Ex Parte Nobakht et al

Board of Patent Appeals and Interferences

Feb 2, 2012

11100796 (B.P.A.I. Feb. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RAMIN NOBAKHT and DANIEL H. WELLS
____________
Appeal 2009-013831
Application 11/100,7961
Technology Center 2100
____________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on April 6, 2005. The real party in interest is The Boeing Co. App.
Br. 2.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 6-20. Claims 1-5 have been cancelled. App.
Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented an apparatus and method directed to a network
architecture with a plurality of processing nodes. Spec. ¶ [0002].
Illustrative Claim
6. A network architecture comprising:

an integer number (N) of processing elements forming a
ring architecture, each of said processing elements having at
least three network ports;

a first number of trellis connections, each coupling two
of said processing elements and each having a ring hop length
equal to the second largest divisor of N when N is an even
number, and equal to the second largest divisor of N, (N-l), or
(N+1) when N is a non-prime odd number, and equal to the
second largest divisor of (N-l) or (N+1) when N is a prime
number.

Prior Art Relied Upon
Hermann US 6,848,006 B1 Jan. 25, 2005

Applicants’ Admitted Prior Art—Spec. ¶ [0003] (“AAPA”).

2 All references to the Appeal Brief are to the Supplemental Appeal Brief
filed on November 19, 2008, which replaced the Appeal Brief filed on
October 13, 2008.
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Rejection on Appeal
Claims 6-20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hermann and AAPA. Ans. 3-32.
Appellants’ Contentions
Appellants contend that Hermann’s disclosure of connecting all nodes
via mesh connections does not teach or suggest a network having the
specific arrangement of trellis connection with the claimed ring hop lengths,
as required by independent claim 6. Appellants also argue that the Examiner
fails to establish a prima facie obviousness rejection against any of the
claims because the Examiner cannot rely on a generic version of Hermann,
namely figure 2, to show that it teaches or suggests the narrower claimed
features, namely the claimed arrangement of trellis connection with the
corresponding ring hop lengths. App. Br. 12-13; Reply Br. 2-3.
Further, since AAPA discloses that a fully connected mesh topology
is impractical and requires an undesirably large amount of power, Appellants
allege that AAPA teaches away from the claimed invention. App. Br. 13-14.
Additionally, Appellants contend that the Examiner fails to provide a
sufficient rationale to combine Hermann and AAPA. App. Br. 14-15.
Examiner’s Findings and Conclusions
The Examiner finds that Hermann’s figure 2, which is further
highlighted by the reference figures, teaches or suggests a network having
the specific arrangement of trellis connection with the claimed ring hop
lengths, as required by independent claim 6. The Examiner finds that since
independent claim 6 uses the open-ended transitional term “comprising,” it
is irrelevant that Hermann also teaches or suggests additional trellis
connections. Ans. 32-34.
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Further, the Examiner finds that since AAPA discloses both the
advantages and disadvantages provided by a mesh distributed topology,
AAPA does not explicitly discourage an ordinarily skilled artisan from
following the path set forth in Hermann. Therefore, the Examiner finds that
AAPA does not teach away from the claimed invention. Ans. 36.
Additionally, the Examiner finds that there is a sufficient rationale for
combining Hermann and AAPA. Ans. 6.

II. ISSUE
Did the Examiner err in concluding that the combination of Hermann
and AAPA renders independent claim 6 unpatentable? In particular, the
issue turns on whether:
(a) the proffered combination teaches or suggests “a first number
of trellis connections, each coupling two of said processing elements and
each having a ring hop length equal to the second largest divisor of N when
N is an even number, and equal to the second largest divisor of N, (N-l), or
(N+1) when N is a non-prime odd number, and equal to the second largest
divisor of (N-l) or (N+1) when N is a prime number,” as recited in
independent claim 6;
(b) AAPA teaches away from the claimed invention; and
(c) the Examiner provides a sufficient rationale to combine
Hermann and AAPA.

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III. FINDINGS OF FACT (“FF”)
Hermann
FF 1. Hermann discloses a ring-meshed network that connects each
node to every other node by a ring or a mesh connection. For example,
Hermann’s figure 2 illustrates that each node has three mesh connections
and two ring connections to the adjacent East and West nodes. Col. 4, l. 67-
col. 5, l. 4; figure 2.
AAPA
FF 2. AAPA discloses that “[t]he prior art is replete with network
architectures for the interconnection of a plurality of computers, processors,
or other computing devices.” ¶ [0003].

