Ex Parte Luse et al

Board of Patent Appeals and Interferences

Apr 22, 2008

10112789 (B.P.A.I. Apr. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL E. LUSE and DIETER E. MASSA
____________________

Appeal 2007-3636
Application 10/112,7891
Technology Center 2100
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Decided: April 22, 2008
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 38. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Filed on March. 28, 2002. The real party in interest is Intel Corp.
Appeal 2007-3636
Application 10/112,789

Appellants invented a method and system for configuring a control
device coupled to a peripheral component interconnect (PCI) bus. As
depicted in Figure 1, an I/O processor (40) initiates a bus scan to determine
the address of each device coupled to the bus (22), and to issue a
configuration read request to all of the addressable devices thereon. (Spec.
10, l. 16- 11, l. 6.) In response to the configuration read request, each of the
queried devices identifies their respective type and vendor. (Id. 13, 5-14.)
The processor subsequently utilizes the information obtained from the
devices to determine which of them can be configured. (Id.)
Independent claim 1 further illustrates the invention. It reads as
follows:

1. A method comprising:

initiating a scan of a bus;

determining, based at least in part upon the scan, a location of a
device; prior to initiation of the scan, controlling coupling of the device to
the bus; and

determining whether to attempt to configure the device based upon
information received from the device, the information identifying a vendor
and type of the device.

The Examiner relies on the following prior art:
Sacker US 6,502,156 B1 Dec. 31, 2002
PCI Local Bus Specification, Revision 2.2, Dec. 18, 1998, pp. 190-
93.2

2 The Examiner cites to the “PCI” reference as extrinsic evidence that in
response to a bus scan, the configuration software in Sacker inherently
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Application 10/112,789

The Examiner rejects the claims on appeal as follows:
Claims 1 through 38 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Sacker.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Sacker
1. As depicted in Figure 1, Sacker discloses a method and system
for configuring an I/O device (26) coupled to a PCI bus (22). Upon
receiving an initiation configuration cycle from a host computer (10) to scan
the PCI bus, an I/O processor (38) connected to a head bus adapter (HBA)
(34) causes the HBA to scan the bus. (Col. 3, ll. 50-58.)
2. Sacker further discloses that the firmware on the HBA can
initiate the bus scan on its own to identify the I/O device to properly
configure the identified device.3 (Col. 3, ll. 50-67.)

identifies the Vendor ID, and the type of a PCI compliant device in order to
configure the device. (Ans. 3, 10, 12.)
3 Id.
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Application 10/112,789

PRINCIPLES OF LAW
ANTICIPATION

In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

ANALYSIS
Independent claim 1 recites in relevant part in response to a bus scan,
receiving from a device coupled to the scanned bus the vendor and type of
the device to determine whether it can be configured. (Claims Appendix.)
Appellants argue that Sacker does not explicitly or inherently teach these
limitations. (App. Br. 8-10.) In response, the Examiner avers that Sacker’s
disclosure of identifying an I/O device coupled to a PCI bus to thereby
configure the device upon scanning the bus inherently teaches that the
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configuration is based on the vendor and type information received from the
device in response to the bus scan. (Ans. 3, 10-12.)
Therefore, the issue before us is whether Sacker’s disclosure
inherently teaches configuring a device coupled to a PCI bus based upon
vendor and type information received from the device in response to a bus
scan. We answer this inquiry in the affirmative.
As set forth in the findings of fact section, Sacker teaches scanning a
PCI bus to identify an I/O device coupled thereto, and to subsequently
configure the identified device. (FF 1-2.) Further, the PCI reference teaches
a configuration software that scans a PCI compliant bus to identify the
devices that are actually present thereon. (PCI, 190, para. 3.) Particularly,
the identification of all PCI devices is required to implement a Vendor ID
field that identifies the manufacturer of the device. (PCI, p. 192, section
6.2.1.) The identification of the PCI device is also required to implement a
device ID field that identifies the device itself. (Id.) As evidenced by PCI,
one of ordinary skill in the art would have readily recognized that the
identification of any PCI compliant device on a PCI bus necessarily involves
identifying the type of the device as well as the manufacturer/vendor of the
device. Therefore, the ordinarily skilled artisan would recognize that
Sacker’s identification of the I/O device on the PCI bus necessarily involves
identifying the type of the device and its manufacturer before it can be
configured.
“In relying upon the theory of inherency, the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
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from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990). “[A]fter the PTO establishes a
prima facie case of anticipation based on inherency, the burden shifts to
appellant to ‘prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.’” In re King, 801 at 1327(Fed. Cir.
1986) (quoting In re Swinehart, 439 F.2d 210, 212-13, (CCPA 1971)). See
also MPEP §§ 2112 (IV.), (V.).
This reasoning is applicable here. We agree that the Examiner has
properly shifted the burden to Appellants by providing a rationale in the
Answer that reasonably supports the Examiner’s finding of inherent
anticipation with respect to the Sacker reference. In response, Appellants
merely allege that PCI does not show that the vendor Id and device type are
necessary in identifying a device to be configured in the Sacker’s reference.
(App. Br. 10.) Appellants’ mere allegations are insufficient to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on by the Examiner. It follows that Appellants have not shown that
the Examiner erred in finding that Sacker anticipates independent claim 1.
Appellants do not provide separate arguments with respect to the
rejection of claims 2 through 38. Therefore, we select independent claim 1
as being representative of the cited claims. Consequently, these claims fall
together with representative claim 1.
37 C.F.R. § 41.37(c)(1)(vii).

