Ex Parte Lubbers et al

Patent Trial and Appeal Board

Jan 11, 2013

11479365 (P.T.A.B. Jan. 11, 2013)

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.
11/479,365 06/30/2006 Clark E. Lubbers STL13140 8925
73462 7590 01/14/2013
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
EXAMINER
DOAN, DUC T
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
01/14/2013 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 CLARK E. LUBBERS and DAVID P. DECENZO
____________

Appeal 2010-011613
Application 11/479,365
Technology Center 2100
____________

Before ST. JOHN COURTENAY, III, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/479,365

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was conducted on January 7, 2013.
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention is directed to a method and apparatus for
passively mirroring data to multiple storage locations. See Spec. 13,
Abstract of the Disclosure.
Claims 1 and 9 are illustrative, with key disputed limitations
emphasized:
1. An apparatus comprising a source device configured to
concurrently transfer data to first and second target devices over a
common pathway and to receive respective first and second
acknowledgement signals from the respective first and second
target devices in response thereto, wherein the data are
simultaneously clocked into the respective first and second target
devices.

9. A method comprising concurrently transferring data from a
source device to first and second target devices via a common
pathway, and transmitting first and second acknowledgement
signals to the source device to respectively confirm receipt of
the data by the respective first and second target devices, wherein
said data are passively mirrored without a previous request for said
data by the first and second target devices.

The Examiner relies on the following as evidence of unpatentability:
Ibrahim US 6,880,062 B1 Apr. 12, 2005
Bruning US 2002/0035667 A1 Mar. 21, 2002
Frank US 2006/0272015 A1 Nov. 30, 2006
(Filed May 26, 2005)

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THE REJECTIONS
1. The Examiner rejected claims 9-18 under 35 U.S.C. §102(b) as
anticipated by Ibrahim. Ans. 4-7.1
2. The Examiner rejected claims 1-7 and 20 under 35 U.S.C. §103(a)
as unpatentable over Ibrahim and Frank. Ans. 7-10.
3. The Examiner rejected claim 8 under 35 U.S.C. §103(a) as
unpatentable over Ibrahim, Frank, and Bruning. Ans. 10.
4. The Examiner rejected claim 19 under 35 U.S.C. §103(a) as
unpatentable over Ibrahim and Bruning. Ans. 11.

ISSUES
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issues to
be dispositive of the claims on appeal:
1. Under § 102, has the Examiner erred in rejecting claims 9-18 by
finding that Ibrahim anticipates a method comprising concurrently
transferring data from a source device to first and second target
devices via a common pathway, and transmitting first and second
acknowledgement signals to the source device to respectively
confirm receipt of the data by the respective first and second target
devices, wherein said data are passively mirrored without a
previous request for said data by the first and second target
devices?

1 Throughout this opinion, we refer to the Appeal Brief filed February 12,
2010; the Examiner’s Answer mailed April 23, 2010; and, the Reply Brief
filed June 23, 2010.
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2. Under § 102, has the Examiner erred in rejecting claim 10 by
finding that Ibrahim anticipates transferring data, as set forth in
claim 9, “by synchronously clocking the data packet into the first
and second target devices using a common clock signal”?
3. Under § 102, has the Examiner erred in rejecting claim 11 by
finding that Ibrahim anticipates transferring data, as set forth in
claim 9, by transferring the data to the first device at a first rate and
transferring the data to the second device at a second rate?
4. Under § 103, has the Examiner erred in rejecting claims 1-7 and 20
by finding that Ibrahim and Frank show or suggest a source device
configured to concurrently transfer data to first and second target
devices over a common pathway and to receive respective first and
second acknowledgement signals from the respective first and
second target devices in response thereto, wherein the data are
simultaneously clocked into the respective first and second target
devices?
5. Under § 103, has the Examiner erred in rejecting claim 2 by
finding that Ibrahim and Frank show or suggest a source device
configured to concurrently transfer data, as set forth in claim 1,
wherein the data comprises a packet that is synchronously clocked
into respective first-in-first-out (FIFO) elements of the first and
second target devices at the same time using a common clock
signal?
6. Under § 103, has the Examiner erred in rejecting claim 3 by
finding that Ibrahim and Frank show or suggest a source device
configured to concurrently transfer data, as set forth in claim 1,
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wherein the data are transferred passively without a previous
request for said data by the first and second target devices?
7. Under § 103, has the Examiner erred in rejecting claim 6 by
finding that Ibrahim and Frank show or suggest a source device
configured to concurrently transfer data, as set forth in claim 1,
wherein the first target device is disposed in a first integrated
circuit package, and wherein the second target device is disposed
in a second integrated circuit package in communication with the
first integrated circuit package?
8. Under § 103, has the Examiner erred in rejecting claim 20 by
finding that Ibrahim and Frank show or suggest a source device
configured to concurrently transfer data, as set forth in claim 1,
wherein the data are transferred to the respective first and second
target devices using a single direct memory access (DMA) transfer
command?

