Ex Parte Smolski

Board of Patent Appeals and Interferences

Aug 23, 2002

08711180 (B.P.A.I. Aug. 23, 2002)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN J. SMOLSKI
____________
Appeal No. 2000-1209
Application No. 08/711,180
____________
ON BRIEF
____________
Before HAIRSTON, LALL, and LEVY, Administrative Patent Judges.
LALL, 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 1-18, which constitute all the
pending claims in the application.
According to appellants (brief at page 3 and 4), the present
invention relates generally to methods and program products
operable in a computer for changing configuration/setup parameters
in an embedded controller type computer system, which computer
system is characterized by the absence of any keyboard or video
Appeal No. 2000-1209
Application No. 08/711,180
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display, as accomplished from a remote terminal. The invention
allows the changing of configuration/set up parameters in the
embedded controller using the keyboard and video display of the
remote terminal. The entry of the changes is responsive to a
physical audio-visual signal timed and generated by the embedded
controller, and concludes with a rerun of the power on test in the
embedded controller.
The following claim is illustrative of the invention.
1. A method of remotely specifying configuration/setup parameters
in a computer system not having a keyboard or a display, comprising
the steps of:
initiating a power on test mode in the computer system;
generating an audio-visual signal by the computer system;
monitoring within the computer system for first control
signals from a remote terminal generated in response to the audio-
visual signal;
communicating configuration/setup data between the computer
system and the remote terminal if first control signals are
detected during the monitoring;
completing the power on test mode if first control signals are
not detected within a specified time; and
returning the computer system to an initiation of the power on
test mode responsive to second control signals generated within the
remote terminal following the communicating of configuration/setup
data.
Appeal No. 2000-1209
Application No. 08/711,180
3
The examiner relies on the following references:
Collins, Jr. (Collins) 4,926,481 May 15, 1990
Basu 5,452,454 Sep. 19, 1995
Yee 5,471,576 Nov. 28, 1995
Claims 1-3, and 10-12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Basu in view of Yee, while claims 4-9, and
13-18 stand rejected over Basu in view of Yee and Collins
Rather than repeat the arguments of appellant and the
examiner, we make reference to the brief (paper no. 10) and the
answer (paper no. 11) for the respective details thereof.
OPINION
We have considered the rejections advanced by the examiner and
the supporting arguments. We have, likewise, reviewed the
appellant’s arguments set forth in the brief.
We reverse.
As a general proposition, in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out a
prima facie case of obviousness. If that burden is met, the burden
of going forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness, is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
Appeal No. 2000-1209
Application No. 08/711,180
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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).
At the outset, we note that appellant elects to have claims
1-18 stand or fall together (brief, at page 5). We take claim 1 as
representative of the group. In the response to the rejection of
claim 1 (answer at page 2-4), appellant argues (brief at page 6)
that “[t]he examiner cites neither a reference nor any technical
inducement to combine the audio-to-video synchronization operation
of Yee into the booting of a client workstation from a remote data
processing system over a network as taught in Basu.”
The examiner responds (answer at page 9) that
“any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning.”
In providing a motivation or a suggestion to combine, we
recognize that the Federal Circuit states, in In re Lee, 277 F.3d
1338, 1342-43, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
[t]he essential factual evidence on the issue of
obviousness is set fourth in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) and extensive
ensuing precedent. The patent examination process
centers on prior art and the analysis thereof. When
patentability turns on the question of obviousness, the
search for and analysis of the prior art includes
evidence relevant to the finding of whether there is a
Appeal No. 2000-1209
Application No. 08/711,180
5
teaching, motivation, or suggestion to select and combine
the references relied on as evidence of obviousness.
See, e.g., McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351-52, 60 USPQ2d 1001, 1008 (Fe. Cir. 2001) (“the
central question whether there is reason to combine [the]
references,” a question of fact drawing on the Graham
factors).

We note that in the present case the examiner has made no
factual findings in either reference, let alone to make a rational
inference that the teachings of Yee can be combined with Basu. We
agree with appellant that Yee is concerned with audio-to-video
synchronization and has nothing to do with the booting of a client
workstation of Basu. Therefore, the examiner has not shown any
justification for the combination.
Furthermore, even if the references to Basu and Yee were
combinable, arguendo, appellant argues (brief at page 6) that
[T]he claimed invention requires a generation of an
audio-visual signal by the computer followed by a
monitoring by such computer system for control signals
from a remote terminal responsive to the generated audio-
visual signal. In contrast, the teaching in Basu at
column 8, lines 9-17, involves an activity in which the
computer system sends a download request to a remote
terminal, and the remote terminal responds by a download
action. . . . Therefore, the direction of control flow
is both specified in the claims and opposite that of
Basu.”
The examiner responds (answer at page 8) that “the client [of
Basu] which is a remote computer and the VMS server 10 which is the
parameters [sic, controller] not having keyboard and display.
Appeal No. 2000-1209
Application No. 08/711,180
6
Nowhere to be found in the body of these claimed [sic, claims]
indicating configuring/setup parameters by the remote terminal.”
In our view, the examiner has missed the argument raised by
appellant. Indeed, in Basu the process of downloading or
communicating the configuring/setup parameters between
client workstation 18 and VMS server 10 is initiated by a signal
which is initiated and transmitted by workstation 18, as opposed to
the recited initial signal sent by embedded controller which
corresponds to VMS server 10 by examiner’s designation. Therefore,
the recited limitation of generating an audio-visual signal by the
computer (controller) system is not met by the combination
suggested by the examiner.
For the rationale above, we do not sustain the rejection of
claim 1 over Basu in view of Yee. In passing, we note the other
independent claim 10 is a product claim containing the program
recited in claim 1. Therefore, for the same rationale we do not
sustain the rejection of claim 10 over Basu in view Yee.
Consequently, we reverse the rejection of claims 1-3, and 10-12
over Basu and Yee.
With respect to claims 4-9, and 13-18, since Collins does not
cure the deficiency in the combination of Basu and Yee we do not
Appeal No. 2000-1209
Application No. 08/711,180
7
sustain the rejection of these claims over Basu in view of Yee and
Collins.
Accordingly, the decision of the examiner rejecting claims
1-18 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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Appeal No. 2000-1209
Application No. 08/711,180
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CASIMER K. SALYS
INTERNATIONAL BUSINESS MACHINES
CORP INTELL PROPERTY LAW DEPT
11400 BURNET ROAD ZIP 4054
AUSTIN TX 78758
Letty
JUDGE LALL
APPEAL NO. 2000-1209
APPLICATION NO. 08/711,180
APJ LALL
APJ HAIRSTON
APJ LEVY
DECISION: REVERSED
PREPARED: Jun 6, 2003
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