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RESPONSE TO THE DISSENTING OPINION
The dissenting opinion, infra, is predicated entirely upon arguments
that are not in the record before us. As noted above, Appellants’ arguments
generally challenge that Sacker inherently teaches identifying the vendor and
type of the PCI device. However, nowhere in Appellants’ Brief, have
Appellants particularly argued that Sacker fails to teach such inherent
property of the PCI device because the Examiner fail to show that the PCI
device is not a host bus bridge, as excluded in the PCI reference, at page
189. Such arguments were raised sua sponte by the dissent. Therefore, they
should have no basis in our decision. Arguments that Appellants could have
made but chose not to make in the Briefs are deemed to have been waived.
See 37 § C.F.R. 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts,
354 F.3d 1362, 1368, (Fed. Cir. 2004).
The case law only requires the Examiner to provide sufficient
rationale/facts in order to make the prima facie case of anticipation based on
inherency. Here, the Examiner provides extrinsic evidence to substantiate
his position that Sacker’s PCI device inherently identifies its vendor and its
type. In our view, the Examiner’s evidence is sufficient to make the initial
showing of anticipation. However, as the burden shifts to Appellants, they
merely state that Sacker does not inherently teach the claimed feature.
Appellants’ general challenges simply fail to show that Sacker’s PCI device
is similar to the host bus bridge, and therefore does not have the inherent
characteristics disclosed in the PCI reference. Therefore, Appellants’
arguments clearly do not overcome the Examiner's prima facie case of
anticipation based on inherency.
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Additionally, we do not agree with the dissent that the Examiner
misses the point of Appellants' arguments with respect to claims 1, and 31.
Even though the claim calls for determining whether to attempt to configure,
Sacker's teaching of configuring the I/O device teaches that limitation. One
of ordinary skill would aptly recognize that the computer cannot configure a
device unless it first determines that the device is of the type that it can
configure. That is the whole point of Appellants’ invention.

DECISION
We affirm the Examiner’s decision rejecting claims 1 through 38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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Dixon, Administrative Patent Judge, Dissenting

From my review of the instant administrative record, I do not find that
the Examiner has set forth a sufficient initial showing of anticipation of
independent claim 1 relying upon inherency in the Sacker reference using
the PCI reference to support the implicit teaching.
First, from my review of Sacker, I do not find that Sacker necessarily
requires all PCI devices to provide vendor ID and type information. From
my review of the teachings of PCI, I find that page 189 states “All PCI
devices (except host bus bridges) must implement Configuration Space.
Multifunction devices must provide a Configuration Space for each function
implemented (refer to Section 6.2.1.).” With the exclusion of host-bus
bridges, I cannot find that the Examiner’s reliance upon later references at
pages 190-193 to apply to all PCI devices. Therefore, I cannot agree that
Sacker necessarily provides vendor ID and type of device to determine what
devices are actually present.
Second, I do not find that the Examiner has squarely and clearly
addressed the merits of independent claims 1 and 31as argued by Appellants.
With respect to independent claim 1, the limitation “determining whether to
attempt to configure the device based upon information received from the
device, the information identifying a vendor and type of the device” is
disputed. Here, Appellants argue that page 10 of the Brief that the Sacker
reference does not disclose or suggest a step of “determining whether to
attempt to configure the device based upon the information received from
the device." I do not find a reasoned response to this argument by the
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Examiner. The Examiner in the responsive arguments merely reiterates the
rejection in the citation to column 3 of the Sacker reference. I do not find
this to be a reasonable response to Appellants' argument.
Furthermore, I do not find a distinct step of determining whether to
attempt to configure the device based upon the information received from
the device as recited in independent claim 1 in the relied upon teachings of
Sacker.
Appellants’ Specification at pages 13. l. 15 -14, l. 5 discloses the
process to determine to attempt to configure the system, and I do not find a
corresponding step expressly set forth in the teachings of Sacker. Nor do I
find that the Examiner has identified any distinct step. Therefore, I do not
find that the Examiner has set forth the requisite initial showing of
anticipation and inherency for independent claim 1 and its respective
dependent claims to necessitate a shifting of the burden to Appellants.
With respect to independent claim 31, Appellants argue that Sacker
does not disclose “selecting, based at least in part upon the information, one
or more code modules from which to build one or more procedures to permit
at least one of control of and communication with the device.” (App. Br. 8-
9). Again, I do not find that the PCI reference necessarily requires all PCI
devices to provide recited information nor do I find that the Examiner has
shown all the limitations are taught by Sacker as discussed above.
Therefore, I would reverse the Examiner's rejection of independent claim 31
and its respective dependent claims.

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Independent claims 7 and 19 are similar to independent claim 1, and I
would similarly reverse the rejection thereof for lack of a sufficient initial
showing. Independent claim 13, 33, 35, and 37 is similar to independent
claim 31, and I would similarly reverse the rejection thereof for lack of a
sufficient initial showing.

pgc

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