Ex Parte Bandholz et al

Patent Trial and Appeal Board

Nov 21, 2013

11777691 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUSTIN P. BANDHOLZ,
KEVIN M. REINBERG,
PHILIP L. WEINSTEIN,
and CHRISTOPHER C. WEST
____________________

Appeal 2011-006658
Application 11/777,691
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13 and 16-20. Claims 14 and 15 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention is directed to data processing,
and more specifically, to establishing a redundant array of inexpensive
drives (“RAID”) (Spec. 1, ll. 12-14).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of establishing a redundant array of
inexpensive drives (‘RAID’), the method implemented with a
universal serial bus (‘USB’) RAID controller connected to a
USB hub and with USB mass storage devices, the USB mass
storage devices connected to the USB hub and the USB RAID
controller through USB connectors, the USB hub controlled by
a USB host controller, the method comprising:
enumerating, by the USB host controller, the USB mass
storage devices, including discovering the USB RAID
controller;
receiving, by the USB RAID controller from a RAID
console application program, an instruction to designate USB
connectors as RAIDable USB connectors, the instruction
including selected USB connectors;
designating, by the USB RAID controller, the selected
USB connectors as RAIDable USB connectors;
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enumerating by the USB RAID controller the USB mass
storage devices connected to the RAIDable USB connectors;
configuring by the USB RAID controller a RAID array,
the RAID array comprising the USB mass storage devices; and
storing, through the USB RAID controller, computer data
on the RAID array.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sheen US 2008/0034149 A1 Feb. 7, 2008

Claims 1-13 and 16-20 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Sheen.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
finding that Sheen teaches a method implemented with a “USB host
controller” and a “USB RAID controller” wherein the method comprises
“enumerating, by the USB host controller, the USB mass storage devices,
including discovering the USB RAID controller” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Sheen discloses a USB (universal serial bus) memory device 10
that includes a USB hub controller 12, a plurality of memory controllers 13
each connected to a downstream end of the hub controller 12, and a plurality
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of memory banks 14 each including a plurality of memory elements 14a,
each memory bank being connected to and controlled by a memory
controller 13 (Fig. 1; ¶ [0015]).
2. The hub controller 12 includes a function controller 12a and a
routing matrix 12b, wherein data paths are provided in the routing matrix
12b and the routing of data by the routing matrix 12b is controlled by the
function controller 12a (Fig. 1(a); ¶ [0019]).
3. The function controller 12a may automatically detect the
configuration of the memory controllers attached to the downstream ports,
and once the function controller 12a has set its functions, the function
controller 12a can control the routing matrix 12b to route data to the data
paths (Fig. 1(a); ¶ [0020]).

