Ex parte GETZLAFF et al.

Board of Patent Appeals and Interferences

Aug 31, 1998

08132410 (B.P.A.I. Aug. 31, 1998)

Application for patent filed October 6, 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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KLAUS J. GETZLAFF,
JOHANN HAJDU,
BRIGITTE ROETHE, and
UDO WILLE
__________
Appeal No. 96-0635
Application 08/132,4101
__________
ON BRIEF
__________
Before THOMAS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 9-18, which constitute
Appeal No. 96-0635
Application 08/132,410
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all the claims remaining in the application. An amendment
after final rejection was filed on March 20, 1995 and was
entered by the examiner.
The disclosed invention pertains to a computer system
for executing microinstructions. More particularly, first and
second buffers are provided for storing transient and
relatively permanent microinstructions respectively. The
invention is related to the manner in which erroneous
instructions in the buffers are detected and the manner in
which erroneous instructions are replaced.
Representative claim 9 is reproduced as follows:
9. A computer system for executing microinstructions,
said system comprising:
a processor;
a first buffer for storing a plurality of blocks of
transient microinstructions;
a second buffer for storing a plurality of blocks of
microinstructions which are loaded at power up and remain
loaded except if erroneously loaded;
means for directing said processor to execute
microinstructions in order and determining when a next
microinstruction to be executed is not stored in said first or
second buffers;
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Application 08/132,410
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means, coupled to the determining means, for loading
another block containing said next microinstruction into said
first buffer; and
means for detecting when a microinstruction to be
executed from either said first or second buffers is
erroneous, avoiding execution of said erroneous
microinstruction, activating the loading means to reload a
block containing a valid version of said erroneous
microinstruction into said first or second buffer,
respectively, and causing the directing means to direct said
processor to execute said valid version microinstruction.
The examiner cites the following references in the
answer:
Johnson et al. (Johnson) 4,422,144 Dec. 20, 1983
Day et al. (Day) 4,538,265 Aug. 27, 1985
Claims 9-18 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Day. Johnson is
not listed in the statement of the rejection in either the
final rejection or the answer. Johnson is referred to in the
response to arguments section of the answer wherein Johnson is
said to suggest a particular feature of the claimed invention.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
Appeal No. 96-0635
Application 08/132,410
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OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answers.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 9-18. Accordingly, we reverse.
We consider first the rejection of independent claim 9
as unpatentable over the teachings of Day. In the rejection,
the examiner basically asserts that Day performs the error
recovery routine as in the claimed invention except that Day
does not teach organizing the local data into transient and
permanent areas. The examiner states that configuring a
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Application 08/132,410
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memory in such a manner was well-known in the art, and the
examiner concludes that it would have been obvious to the
artisan to reconfigure the Day memory in the manner recited in
claim 9 [final rejection,
pages 3-4].
Appellants respond in the brief that the first and
second buffers as recited in claim 9 are not taught or
suggested by the system of Day as admitted by the examiner
[brief, pages 3-4]. The examiner responds to appellants’
argument by asserting that appellants have ignored the level
of skill in the art. The examiner also reiterated his
position that a bifurcated control store would have been
obvious to the artisan at the time the invention was made.
The examiner makes reference to Johnson here as evidence that
a bifurcated control store was known in the art [answer, pages
4-5]. Appellants note that Johnson was not applied in the
final rejection, and even if Johnson’s teachings were
considered, Johnson does not suggest reloading instructions
into the permanent part of the control store [reply brief].
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The examiner responds that Johnson would have suggested the
modification of Day to arrive at the subject matter of claim 9
[supplemental answer].
At the outset we note that Johnson is not listed in
the statement of the rejection but is merely cited in the
arguments section of the examiner’s answer. We have reminded
examiners
many times that a reference not positively included in a
statement of rejection is not considered as applied prior art.
Note In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407
n.3 (CCPA 1970). Thus, if the examiner is relying on Johnson
to establish the state of the art and/or the level of skill in
the art, then the examiner should have listed Johnson in the
statement of the rejection.
Although Johnson has not been properly cited as prior
art in this rejection, we note that it was cited to support
the examiner’s previous contention that bifurcated buffers
were well-known in this art. We also observe that appellants
have responded to the rejection as if Johnson had been
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Application 08/132,410
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properly applied [reply brief]. In the interest of
administrative efficiency, we shall comment on the merits of
this rejection.
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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
Appeal No. 96-0635
Application 08/132,410
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664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
The examiner has focused his attention on the function
performed by the claimed invention rather than on the specific
recitations of claim 9. Day simply confirms that the concept
of
replacing erroneous microinstructions with correct
instructions was practiced in this art. Claim 9, however,
requires more than this. As the examiner has admitted, Day
does not teach first and second buffers as claimed. The mere
addition to Day, however, of a bifurcated control store as
taught by Johnson does not teach the invention recited in
claim 9. Claim 9 recites that the transient instructions from
the first buffer and the “permanent” instructions of the
second buffer are reloaded into the same respective buffer
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when they are determined to be erroneous. Since one of the
buffers in Johnson is a read-only store, there is no provision
in Johnson for reloading the instructions designated as
permanent when an instruction is determined to be erroneous.
There is no suggestion from the collective teachings of Day
and Johnson that the instruction loading should be
accomplished in the manner recited in independent claim 9, and
the examiner has not provided a reasonable rationale to
suggest the obviousness of the invention of claim 9.
Therefore, we do not sustain the rejection of claim 9 whether
based on Day alone or on the combination of Day and Johnson.
Since claims 10-18 all depend from claim 9, we also do
not sustain the rejection of any of these claims. The
decision of the examiner rejecting claims 9-18 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
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Application 08/132,410
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JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Arthur J. Samodovitz
IBM Corporation
Intellectual Property Law Department
N50/040-4
Endicott, NY 13760