Ex Parte Purcell et al

Board of Patent Appeals and Interferences

Jun 3, 2009

11200670 (B.P.A.I. Jun. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN T. PURCELL and MELVIN K. BENEDICT
____________________

Appeal 2008-004765
Application 11/200,6701
Technology Center 2100
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Decided2: June 3, 2009
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Before JAY P. LUCAS, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 10, 2005. The real party in interest is Hewlett-
Packard Development Co.

2 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).
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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 32 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a system and method for allocating
communication lanes on an electrical bus used in Peripheral Component
Interconnect Express (PCI Express) computer connections. PCI Express is a
high speed serial connection capable of multi-lane communications, e.g. x8
(“by eight”) or x16 lanes. Appellants’ invention relates to routing data to
multiple devices via segments in a PCI Express bus. In the words of the
Appellants:
PCI-Express® represents a recent trend in busing schemes to
move away from a “shared” bus toward a point-to-point connection.
That is, rather than a single parallel data bus through which all data is
routed at a set rate (as is the case, for example, on PC1 or PCI-X), a
PCI-Express-compliant bus comprises a group of point-to-point
conductors, in which data is sent serially and all the conductors are
individually clocked.

(Spec. ¶ [0024]).
Methods and apparatuses are disclosed for allocating a bus in a
computer system. In one embodiment, an apparatus comprises: a bus
divided into at least two segments, a first segment of the bus routed to
a first device, a second segment of the bus routed to an adapter
capable of further dividing the second segment into multiple sub-
segments, where the adapter routes the multiple sub-segments
between the first device and a second device.

(Abstract).
Claim 1 is exemplary:
1. A computer system comprising:
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a bus divided into at least two segments;
a first segment of the bus routed to a first device; and
a second segment of the bus routed to an adapter capable of
further dividing the second segment into multiple sub-
segments, wherein the adapter routes the multiple sub-
segments between the first device and a second device;
wherein the adapter is capable of simultaneously routing data
through said multiple sub-segments.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kosaraju 2002/0071431 A1 Jun. 13, 2002
Shen 2006/0098020 A1 May 11, 2006
McAfee 7,099,969 B2 Aug. 29, 2006
McKee 2006/0294279 A1 Dec. 28, 2006
REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1 to 4, 7, 8, 16 to 19, and 27 to 31 stand rejected under
35 U.S.C. § 103(a) for being obvious over Shen in view of McAfee.
R2: Claims 14, 15, 25, and 26 stand rejected under 35 U.S.C. 103(a)
for being obvious over Shen in view of McAfee further in view of Kosaraju.
R3: Claims 1, 2, 5, 6, 9 to 13, 16, 17, 20 to 24, 30, and 32 stand
rejected under 35 U.S.C. § 103(a) for being obvious over McKee in view of
McAfee.

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Groups of Claims:
The rejections will be discussed in the order of the rejections and
Appellants’ arguments.

Appellants contend that the claimed subject matter is not rendered
obvious by Shen, McAfee, McKee or Kosaraju for failure of those
references to be properly combined. The Examiner contends that each of the
claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the references, most specifically Shen, McAfee and McKee, present
teachings that are properly combinable to establish the level of the prior art
indicated by the Examiner concerning simultaneous routing of data through
multiple bus segments.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a bus structure in a computer system which
supports the PCI Express standard for serial communications. (Spec. ¶
[0024]). In accordance with the invention, two segments with multiple
communication lanes each extend from a bridge, which coordinates the
flow of data from a central processor unit to devices on the segments.
One of the segments directly connects to a first device. (Fig. 3A, #44A).
The second segment connects to an adapter (Fig. 3A, #46) which
supports multiple sub-segments. Lanes in one of the sub-segments go
back to feed the same device that is connected to the first segment. (Id. ¶¶
[0030]-[0032]). Lanes in a second sub-segment feed into a second device.
(Id.).
2. Appellants diagram their invention as follows. Appellants’ Figure 3A is
reproduced below:

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Figure 3A illustrates an exemplary system including a plug-in
configuration card.
3. Shen teaches a PCI Express enabled motherboard in which data from a
chipset is fed to multiple graphics interface boards. (Abstract). One
segment of the bus travels directly from the chipset to a first graphics
interface board, #206(1). (Fig. 2, LN1, lanes 0 to 7). A second segment
travels from the chipset to switch #204. From the switch emerge two
sub-segments, LN1 (8-15) and LN2 (0-7), carrying data. The first sub-
segment connects back to the first device, #206. In this mode, 16 lanes
feed the first device. The second sub-segment connects to a second
graphics interface device, #206(2). When switched in this mode, 8 lanes
feed each graphics interface device. (¶ [0022]).
4. McAfee, in Figure 4, teaches a PCI Express bus configuration with data
emerging from host bridge #20 to be configured to two devices in slots
43 and 44. Link A (Fig. 4) directly connects the bridge along one
segment delivering 4 lanes to the device in slot 43. (McAfee, Col. 4, l.
25). Link B carries 8 lanes to the Switch 1, where, in one mode, 4 (more)
lanes are sent to the first device in slot 43 and simultaneously 4 lanes are
provided to the second device, in slot 44.
5. McKee, in Prior Art Fig. 2, teaches in a PCI Express environment a
control hub delivering 8 lanes to a first segment #250, connected to first
device 220. A second segment #260 connects to redirection connector
#240 [adapter], which has sub-segments connected to the first device
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#220 through sub-segment #270, and to the second device #230, through
sub-segment #280.
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art. The use of patents as references
is not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain. In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968) (citing In re Boe, 355 F.2d 961, 965 (CCPA 1966)).
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References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036,
202 USPQ 171, 174 (CCPA 1979) and In re Bigio, 381 F.3d 1320, 1325, 72
USPQ2d 1209, 1212 (Fed. Cir. 2004). ). Furthermore, “‘there must be 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 v. Teleflex Inc.,
550 U.S. 398 at 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. § 103. The prima facie case is presented on pages 3
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to 9 of the Examiner’s Answer. In opposition, Appellants present a number
of arguments.
Arguments with respect to the rejection
of claims 1 to 4, 7, 8, 16 to 19, and 27 to 31
under 35 U.S.C. § 103 [R1]

