Ex parte OLNOWICH et al.

Board of Patent Appeals and Interferences

Jul 20, 1998

07946509 (B.P.A.I. Jul. 20, 1998)

Application for patent filed September 17, 1992.1
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HOWARD T. OLNOWICH,
MICHAEL W. DOTSON, JAMES W. FEENEY,
ROBERT F. LUSCH
_____________
Appeal No. 96-3763
Application 07/946,5091
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and BARRETT, Administrative Patent
Judges.
Appeal No. 96-3763
Application 07/946,509
2
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 20 through 24, 27 through 31 and 34 through 36.
Pending claims 17 through 19, 25, 26, 32 and 33 are expressly
not appealed. Accordingly, claims 17 through 19, 25, 26, 32
and 33 are not before us and we make no representations as to
the propriety of any rejection applied against these claims.
We consider these claims merely for the limitations recited
therein which clearly form part of the dependent claims 20
through 24, 27 through 31 and 34 through 36 which are ap-
pealed.
The invention pertains to a hardware-implemented
message header generation apparatus. The header generator
automatically generates and prefixes a header to the data
message sent from a node to a switch apparatus. Among other
things, the header generator includes means for maintaining
selected header fields constant for each data message sent to
Appeal No. 96-3763
Application 07/946,509
3
the switch apparatus. This is done to reduce a software
overhead problem for message passing by providing special
hardware to assist the software in constructing the message to
be sent through the network. Every message is prefixed with a
message header describing the key control parameters of the
message. While, conventionally, it is the task of the soft-
ware to construct the
message header for every message individually and to transmit
the header first, prior to each message, the invention re-
lieves the software of this task by using special purpose
hardware to perform the job in less time and more efficiently
for certain types of messages. This special high speed mode
is called Hardware Built Message-Header (HBM) Mode and is used
to prefix all data it receives with a message header that uses
two fixed header words with all fields held constant except
for the destination field, the fixed portion of the header
being constructed by the hardware based on the contents of I/O
registers.
Appeal No. 96-3763
Application 07/946,509
4
Independent claim 17 and claim 20, which depends
therefrom, are reproduced as follows:
17. A switch network comprising:
a plurality of switch apparatuses cascaded into a
plurality of stages, said switch apparatuses each including a
plurality of switch inputs and a plurality of switch outputs,
of the switch outputs included on each of said switch appara-
tuses each coupled to a different one of the switch appara-
tuses via a switch input of said different one of the switch
apparatuses, switch outputs of last stage switch apparatuses
each comprising a network output port and switch inputs of
first stage switch apparatuses each comprising a network input
port; and
the network output ports each coupled to a network
input port through one of a plurality of nodes, each of said
nodes comprising means for receiving a data message from a
coupled network output port, and means for sending a data
message to a coupled network input port, said data message to
a coupled network input port including a path connection
request that identifies a destination network output port;
said switch apparatuses each further including:
connection means for establishing a point-to-point
communication path between any one of the network input ports
and any one of the network output ports in response to a
point-to-point connection request received at said any one of
the network input ports, said point-to-point communication
path for transmitting a data message received at said any one
of the network input ports to said any one of the network
output ports; and
Appeal No. 96-3763
Application 07/946,509
5
asynchronous connection means for establishing asyn-
chronously a plurality of concurrently active point-to-point
communication paths, in response to a plurality of point-to-
point path connection requests received at a plurality of the
network input ports, for transmitting concurrently a plurality
of data messages received at said plurality of the network
input ports to a plurality of the network output ports;
said nodes each further comprising:
message header generation means for automatically
generating and prefixing to a selected data message to a
coupled network input port a message header having a plurality
of data fields, said message header generation means imple-
mented in hardware and automatically generating the message
header in response to being selectively activated by said
means for sending a data message to a coupled network input
port.
20. The switch network according to claim 18,
wherein the message header generation means includes means for
maintaining selected ones of the plurality of data fields
constant for each said selected data message to a coupled
network input port.
