Ex Parte Zeidman

Board of Patent Appeals and Interferences

Aug 24, 2009

10158772 (B.P.A.I. Aug. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT MARC ZEIDMAN
____________
Appeal 2009-000048
Application 10/158,7721
Technology Center 2100
____________
Decided: August 24, 2009
____________

Before ALLEN R. MACDONALD, Vice-Chief Administrative Patent Judge,
JEAN R. HOMERE, and JAMES R. HUGHES, Administrative Patent
Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on May 31, 2002. This application is a continuation-in-part to
09/751,573, filed on December 28, 2000. The real party in interest is
Zeidman Technologies, Inc.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appellant’s Invention
Appellant invented a method, apparatus, and computer-readable
medium for connecting an emulator to a computer peripheral at full
operational speed using a standard interface. (Spec. 1, ll. 20-21.) As
depicted in Appellant’s Figure 4, the emulated device that is intended to
drive the computer peripheral sends data to the EmBridge program (400)
from the emulator via the bidirectional port using either the bidirectional
port application program interface (“API”) (403) of the operating system or
the bidirectional port driver software (406). (Spec. 7, ll. 6-9.) The
EmBridge program (400), in turn, sends the data to the computer peripheral
either via the computer peripheral API (402) of the operating system or
directly to the computer peripheral device driver (405). (Spec. 7, ll. 10-12.)
The EmBridge program (400) retrieves data from the computer peripheral
either from the computer peripheral device (402) of the operating system or
directly from the computer peripheral device driver (405). (Spec. 7, ll. 12-
14.) The EmBridge program (400) sends the data to the emulator via the
bidirectional port using either the bidirectional port API (403) of the
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operating system or the bidirectional port driver software (406). (Spec. 7, ll.
14-17.) Thus, according to the Appellant, the claimed invention interfaces a
real computer peripheral to an emulated device by taking advantage of
standard software that is easily available and has already been tested. (Spec.
7, ll. 1-3.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for connecting an emulator of an electronic device to
a computer peripheral device attached to a computer, said computer
peripheral device operating at a higher speed than said emulator, the method
comprising:

a) receiving data for said electronic device from said computer
peripheral device, using software for communicating with said computer
peripheral device running on said computer;

b) transmitting said data for said electronic device received from said
computer peripheral device to said emulator through a bidirectional port,
using software for communicating with said emulator running on said
computer;

c) receiving data for said computer peripheral from said electronic
device emulated in said emulator through said bidirectional port, using said
software for communicating with said emulator; and

d) transmitting said received data for said computer peripheral from
said emulator to said computer peripheral device using said software for
communicating with said computer peripheral device.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Gagne US 5,303,347 Apr. 12, 1994
Petersen US 5,307,459 Apr. 26, 1994
Watanabe US 5,761,486 Jun. 02, 1998
Lin US 6,389,379 B1 May 14, 2002
(filed Jun. 12, 1998)
Nicol US 6,757,367 B1 Jun. 29, 2004
(filed Dec. 9, 2000)

Chu ACM, 0-089791-089-3/83/0300-0170 1983

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 4, 10 through 12, 14, 15, 17, 24, 25, and 27 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Petersen and Lin.
Claims 3, 5, 16, 18, 26, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Petersen, Lin, and
Gagne.
Claims 6, 21, and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Petersen, Lin, and Watanabe.
Claims 7, 22, and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Petersen, Lin, and Chu.
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Claims 8, 9, 13, 19, 20, 23, 29, 30, and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Petersen,
Lin, and Nicol.

Appellant’s Contentions
1. Appellant contends that the Examiner erred in concluding that
the combination of Petersen and Lin renders independent claim 1
unpatentable. In particular, Appellant argues that:
(a) Petersen’s disclosure of a computer peripheral device, in
conjunction with Lin’s disclosure of a computer connected to an emulator,
does not teach designated data transfers between a computer peripheral
device, an electronic device, and an emulator. (Supp. App. Br. 20; Reply Br.
4-7.)
(b) There is insufficient rationale for the proffered combination.
(Supp. App. Br. 20; Reply Br. 7.)
2. Appellant contends that the Examiner erred in concluding that
the combination of Petersen and Lin renders dependent claims 10 and 11
unpatentable. In particular, Appellant argues that Petersen’s disclosure of a
network adapter with threshold logic that utilizes various transfer paths to
transmit and receive data frames, in conjunction with data flow from the host
memory through the network adapter memory to the network, does not teach
a thread as understood by an ordinarily skilled artisan. (Supp. App. Br. 20-
21; Reply Br. 8-9.)
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Examiner’s Findings and Conclusions
1. The Examiner concludes that the combination of Petersen and
Lin renders independent claim 1 unpatentable. In particular, the Examiner
finds that:
(a) Petersen’s network adaptor that transfers data to and from a
host computer and another network device, in conjunction with Lin’s PCI
bus that transfers data back and forth between a host computer and emulator,
teaches designated data transfers between a computer peripheral device, an
electronic device, and an emulator. (Ans. 13-17.)
(b) There is sufficient rationale for the proffered combination.
(Ans. 17.)
2. The Examiner concludes that the combination of Petersen and
Lin renders dependent claims 10 and 11 unpatentable. In particular, the
Examiner finds that Petersen’s disclosure of transferring data via numerous
separate and distinct processes teaches threads executed independently of
one another. (Ans. 17-19.)

