Ex parte ALPERT et al.

Board of Patent Appeals and Interferences

Aug 17, 1998

08082338 (B.P.A.I. Aug. 17, 1998)

Application for patent filed June 24, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALAN I. ALPERT
and
MICHAEL G. MALL
_____________
Appeal No. 95-4010
Application 08/082,3381
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
Appeal No. 95-4010
Application 08/082,338
2
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 2 through 18. Claim 1 has been canceled.
The invention relates to processing of instructions
by a central processor within the computing system.
Independent claim 10 is reproduced as follows:
10. A method for pre-verifying an instruction
operation code in a computer comprising a main storage and a
central processing unit, said method comprising the steps of:
a. storing a test operation instruction,
said test operation instruction desig-
nating, by an operand, a corresponding
target instruction having an operation
code;
b. said central processing unit executing
said test operation instruction to test
for operational presence within said
central processing unit of a target
instruction logic means capable of
executing said target instruction;
c. said central processing unit setting
an exception indicator in a return
value field in response to said
testing; and
Appeal No. 95-4010
Application 08/082,338
3
d. preventing initiation of the execution
of said target instruction in response
to said setting an exception indicator
that is indicative of the absence of a
target instruction logic means capable
of executing said target instruction.
The Examiner relies on the following references:
Zolnowsky et al. (Zolnowsky) 4,710,866 Dec. 1, 1987
Tanagawa et al. (Tanagawa) 4,875,156 Oct. 17, 1989
Claims 2 through 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Zolnowsky and Tanagawa.
Appeal No. 95-4010
Application 08/082,338
Appellants filed an appeal brief on November 10, 1994. 2
We will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on March 20, 1995. We
will refer to this reply appeal brief as the reply brief. The
Examiner responded to the reply brief with an Examiner's
answer mailed April 21, 1995, and thereby entered and consid-
ered the reply brief. Appellants filed a second reply appeal
brief on May 12, 1995. We will refer to this reply appeal
brief as the second reply brief. The Examiner stated in the
Examiner’s letter, mailed May 26, 1995, that the second reply
brief has been entered and considered but no further response
by the Examiner is deemed necessary.
The Examiner responded to the brief with an Examiner's3
answer, mailed February 27, 1995. We will refer to the Exam-
iner's answer as simply the answer. The Examiner responded to
the reply brief with a supplemental Examiner's answer, mailed
April 21, 1995. We will refer to the supplemental Examiner's
answer as simply the supplemental answer. The Examiner re-
sponded to the second reply brief with a letter, mailed May
26, 1995, so noting that the supplemental reply brief has been
entered and considered. The Examiner offered no other re-
sponse.
4
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the briefs and answers2 3
for the respective details thereof.
OPINION
We will not sustain the rejection of claims 2
through 18 under 35 U.S.C. § 103.
Appeal No. 95-4010
Application 08/082,338
5
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
'heart' of the invention." Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Appellants argue on pages 6 through 29 of the brief
that neither Zolnowsky nor Tanagawa teaches the claimed means
or steps that correspond to the structure or steps as
disclosed in Appellants' specification. For example,
Appellants state on page 10 of the brief that claim 14 recites
Appeal No. 95-4010
Application 08/082,338
6
a "test operation instruction means" which corresponds to the
Appellants' TSTOP
instruction 108 disclosed in Appellants' specification and an
"instruction execute means" which corresponds to the
Appellants'
instruction execution unit 110 disclosed in Appellants'
specification. Appellants further state that claim 14 recites
a "corresponding potentially undefined target instruction"
which corresponds to instruction INST3 disclosed in
Appellants' specification. Appellants' argue that these
limitations are not taught by any combination of the applied
references. In the reply brief and the second reply brief,
Appellants emphasized that the Examiner fails to identify
where in the prior art these limitations are taught.
The Examiner argues in the answer that Zolnowsky
teaches the disclosed invention as substantially claimed. The
Examiner takes claim 14 as an exemplary claim and argues that
Zolnowsky teaches an instruction testing means in Figures 1-4;
column 2, lines 54-64; column 3, lines 50-63; and columns 5, 6
Appeal No. 95-4010
Application 08/082,338
7
and 8, and the response means in columns 6 and 8. The
Examiner then states that Zolnowsky does not teach a means for
preventing initiation of the execution of the undefined target
instruction as claimed but argues it would have been obvious
to one of ordinary skill in the art to adapt such a means into
the Zolnowsky system in view of Tanagawa.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Furthermore,
rejecting patents solely by finding prior art corollaries for
the claimed elements would permit an examiner to use the
claimed invention itself as a blueprint for piecing together
elements in the prior art to defeat the patentability of the
claimed invention. Such an approach would be an illogical
Appeal No. 95-4010
Application 08/082,338
8
and inappropriate process by which to determine patentability.
In re Denis Rouffet, 1998 U.S. App. LEXIS 16414 (Fed. Cir.
July 15, 1998).
In our careful review of Zolnowsky and Tanagawa, we
find that both Zolnowsky and Tanagawa fail to teach the means
or step of testing the operational validity of the target
instruction and, if inoperable, prevent its execution.
Zolnowsky does not teach a testing of the operational validity
of the instruction before execution, but instead teaches that
the instruction is to be executed first and appropriate steps
taken if the instruction is not operable. We agree that
Tanagawa teaches a protection circuit for preventing execution
of a first type of instruction when the address code output
from the program counter
does not designate any memory location in the first area for
storing the first type of instruction. However, Tanagawa does
not teach a testing of the operational validity of the
instruction, but in fact teaches that the instruction is
operable.
Appeal No. 95-4010
Application 08/082,338
9
The Examiner has failed to show that the prior art
suggested the desirability of the Examiner's proposed
modification. Tanagawa teaches that the need of the
prevention circuit is not because of a presence of an
inoperable instruction. Instead, Tanagawa teaches that the
prevention circuit provides a measure for prevention of an
erroneous operation of the computer when an instruction may be
converted to another operable instruction due to undesirable
environments. Tanagawa does not suggest to those skilled in
the art to test the operational validity of the instruction
before it is executed. We cannot find that Appellants'
invention is obvious just because the Examiner puts together
the Appellants' invention using the Appellants' application as
a road map. This hindsight view is not evidence that those
skilled in the art would have reason to make the modification.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this
Appeal No. 95-4010
Application 08/082,338
10
evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). Therefore, we find that the Examiner has failed
to establish why one having ordinary skill in the art would
have been led to the claimed invention by teachings or
suggestions found in the prior art.
We have not sustained the rejection of claims 2
through 18 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
Appeal No. 95-4010
Application 08/082,338
11
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4010
Application 08/082,338
12
JoAnn Kealy Crockatt
IBM Corporation
Intellectual Property Law Department
522 South Road - MS P903
Poughkeepsie, NY 12601-5400