Ex Parte Yang et al

Patent Trial and Appeal Board

Sep 12, 2013

11735531 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte CHIH-CHENG YANG and YUNG SHUN LIANG
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Appeal 2011-002509
Application 11/735,531
Technology Center 2100
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Before ROBERT E. NAPPI, BRYAN F. MOORE, and
GREGG I. ANDERSON, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002509
Application 11/735,531

2

This is a decision on appeal under 35 U.S.C. § 6(b) of the rejection of
claims 1, 5 through 11, 15, 16, 19, and 20. Claims 2 through 4, 12 through
14, 17, and 18 have been cancelled.
We affirm.
INVENTION
The invention is directed an information handling system which
detects non-fatal errors and provides messages of the non-fatal errors. See
Abstract of Appellants’ Specification. Claim 1 is reproduced below:
1. An information handling system comprising:
plural processing components operable to process
information;
firmware running on a processing component, the
firmware operable to coordinate operation of the processing
components;
a link interfacing at least some of the processing
components;
a link controller operable to manage communication of
information over the link between the processing components
and to issue an interrupt if a non-fatal error occurs with the
communication of information;
a non-fatal error monitor associated with the firmware
and interfaced with the link controller, the non-fatal error
monitor operable to receive the interrupt associated with the
non-fatal error and to issue an error message if the nonfatal
error meets predetermined condition; and
an error handler associated with the firmware and
operable to handle errors associated with the processing
components, the error handler further operable to identify a
processing component associated with the non-fatal error;
wherein the predetermined condition comprises a
predetermined number of non-fatal errors associated with the
identified processing component.

Appeal 2011-002509
Application 11/735,531

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REJECTION AT ISSUE
The Examiner has rejected claims 1, 5 through 11, 15, 16, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Marisetty (U.S.
2007/0061634 A1, Mar. 15, 2007) and Huber (U.S. 2008/0082661 A1, Apr.
3, 2008). Answer 3-9.
1

ISSUES
Appellants argue on pages 3 and 4 of the Brief, and pages 1 and 2 of
the Reply Brief that the Examiner’s rejection based upon Marisetty and
Huber is in error. Appellants’ arguments present us with the following three
issues:
Did the Examiner err in considering Huber as prior art?
Did the Examiner err by not providing the provisional application
from which Huber derives priority?
Did the Examiner err in finding that the combination of Marisetty and
Huber teaches non-fatal errors as recited in representative claim 1?
2

1
Throughout the opinion we refer to the Appellants Brief dated August 23,
2010, Reply Brief dated November 1, 2010 and the Examiner’s Answer
mailed October 27, 2010.
2
We note that on page 2 of the Reply Brief, Appellants present an additional
argument that Huber is non-analogous art as it is directed to the art of
network communications and is not applicable to communications across a
link between components within a handling system as claimed. This
argument was presented for the first time in the Reply Brief and has not been
considered as it is deemed waived. See Ex parte Borden, 93 USPQ2d 1473,
1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the
Board is not required to address argument in Reply Brief that could have
been presented in the principal Brief).
Appeal 2011-002509
Application 11/735,531

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in considering Huber as
prior art, by not providing the provisional application from which Huber
derives priority, and in finding that the combined teaching of Marisetty and
Huber teach non-fatal errors.
First issue.
Appellants argue that Huber is not prior art as it was filed after the
application and if the Examiner had intended to rely on the provision filing
date of Huber the Examiner must rely on the disclosure of the provisional
application. Answer 3. Appellant has not cited any legal precedent to
support this proposition, and it appears that this argument is contrary to our
legal precedent. As we stated in Ex parte Yamaguchi, it is the intent of 35
U.S.C. §§ 11(b)(8) and 102(e) that a U.S. patent or a U.S. application
publication is entitled to the benefit of the filing data of a provision
application under 35 U.S.C. § 119(e). Ex parte Yamaguchi,
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd074412.pdf (2008).
Accordingly, Appellants arguments directed to the first issue are not
persuasive.

Second issue.
Appellants argue that the Examiner failed to cite and establish the
Huber provisional application as art used in the rejection and as such the
Appeal 2011-002509
Application 11/735,531

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Board should reverse the Examiner. Brief 4. We disagree; Appellants have
cited no legal authority to show that the Examiner must base the rejection on
the provision application instead of the published application. Further, as
discussed, in Ex parte Yamaguchi, the Examiner is not required provide a
copy of the provisional application, and if there were such a requirement it is
a petitionable matter not an appealable matter. Ex parte Yamaguchi,
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd074412.pdf (2008).
Additionally, as identified by the Appellants, on pages 3 and 4 of the Brief,
the Examiner did provide an explanation of how the provisional application
provides support for the relevant teachings in Huber’s published application.
Accordingly, Appellants arguments directed to the second issue are not
persuasive.

Third issue
Appellants argue that Huber is not relevant as it deals with failed
attempts to communicate and not non-fatal errors as claimed. Brief 4. The
Examiner responded to Appellants’ arguments, finding that Marisetty
teaches non-fatal errors and that Huber was relied upon to show issuing an
error message after a threshold of errors is exceeded. Answer 10. Based
upon these findings the Examiner concludes that the combined teachings are
applicable to non-fatal errors. Thus, Appellants’ augments are not
commensurate with the Examiner’s findings in the Rejection. Accordingly,
Appellants’ arguments have not persuaded us of error in the Examiner’s
findings that the combination of Marisetty and Huber teaches non-fatal
errors as recited in representative claim 1 and as such we sustain the
Examiner’s rejection of claims 1, 5 through 8, 10, 11, 15, 16, 19, and 20.
Appeal 2011-002509
Application 11/735,531

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Appellants separately address claims 9 and 16 on page 4 of the Brief,
however these arguments merely assert that Huber is not prior art, and
restate a limitation of claims 9 and 16 asserting that it is not taught by the
prior art. As discussed above Huber is prior art. Further, Appellants’ other
contentions are merely a recitation of the claim language combined with a
naked assertion that the recited elements are not found in the prior art. Our
reviewing court has held that such are not substantive arguments of
Examiner error. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). Accordingly, we similarly sustain the Examiner’s
rejection of claims 9 and 16.
DECISION
The decision of the Examiner to reject claims 1, 5 through 11, 15, 16,
19, and 20 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)(iv).

AFFIRMED

ELD