II. ISSUES
1. Has Appellant shown that the Examiner erred in concluding
that the combination of Petersen and Lin renders independent claim 1
unpatentable? In particular, the issue turns on whether:
(a) The proffered combination teaches receiving and transmitting
data between a computer peripheral device, an electronic device, and an
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emulator using software that runs on a computer, as recited in independent
claim 1.
(b) There is sufficient rationale for the proffered combination.
2. Has Appellant shown that the Examiner erred in concluding
that the combination of Petersen and Lin renders dependent claims 10 and
11 unpatentable? In particular, the issue turns on whether the proffered
combination teaches receiving and transmitting data via multiple threads as
understood by an ordinarily skilled artisan.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.

Petersen
1. Petersen generally relates to architectures of network adapters
and, in particular, to architectures optimizing network adapter and host
processor performance. (Col. 1, ll. 16-18.)
2. Petersen’s Figure 1 depicts a network adapter configuration.
(Col. 5, l. 55.) Network adapter (3) with threshold logic (10) is coupled to
network (2) and a host system (1). (Col. 5, ll. 56-58.) Network adapter (3)
is responsible for transferring data frames between network (2) and host
system (1). (Col. 5, ll. 58-59.)
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3. Petersen’s Figure 2 depicts a functional block diagram of
network adapter (3) with threshold logic (10) illustrating the various transfer
paths. (Col. 6, ll. 23-25.) Network adapter (3) contains transceiver (12)
which transmits and receives data frames across a network (2). (Col. 6, ll.
25-27.) Network interface logic (11) is responsible for the transfer of a data
frame between network buffer (9) and transceiver (12). (Col. 6, ll. 27-29.)
Likewise, the network adapter (3) contains host interface logic (8) which is
responsible for transferring a data frame between network buffer (9) and
host system (1). (Col. 6, ll. 29-32.) Threshold logic (10) contains an
alterable storage location (10a) which contains a threshold value. (Col. 6, ll.
32-33.) This threshold value represents the amount of a data frame which
will be transferred into or out of buffer (9) before an early indication signal
will be generated which may cause host interface logic (8) to send an
interrupt to host processor (5). (Col. 6, ll. 34-38.) Host processor (5) has
access to the alterable storage (10a) location containing the threshold value
through host interface logic (8). (Col. 6, ll. 38-40.)

Lin
4. Lin generally relates to electronic design automation (“EDA”)
and, in particular, to a coverification system and method for performing
simulation, hardware acceleration, and coverification with a target system
and external I/O devices to verify electronic systems. (Abstract; Col. 1, ll.
12-17.) The coverification system contains a control logic that provides
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traffic control between: (1) the reconfigurable computer system (“RCC”)
and the RCC hardware array, and (2) the external interface (which is coupled
to the target system and the external I/O devices) and the RCC hardware
array. (Abstract.)
5. Lin’s Figure 1 depicts a workstation (10) coupled to a
reconfigurable hardware model (20) and emulation interface (30) via a bi-
directional Peripheral Component Interconnect (“PCI”) bus system (50).
(Col. 22, ll. 15-17.) The reconfigurable hardware model (20) is coupled to
the emulation interface (30) via the bi-directional PCI bus (50), as well as
cable (61). (Col. 22, ll. 17-19.) A target system (40) is coupled to the
emulation interface (30) via cables (60). (Col. 22, ll. 19-20.)
6. The workstation (10) runs the software kernel that controls the
operation of the entire simulation/emulation system and must have access
(read/write) to the reconfigurable hardware model (20). (Col. 7, ll. 60-64;
Col. 22, ll. 45-48.)

IV. PRINCIPLES OF LAW
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
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Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 416.
The operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 417.
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR, 550 U.S. at 418 (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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V. CLAIM GROUPING
Appellant argues that the combination of Petersen and Lin does not
render independent claim 1 unpatentable. Appellant separately argues that
the combination of Petersen and Lin does not render dependent claims 10
and 11 unpatentable. In accordance with the provisions of 37 C.F.R.
§ 41.37(c)(1)(viii), we will consider claims 2 through 9 and 12 through 33 as
standing or falling with claim 1.

