Ex Parte Wade

Board of Patent Appeals and Interferences

Mar 12, 2007

09947824 (B.P.A.I. Mar. 12, 2007)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JENNIFER A. WADE
__________

Appeal No. 2006-2705
Application 09/947,824
Technology Center 2100
__________

Decided: March 12, 2007
__________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellant has appealed to the Board
from the Examiner’s final rejection of claims 1 through 21.
Representative independent claim 1 is reproduced below:

Appeal 2006-2705
Application 09/947,824

1. A system for providing analysis information pertaining to a high
priority machine check (HPMC), comprising:

a processor that is operable to invoke utility code when an HPMC is
generated;

non-volatile memory for storing said utility code, said utility code
comprising:

code for accessing data present in internal memory of said
processor when said HPMC was generated; and

code for generating at least one explanatory sentence utilizing
at least said data present in said internal memory.

The following references are relied on by the Examiner:
McLaughlin US 6,119,246 Sep. 12, 2000
Linam US 6,658,599 B1 Dec. 2, 2003
(filed Jun. 22, 2000)

All claims on appeal, claims 1 through 21, stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the Examiner relies upon
McLaughlin in view of Linam.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.
OPINION
For the reasons set forth by the Examiner in the Answer, as
embellished upon here, we sustain the rejection of all claims on appeal under
35 U.S.C. § 103. For each of independent claims 1, 9, and 16 on appeal as
well as the respective dependent claims, Appellant has presented arguments
in the Brief and Reply Brief as to their corresponding features collectively.
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As to each independent claim 1, 9, and 16, the principal issue is
whether the collective teachings and showings of McLaughlin and Linam
meet the claimed feature “code for generating at least one explanatory
sentence utilizing at least said data present in said internal memory.”
Appellant presents no arguments as to the Examiner’s assessment of
the teaching value of McLaughlin. We also agree with the Examiner’s
assessment that this reference does not teach the quoted feature of each
respective independent claim. The showings in Figures 3 and 4 and the
corresponding discussion at columns 4 and 5 of McLaughlin emphasize the
collection of data in an error log 42 in Figure 3 generally depicted in Figure
4. There is no apparent manifestation to the user or display of the error log
information. Figure 4 of McLaughlin shows a collection of data in various
internal registers.
On the other hand, Linam also utilizes the same concept of an error
log 206 in Figure 2, which log is shown in Figure 3 apparently
corresponding to the hex-dump in prior art Figures 1A and 1B of the
Specification as filed. The manner of operation is depicted for software
accessible and software non-accessible registers within the internal operation
of the computer system of Figure 2 according to Figures 4 and 5.
In the manner corresponding to the Appellant’s admitted prior art, the
Examiner makes reference to the discussion at the bottom of column 4 of
Linam that non-volatile memories are utilized to store firmware-based
processing code to effect the monitoring operations in Linam. This is
consistent with the firmware 16 in Figure 1 of McLaughlin. Thus, to the
extent that Appellant’s arguments argue that Linam does not teach the
feature of a non-volatile memory storing code to monitor data of a computer
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system to be stored in internal registers, both references appear to teach this
capability.
Moreover, the Examiner’s reliance upon the corresponding teachings
at Figures 5 and 6 of Linam as teaching the disputed, quoted language of
each independent claim is well taken. The Examiner strongly takes the view
that the “message” discussed in these locations to output the result of
monitoring operations of the system in Linam constitutes the claimed
sentence of each independent claim on appeal noted earlier in this opinion.
Appellant strongly disagrees. The noted portions at columns 5 and 6 of
Linam teach that the message may be outputted to a video display terminal
such as to, for example, explain to the user what to do. Element 418 in
Figure 4 appears to teach or at least strongly suggest that the message
“replace adapter” is outputted to the user on a video display terminal as a
declarative sentence of the type set forth at the end of each independent
claim on appeal.
Additionally, because both references teach the concept of storing
error log information, it would have been clearly obvious for the artisan to
have followed in the system of McLaughlin the approach followed by Linam
such as to actually display to the user in some form or otherwise alert the
user of the result of an error log process. Linam may properly therefore be
viewed as enhancing the operability and usability of the system of
McLaughlin.
It is thus seen that the requirements of dependent claim 7 indicating a
component for replacement and the features of dependent claim 8 of human
readable sentences clearly are indicated among the combined teachings and
showings. The memory address feature of dependent claim 6 again is taught
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by both references and because both references teach physical structure
related monitoring information of actual devices in the system, Linam being
more specific as to this feature than McLaughlin; the identification of a
particular bus log is clearly indicated in Linam’s teachings. The Markush
group of features in dependent claim 4 is known to be a part of the prior art
at Specification page 2, paragraph [0003] at least for a parity error situation.
Linam teaches the ability to diagnose input/output control information
failures directly. Because of this, the ability to apply the teaching value of
Linam to memory controllers of dependent claim 2 would have been an
obvious variation thereof, particularly in view of Appellant’s prior art figure
1B.
We note in passing that the subject matter of the claims on appeal
appear to be taught or suggested to the artisan within the teaching value of
Appellant’s admitted prior art Figures 1A and 1B coupled with the
corresponding discussion at Specification pages 1 through 3. Indeed, the
showing at the middle to the bottom portion of prior art Figure 1B appears to
show the preexistence in the prior art of sentence-type information conveyed
to the user of memory errors and input/output module errors as well. It
appears to us that the artisan in the data processing arts would have
recognized such showings as being a “sentence” to the extent recited in the
disputed clause at the end of each independent claim on appeal.
In like manner, it appears to us that the subject matter presented in all
claims on appeal relates to features that may differ from the prior art solely
on the basis of “non-functional descriptive material,” which is generally not
given patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed.
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Cir. 1983). The PTO may not disregard claim limitations comprised of
printed matter. See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also
Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However,
the Examiner need not give patentable weight to descriptive material absent
a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32
USPQ2d 1031, 1035 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
USPQ 1862, 1864 (Fed. Cir. 2004). We conclude that when the prior art
describes all the claimed structural and functional relationships between the
descriptive material and the substrate, but the prior art describes a different
descriptive material than the claim, then the descriptive material is non-
functional and will not be given any patentable weight. That is, we conclude
that such a scenario presents no new and unobvious functional relationship
between the descriptive material and the substrate. In the instant case on
appeal, we find that the invention of claims 1 through 21 recites non-
functional descriptive material which does not provide a patentable
distinction to the data structure as a structure. In other words, we find that
the meaning attributed to the information stored in the data structure cannot
be used to distinguish the claimed data structure from a prior art data
structure. Therefore, we conclude that the invention of claims 1 through 21
is not patentably distinguishable from the data structure of the applied prior
art.
In view of the foregoing, the decision of the Examiner rejecting
claims 1 through 21 under 35 U.S.C. § 103 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

tdl

Hewlett-Packard Company
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
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