ANALYSIS
Appellants specifically argue that Ibrahim fails to anticipate “wherein
said data are passively mirrored without a previous request for said data by
the first and second target devices” as expressly set forth within claim 9,
urging that the “Transfer Ready Request” disclosed by Ibrahim is a request
for data. App. Br. 9-11.
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
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Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quotation and citations omitted);
In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997).
The relevant limitation at issue in claim 9, namely “wherein said data
are passively mirrored without a previous request for said data by the first
and second target devices” is a negative limitation that was added by
amendment during prosecution. With regard to the patentable weight to be
given to the negative limitation at issue, Appellants’ Specification, at page 6,
lines 23-30; page 7, lines 27-30; see also Figure 9, steps 252-254, cited by
Appellants as supporting the limitation at issue, (App. Br. 5), do not identify
any “descri[ption of] a reason to exclude the relevant limitation.” Santarus,
Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir.
2012) (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.”). These negative limitations are accorded their broadest
reasonable construction in light of the Specification and the “evidence
before the Board” (In re Morris, 127 F.3d at 1055) (citations omitted),
therefore, we consider the extent that Appellants have not provided support
in the Specification for the negative limitations of claim 9 in concluding that
the Examiner did not err in finding that Ibrahim anticipates claim 9 under §
102.
Appellants argue, with respect to claim 10, that Ibrahim fails to
anticipate “synchronously clocking the data packet into the first and second
target devices using a common clock signal.” App. Br. 12-13.
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The Examiner finds that the transfer of data within Ibrahim from a
sender to target receivers necessarily occurs in accordance with a specific
data bit frequency, anticipating the “synchronously clocking” limitation of
Appellants’ claim 10. Ans. 23.
We find the Examiner’s position persuasive, since we find the transfer
of data throughout a system at the data rate established by a system clock is
notorious in the art. Consequently, we find the Examiner did not err in
rejecting claim 10 as anticipated under § 102 by Ibrahim.
With regard to claim 11, Appellants argue that Ibrahim fails to
anticipate “transferring the data to the first device at a first rate and
transferring the data to the second device at a second rate.” App. Br. 14.
The Examiner finds that each target device “can use its own flow
control to throttle the data rate being transferred” and consequently, Ibrahim
discloses “transferring the data to the first device at a first rate and
transferring the data to the second device at a second rate” as recited in
claim 11. Ans. 26.
We find the Appellants’ arguments persuasive. We find no discussion
within Ibrahim of “throttling” data rates to achieve different data rates. “The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Consequently we find the Examiner erred in rejecting claim 11 as
anticipated under § 102 by Ibrahim.
With respect to claims 1-7 and 20, Appellants argue that Ibrahim and
Frank fail to show or suggest “the data are simultaneously clocked into the
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respective first and second target devices” as set forth within claim 1.
Specifically, Appellants argue that the Examiner’s interpretation of the
language “simultaneously clocked” as reading on the transfer of different
data utilizing multiple clocks which “operate at the same time” is
unreasonable, in view of the description contained within Appellants’
Specification. App. Br. 18.
The Examiner finds that the use of multiple clocks which operate at
the same time is a broad, but reasonable interpretation of the claimed phrase
“simultaneously clocked.” Ans. 29-30.
We first find that Appellants’ claim 1 merely recites a “source device
configured to…” followed by a litany of intended uses for that source
device.
“An ] intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claims preamble,” In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id.
Here, the phrase “configured to concurrently transfer data to first and
second target devices over a common pathway and to receive respective first
and second acknowledgement signals from the respective first and second
target devices in response thereto, wherein the data are simultaneously
clocked into the respective first and second target device” (claim 1) merely
states an intended use or purpose for the claimed source device. At hearing,
Counsel for Appellants was unable to identify any particular structural
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component which enabled the stated intended use, urging that a “source
