IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 557,756 having been rejected under Rule 47(2)
of the Patent Rules, the Applicant asked that the Final Action of
the Examiner be reviewed. The rejection has been considered by
the Patent Appeal Board and by the Commissioner of Patents. The
findings of the Board and the ruling of the Commissioner are as
follows:
Agent for Applicant
Alexander Kerr
IBM Canada Limited
3500 Steeles Avenue East
Markham, Ontario
L3R 2Z1
Patent Application 557,756 (class 354-236) was filed on January
29, 1988 for an invention entitled "Programmable Option Select".
The inventors are Chester A. Heath et al. The Examiner in charge
of the application took a Final Action on May 14, 1992 refusing
to allow the application to proceed to patent.
The application is directed to a data processing system with
option cards for controlling peripheral devices. In the prior
art, upon re-powering or resetting the system after a power-down,
an initializing set up routine retrieves and stores the
appropriate parameters in input/output cards and in slot
positions in main memory. The present application discloses a
routine to reduce the time delay experienced by a user on
subsequent power-on routines by merely transferring parameters
from the table to the card option registers if the status of all
slots has not previously been changed.
Figure 1 shows a system board 1 containing a bus 17 which is
joined to CPU 8 and memory modules 9, 10, 11 of which module 10
is non-volatile and stores information relative to slots 2-0 to
2-7 and its associated option card when the system is powered
down. Option cards labelled 5-0 to 5-7 fit into slots 2-0 to 2-7
each containing a register 21 to store parameter information for
controlling communication between the card and the system. Slot
address decoder 14 and control logic 22 are described in detail
in the disclosure to show their use in the setup routines of
Figures 6 and 7 which are shown overleaf.
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The flow diagram of Figure 7, which is also described on page 6,
line 18 to page 7, line 15 of the disclosure shows two possible
paths that the setup routine may follow. The right-hand side
path transfers parameter data directly from memory slot positions
to the respective card registers on successful comparison of the
ID values. The left-hand side path follows the lengthy procedure
of Figure 6 when the ID values do not correspond.
<IMG>
The examiner rejected the application in the Final Action for
failure to comply with Sections 34(1) and 37 of the Patent Act
and Rule 19(3). The application was held to be objectionable in
that the flow chart of Figure 6 does not have written references
corresponding to the description on page 7, line 15 to page 8,
line 17. The rejection is not based on a demonstrable
indefiniteness or insufficiency of the disclosure under Section
34(1) but rather on a desire to fulfil the formal requirements of
Section 37(2) and Rule 19(3). In that action the examiner stated
(in part):
It is clear from Section 37 that a drawing is required along
with a specification and does not lessen the requirement of
a specification as set out in Section 34(1). Section 37
requires that the drawing relate to the specification by
having written references corresponding with the
specification. The application is objectionable in this
respect in that figure 6 does not have written references
corresponding to the description on page 7 line 15 to page 8
line 17.
Applicant responded to the Final Action with a detailed reply and
had, inter alia, this to say:
In broad, general terms, the present invention resides in
the simplification of the power-on routines performed by
computer systems following power-down occurrences. (Figure
6 is presented in the application merely to remind a reader
of the many initialization steps necessary after a power-
down situation has occurred.) The reduction of steps, as
per the invention, is effected through the expedient of
storing card I.D.s etc. in main, (non-volatile) memory. At
restart, providing the status of the cards remains
unchanged, the power-on routine (POST) is significantly
reduced, as can readily be seen through a simple comparison
of Figures 6 and 7.
The entire invention per se is clearly and completely
described with reference to Figures 1 through 5. All that
is claimed in this application is there fully supported.
It is difficult for the Applicant to know how far to go in
touching on the sufficiency of the disclosure to support the
claims currently of record. No claims have been rejected
for lack of support in the disclosure, nor for that matter
could they be so rejected. It would seem that the
Examiner's objection is based more on a desire to correct
what he seems to view as an informality, than on
demonstrable insufficiency of disclosure.
The Board notes that the specification, disclosure or description
may not include drawings as specified by Rule 19(3) of the Patent
Rules. Drawings must be attached on separate sheets to the
application in sequence after the claims. A full description of
the invention with reference to the drawings must be given in the
specification in accordance with Sections 34 and 37 of the Patent
Act.
In the Final Action the Examiner objected to the flow chart of
Figure 6 as not being fully described in the disclosure. There
is no objection to the sufficiency of the description in the flow
chart. The examiner required amendment of the disclosure in
order that all the steps of the flow chart in Figure 6 be listed
in the disclosure.
Applicant pointed out in reply to the Final Action that Figure 6
does not illustrate the invention and that it is therefore not
necessary for sufficiency of the disclosure to have a description
of the same in the disclosure.
The Board agrees with the applicant that Figure 6 lists steps of
a prior art initialization setup. The alleged invention resides
in the simplification of the power-on routines following power-
down occurrences. Figure 6 illustrates one of many prior art
initialization steps which are significantly reduced by the
invention. The flowchart of Figure 7, indicates a prior art
initialization setup under "ID mismatch" and the new procedure
according to the present invention is indicated under "ID match".
Figure 7 is fully described on pages 6 and 7 of the
specification.
The Board finds, therefore, that the alleged invention has been
fully disclosed in the specification in accordance with Sections
34 and 37 and recommends that the rejection under Sections 34(1)
and 37 be withdrawn.
P.J. Davies P. Ebsen M. Howarth
Acting Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Patent
Appeal Board. Accordingly, I agree that the rejection of the
application under Sections 34(1) and 37 be withdrawn and that the
application be returned to the examiner for further prosecution
consistent with this decision.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 24th day of January 1994