Ex Parte Leigh et al

Board of Patent Appeals and Interferences

Jul 3, 2007

09872600 (B.P.A.I. Jul. 3, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN B. LEIGH,
TUAN A. PHAM AND JASON W. WHITEMAN
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Appeal 2007-0339
Application 09/872,600
Technology Center 2100
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Decided: July 3, 2007
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Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY, and
JEAN R. HOMERE Administrative Patent Judges.

BARRY, Administrative Patent Judge.

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-55. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
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A. INVENTION
The invention at issue on appeal automatically switches control of a
bus in a processor-based device. (Specification 1.) Although the
motherboard of a server may include a small computer system
interface ("SCSI") controller for controlling SCSI devices (e.g., hard drives)
connected to the controller, an end-user may wish to incorporate alternate
SCSI controller cards that provide different or additional features. (Id. 3-4.)
Use of alternate SCSI controller cards also may enable the user to ensure
uniformity among all his servers. (Id. 4.)

As aforementioned, the Appellants' invention automatically switches
control of a bus in a processor-based device. In a server, more specifically,
control of a bus is automatically switched from a controller mounted on a
system board to a controller located on an optional expansion card upon
connection of the expansion card to the board. Automatic switching
includes isolating the on-board controller from the bus and appropriately
terminating any transmission line ends on the bus resulting from the
establishment of the alternative control path. (Id. 34.)

Claim 1, which further illustrates the invention, follows.
1. A method of switching control of a bus in a processor-based
device, the method comprising the acts of:

electrically coupling a first bus controller to the bus;

generating a detection signal indicative of coupling of a
second bus controller to the bus; and

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automatically isolating the first bus controller from the
bus in response to the detection signal.

B. REJECTIONS
Claims 1-10, 12-21, 23-31, 35-41, 441-50, and 52-55 stand rejected
under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 5,706,447
("Vivo") and U.S. Patent No. 6,701,402 ("Alexandria"). Claims 11, 22, and
34 stand rejected under § 103(a) as obvious over Vivo; Alexandria; and the
Appellants' admitted prior art ("AAPA"). Claims 32-34, 42, 43,2 and 51
stand rejected under § 103(a) as obvious over Vivo; Alexandria; and U.S.
Patent No. 6,701,402 ("Gasparik").

II. ISSUE
Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween. The Examiner admits that Vivo does not disclose
"automatically isolating the first bus controller from the bus in response to
the detection signal." (Answer 3.) He finds, moreover, "In Alexander, III et
al. when the PCI bus controller gives control to one of the masters, the other
masters are prevented from communicating with the disk controller and are
thus 'isolated' from it." (Id. 18.) The Examiner further finds, "Alexander, III
et al. further make specific mention in the abstract that the purpose of this

1 Although the statement of this rejection includes claim 43, (Answer 3), the
claim depends from claim 42, which stands rejected under Vivo, Alexandria,
and U.S. Patent No. 6,701,402. (Id. 17.) Therefore, we treat claim 43 as
rejected under the same latter combination of references.

2 Id.
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'isolation' is to avoid data collisions, data loss and possibly system failure as
required by appellant's use of this term." (Id.)

The Appellants argue, "isolating the disk controller 110 from the other
masters is wholly different from 'isolating the first bus controller from the
bus' as recited in claim 1, for example. (Emphasis added). Contrary to what
is recited in the claims, neither the disk controller 110, the controller 107,
nor the other masters are ever isolated from the bus. Alexander, col. 3,
lines 38-52." (Reply Br. 2.) Therefore, the issue is whether teachings from
the prior art itself would appear to have suggested responding to a detection
signal by automatically isolating a first bus controller from a bus.

In addressing the issue, the Board conducts a two-step analysis. First,
we construe the independent claims at issue to determine their scope.
Second, we determine whether the construed claims would have been
obvious.

III. CLAIM CONSTRUCTION
Our analysis begins with construing the claim limitations at issue.
"The Patent and Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior art." In re
Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994) (citing
In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir.
1983)).

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Here, claim 1 recites in pertinent part the following limitations:
"automatically isolating the first bus controller from the bus in response to
the detection signal." Claims 13, 21, 23, 35, 44, 52, and 53 include similar
limitations. Considering all these claim limitations, the independent claims
require responding to a detection signal by automatically isolating a first bus
controller from a bus.

IV. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). "In
rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)).
"'A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).

Here, Alexander "illustrates a circuit 100, such as an integrated
circuit [i.e., "IC"], in a host (e.g., server, work station, personal computer
and the like) that allows a peripheral component interconnect (PCI)
device 105 (e.g., a RAID or other conventional storage devices) to utilize a
conventional disk controller 110 (e.g., an LSI 1030 SCSI controller) in the
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host device." (Col. 2, ll. 46-52.) The IC "provides the peripheral device
with sole access to the disk controller when operating in a straight mode.
In [the] straight mode, the peripheral device may communicate with the disk
controller through a PCI bus to perform operations, such as retrieving or
writing data to the peripheral device." (Abs. ll. 5-10.) The abstract, to
which the Examiner cites, supra, discusses isolating controllers from the
disk controller. To wit, "in [the] straight mode, other controllers, including
the host's CPU, may be prevented from using the disk controller to avoid
data collisions, data loss and possible system failure." (Id. 10-13.)

We are unpersuaded, however, that the IC isolates the other
controllers from the PCI bus. To the contrary, the reference explains that
"because IDSEL 135 is disconnected from PCI bus 115, other devices . . .
may become master of PCI bus 115 [although the other devices] cannot
detect disk controller 110 when they perform a configuration cycle."
(Col. 3, ll. 46-49.) We agree with the Appellants aforementioned argument
that "isolating the disk controller 110 from the other masters is wholly
different from 'isolating the first bus controller from the bus'. . . ." (Reply
Br. 2.)

V. CONCLUSION
Absent a teaching or suggestion of responding to a detection signal by
automatically isolating a first bus controller from a bus, we are unpersuaded
of a prima facie case of obviousness. Therefore, we reverse the rejection of
claims 1, 13, 21, 23, 35, 44, 52, and 53 and of claims 2-10, 12, 12-20, 24-31,
36-41, 45-50, 54, and 55, which depend therefrom.
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The Examiner does not allege, let alone show, that the addition of
AAPA or Gasparik cures the aforementioned deficiency of Vivo and
Alexandria. Therefore, we also reverse the rejections of claims 11, 22, 32-
34, 42, 43, and 51.

The "Appellants respectfully request that the Board overturn the
rejection and allow independent claims 1, 21, 23, 35, 44, 52, and 53, and the
claims that depend therefrom." (Appeal Br. 15.) They also "request that the
Board withdraw the obviousness rejections of claims 11, 22, and 34," (id.
20), and "withdraw the obviousness rejections in relation to claims 32-34,
42, and 51." (Id. 21.) "Additionally, [the] Appellants respectfully request
that the Board direct the Examiner to allow these claims." (Id.)

In an ex parte appeal, however, the Board "is basically a board of
review C we review . . . rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (B.P.A.I. 2001). We lack authority to
direct an examiner to withdraw an Office action or to allow claims. It is
patent examiners who have the authority to withdraw their rejections,
M.P.E.P. §§ 707.07(e), 1004, 1005 (8th ed., 4th rev. Oct. 1005), 3 and to
allow claims. Id. at §§ 1005, 1302.13.

3 We cite to the version of the Manual of Patent Examining Procedure in
effect at the time of the Appeal Brief.

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Application 09/872,600

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REVERSED

KIS

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