Ex Parte Long et al

Patent Trial and Appeal Board

Sep 8, 2016

12821727 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/821,727 06/23/2010
126453 7590 09/12/2016
International Business Machines Corporation - IT
Rich Lau - IPLaw Department
2455 South Road, B/008-2
Poughkeepsie, NY 12601
Thomas C. Long
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
POU920100103US1 4464
EXAMINER
KRAFT, SHIH-WEI
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
09/12/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
poiplaw2@us.ibm.com
ituchman@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS C. LONG and ROBERT P. MAKOWICKI
Appeal2015-002949
Application 12/821,727
Technology Center 2100
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
.6. .. .. , 1 .. • .. ,..... ,- T T r'1 I'\ l\ -1 ,..... Al / '\. I"" , "1
Appeuants' seeK our review unaer j) u.~.L. s U4~aJ or me
Examiner's final decisions rejecting claims 1 and 3-23, which are all the
claims pending in the present application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1-2.
2 Claim 2 is cancelled. App. Br. 30.
Appeal2015-002949
Application 12/821,727
STATEMENT OF THE CASE
The present application relates to serially transmitting processor
commands of different execution priority to back-end processors. Spec. i-f 1.
Claim 1 is illustrative (disputed limitations emphasized):
1. A system comprising:
a field replaceable unit including a front-end processor and
a back-end processor, the front-end processor configured to
serially receive processor commands;
a plurality of command queues coupled to the front-end
processor, the command queues including a low-priority queue
configured to store low-priority commands and a high-priority
queue configured to store high-priority commands;
a controller configured to transmit the processor
commands from the front-end processor to the back-end
processor from only one of the command queues, [L 1] the
controller configured to enable the high-priority queue and
suspend the low-priority queue when the high-priority
commands are to be sent;
[L2] wherein the low-priority queue is initialized with the
low-priority commands performing cyclic monitoring of the
back-end processor, the low-priority queue is enabled by default;
[L3] wherein the high-priority queue is initialized with the
high-priority commands, the high-priority queue is suspended by
default.
2
Appeal2015-002949
Application 12/821,727
The Rejections3
Claims 1 and 3-23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1 and 3-23 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1and3-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Strecker (US 4,777,595; Oct. 11, 1988), Bottom (US
2002/0194412 Al; Dec. 19, 2012), Brice (US 6,324,600 Bl; Nov. 27, 2001),
and Amuro (US 6,016,506; Jan. 18, 2000).
Claims 11-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Strecker, Brice, and Amuro.
ANALYSIS
Written Description
The Examiner finds limitation LI, L2, and L3, lack adequate support
in the Specification because "the originally filed specification discloses the
use of an additional 'ACTIVE' or 'IDLE' state for the commands in order to
properly determine the condition of the low-priority queue and the high-
priority queue." Ans. 66----67; Final Act. 4--5.
Appellants contend the Examiner errs in this rejection because
"claims 1, 11, and 19 use the transitional phrase 'comprising' and therefore
do not exclude use of additional ACTIVE and IDLE states in their
embodiment." Reply Br. 3.
3 Claims 11-23 further stand objected to because the Examiner finds
insufficient antecedent basis in independent claims 11 and 19 for the
limitation "the high-priority commands." Final Act. 2-3.
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Appeal2015-002949
Application 12/821,727
We do not agree with the Examiner. We are not persuaded the
Examiner has established a lack of adequate written description in the
Specification as a whole, such that an artisan of ordinary skill would fail to
understand that the inventor had possession at that time of the later claimed
subject matter. See In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Rather, we agree with Appellants that adequate written description is set
forth in the Specification at paragraphs 33, 42, and 46 for limitations LI, L2,
and L3. App. Br. 6-9.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 3-23 under 35 U.S.C. § 112, first paragraph, for lack of written
description.
Indefiniteness
While finding independent claims 1, 11, and 19 indefinite, the
Examiner states:
It is unclear to the Examiner if the high priority queue is
enabled or suspended because it appears that the high-priority
queue is initialized with high-priority commands, which suggests
that the controller would enable the high-priority queue by
default and suspend the low-priority queue by default since there
are high-priority commands to be sent.
Final Act. 8.
Appellants contend:
Claim 1 recites that the low-priority queue is enabled by
default and the high-priority queue is suspended by default.
Thus, there is no ambiguity in the claims as to whether the high-
priority queue is enabled or suspended.
App. Br. 12.
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Appeal2015-002949
Application 12/821,727
We agree with Appellants. The scope of claim 1 is clear: the low-
priority queue is enabled by default and the high-priority queue is suspended
by default.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 3-23 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Obviousness
Claim 1
Appellants contend the Examiner errs in rejecting independent claim 1
because Amuro lacks disclosure that "low priority commands in a low-
priority queue perform cyclic monitoring of the back-end processor." App.
Br. 17. Rather, Appellants contend, "Amuro discloses the low priority task
is interrupt-driven using an internal software timer." Id. at 18 (citing Amuro
4:44--49). Appellants elaborate:
There is no mention in Amuro that cyclic monitoring would
cause the controller to non-intrusively detect the status of all
connected SCSI targets. Therefore, there is no rational
underpinning for modifying Strecker with Amuro' s teaching of
performing cyclic monitoring.
App. Br. 20.
Further, Appellants contend, that Brice fails to" mention in the cited
