Ex Parte Byers et al

Patent Trial and Appeal Board

Feb 26, 2013

11447572 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LARRY L. BYERS, PAUL B. RICCI, JOSEPH G. KRISCUNAS,
JOSEBA M. DESUBIJANA, GARY R. ROBECK,
MICHAEL R. SPAUR, and DAVID M. PURDHAM

____________________

Appeal 2010-008130
Application 11/447,572
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, JUSTIN BUSCH, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/447,572

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2, 3, 5, and 7-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Introduction
According to Appellants, the invention relates to “disk controllers,
and more particularly to an embedded disk controller that includes a hard
disk controller, a microprocessor, a digital signal processor, and a servo
controller.” Spec. ¶ 8.

STATEMENT OF THE CASE

Exemplary Claim
Claim 5 is exemplary and reproduced below:
5. An embedded disk controller, comprising:
a main processor in communication with a first bus;
a second processor in communication with a second bus;
an external bus controller (EBC) in communication with
the first bus and in communication with external devices via an
external bus interface; and
a history module that is located in the embedded disk
controller, that communicates with the first bus and the second
bus, and that at least one of monitors transaction information of
one of the external devices and selectively records information
of one of the external devices via the EBC based on setup
information,
wherein the EBC and the history module are located on
an integrated circuit (IC) with the embedded disk controller,
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wherein the history module records transaction
information on at least one of the first bus and the second bus
based on a register map,
wherein the register map stores a break point condition
value that is set by the main processor and the history module
stops recording the transaction information based on the break
point condition value,
wherein the history module stores a trigger mode value,
the history module records a predetermined number of entries
after the break point condition value reaches a threshold based
on the trigger mode value, and the predetermined number is
greater than zero.

Reference
Shima US 4,486,827 Dec. 4, 1984
Mori US 5,838,603 Nov. 17, 1998
Nemazie US 6,314,480 B1 Nov. 6, 2001
Jaber US 2002/0087931 A1 Jul. 4, 2002
Fujii US 2002/0199076 A1 Dec. 26, 2002
Sakarda US 6,594,721 B1 Jul. 15, 2003
Swanson US 6,662,313 B1 Dec. 9, 2003
Gergen US 2004/0019831 A1 Jan. 29, 2004
“Embedded RISC Microcontroller Core” by Atmel (1999), (“Atmel”)

Rejections on Appeal
Claims 5, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being obvious in view of Nemazie, Gergen, and Mori.
Claims 2, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Nemazie, Gergen, Mori, and Atmel.
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Claim 3 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nemazie, Gergen, Mori, Fujii, and Sakarda.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nemazie, Gergen, Mori, and Jaber.
Claims 5, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Nemazie, Swanson, and Mori.
Claims 2, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Nemazie, Swanson, Mori, and Atmel.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nemazie, Swanson, Mori, Fujii, and Sakarda.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nemazie, Swanson, Mori, and Shima.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nemazie, Swanson, Mori, and Jaber.

ISSUES
The Examiner has issued two separate obviousness rejections of
independent claim 5; the first rejection is based on the combination of
Nemazie, Gergen, and Mori and the second rejection is based on the
combination of Nemazie, Swanson, and Mori. Ans. 4-6, 11-13. Appellants
argue that Gergen does not “disclose a history module that stops recording
transaction information based on a break point condition value, wherein the
history module records a predetermined number of entries after the break
point condition value reaches a threshold based on the trigger mode value.”
App. Br. 12-14 (emphasis in original). Appellants also argue that Swanson
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does not “disclose a history module that stops recording the transaction
information based on a break point condition value and records a
predetermined number of entries after the break point condition value
reaches a threshold based on the trigger mode value.” App. Br. 17-18
(emphasis in original).

Issue 1: Has the Examiner erred in finding that the combination of
Nemazie, Gergen, and Mori teaches or suggests a history module that “stops
recording the transaction information based on the break point condition
value” and “records a predetermined number of entries after the break point
condition value reaches a threshold based on the trigger mode value,” as
recited in independent claim 5?
Issue 2: Has the Examiner erred in finding that the combination of
Nemazie, Swanson, and Mori teaches or suggests a history module that
“stops recording the transaction information based on the break point
condition value” and “records a predetermined number of entries after the
break point condition value reaches a threshold based on the trigger mode
value,” as recited in independent claim 5?