IV. ANALYSIS
As to independent claim 1, although Appellants concede that “Sheen’s
USB hub controller is coupled to multiple USB memory devices” (App. Br.
7), Appellants merely argue that “Sheen only describes a single USB hub
controller” and “does not disclose two separate devices – a USB host
controller and USB RAID controller” (id.). According to Appellants,
“Sheen’s USB hub controller cannot disclose discovering a USB RAID
controller because Sheen does not disclose a USB RAID controller separate
from the USB hub controller” (id.). Appellants then argue that “Sheen does
not disclose establishing a RAID comprising a plurality of USB mass
storage devices” (App. Br. 8).
However, the Examiner finds that “the system of Sheen does disclose
a USB host controller, e.g. function controller, which can be programmed by
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a user from a host computer through the upstream USB port” wherein “the
function controller can enumerate, e.g. automatically detect, the USB mass
storage devices” (Ans. 15). The Examiner further finds that “the function
controller can discover the USB RAID controller, e.g. program the hub
controller, in order to provide special functions such as RAID algorithms”
(id.). The Examiner points out that “[a]lthough Sheen discloses . . . that ‘the
hub controller includes the function controller’, currently pending claim 1
does not recite that the USB host controller and the USB RAID controller
are two ‘separate’ devices” (Ans. 16).
As to Appellants’ argument that “Sheen does not disclose establishing
a RAID” (App. Br. 8), the Examiner points out that Sheen’s “hub controller
communicates with multiple memory controllers concurrently so that
multiple memory banks are accessed concurrently” and that “RAID-0 is
implemented on the plurality of memory banks where each memory bank
controlled by a memory controller acts as an independent storage devices in
the array” (Ans. 16). Thus, the Examiner finds that “the plurality of memory
banks implementing RAID-0 of Sheen” comprises a “‘RAID array
comprising the USB mass storage devices’” as claimed (Ans. 17).
We find no error in the Examiner’s findings.
To determine whether Sheen teaches “enumerating, by the USB host
controller, the USB mass storage devices, including discovering the USB
RAID controller” as recited in claim 1, we give the claim its broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read
limitations from the Specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
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Claim 1 does not define “enumerating” and “discovering” other than
the USB host controller enumerates the USB mass storage devices, which
includes discovering the USB RAID controller. Thus, we give
“enumerating” the mass storage devices its broadest reasonable
interpretation as identifying the mass storage devices. We also give
“discovering” the RAID controller its broadest reasonable interpretation as
showing the presence of the RAID controller.
Sheen discloses a plurality of memory controllers connected to a hub
controller 12 (FF 1), wherein the hub controller includes a function
controller that controls the routing of data (FF 2). The function controller
automatically detects the configuration of the memory controllers, and once
the function controller has set its functions, the function controller can
control the routing of data to the data paths (FF 3).
We find Sheen’s USB function controller comprises a “USB host
controller” of claim 1, wherein the function controller identifies the memory
devices/mass storage devices by detecting the configuration of thereof.
Thus, we find no error with the Examiner’s finding that “the system of
Sheen does disclose a USB host controller, e.g. function controller, which
can be programmed by a user from a host computer through the upstream
USB port” wherein “the function controller can enumerate, e.g.
automatically detect, the USB mass storage devices” (Ans. 15).
We also find no error in the Examiner’s finding that Sheen’s “function
controller can discover the USB RAID controller, e.g. program the hub
controller, in order to provide special functions such as RAID algorithms”
(id.). That is, in view of our broad but reasonable interpretation above, we
find Sheen’s function controller’s programing of the USB hub/RAID
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controller comprises “discovering” of the USB hub/RAID controller by the
function/host controller, and thus, find that Sheen discloses “discovering” of
the USB RAID controller by a USB host controller.
Although Appellants argue that “Sheen only describes a single USB
hub controller” and “does not disclose two separate devices – a USB host
controller and USB RAID controller” (App. Br. 7), we agree with the
Examiner that nothing in claim 1 requires that the USB host controller and
the USB RAID controller be two separate and distinct devices (Ans. 16).
Claim 1 merely requires that the method is implemented with a “USB host
controller” and a “USB RAID controller” wherein we find no error with the
Examiner’s finding that Sheen discloses both a USB host controller and a
USB RAID controller.
As to Appellants’ argument that “Sheen does not disclose establishing
a RAID comprising a plurality of USB mass storage devices” (App. Br. 8),
we note that claim 1 does not recite any such step of “establishing” a RAID,
but rather such “establishing” is provided in the preamble. With reference to
the effect of the preamble on the broadest reasonable interpretation, our
reviewing Court has held that
[i]f . . . the body of the claim fully and intrinsically sets forth
the complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999).
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“Whether to treat a preamble term as a claim limitation is determined
on the facts of each case in light of the claim as a whole and the invention
described in the patent.” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d
823, 831 (Fed. Cir. 2003). The Court of Appeals for the Federal Circuit has
held generally that “the preamble does not limit the claims.” Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
Particularly, the Court has held that the preamble has no separate limiting
effect if, for example, “the preamble merely gives a descriptive name to the
set of limitations in the body of the claim that completely set forth the
invention.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
(Fed. Cir. 2000).
In this case, since the body of claim 1 fully and intrinsically sets forth
all of the limitations of the claimed method, the “establishing” purpose in the
preamble is not considered a limitation and is of no significance to claim
construction. See Pitney Bowes, 182 F.3d at 1305; see also Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997).
Nevertheless, even if we were to give “establishing” a RAID
consideration, we find no error with the Examiner’s finding that “the
plurality of memory banks implementing RAID-0 of Sheen” comprises a
“‘RAID array comprising the USB mass storage devices’” as claimed (Ans.
17). That is, we find no error in the Examiner’s finding that Sheen discloses
“establishing” a RAID as required by claim 1 (id.).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 over Sheen. Appellants do not provide
arguments separate from those of claim 1 for independent claims 7 and 13,
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and claims 2-6, 8-12, and 16-20 depending respectively from claims 1, 7,
and 13 (App. Br. 8). Accordingly, claims 2-13 and 16-20 fall with claim 1.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-13 and 16-20 under 35 U.S.C.
§ 102(e) is affirmed.
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

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