Ex Parte Brinkman et al

Patent Trial and Appeal Board

Jan 24, 2013

11469635 (P.T.A.B. Jan. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL G. BRINKMAN, TIMOTHY J. SCHLUDE, and
GREGORY D. SELLMAN
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Appeal 2010-0072751
Application 11/469,635
Technology Center 2100
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 1.)

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Application 11/469,635

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-14, 17, and 18. Claims 15 and 16 have been canceled.
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for allowing an
administrative agent, upon detecting a parity error that occurred during a
transaction on a PCI bus, to identify which agent on the bus the generated
the error. (Abstract.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method for detecting an agent generating a parity error on
a PCI-compatible bus, the method comprising:

detecting, by an administrative agent on the bus, a parity
error that occurred during a transaction on a PCI-compatible bus
that connects a plurality of agents for data communications;

retrieving, by the administrative agent, a value for a grant
signal associated with each agent on the bus for the transaction;

retrieving, by the administrative agent, values for an address
signal and a command signal for the transaction; and

identifying, by the administrative agent, the agent generating
the parity error in dependence upon the values for the grant signals,
the address signal, and the command signal.

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Prior Art Relied Upon
The Examiner relied upon the following prior art as evidence of
unpatentability:
Goodrum US 6,032,271 Feb. 29, 2000

Rejection on Appeal
The Examiner rejected claims 1-14, 17, and 18 under 35 U.S.C. §
102(b) as being anticipated by Goodrum.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 4-10, and the Reply Brief, pages 2-7.
Dispositive Issue : Have Appellants shown that the Examiner erred in
finding that Goodrum describes an administrative agent that, upon detecting
a parity bit error occurred during a transaction on a PCI bus, identifies an
agent that generated the error in dependence upon a plurality signal values,
as recited claim 1?
Appellants argue that Goodrum does not describe the disputed
limitations emphasized above. (App. Br. 6-9, Reply Br. 2-7.) In particular,
Appellants argue that even though Goodrum discloses using a parity bit as
part of history data captured on a PCI bus that the bus monitor reviewed in
identifying a hang condition, Goodrum’s disclosure, neither describes
identifying the agent that generated the error nor identifies a parity error.
(App. Br. 7-8). Further, Appellants argue that because the Examiner
erroneously finds that Goodrum’s identification of a hang condition
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Application 11/469,635

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describes the claimed parity error, Goodrum does not anticipate the cited
claim. (Reply Br. 5-6.)
In response, the Examiner finds that Goodrum’s disclosure of a PCI
bus watcher that, upon detecting a hang condition on the bus, reviews
captured history data to isolate the slot where the error originates describes
the disputed limitations, as claimed. (Ans. 10-11.)
On the record before us, we agree with the Examiner’s finding of
anticipation. Goodrum discloses a PCI bus watcher that reviews history data
captured for each transaction for which a hang condition was detected to
thereby isolate slots causing the hang condition. (Col. 86, ll. 56-64.) The
reviewed data include PCI address, PCI command signals, PCI master
number, and the address parity bit. (Col. 87, ll. 1-7.) We find that because
the disclosed bus watcher identifies slots that generated the hang condition,
Goodrum describes a bus agent that identifies which of the other agents on
the PCI bus caused an error. Further, while Appellants argued that the
disclosed hang condition does not describe the claimed parity error;
Appellants have not provided any evidence to substantiate such allegations.
Appellants’ arguments are not a substitute for evidence. We note,
nonetheless, that even if the disclosed hang condition did not describe the
parity error, Appellants cannot solely rely upon such distinction to
patentably distinguish the claimed invention over the prior art of record.
This is due to the fact that such argument is premised upon the type or nature
of the error, as opposed to its functionality. In other words, because the
claimed parity error serves no apparent function in the claim, we conclude
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that the parity error is directed to nonfunctional descriptive material. In a
precedential Opinion, an expanded Board panel held that nonfunctional
descriptive material (sequence data) did not distinguish the claimed
computer-based system from a prior art system that was the same except for
its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI
2008) (precedential).2 It follows that Appellants have not shown error in the
Examiner’s rejection of claim 1 as being anticipated by Goodrum.
Because Appellants did not argue 2-14, 17, and 18, those claims fall
together with claim 1 as set forth above. See 37 C.F.R. § 1.37(c)(1)(vii).

DECISION
We affirm the Examiner’s decision to reject claims 1-14, 17,
and 18 as being anticipated by Goodrum under 35 U.S.C. § 102(b).
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

2 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a claimed
phrase cannot alter how the process steps are to be performed to achieve the
utility of the invention or merely states an intended use or purpose for the
data, it is not entitled to patentable weight.)
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