More Details:
Ex parte Martinez
(Appeal 2009-002619, Appl. No. 10/781,477, Tech. Center 2100)
Decided: February 22, 2010
The independent claim at issue was directed to a method of reporting computer reboots, and the feature at issue was "generating at least one non-maskable interrupt signal." The Examiner took the position that the feature was taught by this sentence in the reference: "Test equipment is connected to the processor-to-bus bridge through a three pin serial port, the test equipment able to set a bit in the critical interrupt register for requesting the nonmaskable pseudo-interrupt." (Emphasis added.) In the Appeal Brief, the Appellant argued that the rejection was improper because the reference "unequivocally states that nonmaskable interrupts are not used." The Appellant then referred to a dictionary definition of "pseudo" to show that the meaning was "false or counterfeit; fake." Though the Appellant didn't make the argument explicit, I think the implicit argument was this: "a fake X isn't the same as an X."
How did the Examiner get around this "fake interrupt isn't the same as an interrupt" reasoning? In short, by showing that the pseudo NMI in the reference operated exactly the same as a POSITA understood an actual NMI to operate. Namely, that the pseudo NMI transferred control to an interrupt routine and could not be disabled (masked) by the processor's interrupt disable instruction.
The Board summarily adopted the Examiner's reasoning:
We agree with the Examiner that "[t]he fact that Murthy called these non-maskable interrupts non maskable pseudo interrupt[s] is irrelevant . . . because an interrupt when implemented is an interrupt whether it is called pseudo or something else." (Answer 16.) "In other words, a result of implementing interrupts or pseudo interrupts within a processor is the same. The result is to call an exception, and execute an exception routine . . . ."(Id.)I actually agree wholeheartedly with the Board's decision. [Disclaimer: I happen to know a lot about this particular area of technology, because I used to be a software developer and have a lot of experience with interrupts. It's possible that this colors my thinking here.]
The way I see it, "nonmaskable interrupt" could be understood in two ways. One, as a functional description. This is how the Examiner interpreted it: an NMI transfers control to an interrupt routine and cannot be disabled (masked) by the processor's interrupt disable instruction. The other interpretation is structural: an NMI is the signal that is connected to the processor's NMI pin.
If you choose to claim only function, then any implementation of that function will anticipate. To distinguish function, you must show that the claimed function operates differently than the reference's function. Here, the Appellant should prevail if he could show that the pseudo NMI did not transfer control to an interrupt routine, or that the pseudo NMI could be masked. But what doesn't matter is that the reference calls the function something else, or uses different words to describe it – if a POSITA would understand the reference to teach that function, it anticipates.
Here, it seems like the Appellant could have claimed some structure along with the function, something like "generating an non-maskable interrupt signal connected to the NMI input line of a processor." Because the reference explicitly taught that the pseudo NMI was connected to a different processor input, that claim would have distinguished over the reference.
I realize there may be good reasons to avoid claiming structure, perhaps reasons related to infringement. In my mind, that's the toughest part of claim drafting: coming up with claims that get over the art and are still infringed.
"Here, it seems like the Appellant could have claimed some structure along with the function, something like "generating an non-maskable interrupt signal connected to the NMI input line of a processor."
ReplyDeleteThe problem here is that Murthy describes simulating an NMI for a processor that did not have such a facility. It appears to me that Murthy must at least mention real NMI stuff. Perhaps amending the claims would have simply resulted in an easily forseealbe 103 rejection.
It's certainly true that such amendments often result in a 102 becoming a 103. And I didn't mean to suggest that such an amendment would have been allowable here.
ReplyDeleteI was merely following up on my statement that when function alone doesn't distinguish, you might want to add structure.
I was a bit bothered by the reliance on the psuedo NMI issue as the sole basis for appeal, so I took a look at the briefs which raised another issue.
ReplyDeleteIn the Appeal Brief, the practitioner argued only the independent claims. The examiner, however, addressed the rejections of all of the claims in the Examiner's Answer (probably cut/pasted from the office action). The Applicant then addressed additional rejections in the Reply Brief.
The Board refused to consider the applicant's arguments for the dependent claims introduced in the Reply Brief.
It seems to me that the Examiner's Answer opened the door to new arguments by including the rejections to the dependent claims in the answer, but the Board did not see it that way.
The Board's rules only address adding new evidence in a reply brief and say nothing about introducing new arguments in a Reply Brief. In defending the "non rule" the BPAI relied on federal circuit case law regarding the contents of reply briefs for the federal circuit.
>In the Appeal Brief, the practitioner argued
ReplyDelete>only the independent claims. The examiner,
>however, addressed the rejections of all of
>the claims in the Examiner's Answer
So you view the dependent claim rejections as "new" because they were not made in response to the Appellant's Brief, right?
>It seems to me that Examiner's Answer opened
>the door to new arguments by including the
>rejections to the dependent claims in the answer
I'm almost certain you're wrong about this. I think that, when determining whether a rejection in an Examiner's Answer is "new", the relevant comparison is to the final Office Action, not the Appellant's Brief. That is, it's "new" if the Examiner adds something that wasn't in the last Office Action.
I can't seem to find a CFR or MPEP section that spells this out exactly. But the New Grounds section in the MPEP (1207.03) sounds more like my definition than yours. "There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection." Certainly the Appellant had a chance to react, in the Brief, to any rejection stated in the last OA, right?
Also, your interpretation of "new" is inconsistent with the requirement for the Examiner's Answer to address every rejection on appeal. (37 CFR 41.37(A)(6). Regardless of whether the Appellant chose to argue them in a Brief.
>The Board's rules only address adding new
ReplyDelete>evidence in a reply brief and say nothing
>about introducing new arguments in a Reply Brief.
You're right, and you bring up a good point.
It's turns out that the BPAI has been interpreting the rules to say "no new arguments in a reply brief" for some time now. Ex parte Borden (Appeal 2008-004312), which is an enbanc rehearing, is a pretty clear exposition of this rule, and the reasoning behind it.
>In defending the "non rule" the BPAI relied on
>federal circuit case law regarding the contents
>of reply briefs for the federal circuit.
Agreed that Fed Cir briefing requirements seem inapposite here. The panel in Ex parte Borden did a much better job of using the text of the rules themselves to explain the rationale. However, the panel in Borden referred to Fed Cir procedure. I'd say they used the Fed Cir to beef up their argument rather than relying on the Fed Cir procedure.
"I'm almost certain you're wrong about this. I think that, when determining whether a rejection in an Examiner's Answer is "new", the relevant comparison is to the final Office Action"
ReplyDeleteYou are right of course. I note however that we are using the BPAI's made up rule.
I do not believe the BPAI rule is analogous with Fed. Cir. procedure. That is I'm not sure that under the federal rules, new arguments responsive to points in the opponent's brief that "could have been raised" by the appellant, are prohibited in a reply brief.