VI. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant parts:
a) receiving data for the electronic device from said computer
peripheral device, using software for communicating with said
computer peripheral device running on the computer; b) transmitting
the data for said electronic device received from said computer
peripheral device to said emulator through a bidirectional port, using
software for communicating with said emulator running on said
computer; c) receiving data for said computer peripheral from said
electronic device emulated in said emulator through said bidirectional
port, using said software for communicating with said emulator; and
d) transmitting said received data for said computer peripheral from
said emulator to said computer peripheral device using said software
for communicating with said computer peripheral device.

As discussed in the Findings of Fact section above, Petersen discloses
a network adapter and, in particular, optimizing the performance of the
network adapter and a host processor. (FF 1.) Petersen discloses that the
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network adapter is responsible for receiving and transmitting data between a
network and a host system. (FF 2, 3.) We find that Petersen’s disclosure of
a network adaptor teaches a peripheral device attached to a computer for
receiving and transmitting data. Further, Lin discloses a system and method
for performing simulation, hardware acceleration, and verification of a target
system and external devices. (FF 4.) In particular, Lin discloses a
workstation that communicates with a reconfigurable hardware model
coupled to an emulation interface via a bi-directional bus. (FF 5.) Further,
Lin discloses that the workstation runs software that controls the operation
of the entire simulation/emulation system. (FF 6.) We find that the cited
disclosure of Lin teaches a computer that utilizes software to communicate
with hardware coupled to an emulator. In summary, we find that Petersen’s
disclosure of a peripheral device attached to a computer that receives and
transmits data, in conjunction with Lin’s disclosure of a computer that
utilizes software to communicate with hardware coupled to an emulator,
teaches receiving and transmitting data between a computer peripheral
device, an electronic device, and an emulator utilizing software that runs on
a computer, as recited in independent claim 1. We are not persuaded by
Appellant’s argument that the Examiner fails to appreciate the significant
benefits of the claimed invention. (App. Br. 18-19; Reply Br. 8.) The
alleged significant benefits are set forth in Appellant’s Specification, and not
recited in the claims. Therefore, these arguments are not commensurate in
scope with the claim limitations.
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Additionally, as set forth above, we find that Petersen’s disclosure
teaches a peripheral device attached to a computer that receives and
transmits data. Further, Lin’s disclosure complements Petersen by teaching
a computer that utilizes software to communicate with hardware coupled to
an emulator. Thus, we find that Petersen and Lin disclose prior art elements
that perform their ordinary functions to predictably result in a method,
apparatus, and computer readable medium for receiving and transmitting
data between a computer peripheral device, an electronic device, and an
emulator utilizing software that runs on a computer. See KSR, U.S. at 418-
419. Thus, Appellant’s argument that the Examiner has not provided
sufficient rationale to warrant the proffered combination is unavailing. It
follows that Appellant has failed to show that the Examiner erred in
concluding the combination of Petersen and Lin renders independent claim 1
unpatentable.

Claims 10 and 11
Appellant argues that the combination of Petersen and Lin does not
teach receiving and transmitting data via multiple threads as understood by
an ordinarily skilled artisan. (App. Br. 20-21; Reply Br. 8-10.) We do not
agree. As discussed above, Petersen discloses that the network adapter is
responsible for receiving and transmitting data between a network and a host
system. (FF 2, 3.) In particular, Petersen discloses that the network adapter
utilizes a host interface logic, buffers, a threshold logic, a network interface
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logic, and a transceiver to receive and transmit data via various paths. (FF
3.) We find that Petersen’s disclosure teaches that the network adapter
receives and transmits data between a network and a computer via
independent concurrently running tasks. Further, we find that an ordinarily
skilled artisan would readily appreciate that a network adapter which
receives and transmits data between a network and computer via
independent concurrently running tasks amounts to receiving and
transmitting data via multiple threads. It follows that Appellant has not
shown that the Examiner erred in concluding that the combination of
Petersen and Lin renders dependent claims 10 and 11 unpatentable.

VII. CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in concluding that:
1. the combination of Petersen and Lin renders claims 1, 2, 4, 10
through 12, 14, 15, 17, 24, 25, and 27 unpatentable under 35 U.S.C.
§ 103(a).
2. the combination of Petersen, Lin, and Gagne renders claims 3,
5, 16, 18, 26, and 28 unpatentable under 35 U.S.C. § 103(a).
3. the combination of Petersen, Lin, and Watanabe renders claims
6, 21, and 31 unpatentable under 35 U.S.C. § 103(a).
4. the combination of Petersen, Lin, and Chu renders claims 7, 22,
and 32 unpatentable under 35 U.S.C. § 103(a).
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5. the combination of Petersen, Lin, and Nicol renders claims 8, 9,
13, 19, 20, 23, 29, 30, and 33 unpatentable under 35 U.S.C. § 103(a).

VIII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 33 as
being unpatentable under 35 U.S.C. § 103(a).
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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