Ex Parte Irish et al

Board of Patent Appeals and Interferences

Aug 29, 2012

11468889 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/468,889 08/31/2006 John D. Irish ROC920060251US1 5683
7590 08/30/2012
IBM Corporation
Intellectual Property Law Dept. 917
3605 Hwy. 52 North
Rochester, MN 55901
EXAMINER
VIDWAN, JASJIT S
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
08/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOHN D. IRISH and CHAD B. MCBRIDE
________________

Appeal 2010-003865
Application 11/468,889
Technology Center 2100
________________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and
GLENN J. PERRY, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003865
Application 11/468,889

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STATEMENT OF THE CASE
Introduction
Appellants invokes our review1 under 35 U.S.C. § 134(a) from the
Examiner’s rejection2 of claims 1-7, 9-15, and 17-23. Claims 8, 16, and 24
were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellants’ invention provides a method of combining commands on
a computer bus to improve efficiency. Claim 1 is illustrative and is set forth
below with disputed limitations emphasized.
1. A method of combining commands prior to issuing a command
onto a bus, comprising:
receiving a first command associated with a first address;
storing the first command in a first command queue entry;
delaying the issue of the first command from the first command queue
entry onto the bus for a time period;
if a second command associated with a second address contiguous
with the first address is not received before the time period elapses, issuing
the first command from the first command queue entry onto the bus after the
time period elapses; and
if the second command associated with the second address contiguous
with the first address is received before the first command is issued from the
first command queue entry onto the bus, combining the first and second
commands into a combined command associated with the first address and
storing the combined command as a single entry in the first command queue
entry.

Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:

1 Notice of Appeal filed Appeal filed January 16, 2009.
2 Final Office Action mailed October 16, 2008.
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Application 11/468,889

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Narayanaswamy US 6,931,501 B1 Aug. 16 2005
Mandal US 2007/0079044 A1 Apr. 5, 2007

The Rejection
The Examiner rejected claims 1-7, 9-15, and 17-23 under 35 U.S.C.
103 (a) as being unpatentable over Mandal3 and Narayanaswamy. Ans. 2.

OBVIOUSNESS REJECTION
Appellants Contentions
Appellants contend that with respect to claims 1, 9, and 17; 1)
Narayanaswamy does not disclose storing a command as a single entry in
the first command queue entry;4 2) Narayanaswamy “teaches away” from
any combination with Mandal because it “creates” a combined command
rather than combining two commands;5 and 3) there is “no reason” to
combine the cited references.6 Each of these arguments is couched in terms
of the Examiner not meeting the initial burden of stating a prima facie case
of obviousness.

Issues
Has the Examiner erred by relying on the teachings of both Mandal
and Narayanaswamy?

3 Mandal, US 2007/0079044 A1, cited by the Examiner, claims priority to
Application Number 11/179,266 filed Jul. 11, 2005 which, according to the
Examiner (and not challenged by Appellants), discloses all the relied upon
teachings of the published application officially cited.
4 See Appeal Brief pages 12-13.
5 See Appeal Brief pages 14-15.
6 See Appeal Brief pages 15-17.
Appeal 2010-003865
Application 11/468,889

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Principles of Law
Our reviewing court has recently set forth the standard for
determining the sufficiency of an Examiner’s rejection in making a prima
facie case:

[T]he PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. §
132, in “notify[ing] the applicant… [by] stating the
reasons for [its] rejection, or objection or requirement,
together with such information and references as may be
useful in judging of the propriety of continuing the
prosecution of [the] application.” That section “is violated
when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the
grounds for rejection.”
In re Jung, 98 USPQ2d 1174, 1177 (Fed. Cir. 2011) (citations
omitted) (alterations in original).

Analysis
As a preliminary matter, we find that both of the references relate to
the same subject matter of the claims before us. According to Mandal’s
Abstract:
Multiple data transfer requests can be merged and
transmitted as a single packet on a packetized bus
such as a PCI Express (PCI-E) bus. In one
embodiment, requests are combined if they are
directed to contiguous address ranges in the same
target device. An opportunistic merging procedure
is advantageously used that merges a first request
with a later request if the first request and the later
request are mergeable and are received within a
holdoff period that is dynamically determined
based on a level of bus activity; otherwise,
requests can be transmitted without merging.