device” which is “configured” for the particular use in question differs
patentably from other “source devices.” We find that the mere recitation of
the phrase “configured to” does not identify a patentable distinction.
Consequently, we find that language will not limit the scope of the claim and
will not distinguish the claimed invention from the prior art in terms of
patentability.
Therefore, we find the Examiner did not err in rejecting claim 1 as
unpatentable under § 103 over Ibrahim and Frank.
With regard to claim 2, Appellants argue that Ibrahim and Frank fail
to show or suggest the transfer of data “wherein the data comprises a packet
that is synchronously clocked into respective first-in-first-out (FIFO)
elements of the first and second target devices at the same time using a
common clock signal.” Specifically, Appellants argue that the use of
numerous physical drives by Frank fails to meet this limitation. App. Br. 23.
The Examiner finds that Frank discloses the multicasting/broadcasting
of the same data on a subnet to a plurality of physical devices. Ans. 33
Further, the Examiner finds that a broad, but reasonable interpretation of
“synchronously clocked” reads upon data which is transferred at a selected
data rate, as set forth above with respect to claim 10.
For the same reasons set forth by the Examiner with respect to claim
10, which we agreed with above, we find the Examiner did not err in
rejecting claim 2 as unpatentable under § 103 over Ibrahim and Frank.
With respect to claim 3, Appellants argue that the “Transfer Ready
Request” of Ibrahim is inconsistent with Appellants’ claimed passive
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transfer which occurs “without a previous request for said data.” App. Br.
24.
As we note above, in order to give patentable weight to a negative
limitation it is necessary that Appellants’ Specification support that negative
limitation by providing a reason to exclude the relevant limitation.
Consequently, having found no expressed support for excluding that
limitation we conclude that the Examiner did not err in rejecting claim 3 as
unpatentable under § 103 over the combination of Ibrahim and Frank.
With respect to claim 6, Appellants argue that Ibrahim and Frank fail
to show or suggest the source device of claim 1 wherein the first target
device is disposed in a first integrated circuit device and wherein the second
target device is disposed in a second integrated target device. App. Br. 25.
The Examiner finds that Ibrahim discloses multiple virtual storage
devices, which the Examiner concludes may be implemented within
integrated circuits. Ans. 39.
We find that the implementation of storage devices utilizing
integrated circuit devices is well within the ambit of those having ordinary
skill in the art. Consequently, we find that characterizing the target storage
devices as being implemented within separate integrated circuit devices does
not distinguish claim 6 from the cited prior art. We therefore find that the
Examiner did not err in rejecting claim 6 as unpatentable under § 103 over
Ibrahim and Frank.
Finally, with respect to claim 20, Appellants argue that Ibrahim and
Frank fail to show or suggest the transfer of data to the first and second
target devices “using a single direct memory access (DMA) transfer
command.” App. Br. 26. Specifically, Appellants argue that Ibrahim
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increases the number of DMA operations necessary to mirror data. Id.
Appellants acknowledge that Frank discloses the use of one DMA operation
to mirror data, but dispute that Ibrahim and Frank may be combined, arguing
that Ibrahim “directly teaches away” from the use of a single DMA
operation. Id. at 26-27.
The Examiner finds that while Ibrahim does not expressly disclose the
use of a single DMA transfer command, Frank discloses the transfer of data
to target devices in response to a single DMA command. Ans. 9-10.
We find the Examiner’s position persuasive. It is well settled in the
patent law that: “a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). We find no teaching in Ibrahim that would
discourage a person of ordinary skill from utilizing fewer DMA commands.
We further note that no matter how many preparatory commands are issued
in furtherance of a data transfer, the final DMA command may fairly be
characterized as the single transfer command which initiates the transfer of
data.
We therefore find that the Examiner did not err in rejecting claim 20
as unpatentable under § 103 over Ibrahim and Frank.

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 6, and 9-11, and
claims 4, 5, 7, 8, and 12-19, which were not argued separately.. However,
the Examiner did err in rejecting claim 11 under § 102 over Ibrahim.
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ORDER
The Examiner’s decision rejecting claims 1-10 and 12-20 is affirmed.
The Examiner’s rejection of claim 11 under § 102 over Ibrahim is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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