Ex parte BEALKOWSKI

Board of Patent Appeals and Interferences

Jun 29, 1998

08203729 (B.P.A.I. Jun. 29, 1998)

Application for patent filed February 28, 1989. According to1
appellant, this application is a continuation of 07/705,277, filed October 30,
1990 (Paper No. 7, filed February 28, 1994). Appellant should note the
correct filing date of 07/705,277 of May 24, 1991 and file an appropriate
amendment to correct this error before issuance of patent.
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD BEALKOWSKI
__________
Appeal No. 95-3517
Application 08/203,7291
__________
ON BRIEF
__________
Before MARTIN, BARRETT and FLEMING, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 6 and 8 through 20. Claim 7 pending in the
Appeal No. 95-3517
Application 08/203,729
We note that on the first page of the final rejection, the Examiner2
states that claims 1 through 20 have been rejected. However, on pages 2
through 5 of the final action, claim 7 has not been included in any of the
rejections.
2
application has not been rejected. 2
The invention is directed to a method and apparatus for
extending a personal computer system's addressable physical
memory space in a manner transparent to users of the address
space.
The independent claim 1 is reproduced as follows:
An apparatus for extending the address range of system RAM
beyond the range of physical RAM, comprising:
a central processor, physical RAM having a fixed
address range, and a bus for coupling the central
processor to the physical RAM;
secondary storage coupled to the bus;
address decoder means for determining whether a
read/write request for RAM is beyond the fixed
address range of the physical RAM; and
a secondary storage controller circuit, coupled to
the bus, comprising:
a secondary storage manager to read/write
emulated RAM on the secondary storage; and
control means to determine the location of
emulated RAM on the secondary storage and
control reading and writing of emulated RAM
by the secondary storage manager;
whereby RAM storage addresses beyond the
fixed address range of physical RAM addresses
Appeal No. 95-3517
Application 08/203,729
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can be used by the processor, thereby
extending the address range of the physical
RAM.
The Examiner relies on the following references:
Christian et al. 4,403,288 Sep. 06, 1983
V. Carl Hamacher, "Computer Organization", second edition
published by McGraw-Hill Company, 1984, pp. 214-216 & 313-317.
Claims 1, 5, 9, 13 and 17 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Hamacher, sections 8.7 and 8.8.
Claims 3, 11, 15 and 19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hamacher, sections 8.7 and 8.8, in view
of Christian. Claims 2, 4, 6, 8, 10, 12, 14, 16, 18 and 20 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Hamacher, sections 8.7 and 8.8, in view of Christian and further
in view of Hamacher, section 6.6.2.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 1, 5, 9, 13 and
Appeal No. 95-3517
Application 08/203,729
4
17 under 35 U.S.C. § 102 or the rejection of claims 2 through 4,
6, 8, 10 through 12, 14 through 16, 18 through 20 under 35 U.S.C.
§ 103.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984). "Anticipation is established only when a
single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention." RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed,
468 U.S. 1228 (1984), citing Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772 218 USPQ 781, 789 (Fed. Cir. 1983).
On page 2 of the answer, the Examiner refers back to the
final action for the grounds of the rejection. On page 2 of the
final action, the Examiner relies on one sentence found on pages
313-314 of Hamacher that states:
Appeal No. 95-3517
Application 08/203,729
5
The mechanism that operates on these virtual addresses
and translates them into actual locations in the
physical hierarchy is usually implemented by a
combination of hardware and software components.
The Examiners argues that the "combination of hardware and
software" constitutes the secondary storage controller as
claimed.
On pages 3-6 of the brief, Appellant argues that Hamacher
fails to disclose a secondary memory controller to extend the
effective memory space of system RAM as recited in Appellant's
claims and thereby does not anticipate Appellant's claims 1, 5,
9, 13 and 17. In particular, Appellant points out that the cited
sections of Hamacher are completely devoid of any teaching of an
adaptor or controller as recited in Appellant's claims.
We note that Appellant's claims each recite the claim
limitation directed to a secondary memory controller to extend
the effective memory space of RAM. The Examiner is requesting us
to speculate that Hamacher's statement referring to a mechanism
that operates to translate virtual addresses by a combination of
hardware and software components teaches a mechanism that would
require the apparatus as claimed by Appellant. We do not wish to
Appeal No. 95-3517
Application 08/203,729
6
do so. We note that such a combination of hardware and software
does not necessarily require the apparatus as recited in
Appellant's claims. In fact, we note that the translation is
normally done by only the central processor and not by providing
the additional hardware for such functions.
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 unques-
tionable demonstration. Our reviewing court requires this
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 will not sustain the Examiner's rejection under 35
U.S.C. § 102.
In regard to the 35 U.S.C. § 103 rejection, 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
Appeal No. 95-3517
Application 08/203,729
7
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).
The Examiner relies on Hamacher for a teaching of a
secondary memory controller to extend the effective memory space
of RAM. As we have found above, we fail to find that Hamacher
teaches the structure as recited in Appellant's claims.
Furthermore, we fail to find any suggestion in Hamacher or
Christian to provide such structure. Therefore, we will not
sustain the Examiner's rejection under 35 U.S.C. § 103.
We have not sustained the rejection of claims 1, 5, 9, 13
and 17 under 35 U.S.C. § 102 or the rejection of claims 2 through
4, 6, 8, 10 through 12, 14 through 16, 18 through 207 under 35
U.S.C. § 103. Accordingly, the Examiner's decision is reversed.
Appeal No. 95-3517
Application 08/203,729
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REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3517
Application 08/203,729
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