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Mandal teaches the core claim concept of combining commands (“requests”)
when they are directed to “contiguous address ranges.”
Narayanaswamy is directed to improving disk I/O by “combining
commands for data transfers between a drive and memory.” A “combined
command consolidates the identified like commands being associated with
contiguous files. . . . [T]he combined command is issued to the drive.” See
Narayanaswamy Abstract. The Examiner pointed to a particular memory,
namely “Driver Queue 126” shown in Figure 2 where merging of commands
takes place.
Both Mandal and Narayanaswamy are directed to combining
commands, albeit in slightly different contexts. In our view, there is ample
reason for one of ordinary skill in the claimed art to look to both Mandal and
Narayanaswamy. Furthermore, the Examiner’s rejection was sufficiently
clear and informative to meet the PTO’s procedural burden in making a
prima facie case based on the standards described in In re Jung.
Appellants argue that Narayanaswamy does not teach storing a
combined command in either a first command or second command entry.
We disagree.
The Examiner finds that Narayanaswamy teaches "[t]he read and
write commands are examined in the driver queue7 to identify like
commands associated with continuous files on the storage media, where the
identified commands are combined into one command which is issued to
the storage media."8 The combined command is stored in the driver queue
prior to issuing to the storage media. As explained in Narayanaswamy, while

7 Narayanaswamy Figure 2, element 126.
8 Examiner’s Answer column 2, lines 60-65.
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command CO is being processed by the drive, commands C1-Cn which are
in the driver queue are examined, combined and stored in the driver queue
before being issued by the CPU. Therefore, the commands are stored back
into the said driver queue after they are combined until all the commands
until Cn are examined and potentially combined.9
We construe “first command queue entry” to refer to a particular place
in line in a queue. The commands examined in the driver queue, some of
which are combined because they satisfy combining criteria are stored, at
least momentarily, and queued for being issued to the storage media. The
claim term “storing the first command in a first command queue entry”
encompasses what is taking place in Narayanaswamy.
Appellants contend that Narayanaswamy “teaches away” from
combination with Mandal because it creates a combined command rather
than combining two commands. Appellants draw a distinction between
“combining” and “creating.” See Br. 15. Appellants suggest that because
Narayanaswamy talks about “creating” a command rather than “combining”
commands, that this suggests that the created command would not be stored
in the claimed “first command queue entry.” Without getting too
metaphysical, we see little difference between the two. Appellants argue a
difference without a distinction.
The Examiner finds that Narayanaswamy teaches that the read/write
commands are examined in a “driver queue”10 to identify like commands
associated with continuous files on the storage media. Identified commands

9 Narayanaswamy column 4, lines 54-67.
10 Narayanswamy Figure 2, item 126.
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are “combined” into one command which is issued to the storage media.11
Therefore, the Examiner concludes, no new command is “created.”
Narayanaswamy teaches12 that while command CO is being processed by the
drive, commands C1-Cn. which are in the driver queue are examined,
combined and stored in the said driver queue before being issued by the
CPU. Ans. 3.
Narayanaswamy col. 2, lines 60-65 states:
The read and write commands are examined in the
driver queue to identify like commands associated
with contiguous files on the storage media, where
the identified commands are combined into one
command which is issued to the storage media.

From at least this passage and Fig. 2 (see item 126) the Examiner
finds, and we agree, that read/write commands are examined in a “driver
queue” to identify like commands associated with continuous files on the
storage media, where the identified commands are combined into one
command which is issued to the storage media.13 Appellants have not
provided any compelling reason why the Examiner erred in construing the
language of the reference as stated in the Answer.

CONCLUSION
For the above reasons, we are not persuaded of error by any of
Appellants arguments.

11 Narayanaswamy column 2, lines 60-65.
12 Narayanaswamy column 4, lines 54-67.
13 Narayanaswamy column 2, lines 60-65.
Appeal 2010-003865
Application 11/468,889

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ORDER
The Examiner’s decision rejecting claims 1-7, 9-15, and 17-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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