Ex Parte Riley

Board of Patent Appeals and Interferences

Jun 24, 2010

10915174 (B.P.A.I. Jun. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DWIGHT D. RILEY
____________
Appeal 2009-006849
Application 10/915,1741
Technology Center 2100
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Decided: June 24, 2010
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Before LEE E. BARRETT, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-35. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.

1 Filed August 10, 2004, titled "Method and Apparatus for Setting a
Primary Port on a PCI Bridge." The real party in interest is Hewlett-Packard
Development Company, L.P.
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STATEMENT OF THE CASE
The invention
The invention relates to setting a "primary port" on a "PCI multi-port
bridge." A "primary port" points upstream toward a controller. What is
meant by a "PCI multi-port bridge" is discussed in the anticipation analysis.
A configuration signal is detected at the PCI multi-port bridge and is used to
automatically set the primary port on the PCI multi-port bridge.
Spec. ¶ 0024. The other ports are set as "secondary ports." Spec. ¶ 0025.
Although not discussed in the Specification, it appears that the
invention relates to determining a topology for a bridged LAN that does not
have loops, i.e., a topology that is an acyclic graph or "spanning tree."

Illustrative claim
Claim 1 is reproduced below for illustration:

1. A method of setting a primary port on a PCI multi-port bridge
comprising:

detecting a configuration signal at the PCI multi-port bridge; and

automatically setting a primary port on the PCI multi-port bridge
based on the configuration signal, wherein only one port on the
PCI multi-port bridge is set as the primary port once
configuration of the PCI multi-port bridge is complete.

The references

Mahalingaiah US 5,564,060 Oct. 8, 1996
Afkhami US 2003/0097428 A1 May 22, 2003
Abu-Lebdeh US 6,715,023 B1 Mar. 30, 2004
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Fujii US 6,741,471 B2 May 25, 2004
Moll US 2004/0230735 A1 Nov. 18, 2004
(filed Oct. 14, 2003)

PCI-to-PCI Bridge Architecture Specification (Revision 1.1,
PCI Special Interest Group, Dec. 18, 1998), pages 1, 2, 11-13, 17,
19-21, 137-145 ("PCI-to-PCI").

Definition of "multiport bridge" from The Authoritative Dictionary of
IEEE Standards Terms 717 (IEEE 7th ed. 2000).

Definition of "multiport bridge" from the TechEncyclopedia available
at "http://www.techweb.com/encgclopedia/ defineterm.ihtml?
term=multiport+bridge" (last visited Feb. 5, 2008).

Definition of "multiport bridge" from PCMAG.com available at
"http://www.pcmag.com/encvclopedia term/0,2542,t=bridge&i=
38922,00.asp" (last visited Feb. 5, 2008).

The rejections
Claim 35 stands rejected under 35 U.S.C. § 101 as inoperative and
therefore as lacking utility.
Claims 1, 3-5, 8-11, 13, 14, 16-19, 21, 22, 24, 25, 27, 28, and 33-35
stand rejected under 35 U.S.C. § 102(e) as being anticipated by Moll.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moll and PCI-to-PCI.
Claims 6, 7, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moll and Abu-Lebdeh.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moll and Mahalingaiah.
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Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moll and Afkhami.
Claims 23, 29, 30, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moll and Fujii.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moll and Fujii, further in view of PCI-to-PCI.

UTILITY
Contentions
The Examiner rejects claim 35 as inoperative and therefore as lacking
utility under 35 U.S.C. § 101. The Examiner finds that "computer readable
storage medium" is disclosed as including electrical connections such as
"wires," "optical fibers," and "paper," which are not acceptable as "storage
media." Final Office Action 3. The Examiner states that the Specification
does not differentiate between computer readable mediums that are capable
of storage and those that are not, but lists "wires" and "optical fibers"
together with RAM, ROM, EPROM, flash memory, CDROM, and diskettes,
implying that wires and optical fibers are the same as other items in the list.
Ans. 22-23.
Appellant argues that "computer readable storage medium" is not
disclosed or intended to cover computer readable "non-storage" mediums,
such as wires and optical fibers. Br. 11-13. It is argued that the
Specification lists "computer readable medium," which includes "storage"
and "non-storage" media, and wires and optical fibers would clearly be
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recognized by those skilled in the art as "non-storage" media which are
excluded from claim 35. Br. 13. Appellant argues that the plain reading of
the Specification excludes "paper" from being "computer readable storage
medium" in claim 35. Br. 14.

