Ex parte Feeney et al.

Board of Patent Appeals and Interferences

Mar 25, 1998

08017088 (B.P.A.I. Mar. 25, 1998)

Application for patent filed February 12, 19931
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law journal and (2) is not binding precedent of the Board.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 JAMES W. FEENEY,
JOHN D. JABUSCH,
ROBERT F. LUSCH
and HOWARD T. OLNOWICH
_____________
Appeal No. 95-4937
Application 08/017,0881
______________
ON BRIEF
_______________
Before THOMAS, KRASS and FLEMING, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 through 7. Claims
8 and 15, although finally rejected, have now been indicated by the examiner in the answer
as being allowable. Thus, claims 1 through 7 are the only claims before us.
Appeal No. 95-4937
Application 08/017,088
2
The invention is directed to a method for communicating a message over a multi-
stage network. The method is best illustrated by reference to independent claim 1,
reproduced as follows:
1. A method for communicating a message over a multi-stage network coupled to
at least two nodes, the method comprising the steps of:
a first node placing an indicator in the message for selecting at least one receiving
node and an indicator for selecting destination checking;
the first node sending the message over the multi-stage network to said at least one
receiving node;
the multi-stage network routing the message directly and only to said at least one
receiving node based upon the indicator for selecting at least one receiving node;
said at least one receiving node receiving the message;
said at least one receiving node determining whether to perform destination
checking based upon the indicator for selecting destination checking;
said at least one receiving node performing destination checking if it has
determined to do so;
said at least one receiving node accepting the message if either destination
checking was performed and said at least one receiving node is a destination of the
message, or destination checking was determined not to be performed; and
said at least one receiving node not accepting the message if destination checking
was performed and said at least one receiving node is not a destination of the message.
Appeal No. 95-4937
Application 08/017,088
Apparently, there is an alternative rejection of claims 4 and 5 under 35 U.S.C. § 103 over2
either Sindhu and APA or under Sindhu and APA with Lee.
3
The examiner relies on the following references:
Lee 5,235,594 Aug. 10, 1993
Sindhu et al. (Sindhu) 5,195,089 Mar. 16, 1993
Additionally, the examiner relies on admitted prior art [APA] from page 1 of the
instant specification. More specifically, the examiner cites the statement that “Multi-stage
switching networks are gaining acceptance as a means for interconnecting multiple nodes
within modern digital computing systems.”
Claims 1 through 7 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner cites Sindhu in view of APA with regard to claims 1 through 5,
adding Lee to this combination with regard to claims 4 through 7.2
Reference is made to the brief and answer for the respective positions of
appellants and the examiner.
OPINION
At the outset, we note that this application was remanded to the examiner by a
Board administrator for compliance with MPEP 1206(9) regarding a separate appendix to
the brief containing a copy of the appealed claims. The primary examiner waived this
requirement, as evidenced by his signature on page 2 of the remand and so the brief [Paper
No. 10], as filed, is properly before us.
Appeal No. 95-4937
Application 08/017,088
4
After careful consideration of the claimed subject matter and the evidence of
obviousness, along with the arguments of both appellants and the examiner, we conclude
that the examiner has failed to establish a prima facie case of obviousness and we will not
sustain the rejection of claims 1 through 7 under 35 U.S.C. § 103 based on the evidence
provided by the applied references.
Independent claim 1 is very specific in claiming the communication of a message
over a “multi-stage network” with the network “routing the message directly and only to
said at least one receiving node based upon the indicator for selecting at least one
receiving node.” The claim also calls for the receiving node to determine whether to
perform a “destination checking” based on the indicator for selecting destination checking.
Independent claim 7 is even more specific in reciting the actual bits included in the
indicator.
The examiner applies Sindhu as showing “all the claimed method of operating a
communication network to improve the networks [sic, network’s] throughput” [answer-
page 3], citing column 18, lines 37-50 of Sindhu. Recognizing that Sindhu does not
disclose the disclosed system as being applicable to a “multi stage routing network”
[answer-page 4], the examiner cites APA and concludes that it would have been obvious
“to have utilized the packet communication technique taught by Sindhu in a multi-stage
network to provide a network with greatly improved throughput” [answer-page 4].
While we may not go so far as appellants in labeling Sindhu “nonanalogous art,”
Appeal No. 95-4937
Application 08/017,088
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since it is in the ambit of communication systems, we agree with the gist of appellants’
argument in that Sindhu is unconcerned with “multi-stage networks” and we find no
reason that the skilled artisan would have been led to employ any of Sindhu’s teachings
relative to transferring data between multiple system buses and a cache controller to a
multi-stage switching network, as claimed.
Even assuming, arguendo, that the artisan would have found Sindhu applicable to
the multi-stage network environment of the instant claimed invention, the examiner has
never come to grips with the “destination checking” limitations of the instant claims. The
claims are directed to very specific interactions between the indicator and the receiving
node as to whether the receiving node should perform destination checking and the
consequences of such checking, relative to accepting or rejecting the message, if
destination checking is so indicated. We find no suggestion of this whatsoever in the
applied references.
Further, even if Sindhu could somehow be combined with the multi-stage network
indicated in APA, there is absolutely no cogent rationale by the examiner why such a
combination would have been made and/or how, exactly, the multi-stage network teaching
of APA is to be incorporated into Sindhu’s system.
Appeal No. 95-4937
Application 08/017,088
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Because the examiner has not established a prima facie case of obviousness, the
examiner’s decision rejecting claims 1 through 7 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4937
Application 08/017,088
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EUGENE I. SHKURKO
IBM CORPORATION
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