The examiner relies on the following references:
Takada et al. (Takada) 5,220,562 June 15,
1993
Childs et al. (Childs) 5,250,943 Oct. 5,
1993
Filepp et al. (Filepp) 5,347,632 Sept. 13,
1994
Appeal No. 96-3763
Application 07/946,509
6
Claims 20 through 24, 27 through 31 and 34 through
36 stand rejected under 35 U.S.C. § 103 as unpatentable over
Childs, Filepp and Takada.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
We will not sustain the rejection of claims 20
through 24, 27 through 31 and 34 through 36 under 35 U.S.C. §
103 because, in our view, the examiner has failed to establish
a prima facie case of obviousness with regard to the claimed
subject matter.
While appellants concede that all the appealed
claims stand or fall together, there is a bit of awkwardness
in the instant situation since the appealed claims are all
dependent claims some of which depend from different independ-
ent claims. However, since claims 20, 27 and 31 are the
broadest claims of the appealed group and they are identical
Appeal No. 96-3763
Application 07/946,509
7
except for the various differences brought about by their
independent claims, we will consider dependent claim 20.
In addition to the limitations of independent claim
17 and dependent claim 18, from which claim 20 depends, claim
20 adds the limitation “wherein the message header generation
means
includes means for maintaining selected ones of the plurality
of data fields constant for each said selected data message to
a coupled network input port.”
The examiner’s rationale for the rejection of the
claims under 35 U.S.C. § 103 appears at pages 4-5 of the
answer. Therein, it is stated that Childs shows a multi-stage
network having everything recited in the claims but for a
“hardware based message header generation means.” The exam-
iner relies on Filepp for a reception system for generating
headers to send over the network via software. The examiner
then relies on Takada for a system comprising a hardware based
message header generator, specifically pointing to Takada’s
Appeal No. 96-3763
Application 07/946,509
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Figure 11. The examiner con- tends that it would have been
obvious to combine the teachings of the references because
this “would allow the combined system to increase the speed of
generating headers for messages” [answer-page 5].
We do not necessarily agree with appellants that one
would not look to a software implementation of a header gener-
ator, as shown by Filepp, in order to provide a hardware
solution. After all, any software is run on a physical com-
puter which is comprised of hardware so a software implementa-
tion is also really a hardware implementation.
We also do not agree with the examiner’s reliance on
new references in the answer to provide support for the ratio-
nale of the rejection and so we will not consider any refer-
ences other than Childs, Filepp and Takada, the references
appearing in the statement of the rejection. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Appeal No. 96-3763
Application 07/946,509
We note that while appellants filed a reply brief, there2
is no argument therein contesting the examiner’s identifica-
tion, in the prior art, of “maintaining selected ones of the
9
Dependent claims 20, 27 and 34 all require, within
the message header generation means, a “means for maintaining
selected ones of the plurality of data fields constant for
each said selected data message to a coupled network input
port.” The examiner has not addressed this limitation in the
statement of and/or rationale for the rejection. In fact, the
examiner never addresses this limitation until the penultimate
page of the answer wherein the examiner states, in toto, that
the examiner disagrees with appellants’ argument that this
limitation was not addressed
because Filepp shows the use of controlling
the length of the data fields as being
variable or fixed (e.g. col. 57, lines 50-
52,
col. 58, lines 28-50). Also, Takada shows
the use of the bridge controlling and main-
taining fixed length data blocks to be sent
across the backbone network (e.g. col. 33,
lines 41-45).
While it is true that these citations refer to “fixed” (i.e.,
“constant”) portions of data fields which obviously may be
“selected” in some manner, it is unclear to us how such2
Appeal No. 96-3763
Application 07/946,509
plurality of data fields constant . . .,” even though appel-
lants argued in the principal brief [page 7] that the examiner
had not addressed these recited limitations in claims 20, 27
and 34.
