Reexamination Control No. 90/005,742
Patent 5,253,341
1 in the rejected claims, see, e.g., 2d Koopman Decl. at 17, para. 8, an argument which is not
2 responsive to the rationale of the rejection.
3 As already noted, the examiner contends there were several different motivations for
4 implementing Filepp’s file server with a RISC or CISC microprocessor: (a) “scalability”; (b)
5 “the rapid increase in processing power that the microprocessor had achieved”; and (c) “a
6 general trend in the industry.” 3d Action at 78-79, para. 16; Final Action at 236-37, para. 16.40
7 We are unable to determine the merits of the “scalability” argument because that term is not
8 defined or adequately discussed in the record.41 Dr. Koopman responded to the asserted
9 “processing power” motivation by arguing that “[r]eplacing a non-microprocessor CPU with a
10 microprocessor CPU would only be reasonable if both versions had the same instruction set,” 2d
11 Koopman Decl. at 162, para. 346, and that “[a]t the time that Rozmanith filed it was ordinarily
12 the case that a mainframe [i.e., non-microprocessor] implementation of an instruction set would
13 be a more powerful computer than a microprocessor based implementation." Id. This argument
14 is unconvincing because we are not persuaded that a RISC- or CISC-microprocessor
15 implementation of Filepp’s non-RISC, non-CISC processor must use the same instruction set.
16 Dr. Koopman’s argument that “microprocessor based versions of a machine were typically
17 lacking in I/O bandwidth and functionality,” id., whereas “a remote host or server machine, like
40 Dr. Koopman correctly notes that claims 9, 10, and 14 do not recite
"microprocessors." 2d Koopman Decl. at 162, paras. 345-46. Instead, they recite "processors," a
term which embraces but is not limited to microprocessors. However, this fact does not detract
from the merits of the rejection, which requires only that the examiner demonstrate the
obviousness of something falling within the scope of the rejected claim.
41 This term is not addressed in Dr. Koopman’s testimony about paragraph 16 of the
Third Office action.
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