Ex parte SHAH et al.

Board of Patent Appeals and Interferences

Aug 25, 1998

07917098 (B.P.A.I. Aug. 25, 1998)

Application for patent filed September 25, 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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VINAY V. SHAH,
IAN D. JUDD, and
REGINALD BEER
__________
Appeal No. 96-1115
Application 07/917,0981
__________
ON BRIEF
__________
Before THOMAS, JERRY SMITH, and CARMICHAEL, Administrative
Patent Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 96-1115
Application 07/917,098
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner's
final rejection of claims 1 to 12, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. A method of communicating between first and second
nodes connected by a serial link, the method comprising the
steps of:
transmitting data between said nodes in the form of
packets, each packet comprising a plurality of predefined
fields, each field consisting of one or more multibit data
frames; and
controlling the flow of the data packets by means of
multiple bit control frames having the same bit length as the
data frames and being distinguishable from the data frames,
the control frames being transmissible independently of the
data packets.
The following references are relied by the examiner:
Tooley et al. (Tooley) 3,979,719 Sep. 7, 1976
Thorne 5,027,349 Jun. 25, 1991
Claims 1 to 12 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Tooley in
view of Thorne. Rather than repeat the positions of the
Appeal No. 96-1115
Application 07/917,098
3
appellants and the examiner, reference is made to the brief
and the answer for the respective details thereof.
OPINION
We reverse the above rejection of claims 1 to 12 under
35 U.S.C. § 103.
For various reasons, the examiner has not set forth a
prima facie case of obviousness within 35 U.S.C. § 103. From
an artisan's perspective, we do not see any reason why the
artisan would have found it desirable within 35 U.S.C. § 103
to have modified the rather rigid control block data structure
of Tooley's communication protocol in light of the teachings
of Thorne, even assuming that it is correct as the examiner
says that Thorne teaches that control data may contain several
fields as needed or based on a design choice of a specific
application. We are not persuaded that the artisan would have
found it obvious to have modified the data structure control
fields in Tooley's data or text blocks in light of such
teachings such as to make the control fields of equal length
as data frames as argued by the examiner. The mere fact that
Appeal No. 96-1115
Application 07/917,098
4
Thorne may teach that control fields may be of variable length
as needed does not necessarily argue or teach the desirability
of modifying another data structure. Essentially, there is no
other reason advocated by the examiner to modify Tooley and we
are aware of none.
We are also persuaded by appellants' argument at the
bottom of page 6 and at the bottom of page 7 of the brief that
independent claims 1 and 9 patentably distinguish over the
teachings and showings in Tooley because the claimed control
frames rather than an entire control block or packet as taught
by Tooley and by the Tooley-Thorne combination are utilized to
control the flow of data packets. At page 4 of the answer the
examiner analogizes the data or text blocks of Tooley to the
claimed data packets. In one sense then it does take within
Tooley's teachings an entire data block length in the form of
a response message format to transmit a response message
comprising an ACK or a NAK or a RSP message. Tooley does not
teach that a lesser number of bits or identifiable groups of
bits within any of his blocks may be construed as a control
"frame" having the same bit length as a data or text portion
Appeal No. 96-1115
Application 07/917,098
5
of an entire block. Only entire "blocks" of data are
transmitted in Tooley and not a lesser number of or portions
of any given "block" defined as a subportion of a block are
transmitted as a control portion or "frame" as claimed. Thus,
it is also apparent that an additional feature of independent
claims 1 and 9 is not met by Tooley in that the portions of an
identified group of named bits of a block in Tooley are not
transmitted independently of any block or packet in this
reference. The examiner's brief reference to column 1, lines
35 to 53 as to this feature is not persuasive as to this
limitation of independent claims 1 and 9 on appeal.
The examiner's attempt to analogize the data blocks of
Tooley to the claimed data packets therefore fails. Thorne
does not cure this deficiency. The subtle nuances of data
structures for communication protocols cannot be ignored. In
view of the foregoing, therefore, we cannot sustain the
rejection of independent claims 1 and 9 on appeal. As such,
the rejection of their respective dependent claims must also
be reversed. The decision of the examiner rejecting claims 1
to 12 under 35 U.S.C. § 103 is reversed.
Appeal No. 96-1115
Application 07/917,098
6
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Roy W. Truelson
Department 917
IBM corporation
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