10
teachings are to be actually combined with the other teachings
of the applied references in order to arrive at the instant
claimed subject matter.
In fact, our problem with the examiner’s entire
rejection is a lack of convincing rationale as to why and/or
how the various teachings of the applied references are to be
combined in order to arrive at the instant claimed subject
matter. We do not
imply that the claimed subject matter is clearly patentable.
In fact, we find many of appellants’ arguments weak. For
example, because every software implementation also involves a
hardware
implementation, we do not understand appellants’ attempted
dis- tinction therebetween. Also, while appellants argue
[principal brief-page 3] that Childs makes no mention of
Appeal No. 96-3763
Application 07/946,509
11
header generation, it is clear to us that messages sent in
network systems must have, at least, a source and destination
and that this information is included in “headers.” There-
fore, a header must somehow be generated in some manner.
However, it is still up to the examiner, in the
first instance, to make out a prima facie case of obviousness
with regard to the claimed subject matter. We are skeptical,
in the instant case, that the examiner has done so. While the
examiner, at pages 4-5 of the answer, cites various elements
being disclosed by the references, it is unclear how these
recited elements correspond to that which is claimed. Fur-
ther, recognizing the deficiency in Childs with regard to a
hardware based message header generation means, the examiner
refers to Filepp for a teaching of generating headers to send
over a network through the use of an application program and
then refers to Takada for a
hardware based message header generator. Finally, the exam-
iner merely concludes that it would have been obvious to
Appeal No. 96-3763
Application 07/946,509
12
combine Childs and Filepp because “it would allow Childs’
system to
reduce the network complexity” and it would have been obvious
to combine Takada with this combination because “it would
allow the combined system to increase the speed of generating
headers for messages.” There is no indication, however, as to
how or why the skilled artisan would have been led to combine
the disparate systems of the references. In what manner would
the software application of Filepp be applied to Childs’
multi-stage network? What element in Childs would run the
applications software and what modifications would need to be
made to Childs in order to accommodate for such software? The
examiner does not say. The examiner merely directs us to
combine the references with no indication as to how or why.
Reasons such as “to reduce the network complexity” and “to
increase the speed” are very general and, while everyone seeks
to reduce complexity and increase speed for obvious reasons,
the examiner has pointed to nothing which would indicate how
this is to be accomplished through a combination of the refer-
ences. Yet, in response to almost all of appellants’ argu-
Appeal No. 96-3763
Application 07/946,509
13
ments regarding the non-combinability of the references, the
examiner states that the combination would be
made “to reduce the network complexity” [see pages 7, 8, 9,
11, 12-13 and 14 of the answer]. Without some indication as
to how or why the artisan would have made the modifications to
achieve
reduced complexity and/or increased speed, the examiner has
fallen far short of the prima facie case of obviousness re-
quired by 35 U.S.C. § 103.
We are not saying that the examiner must show a
bodily incorporation of the elements of one reference into
another but there must be some reason or suggestion in the
prior art for making the modifications indicated by the exam-
iner. Platitudes such as “to reduce the network complexity”
and “to increase the speed” are not enough since there is no
indication by the examiner as to how and/or why these desired
results would have been accomplished by the combination set
forth by the examiner. We are not even saying that the refer-
Appeal No. 96-3763
Application 07/946,509
14
ences cannot be combined in some manner to arrive at the
instant claimed subject matter. We merely find that the
examiner has not done so in the instant case. In order to
establish the requisite prima facie case, the examiner must
present some convincing line of reasoning as to why the
skilled artisan would have been led to combine the teachings
of the applied references in such a manner so as to arrive at
the instant claimed subject matter.
The examiner’s decision rejecting claims 20 through
24, 27 through 31 and 34 through 36 under 35 U.S.C. § 103 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Appeal No. 96-3763
Application 07/946,509
15
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-3763
Application 07/946,509
16
David L. Adour
IBM Corporation - IP Law Department
1701 North Street, N50/040-4
Endicott, NY 13760