IV. ANALYSIS
Claim 6
We do not find error in the Examiner’s obviousness rejection of
independent claim 6. In particular, independent claim 6 recites, inter alia, “a
first number of trellis connections, each coupling two of said processing
elements and each having a ring hop length equal to the second largest
divisor of N when N is an even number, and equal to the second largest
divisor of N, (N-l), or (N+1) when N is a non-prime odd number, and equal
to the second largest divisor of (N-l) or (N+1) when N is a prime number.”
At the outset, we note that since independent claim 6 recites multiple
arrangements of trellis connections that are mutually exclusive (i.e., “N is an
even number,” “N is a non-prime odd number,” or “N is a prime number”),
the combination of Hermann and AAPA need only teach or suggest one of
these arrangements in order to meet the disputed claim limitation.
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Moreover, since independent claim 6 only requires “a first number of trellis
connections” and not all the trellis connections, the combination of Hermann
and AAPA need only teach or suggest at least two trellis connections that
have the requisite ring hop lengths in order to meet the disputed claim
limitation. With this claim construction in mind, we turn to the merits of the
Examiner’s obviousness determination.
We find that an ordinarily skilled artisan would have understood that
Hermann’s disclosure of ring-mesh network consisting of six nodes,
whereby each node has three mesh connections (FF 1), teaches or suggests a
network architecture that necessarily encompasses three trellis connection
arrangements with a ring hop length equal to three. Further, we find that
AAPA’s disclosure of computers, processors, or other computer devices (FF
2) amounts to the claimed “processing elements.” In summary, we find that
an ordinarily skilled artisan would have readily appreciated replacing the
nodes in Hermann’s ring-mesh network (FF 1) with AAPA’s computers,
processors, or other computing devices (FF 2), thereby creating a network
architecture that includes three trellis connections that couple two processing
elements and has a ring hop length equal to three. Thus, we find that the
combination of Hermann and AAPA teaches or suggests the disputed claim
limitation.
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Teaching Away
We are not persuaded by Appellants’ argument that AAPA teaches
away from the claimed invention. App. Br. 13-14. “What the prior art
teaches and whether it teaches toward or away from the claimed invention
… is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers
Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, a
reference that “teaches away” does not per se preclude a prima facie case of
obviousness, but rather the “teaching away” of the reference is a factor to be
considered in determining non-obviousness. See id.
Appellants’ reference to AAPA’s disclosure that a fully connected
mesh distributed topology is impractical and requires an undesirably large
amount of power (see App. Br. 13-14) would not necessarily discourage an
ordinarily skill artisan from following the path set forth in Hermann. Rather,
as identified by the Examiner (see Ans. 36), AAPA’s cited disclosure
identifies that using a mesh distributed topology, or in this case using
Hermann’s ring-mesh network (FF 1), has both its advantages and
disadvantages. Moreover, we note that the Examiner only relies upon
AAPA’s computers, processors, or other computing devices (FF 2) to teach
or suggest the claimed “processing elements.” See supra. Consequently,
Appellants’ argument that AAPA teaches away from the claimed invention
has no bearing on whether AAPA’s computers, processors, or other
computing devices are capable of being arranged in Hermann’s ring-mesh
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network. Further, Appellants have not pointed to an explicit disclosure
within AAPA that acts to “criticize, discredit, or otherwise discourage”
arranging processing elements, such as computers, processors, or other
computing devices, in a ring architecture, as claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Therefore, we are not convinced that that
AAPA teaches away from the claimed invention.
Rationale to Combine
We are not persuaded by Appellants’ argument that there is
insufficient rationale to combine Hermann and AAPA. App. Br. 14-15. The
U.S. Supreme Court has held 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.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in a the fashion claimed
by the patent at issue.

Id. at 418. Additionally, the Court instructs that:
“[[r]]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”… however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
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Upon reviewing the record before us, we find that the Examiner’s
suggestion to modify Hermann in order to achieve the claimed invention
suffices as an articulated reason with some rational underpinning to establish
a prima facie case of obviousness. See Ans. 6. That is, we find that an
ordinarily skilled artisan at the time of the claimed invention would have
combined Hermann’s disclosure of ring-mesh network consisting of six
nodes, whereby each node has three mesh connections (FF 1), with AAPA’s
disclosure of computers, processors, or other computing devices. FF 2. This
combination of familiar elements according to known methods would
predictably result in “creating a computer processing network for passing of
information between the processing elements.” Ans. 6.
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. See KSR, 550 U.S. at 418-19. So long as the Examiner
provides an articulated reasoning with some kind of a rational underpinning
to substantiate the obviousness rejection, such a conclusion is proper. See
id. at 418. In this case, the Examiner provided more than just a mere
conclusory statement. The Examiner states that it would have been obvious
to an ordinarily skilled artisan at the time of the claimed invention “to use
the computer, processor, or computing devices taught by AAPA as the nodes
in the network architecture taught by Hermann, with the given network
connections, to achieve the predictable result of creating a computer
processing network for the passing of information between processing
elements.” Ans. 6. In our view, such a statement suffices as an articulated
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reason with some rational underpinning to support the proffered
combination. It follows that the Examiner has not erred in concluding that
the combination of Hermann and AAPA renders independent claim 6
unpatentable.
Claims 7-15 and 17-20
Appellants do not provide separate and distinct arguments for
patentability with respect to independent claim 13, and dependent claims 7-
12, 14, 15, and 17-20. See App. Br. 9-21; Reply Br. 2-3. Therefore, we
select independent claim 6 as representative of these aforementioned claims.
See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, the Examiner has not erred
in rejecting independent claim 13, and dependent claims 7-12, 14, 15, and
17-20, for the same reasons set forth in our discussion of independent claim
6.
Claim 16
We find untimely Appellants’ argument that Hermann does not teach
or suggest a method of partitioning a network architecture having an integer
number of processing elements, as required by independent claim 16. Reply
Br. 3. 3 We note that Appellants raised this argument for the first time in the
Reply Brief. We further note that this argument is not raised in response to
any new issues the Examiner may have raised in the Answer, or to address
changes or developments in the law that may have occurred after the Appeal
Brief was filed. Appellants’ attempt to introduce such a belated argument in
the Reply Brief is improper.

3 “[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.” See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative).
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V. CONCLUSION OF LAW
The Examiner has not erred in rejecting claims 6-20 as being
unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 6-20.
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

ELD