Ex parte COK et al.

Board of Patent Appeals and Interferences

Apr 24, 1998

08310892 (B.P.A.I. Apr. 24, 1998)

Application for patent filed September 22, 1994. Ac-1
cording to appellants, the application is a continuation of
Application 07/866,723, filed April 10, 1992, abandoned.
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(2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONALD S. COK
and
HORIA NEAMTU
_____________
Appeal No. 96-2692
Application 08/310,8921
______________
ON BRIEF
_______________
Appeal No. 96-2692
Application 08/310,892
2
Before THOMAS, BARRETT and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1, 7 and 15, all of the claims pending in the
present application. Claims 2 through 6, 8 through 14, 16 and
17 have been canceled.
The invention is directed to a method for broadcast-
ing a data set distributed over various processors on a multi-
processor ring so that every processor will contain the com-
plete data set.
The independent claim 1 is reproduced as follows:
1. A method of redistributing a data set having
data subsets distributed in a ring of processors, the ring of
processors being interconnected with bi-directional links such
that each processor in the ring is connected for data trans-
mission to neighboring processors in both directions around
the ring, the bi-directional links having an interconnection
bandwidth, said method comprising the steps of:
Appeal No. 96-2692
Application 08/310,892
3
(a) transmitting local data subsets simultaneously
in both directions of the ring simultaneously from all proces-
sors in the ring; and
(b) transmitting foreign data subsets in a direction
of travel of the foreign data subsets around the ring until
all processors in the ring have received the data set, whereby
a redistribution of the distributed data subsets that satu-
rates the interconnection bandwidth, minimizes the number of
operations, passes data the minimum distance necessary, and
minimizes buffer memory requirements is achieved.
The Examiner relies on the following references:
Neches et al. (Neches) 4,412,285 Oct. 25,
1983
Allen et al. (Allen) 4,663,706 May 5,
1987
Childs et al. (Childs) 5,250,943 Oct. 5,
1993
Cok 5,432,909 July 11,
1995
Claims 1, 7 and 15 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter which the appellants
regard as their invention. Claims 1, 7 and 15 stand rejected
under
Appeal No. 96-2692
Application 08/310,892
Appellants filed an appeal brief on December 11, 1995. 2
We will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on April 29, 1996. We
will refer to this reply appeal brief as the reply brief. The
Examiner stated in the Examiner’s letter dated May 14, 1996
that the reply brief has been entered and considered but no
further response by the Examiner is deemed necessary.
4
35 U.S.C. § 103 as being unpatentable over Allen in view of
Childs and Neches. In the Examiner's answer, the Examiner set
forth a new ground of rejection in which claims 1, 7 and 15
stand rejected under the judicially created doctrine of
obviousness- type double patenting over claims 1 and 3 of Cok.
However, in a letter dated May 14, 1996, the Examiner with-
draws the double patenting rejection because of the Appel-
lants' filing of a terminal disclaimer.
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the briefs and answer2
for the respective details thereof.
OPINION
After careful consideration, we will sustain the
rejection of claims 1, 7 and 15 under 35 U.S.C. § 112. How-
Appeal No. 96-2692
Application 08/310,892
5
ever, we will not sustain the rejection of claims 1, 7 and 15
under
35 U.S.C. § 103.
Analysis of 35 U.S.C. § 112, second paragraph,
should begin with the determination of whether claims set out
and circumscribe the particular area with a reasonable degree
of precision and particularity; it is here where definiteness
of the language must be analyzed, not in a vacuum, but always
in light of teachings of the disclosure as it would be inter-
preted by one possessing ordinary skill in the art. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977),
citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). Furthermore, our reviewing court points out that
a claim which is of such breadth that it reads on subject
matter disclosed in the prior art is rejected under 35 U.S.C.
§ 102 rather than under 35 U.S.C. § 112, second paragraph.
See In re Hyatt, 708 F.2d 712, 715,
218 USPQ 195, 197 (Fed. Cir. 1983) and In re Borkowski, 422
F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970).
Appeal No. 96-2692
Application 08/310,892
6
Appellants' claims 1, 7 and 15 recite "whereby a
redistribution of the distributed data subsets that . . .
minimizes the number of operations, passes data the minimum
distance necessary, and minimizes buffer memory requirements
is achieved." On pages 8 and 9 of the answer, the Examiner
argues that Appellants’ claims are indefinite because they do
not previously set forth the operations, the minimum distance
and buffer memory requirements.
Appellants argue in the reply brief that since a
whereby clause is considered to be merely an embellishment on
the claim to aid understanding, the proper stance for the
Examiner to take is to give no patentable weight to statements
made in the whereby clause. Appellants argue that it is
improper to reject the claim because specific terms in the
whereby clause are not found in the body of the claim.
However, Appellants' argument does establish that
the claim language is indefinite. The proper determination
under
Appeal No. 96-2692
Application 08/310,892
7
35 U.S.C. § 112, second paragraph, is whether Appellants’
claims set out and circumscribe the particular area with a
reasonable degree of precision and particularity. We find
that Appellants’ claim language as recited in claims 1, 7 and
15 does not set out and circumscribe the particular area with
a reasonable degree of precision and particularity in that the
language sets forth "the
number of operations," "the minimum distance" and "buffer
memory requirements" without any antecedent basis in the
claims.
The Examiner also appears to argue that the whereby
clause is setting forth a function without the claim setting
forth sufficient structure to support the function. We remind
the Examiner that the claims before us are method claims and
not apparatus claims. Thus, in order to determine if the
claim is definite, we must determine if the method steps
recited in the claims can provide the functions recited in the
Appellants' whereby clause when viewed in light of Appellants'
Appeal No. 96-2692
Application 08/310,892
8
disclosure. After a careful review of Appellants' disclosure,
we find that the method steps as recited in Appellants' claims
1, 7 and 15 are sufficient to provide the functions as recited
in Appellants' claimed whereby clause.
In regard to the Examiner’s rejection of claims 1, 7
and 15 under 35 U.S.C. § 103, 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 con-
tained in such teachings or suggestions. In re Sernaker, 702
F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
Appellants argue in the brief and reply brief that
there would be no reason to combine the teaching of Allen, a
ring multiprocessor communication network with Childs, a
multi-stage broadcast network and Neches, a tree-connected
network. We agree. 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
Appeal No. 96-2692
Application 08/310,892
9
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). The Examiner has failed to show that the prior art
would have suggested to those skilled in the art any reason to
make the proposed modification to Allen. Therefore, we will
not sustain the Examiner's rejection of claims 1, 7 and 15
under 35 U.S.C. § 103.
In view of the above, we affirm the Examiner’s
decision that Appellants’ claims 1, 7 and 15 are properly
rejected under 35 U.S.C. § 112, second paragraph, but we
reverse the Examiner’s decision that Appellants’ claims 1, 7
and 15 are properly rejected under 35 U.S.C. § 103. There-
fore, the Examiner’s decision is affirmed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
Appeal No. 96-2692
Application 08/310,892
10
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-2692
Application 08/310,892
11
Thomas H. Close
Patent Legal Staff
Eastman Kodak Co.
343 State Street
Rochester, NY 14650-2201