Issue
Does the Specification describe or suggest that the claimed "computer
readable storage medium" is intended to include "non-storage" mediums,
such as wires and optical fibers? If so, the claims are inoperative because a
"wire" or "optical fiber" cannot store data.

Findings of fact
The Specification states:
In the context of this application, the computer-readable medium can
be any means that can contain, store, communicate, propagate,
transmit or transport the instructions. The computer readable medium
can be an electronic, a magnetic, an optical, an electromagnetic, or an
infrared system, apparatus, or device. An illustrative, but non-
exhaustive list of computer-readable mediums can include an
electrical connection (electronic) having one or more wires, a portable
computer diskette (magnetic), a random access memory (RAM)
(magnetic), a read-only memory (ROM) (magnetic), an erasable
programmable read-only memory (EPROM or Flash memory)
(magnetic), an optical fiber (optical), and a portable compact disc
read-only memory (CDROM) (optical). It is even possible to use
paper or another suitable medium upon which the instructions are
printed. For instance, the instructions can be electronically captured
via optical scanning of the paper or other medium, then compiled,
interpreted or otherwise processed in a suitable manner if necessary,
and then stored in a computer memory.
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Spec. ¶ 0031.

Principles of Law
"Because it is for the invention as claimed that enablement must exist,
and because the impossible cannot be enabled, a claim containing a
limitation impossible to meet may be held invalid under § 112. Moreover,
when a claim requires a means for accomplishing an unattainable result, the
claimed invention must be considered inoperative as claimed and the claim
must be held invalid under either § 101 or § 112 of 35 U.S.C." Raytheon
Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983).

Analysis
It is clear to us that a "computer-readable medium" broadly includes
both "storage" mediums and "transmission" or "non-storage" mediums. A
transmission medium, such as wire or optical fiber, does not store
instructions and the Specification does not imply that it does. The list of
"computer-readable mediums" in the Specification includes both "storage"
and "non-storage" mediums (which might be called "transmission
mediums") and one of ordinary skill in the art would readily appreciate the
difference. Neither the Specification nor claim 35 implies that a "wire" or
"optical fiber" is a "storage" medium. Accordingly, the Examiner's
interpretation of "computer readable storage medium" as including wires and
optical fibers is in error.
On the other hand, "paper" is a tangible physical medium for storing
instruction, the Examiner's contentions notwithstanding, and is within the
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scope of claim 35, Appellant's argument to the contrary notwithstanding.
The fact that the instructions have to be converted from printed form (which
may be in human readable form or non-human readable form, e.g., a
barcode) to electronic form to be executed on the computer does not imply
that the instructions are not stored. However, claim 35 is not inoperative just
because it broadly includes a paper storage medium.

Conclusion
The Specification does not describe or suggest that "computer
readable storage medium" is intended to include "non-storage" mediums,
such as wires and optical fibers. Accordingly, the Examiner's rejection of
claim 35 as inoperative is reversed.

ANTICIPATION
Contentions
Appellant argues that Moll does not disclose "PCI multi-port bridges,"
as recited by independent claims 1, 11, 25, and 33-35, because the definition
of a "multi-port bridge" in the art (as supported by two references) is a
bridge device having more than two ports. Br. 16-18.
The Examiner finds that the two-port bridge in Moll is a "multi-port
bridge" relying on the definition in The Authoritative Dictionary of IEEE
Standards Terms 717 (IEEE 2000).
Appellant argues that the Examiner erred in relying (at Final Office
Action 2) on the statement in Moll that "the drawings and detailed
description thereto are not intended to limit the invention to the particular
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form disclosed" (Moll ¶ 0106) because this does not teach multiport bridges
and merely indicates that the claims define the invention. Br. 18-21.

Issue
Is the two-port bridge in Moll a "PCI multi-port bridge" as recited by
independent claims 1, 11, 26, and 33-35?