passage that enabling a high-priority queue and the high-priority queue
being suspended by default would cause data to be moved quickly without
any need to initiate any distinct input/ output requests or any interruptions by
the host processor for completion of each data movement." Id. at 21.
Finally, Appellants contend, "Bottom is not analogous because it does not
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Appeal2015-002949
Application 12/821,727
address serially transmitting processor commands of different execution
priority to back-end processors." Id. at 23.
We have considered Appellants' arguments in the Appeal Brief and
the Reply Brief, as well as the Examiner's Answer thereto. We are not
persuaded by Appellants' arguments. Rather, we agree with and adopt as
our own, the Examiner's findings and reasons in the Final Action and the
Answer. We further emphasize the following.
We are not persuaded by Appellants' arguments regarding the
teachings and suggestions of Amuro and Strecker because Appellants argue
the references individually. The Examiner correctly relies on Strecker as
teaching or suggesting the claimed low-priority queue configured to store
low-priority commands, and Amuro as teaching or suggesting performing
cyclic monitoring. Final Act. 12-16, 22; Ans. 72-76. The Examiner
combines these teachings and articulates a motivation to combine. Id.
Where, as here, a rejection is based on a combination of references, one
cannot show non-obviousness by attacking references individually. In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
We also are not persuaded by Appellants' argument regarding Brice
because it is not responsive to the Examiner's findings. The Examiner cites
extensively from Brice setting forth detailed, comprehensive findings
supporting the determination of obviousness. Final Act. 17-22. Appellants,
however, address only the teachings of Brice at column 2, lines 10-20. App.
Br. 21-22. On this record, where Appellants' fail to address the Examiner's
findings, we are not persuaded of Examiner error.
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Application 12/821,727
Finally, we do not agree that Bottom is non-analogous art, as
Appellants contend. The non-analogous art test considers the threshold
question of whether a prior art reference is "'too remote to be treated as prior
art."' In re Clay, 966 F .2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish,
769 F.2d 738, 741 (Fed. Cir. 1985)). The two separate tests for determining
whether a prior art reference is analogous are as follows: (i) whether the art
is from the same field of endeavor, regardless of the problem addressed; and
(ii) if the reference is not within the inventor's field of endeavor, whether the
reference is reasonably pertinent to the particular problem with which the
inventor is involved. The same field of endeavor test "for analogous art
requires the PTO to determine the appropriate field of endeavor by reference
to explanations of the invention's subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (reference
describing a toothbrush found to be in the same field of endeavor as a claim
to a hairbrush based on findings regarding function and structural similarity).
With respect to the second test, a reference is reasonably pertinent to the
particular problem with which the inventor is involved if it addresses the
same or similar problem. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
13 80-81 (Fed. Cir. 2007) (prior art disclosing springs as part of a
counterbalancing mechanism in a folding bed is reasonably pertinent to an
application describing a gas spring used as part of a lift assist assembly in a
claimed treadmill).
With regard to the first test, we find Bottom is in the same field of
endeavor as Appellants' Specification, namely computer network
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Application 12/821,727
architecture. Compare Spec. i-fi-12---6 with Bottom i-fi-13, 5-10. Even if
Bottom were not in the same field of endeavor, we nevertheless find with
regard to the second test that Bottom is reasonably pertinent to the particular
problem with which the inventor is involved. Bottom seeks to address "a
need for a compact, high-density, rapidly-deployable, high-availability
server system having simplified management and serviceability, and
unlimited scalability." Bottom i-f 10. Such a need is reasonably pertinent to
the problem faced by Appellants, namely coordinating multiple processes
using small-footprint, low-cost field replaceable units with inexpensive
microcontrollers. Spec. i-fi-1 2---6.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 1. Appellants advance no further arguments on claims 3, 4, and 8-10,
rejected on the same grounds as claim 1. Accordingly, we sustain the
Examiner's 35 U.S.C. § 103 rejection of claims 3, 4, and 8-10.
Claims 5-7
As with claim 1 discussed above, Appellants contend Brice fails to
"mention" the claim limitations for which it is cited without addressing the
all of the teachings of Brice cited by the Examiner. The Examiner cites
extensively from Brice setting forth detailed, comprehensive findings
supporting the determination of obviousness for each of claims 5- 7. Final
Act. 24--33. Appellants, however, address only the teachings of Brice at
column 2, lines 10-20. App. Br. 24, 26, 29. On this record, where
Appellants' fail to address the Examiner's findings, we are not persuaded of
Examiner error. Therefore, we sustain the Examiner's 35 U.S.C. § 103
rejection of claims 5-7.
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Appeal2015-002949
Application 12/821,727
Claims 11-23
Appellants advance no further arguments concerning claims 11-23
beyond those discussed above in the context of claims 1 and 5-7.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of claims
11-23.
DECISION
We reverse the Examiner's decisions rejecting claims 1 and 3-23 for
failing to comply with the written description requirement.
We reverse the Examiner's decisions rejecting claims 1 and 3-23 for
indefiniteness.
We affirm the Examiner's decisions rejecting claims 1 and 3-23 for
obviousness.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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