Ex Parte Doyle et al

Board of Patent Appeals and Interferences

Jun 8, 2009

09752369 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK DOYLE and NELSON GE
____________

Appeal 2008-002943
Application 09/752,369
Technology Center 2400
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Decided:1 June 8, 2009
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-002943
Application 09/752,369

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants invented a method for establishing an expanded
InfiniBand2 connectivity configuration by requesting a particular
configuration and, if a response to that request is affirmative, attempting to
establish the requested configuration.3 Claim 1 is illustrative:
l. A method comprising:

requesting an InfiniBand connectivity configuration;

receiving a response regarding whether the requested configuration
can be provided; and

attempting to establish the requested connectivity configuration if the
response to the request is affirmative.

The Examiner relies on the following as evidence of unpatentability:
Pickreign US 6,732,249 B1 May 4, 2004
(filed June 9, 2000)
Osten US 6,735,660 B1 May 11, 2004
(filed Dec. 21, 2000)

2 The InfiniBand architecture is based on switched serial links to device
groups and devices in which all devices are attached through a central,
unified fabric of InfiniBand switches and links and connections are defined
by “physical lanes.” See generally Spec. 2:9−4:16.

3 See generally Spec. 6-8.
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1. The Examiner rejected claims 1-6, 8-22, and 24-26 under 35
U.S.C. § 102(e) as anticipated by Osten (Ans. 4-10).
2. The Examiner rejected claims 7 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Osten and Pickreign (Ans. 10-11).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE ANTICIPATION REJECTION
Regarding representative claim 1,5 the Examiner finds that two
different embodiments of Osten fully meet (1) requesting an InfiniBand
connectivity configuration, and (2) receiving a response regarding whether
the requested configuration can be provided.

4 Throughout this opinion, we refer to (1) the latest Appeal Brief filed June
11, 2007; (2) the Examiner’s Answer mailed August 13, 2007; and (3) the
Reply Brief filed August 11, 2006.

5 Appellants argue independent claims 1, 8, and 24 together and do not
separately argue dependent claims 2-6, 9-11, 25, and 26. See App. Br. 9-16.
Appellants, however, separately argue independent claims 12 and 16 and
dependent claims 5 and 9. (App. Br. 12; Reply Br. 6-8.) Accordingly, we
group claims 1-6, 8-11, and 24-26 and select claim 1 as representative of that
group. We also group claims 5, 9, 12, and 16 (along with dependent claims
13-15 and 17-22 not separately argued) together as a second group and
select claim 5 as representative of that group. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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First, the Examiner relies on Osten’s ability to retrieve InfiniBand
configuration information from an Input/Output adapter (IOA). According
to the Examiner, Osten’s presence signal corresponds to the recited
“request,” and the subsequent retrieval of configuration information
corresponds to the recited “response.” (Ans. 12-13.)
Alternatively, the Examiner finds Osten’s database functionality
meets these limitations since the database provides configuration
information responsive to a make or model identifier that is provided to the
database. According to the Examiner, the recited “request” corresponds to
providing the make/model identifier to the database, and the database
“responds” to this “request” by submitting the requested configuration
information that the system uses to establish the associated configuration.
(Ans. 13-14.)
Appellants argue that Osten’s presence signal does not provide a
request or response regarding a configuration as the Examiner contends, but
rather is merely a signal to indicate that the IOA is in place (i.e., it notifies
the processor that the IOA has been inserted into a slot and is ready). (App.
Br. 9-10; Reply Br. 3-5.) According to Appellants, Osten merely examines
an IOA to determine its capabilities, but does not request a connectivity
configuration nor respond to that request. In short, Appellants contend,
there is no back-and-forth communication between the devices to reasonably
constitute the recited request and response. (App. Br. 10-11.)
Appellants further dispute the Examiner’s alternative interpretation
based on Osten’s database functionality. According to Appellants, Osten’s
system merely obtains product information that can be used to make
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capability determinations. But this functionality, Appellants contend, does
not disclose the recited request and response. (App. Br. 11-12; Reply Br.
5-6.)
Regarding representative claim 5, the Examiner contends that nothing
in the claim precludes Osten’s database to constitute an “InfiniBand chassis
management entity” (Ans. 15.) Appellants, however, argue that a database
is not a chassis management entity as the term is understood in the art.
(Reply Br. 7-8.)
The issues before us, then, are as follows:

ISSUES
(1) Under § 102, have Appellants shown that the Examiner erred in
rejecting representative claim 1 by finding that (1) Osten’s ability to retrieve
InfiniBand configuration information from an Input/Output adapter (IOA)
responsive to a presence signal, or, alternatively, (2) Osten’s database
functionality, reasonably constitutes requesting an InfiniBand connectivity
configuration and receiving a response regarding whether the requested
configuration can be provided?
(2) Under § 102, have Appellants shown that the Examiner erred in
rejecting representative claim 5 by finding that Osten’s database constitutes
an “InfiniBand chassis management entity”?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:

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Osten
1. Osten discloses a host 10 that interfaces with I/O subsystem 20 that
uses an InfiniBand6-compatible architecture. The I/O subsystem includes a
host channel adapter 22 and plural target channel adapters (TCAs) 26 that
correspond to IOAs. (Osten, col. 4, l. 35 − col. 5, l. 16; Fig. 1.)
2. Figure 2 shows an IOA 26 (i.e., a TCA) including (1) InfiniBand
link logic 50 that provides communications over an InfiniBand bus, and (2)
tri-state logic block 54 that selectively tri-states the sideband signals to and
from a high or low impedance state responsive to a presence signal. (Osten,
col. 7, ll. 9-11, 20-34; Fig. 2.)
3. An InfiniBand-compatible slot in a backplane or other chassis
interconnect may be dynamically configured for use with a sideband
communications-capable IOA using a process similar to IOA initialization
routine 70. Specifically, a System Enclosure Services (SES) processor 30
detects an asserted presence signal due to plugging in the IOA’s primary
connector into a mating slot in the backplane. (Osten, col. 7, ll. 58-62; col.
8, ll. 22-34; Figs. 2 and 3.)
4. Whenever a slot is empty or no IOA has been initialized in the slot,
the SES processor controls the tri-state logic to set all sideband signal pairs
to a high impedance state. When a sideband-compatible IOA is inserted in a
slot, a presence detect signal will immediately (1) tri-state the sideband

6 “The InfiniBand standard defines a high-speed serial, channel-based,
message-passing, scalable switched fabric that is likely to replace the PCI
standard in high performance applications. . . .With the InfiniBand standard,
all systems and devices . . . attach to the fabric through channel adapter
logic.” (Osten, col. 1, ll. 61-67.) See also generally Osten, col. 5, l.
66 − col. 6, l. 31 (describing the InfiniBand standard).
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signal paths on the IOA via tri-state logic block 54, and (2) notify the SES
processor that an IOA has been inserted in the slot as is ready to be
initialized. (Osten, col. 8, ll. 38-46.)
5. Upon detecting the assertion of a presence signal, the SES reads
the IOA’s vital product data (VPD) information to determine the IOA’s
capabilities (Steps 70 and 72). The SES processor then checks the relative
capabilities and compatibility between the IOA and host apparatus (Step 74)
and, if successful, sets up initial slot and IOA configurations to prepare for
sideband communications (Step 78). Following these steps, power is
ultimately applied to the IOA, and the IOA will initiate itself. (Osten, col. 8,
l. 47 − col. 9, l. 15; Fig. 3.)
6. VPD block 60 defines VPD information including sideband
configuration information that defines the sideband capabilities of the IOA
(e.g., width of the InfiniBand bus, assignment of sideband signals to
particular signal paths, etc.). (Osten, col. 7, ll. 43-48; Fig. 2.)
7. Alternatively, a make or model identifier for the IOA could be
provided as sideband configuration information so that a host system could
access a database to obtain relevant information for the particular type of
IOA. (Osten, col. 7, ll. 49-53.)

Appellants’ Disclosure
8. According to Appellant’s Specification, “an InfiniBand module is a
unit that, at a minimum, consists of an InfiniBand board, a carrier module,
and a protective cover.” (Spec. 7:20-21.)

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9. The Specification indicates that when an InfiniBand module
requests an expanded connectivity configuration, the request is made to an
InfiniBand chassis management entity (which is part of an InfiniBand
chassis) via an InfiniBand management link. (Spec. 8:2-15.)
10. “The invention is not limited to a physical InfiniBand
management link, but may also include communication using a virtual
InfiniBand management link or other connection.” (Spec. 8:15-17.)

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

ANALYSIS
Claims 1-6, 8-11, and 24-26
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1 which calls for, in pertinent
part, (1) requesting an InfiniBand connectivity configuration, and (2)
receiving a response regarding whether the requested configuration can be
provided.
First, we agree with the Examiner (Ans. 12-13) that nothing in the
claim precludes Osten’s presence signal as corresponding to the recited
“request,” and the subsequent retrieval of configuration information
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corresponds to the recited “response.” Osten’s presence signal is
communicated to the SES processor when an IOA is inserted into a slot (FF
3), and triggers a procedure that assesses the capabilities of the IOA and
establishes the requisite connectivity configuration responsive to this
assessment. (FF 4 and 5.) That is, but for a particular IOA’s presence
signal, the SES would not perform the assessment and resulting connectivity
configuration for that IOA. See id. Therefore, the presence signal, by its
very nature, effectively constitutes a “request” since it initiates the
subsequent configuration process that is tailored to the particular IOA
associated with the presence signal.
We also agree with the Examiner (Ans. 12-13) that nothing in the
claim precludes the received “response” as corresponding to the retrieval of
information associated with the IOA’s capabilities. See FF 5 and 6.
Because this information is retrieved responsive to detecting an IOA’s
presence signal (see id.), it fully meets a received “response.” Furthermore,
the very act of retrieving the IOA capability information in Osten would
involve querying the entity where the information is stored, and receiving a
response to that query. See id. This retrieval would therefore constitute a
“response” for this additional reason.
As such, we also find no error in the Examiner’s alternative
interpretation based on Osten’s database functionality as corresponding to
the recited request and response limitations. Notably, Osten indicates that
this database functionality which provides a make or model identifier for an
IOA is described as an alternative to the specific sideband configuration
information provided by the VPD block 60. See FF 6 and 7. That is,
because the identifiers themselves are not as specific as the sideband
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configuration information provided by the VPD block 60, the identifiers
merely provide a basis to look up additional information (e.g., sideband
configuration information) pertaining to that identifier. See id.
In that sense, we see no error in the Examiner’s position (Ans. 13-14)
that providing an identifier to a database effectively constitutes a “request”
for additional information from the database. And as the Examiner indicates
(Ans. 14), the database’s response to this “request” would fully meet the
recited “response” since the system would then use this retrieved
configuration information to establish the associated configuration. See FF 5
and 7.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2-6, 8-11, and
24-26 which fall with claim 1.

