Ex Parte 6266721 et alDownload PDFPatent Trial and Appeal BoardDec 16, 201490012327 (P.T.A.B. Dec. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/012,327 05/30/2012 6266721 016295.4366 3460 27299 7590 12/16/2014 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER CRAVER, CHARLES R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/16/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROUND ROCK RESEARCH, LLC,1 Appellant ____________ Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B12 Technology Center 3900 ____________ Before CAROLYN D. THOMAS, CATHERINE SHIANG, and BETH Z. SHAW, Administrative Patent Judges. THOMAS, Administrative Patent Judge. 1 Round Rock Research, LLC is the real party in interest. App. Br. 1 2 Issued July 24, 2001 to Tahir Q. Sheikh et al. (hereinafter the “Sheikh Patent”). Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 2 DECISION ON APPEAL STATEMENT OF THE CASE The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C. §§ 134(b) and 306 from the Final Rejection of claims 1–8, 12–15, 17, 22, 23, 27, and 28.3 Claims 24 and 25 are canceled.4 Claims 9, 10, 11, 16, 18–21, and 26 are indicated as allowable.5 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed December 11, 2013), the Answer (mailed July 8, 2014), and the Reply Brief (filed September 8, 2014) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s Invention Appellant’s invention relates to a system for providing remote access and control of server environmental management. See generally Sheikh Patent, col. 1, ll. 54–56. 3 The Examiner withdrew the rejections of claims 9, 10, and 26 (see Ans. 18). 4 See App. Br. 2. 5 See Final 25 and Ans. 18. Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 3 Claim 1 is illustrative of the claimed invention and reads as follows: 1. A remote interface, comprising: a microcontroller; a microcontroller bus providing data communication among the microcontroller and other microcontrollers; a memory in data communication with the microcontroller; a first port, in data communication with the microcontroller, being capable of receiving and transmitting monitoring data external to the remote interface; and a second port capable of receiving and transmitting environmental conditions data, wherein the environmental conditions data corresponds to the environmental conditions of a computer, and wherein the second port includes connectivity to the microcomputer bus. The Examiner’s Rejections The Examiner’s Answer cites the following prior art references: Carbonneau US 5,586,250 Dec. 17, 1996 La Joie US 5,630,048 May 13, 1997 Tobita US 5,781,434 July 14, 1998 Hanf US 6,115,831 Sept. 5, 2000 LANDesk Server Monitor Module, version 2.0, Mar. 1995 Appellant appeals the following rejections: R1. Claims 1, 4–8, 12–15, 17, 22, 23, and 27 are rejected under 35 U.S.C. § 102(e) as being anticipated by Carbonneau; R2. Claims 1, 4, 5, 7, 8, 12, and 14 are rejected under 35 U.S.C. § 102(e) as being anticipated by La Joie; R3. Claims 1, 4, 5, 7, 8, 12–15, 22, 23, 27, and 28 are rejected under 35 U.S.C. § 102(e) as being anticipated by Tobita; Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 4 R4. Claims 2 and 6 are rejected under under 35 U.S.C. § 103(a) as being unpatentable over La Joie and LanDesk; R5. Claim 3 is rejected under under 35 U.S.C. § 103(a) as being unpatentable over La Joie and Hanf; R6. Claims 2 and 6 rejected under under 35 U.S.C. § 103(a) as being unpatentable over Tobita and LanDesk; R7. Claim 3 is rejected under under 35 U.S.C. § 103(a) as being unpatentable over Tobita and Hanf; and R8. Claim 27 is rejected under under 35 U.S.C. § 103(a) as being unpatentable over Tobita and Carbonneau. ANALYSIS Rejection of Claims 1, 4–8, 12–15, 17, 22, 23, and 27 under 35 U.S.C. § 102(e) over Carbonneau Issue 1: Did the Examiner err in finding that Carbonneau discloses a microcontroller bus providing data communication among the microcontroller and other microcontrollers, as set forth in claim 1? Appellant’s arguments, with respect to the Examiner’s 35 U.S.C. § 102(e) rejection of each of the appealed independent claims 1, 17, and 22, focus on the contention that “Carbonneau does not expressly disclose that there are microcontrollers associated with its disk drives” (App. Br. 4). Specifically, Appellant’s contention challenges the Examiner’s position that the disk drives referenced in the Carbonneau’s disclosure (in 1993) would necessarily have the same specification and features as a model which is currently being sold, (i.e., a current disk drive including a controller). App. Br. 4–5. We agree with Appellant. Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 5 The Examiner finds “the microcontrollers of FIG[.] 1B (SCSI- connected peripherals 141-146) as the further microcontrollers and the SCSI bus as the microcontroller bus claimed. . . . [A]s the connected disk drives inherently comprise a SCSI microcontroller means for interfacing to the bus system” (Ans. 4). However, regarding the Examiner’s inherency conclusion, we note that “[i]t is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). When relying upon a theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the Examiner’s determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1463–64 (BPAI 1990). Here, the Examiner fails to show how Carbonneau’s disk drives 141– 146 necessarily include microcontrollers. In fact, Carbonneau discloses that the CMAC board 150 handles data exchange of the drives 141-146 (see col. 10, ll. 15–18), not the disk drives themselves. As such, we find no basis for the Examiner’s determination that the connected disk drives inherently comprise a SCSI microcontroller means. Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 6 We, accordingly, do not sustain the rejection under 35 U.S.C. § 102(e) over Carbonneau of independent claims 1, 17, and 22, or the rejection of claims 4–8, 12–15, 23, and 27, which are dependent thereon. Rejection of Claims 1, 4, 5, 7, 8, 12, and 14 under 35 U.S.C. § 102(e) over La Joie Issue 2: Did the Examiner err in finding that La Joie discloses a microcontroller bus providing data communication among the microcontroller and other microcontrollers, as set forth in claim 1? Appellant’s arguments, with respect to the Examiner’s 35 U.S.C. § 102(e) rejection of the appealed independent claim 1, focus on the contention that in La Joie “none of the busses 12, 16, or 18 have more than two alleged microcontrollers thereon. Therefore, individually, none of busses 12, 16, and 18 are sufficient to disclose the Claim 1 feature of a microcontroller bus providing data communication among the microcontroller and other microcontrollers” (App. Br. 7). Appellant’s contention also challenges the Examiner’s finding that La Joie’s buses can reasonably be construed as a single bus (id.). The Examiner finds that in La Joie’s Fig. 1 “[t]he buses connect the CPU controller to DMA controller 14, Analyzer Logic Controller 42 and memory 22, as well as to the CPU of the external computer system via a bus interface 27” (Ans. 10). We agree with the Examiner. La Joie discloses that “[p]rocessor bus 12 provides the interface for communication between the central processing unit 10 and two special purpose buses 16 and 18, as well as to a direct memory access (DMA) controller 14” (col. 7, ll. 7–10). La Joie further discloses that “[s]ome of the Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 7 currently available microprocessors that may be present in the external computer system 8 utilize bus architecture having either thirty-two bits or sixty-four bits” (col. 7, ll. 23–26). In other words, La Joie discloses a processor bus 12 that provides communication among the microcontroller 10 and other microcontrollers 14, 42, and 8 (see Fig. 1), albeit via bus, 12, 16, and 18. Claim 1 is not limited to a single bus, nor does claim 1 require a direct connection of the other microcontrollers to the processor bus 12. Therefore, we find Appellant’s argument unpersuasive of error in the Examiner’s stated position. Accordingly, we sustain the rejection under 35 U.S.C. § 102(e) over La Joie of independent claim 1, and the rejection of claims 4, 5, 7, 8, 12, and 14, which are dependent thereon. Rejection of Claims 1, 4, 5, 7, 8, 12–15, 22, 23, 27, and 28 under 35 U.S.C. § 102(e) over Tobita Issue 3: Did the Examiner err in finding that Tobita discloses the second port including connectivity to the microcontroller bus, as set forth in claim 1? Appellant’s arguments, with respect to the Examiner’s 35 U.S.C. § 102(e) rejection of the appealed independent claim 1, focus on the contention that “the failure element monitor of Tobita is not disclosed as having connectivity to bus 32 (which the Office relies on as disclosing the microcontroller bus of Claim 1). . . . Any communication over bus 32 is handled by the CPU 10, and not by the failure element monitor” (App. Br. 8). Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 8 The Examiner finds that in Tobita “[t]he second port [i.e., failure element monitor 14,] includes connection to the bus” (Ans. 14). We agree with the Examiner. Although Appellant contends that the communication over bus 32 is not handled by the failure element monitor 14 of Tobita (see App. Br. 8), we find that this argument is not commensurate with the scope of claim 1, as claim 1 does not require that the failure element monitor 14, i.e., the second port, handle communication over the bus. Instead, claim 1 merely requires that the second port includes connectivity to the microcontroller bus (see claim 1, e.g., “wherein the second port includes connectivity to the microcomputer bus,” emphasis added). Tobita’s failure element monitor 14, i.e., the second port, includes connectivity to the CPU 11 because CPU 11 detects the occurrence of the failure on the system board 30 through the failure element monitor 14 (see col. 14, ll. 19–21). For at least these reasons, we are not persuaded the Examiner erred in finding Tobita discloses the argued limitations, as recited in independent claim 1 and in commensurately recited independent claim 22, not separately argued. Accordingly, we sustain the rejection under 35 U.S.C. § 102(e) over Tobita of independent claims 1 and 22, and the rejection of claims 1, 4, 5, 7, 8, 12–15, 23, 27, and 28, which are dependent thereon. Rejection of Claims 2, 3, 6, and 27 under 35 U.S.C. § 103(a) Because Appellant has not presented separate patentability arguments or has reiterated substantially the same arguments as those previously Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 9 discussed for patentability of claim 1 over La Joie and Tobita above (see App. Br. 8–10), claims 2, 3, 6, and 27 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). CONCLUSION OF LAW Based on the analysis above, we conclude that the Examiner did err in rejecting the claims under R1 for anticipation, but did not err in rejecting the claims under R2–R8 for anticipation/obviousness. Claim 17 is the only claim that is not affirmed under at least one rejection. All other rejected claims (i.e., claims 1–8, 12–15, 22, 23, 27, and 28) are affirmed under at least one rejection. DECISION We reverse the Examiner’s decision rejecting claim 17 under 35 U.S.C. § 102(e). We affirm the Examiner’s decision rejecting claims 1– 8, 12–15, 22, 23, 27, and 28 under 35 U.S.C. § 102(e)/103(a). TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART cdc Appeal 2015-000223 Reexamination Control 90/012,327 Patent US 6,266,721 B1 10 For Patent Owner: GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 For Third Party Requester: BAKER BOTTS LLP Patent Department 98 San Jacinto Blvd. Suite 1500 Austin, TX 78701-4039 Copy with citationCopy as parenthetical citation