot-up. Appellant assets that because of the wide
discrepancy between these two patents, there is no motivation to
combine Bizzarri to make up for the deficiencies of Emerson.
Appellant further asserts (reply brief, page 8) that even if
combined, the references fail to teach or suggest transferring
system information from a user's computer to a host computer, and
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Application No. 09/318,980
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transferring a repair program from the host computer to the
user's computer, with the repair program being based on or
according to the system information sent previously from the
user's computer to the host computer, as required by each of
independent claims 3 and 4.
We note at the outset that the examiner's assertion
regarding a lack of undue experimentation as a basis for
combining the teachings of Emerson and Bizzarri is misplaced as
"undue experimentation" applies to the issue of enablement and
not to obviousness. Secondly, we do not agree with the examiner
that combining the teachings of Emerson and Bizzarri would result
in the repair of any error in the computer system, but rather
would result in repair of errors relating to failure to boot-up
upon turning on the computer.
In addition, we do not agree with appellant that the phrase
"system information" should be construed to include language from
the specification not found in the claim. As drafted in claims 3
and 4, any information sent by a computer to the host computer or
network administrator's computer 14 in Emerson, can be considered
to be system information. We decline to read into claims
information not found therein. Further, we do not agree with
appellant that Emerson does not teach repairing anything.
Appeal No. 2002-1832
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Page 13
Emerson discloses that when NEB is in the download state, PC1 300
uploads programs to the NEB. As NEB 2 completes execution of
each test program, it sends each test result back to PC1 300 for
verification. If it is determined that an error has occurred, an
error signal is output by PC1 300, which is indicated on the
display of PC1 300. If the next checkpoint is not verified, PC1
300 rescripts the test by adding more detailed test modules, in
accordance with the received result. In this manner, PC1 300 can
locate the problem and debug NEB 2 (col. 56, lines 44-59). We
find that Emerson's teaching of locating the problem and
debugging NEB 2, to be a repair of NEB 2.
In Bizzarri, upon failure of a computer to boot,
communication with a remote computer is established via a modem
(col. 3, lines 50-55). An operator or automatic software at the
second computer may repair a corrupted boot sector or modify code
in the file allocation table (FAT) (col. 4, lines 39-42). As
shown in figure 1, a PC 11 is connected to a diagnostic and
repair facility 13. In one embodiment, a human operator directs
all interaction with the PC needing repair. In another option,
an automatic software kernel (AS) 24 is provided to deal with the
problem of the failed PC (col. 5, lines 23-29). In the event an
AS PC cannot fix the failed PC, it is passed on to a facility
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with a human operator (col. 5, lines 52-54). An interface at the
diagnostic PC emulates the keyboard, floppy drive and screen of
the failed PC, providing a local environment at the diagnostic PC
just as if the technician has traveled (miles away) to the failed
PC. The technician will diagnose and repair the failed PC
(col. 7, lines 32-49).
From the disclosure of Bizzarri, we find that Bizzarri is
closer to the invention than is Emerson, who is directed to
providing a network extension board to connect a printer to a LAN
without the need for a server computer for the printer. As
Bizzarri is directed to diagnosing and repairing computer
problems that occur during running of BIOS, we find that a
skilled artisan would have been motivated to combine the
teachings of Bizzarri with Emerson, in order to repair network
computers that did not boot-up. We find that the combined
teachings of Emerson and Bizzarri do not meet the limitations of
claims 3 and 4 because even though Emerson debugs NEB 2, Emerson
does not disclose any repair of the network computers. In
addition, Bizzarri does not make up for the deficiencies of
Emerson with respect to claims 3 and 4 because even though the
information sent to the diagnostic and repair computer may be
considered to be system information, the system information that
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Application No. 09/318,980
Page 15
the system will not boot-up is sent to the host or diagnostic
computer at the request to the user's computer and not at the
request of the diagnostic and repair computer, as required by
claims 3 and 4. Thus, we find that Bizzarri does not make up for
the deficiencies of Emerson.
From all of the above, we find that the examiner has failed
to establish a prima facie case of obviousness of independent
claims 3 and 4. Accordingly, the rejection of claims 3, 4, and
claims 7-16 dependent therefrom, under 35 U.S.C. § 103(a) is
reversed.
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Application No. 09/318,980
Page 16
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2, 5, 6, under 35 U.S.C. § 102(b) is reversed. The decision
of the examiner to reject claims 3, 4, and 7-16 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
Appeal No. 2002-1832
Application No. 09/318,980
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