Claims 5, 9, and 12-22
We will also sustain the Examiner’s rejection of representative claim
5 which calls for the request to be made by an InfiniBand module to an
InfiniBand chassis management entity. Despite Appellants’ contentions to
the contrary (Reply Br. 7-8), we find nothing on the record before us that
precludes the Examiner’s interpreting “InfiniBand chassis management
entity” as corresponding to Osten’s database (Ans. 15) giving the term its
broadest reasonable interpretation.
According to the Specification, when an InfiniBand module requests
an expanded connectivity configuration, the request is made to an InfiniBand
chassis management entity via an InfiniBand management link. (FF 9.)
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Although the Specification indicates that InfiniBand chassis management
entity is part of an InfiniBand chassis (Id.), we see no reason why it cannot
constitute a database, at least in part, particularly since communication to
this chassis management entity need not be via a physical InfiniBand
management link, but can be via a virtual link. See FF 10.
To the extent that Appellants’ position is based on notion that the
InfiniBand Architecture Specification restricts interpreting the term “chassis
management entity” to a specific definition (see Reply Br. 7-8), Appellants
have provided no such definition before us, nor any other evidence
establishing a narrower construction of the term. Absent evidence to the
contrary, we find nothing on this record precluding the Examiner’s
construction of “chassis management entity.”
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 5. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 9 and 12-22 which
fall with claim 5.

THE OBVIOUSNESS REJECTION
Regarding representative claim 7, the Examiner further relies on
Pickreign for teaching writing connectivity configuration requests and
responses to registers in concluding that the claim would have been obvious.
(Ans. 10, 11, 15, 16.) Appellants argue that Pickreign does not cure the
previously-noted deficiencies of Osten. Appellants add that since Pickreign
pertains to requests for memory and associated responses, Pickreign does not
teach or suggest writing connectivity configuration requests and responses to
registers as claimed. (App. Br. 13; Reply Br. 9.)
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The issue before us, then, is as follows:

ISSUE
Have Appellants shown that the Examiner erred in finding that Osten
and Pickreign collectively teach or suggest a writing connectivity
configuration requests and responses to different registers in rejecting claim
7 under § 103?
The issue turns on whether the Examiner’s reason to combine the
teachings of these references is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.

FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence:
Pickreign
11. Pickreign discloses a system for mapping a host computer address
space into a network interface adapter (NIA) address space. (Pickreign,
Abstract; col. 2, ll. 12-35.)
12. The NIA 14 includes a PCI interface 40 that couples the network
interface processor 24 to a PCI bus 13 via multiple registers including PCI
configuration registers 36. (Pickreign, col. 2, ll. 36-48; Fig. 1.)

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13. The PCI configuration registers 36 comprise multiple registers for
passing (1) configuration requests from the NIA to the host computer 12; (2)
configuration responses from the host computer to the NIA; and (3)
configuration data between both the NIA and the host computer. (Pickreign,
col. 2, ll. 48-53; Fig. 1.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s
obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
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.

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 7 which calls for, in pertinent
part, writing connectivity configuration requests and responses to different
registers.
Notably, Pickreign teaches a system that utilizes multiple registers for
passing (1) configuration requests from the NIA to a host computer, and (2)
configuration responses from the host computer to the NIA. (FF 13;
emphasis added.) Although Pickreign may not pertain specifically to
InfiniBand technology, it does utilize these registers in connection with
exchanging PCI configuration information (FF 12-13) as the Examiner
indicates (Ans. 15-16).
As such, we see no reason why registers could not likewise be utilized
in connection with requests and responses for InfiniBand configurations as
the Examiner indicates. Such an enhancement, in our view, is tantamount to
the predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417; see also id.
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
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application is beyond his or her skill.”). We therefore find the Examiner’s
reason to combine the teachings of these references is supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 23 which falls with
claim 7.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-6, 8-22, and 24-26 under § 102. Nor have Appellants shown that the
Examiner erred in rejecting claims 7 and 23 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-26 is affirmed.
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

pgc

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