Principles of law
The words of a claim are generally given their "ordinary and
customary meaning" where "the ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing
date of the application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). "Because the meaning of a claim term as understood
by persons of skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks to 'those
sources available to the public that show what a person of skill in the art
would have understood the disputed claim language to mean.' Those sources
include 'the words of the claims themselves, the remainder of the
specification, the prosecution, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the state of the
art.'" (Citations omitted.) Id. at 1314. The claims, the specification, and the
prosecution history are "intrinsic evidence." All evidence external to the
patent and prosecution history, such as dictionaries and treatises, and expert
testimony, is "extrinsic evidence." After the claims, the patent's
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specification is "the single best guide to the meaning of a disputed term." Id.
at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). Next in importance is the prosecution history, which
directly reflects how the patentee has characterized the invention. Id. at
1317. Extrinsic evidence, such as testimony, dictionaries, learned treatises,
or other material not part of the public record associated with the patent,
may be helpful but is "less significant than the intrinsic record in
determining the legally operative meaning of claim language." Id. (quoting
C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).

Findings of fact
The Specification refers to "standard PCI multi-port bridges 108a-f,
which are also known as PCI switches." Spec. ¶ 0012.
The definition of "Multiport Bridge" from the TechEncyclopedia
available at "http://www.techweb.eom/encgclopedia/
defineterm.ihtml?term=multiport+bridge" (last visited Feb. 5, 2008) is "[a]
bridge with more than two ports. There is little difference between a
multiport bridge and a switch . . . , except that the multiport bridge may
introduce some overhead."
The definition of "Multiport Bridge" from PCMAG.com available at
"http://www.pcmag.com/encvclopedia term/0,2542,t=bridge&i=
38922,00.asp" (last visited Feb. 5, 2008) is "[m]ultiport bridges have more
than two ports and perform a switching function just like a LAN switch."
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The definition of "multiport bridge" in The Authoritative Dictionary of
IEEE Standards Terms 717 (IEEE 2000) is a "bridge that connects two or
more DQDB subnetworks." "DQDB" stands for "Distributed Queue Dual
Bus" in Switched Multimegabit Data Service (SMDS) service.

Analysis
The Examiner's cited IEEE definition says nothing about the number
of ports or whether the definition is generally applicable or only defined for
DQDB subnetworks, so the definition is not determinative. Appellant's cited
definitions require a "multiport bridge" to have more than two ports, which
is not met by the bridges in Moll. In addition, Appellant's cited definitions
indicate that a "multiport bridge" performs a switching function like a
switch, which is consistent with the Specification which states that "standard
PCI multi-port bridges . . . are also known as PCI switches." Spec. ¶ 0012.
We have been unable to find any definitions that state that a
"multiport bridge" can have only two ports. Accordingly, Moll does not
teach a "PCI multi-port bridge."
The Examiner appears to disclaim reliance on paragraph 0106 of Moll
(e.g., "even if the Examiner does not rely on paragraph 106 of Moll . . .,"
Ans. 24). In any case, paragraph 106 does not teach that the two-port bridge
can be a multiport bridge. Paragraph 106 is the normal disclaimer that the
claims are not limited to the disclosed embodiments. Thus, paragraph 106
does not describe a "PCI multi-port bridge" or suggest such a bridge in the
obviousness sense.
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Conclusion
The two-port bridge in Moll is not a "PCI multi-port bridge" as recited
by independent claims 1, 11, 25, and 33-35 and thus, does not anticipate.
Accordingly, the anticipation rejection of claims 1, 3-5, 8-11, 13, 14, 16-19,
21, 22, 24, 25, 27, 28, and 33-35 is reversed.

OBVIOUSNESS
Appellant argues that the references applied to dependent claims 2, 6,
7, 12, 15, 20, 23, and 26 and to independent claim 29 and dependent
claims 30-32 do not cure the deficiencies of Moll. Br. 25-31. The Examiner
does not rely on these other references for the feature of a "PCI multi-port
bridge" and accordingly, the rejections of claims 2, 6, 7, 12, 15, 20, 23, 26,
and 29-32 are reversed.

CONCLUSION
The rejection of claim 35 under 35 U.S.C. § 101 is reversed.
The rejection of claims 1, 3-5, 8-11, 13, 14, 16-19, 21, 22, 24, 25, 27,
28, and 33-35 under 35 U.S.C. § 102(e) is reversed.
The rejections of claims 2, 6, 7, 12, 15, 20, 23, 26, 29, and 30-32
under 35 U.S.C. § 103(a) are reversed.

REVERSED

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