Appellants contend that the Examiner erred in rejecting claims 1 to 4,
7, 8, 16 to 19, and 27 to 31 for being obvious over the combination of Shen
and McAfee because Shen cannot be properly modified by the teaching of
McAfee without modifying the basic principle under which Shen is designed
to operate. (App. Br. 12, middle). Appellants’ argument is based on a
reading of In re Ratti, 270 F.2d 810 (CCPA 1959). We have reviewed that
venerable case of the CCPA, and find that much of its holding must be
updated by further developments in the law guided by the Supreme Court as
expressed in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Rather
than express obviousness as the physical placement of structure from one
reference within the confines of the structure from another reference, the
Supreme Court viewed the prior art as a combination of teachings from
different sources, and the use of those teachings by a practitioner in the art.
To determine whether there was an apparent reason to combine the
known elements in the way a patent claims, it will often be necessary
to look to the interrelated teachings of multiple patents; to the effects
of demands know to the design community or present in the
marketplace, and to the background knowledge possessed by a person
having ordinary skill in the art. (Id. at 418).

In the instant case, the Examiner has presented three references, noted
above in the Findings of Facts. All three, addressed to PCI-Express busses,
have the physical connections of segments and sub-segments to a first and
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second device as claimed. Two of these references, Shen and McKee, teach
switching data in the lanes of the second segment between the first device
and the second device. The third reference, McAfee, with the same
connections, teaches simultaneously routing portions of the data through
both the sub-segments. We find these teachings, all in the context of PCI
Express bus management, to be properly combinable. “Common sense
teaches . . . that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. at 420. Thus our focus is whether the teachings in
the noted references can, by a person of ordinary skill in the art, be
combined.
Representative claim 1 calls for the adapter (#46 in FF 2 above) to be
“capable of simultaneously routing data through said multiple sub-
segments.” As noted by the Examiner, McAfee teaches the claimed
simultaneous routing. (Answer 9, middle). McAfee teaches the claimed
segment and sub-segments leading to two devices. The other references
Shen and McKee have similar segments and sub-segments. We find
Appellants’ argument based on In re Ratti, 270 F.2d 810, concerning the
incompatibility of the structures to be non-controlling in law, and, in the
instant case, not convincing in fact. (App. Br. 14, middle). Appellants’
further argument concerning the number of lanes available to the sub-
segments argues limitations not represented in the claims. (Id. at 13,
bottom). We thus do not find persuasive Appellants’ contention of
Examiner error.
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Arguments with respect to the rejection
of claims 14, 15, 25, and 26
under 35 U.S.C. § 103 [R2]

We next consider the rejection of claims 14, 15, 25, and 26 under 35
U.S.C. § 103 for being obvious over Shen, McAfee and Kosaraju (R2).
Appellants contend that the further reference Kosaraju, cited by the
Examiner as a teaching of a configuration register, does not satisfy the
deficiencies in the main combination of Shen and McAfee.
As discussed above with respect to the rejection R1, the combination
of Shen and McAfee does not exhibit the deficiency alleged by the
Appellants. We thus find that the Appellants have not shown error in this
second rejection.

Arguments with respect to the rejection
of claims 1, 2, 5, 6, 9 to 13, 16, 17, 20 to 24, 30, and 32
under 35 U.S.C. § 103 [R3]

The Examiner rejected the noted claims of R3 under 35 U.S.C. § 103
for being obvious over McKee in view of McAfee. Appellants’ arguments
with respect to the rejection parallel those made above with respect to R1,
namely that the second reference impermissibly changes the principle of
operation of the first reference. (App. Br. 16, top).
In view of the discussion above with respect to the Findings of Fact
and the analysis of the legal precedents of In re Ratti and KSR Int’l Co. v.
Teleflex, Inc., we decline to find error in the Examiner’s rejection R3. The
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combination of teachings in McKee and McAfee are properly applied to
render the claims obvious.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 32.
DECISION
The Examiner's rejections of claims 1 to 32 are 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

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