Appeal No. 2006-2217
Reexamination Control Nos. 90/006,789 and 90/007,420
different. One of ordinary skill in the art had the knowledge
and experience necessary to design a replying agent to detect a
request for a sequential transfer from the requesting agent (SC2*
not asserted during a first reply phase) and the end of a
sequential transfer (the EOC signal on SC2* during a final reply
phase) and to interface these signals with the status lines in
"82C08."
Patent owner notes that there are several versions of the
82C08 data sheet besides the June 1985 version relied upon, and a
previous November 1984 version of the data sheet, and subsequent
updated versions of the data sheet in February 1986 and
November 1986 do not include any reference to the SBE mode or
Multibus II (RR6-7). It is argued that these other versions of
the data sheet teach away from the SBE mode (RR6-8).
The June 1985 version of the 82C08 data sheet is prior art,
good for all that it teaches. The fact that earlier and later
versions do not contain references to the SBE mode is irrelevant
to the June 1985 version's status as prior art and is not a
teaching away. A reference "teaches away" when it states that
something cannot be done. See In re Gurley, 27 F.3d 551, 553,
31 USPQ2d 1130, 1131 (Fed. Cir. 1994). Absence of mention of an
SBE mode does not imply that the SBE mode will not work.
Patent Owner argues that the combination of "Multibus II"
and "82C08" impermissibly analyzes the invention by parts (RR9):
To reject claims 1 and 12, the Patent Office suggests
using the 82C08 controller in the Memory "replying agent" in
Figure 1-2 of the Multibus II Handbook. The last paragraph
on sheet 2-10 of the Multibus II Handbook relates to a
replying agent and an EOC indication. However, the
Multibus II Handbook does not show (or suggest) how the EOC
(SC2*) signal could be coupled to or detected by a memory
controller, such as the 82C08 controller, in order to halt
access to the DRAM. Further, there is no suggestion in
either the Multibus II or the 82C08 of how to couple the EOC
(SC2*) signal to the 82C08 DRAM controller. Indeed, as
discussed above, the 82C08 controller, which the Office
Action suggests using in the "replying agent," does not
detect the EOC (SC2*) signal on the iPSB bus. [See
generally the 82C08 at pages 3-2 and 3-3.] As such, the
Patent Office compares each part of the claimed features
with principles of bus architecture and memory controller
although there is no teaching of the claimed invention.
Such analysis is improper. As stated in Custom
Accessories Inc. v. Jeffrey-Allan Industries Inc.,
1 U.S.P.Q.[2d] 1196 (Fed. Cir. 1986), casting an invention
as "a combination of old elements" leads improperly to an
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