ANALYSIS

Issue 1: 35 U.S.C. § 103(a) Rejections Including Gergen
Appellants argue that “Gergen fails to disclose a history module that
stops recording transaction information based on a break point condition
value, wherein the history module records a predetermined number of entries
after the break point condition value reaches a threshold based on the trigger
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mode value,” as recited in independent claim 5. App. Br. 12 (emphasis in
original). Appellants assert that the capturing in Gergen “begins in response
to the valid trigger 119, which is generated when the counter 108 reaches the
threshold.” App. Br. 14. Appellants argue that, because counter 108
generates trigger 119, the recording is not stopped “based on the value of the
counter 108, which the Examiner relies on to disclose the break point
condition value.” App. Br. 14. Appellants thus argue that, contrary to what is
recited by claim 5, recording begins “based on this alleged break point
condition value,” whereas “[c]apture appears to stop as soon as the counter
110 completes counting, not a predetermined number of entries after the
counter 110 stops.” App. Br. 14.
The Examiner states that Appellants’ arguments appear to be directed
to a different embodiment of Gergen than the embodiment that is relied upon
by the Examiner. Ans. 18-19. The Examiner finds that counter 108 is used to
determine when the breakpoint condition reaches a threshold, not to
determine how many entries are recorded after the break point condition
value reaches a threshold (for which counter 110 is used). Ans. 18; See also
Ans. 19 (the Examiner provides a clear mapping of Gergen’s elements to the
recited limitations). The Examiner also finds that the recited “based on” is
broad and neither “require[s] that the stopping of recording be directly based
upon the breakpoint condition value,” nor “preclude[s] the stopping of
recording to be based upon actions which are based upon the breakpoint
condition value.” Ans. 19. Therefore, the Examiner finds Gergen teaches the
contested limitation because “the breakpoint condition value starts the
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counter and begins recording, and recording stops when the counter reaches
a predetermined number of entries.” Ans. 19.
We agree with the Examiner’s findings. Appellants appear to
misconstrue the Examiner’s rejection and conflate the Examiner’s reliance
upon counters 108 and 110. Moreover, we agree with the Examiner that the
recited claims require nothing more than that the stopping is “based on the
break point condition value” and, moreover, that nothing in the claims
precludes the stopping and the starting of recording to be based on the break
point condition value. Thus, two events (starting recording and stopping
recording) can be “based on” one element (the break point condition value).
Specifically, Gergen teaches that counter 108 is used to determine when the
break point condition reaches a threshold, resulting in the starting of
recording. Gergen ¶ [0031]. Simultaneously, counter 110 is started, such
that, when counter 110 reaches a predetermined number of entries recorded,
recording is stopped. Id. Therefore, because counter 110 starts counting
when the break point condition reaches a threshold and recording stops when
counter 110 reaches a predetermined number, recording is stopped “based
on” the break point condition value.
Accordingly, we do not agree with Appellants that the Examiner erred
in finding claim 5 obvious in view of the combination of Nemazie, Gergen,
and Mori. With respect to dependent claims 2, 3, and 7-12, Appellants
merely assert that the same arguments with respect to independent claim 5
apply and that any additional references cited do not cure the alleged
deficiencies. We do not find any deficiencies in the art cited against
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independent claim 5 and therefore affirm the Examiner’s rejections of
dependent claims 2, 3, and 7-12 for the same reasons as discussed above.

Issue 2: 35 U.S.C. § 103(a) Rejections Including Swanson
Appellants argue that “Swanson fails to disclose a history module that
stops recording transaction information based on a break point condition
value and records a predetermined number of entries after the break point
condition value reaches a threshold based on the trigger mode value,” as
recited in independent claim 5. App. Br. 17 (emphasis in original).
Appellants assert that Swanson begins but does not stop recording based on
an alleged break point condition value. App. Br. 18. Appellants argue that
when the breakpoint condition value reaches a threshold, Swanson
transitions to a “TRIGGERED state,” which is the basis for “beginning
recording . . . not stopping recording.” App. Br. 18 (emphasis in original).
The Examiner reiterates that the “based on” language recited in claim
5 is broad and is construed to mean “to find or establish a basis for.” Ans.
21. The Examiner finds that “[t]he counter begins counting at the start of the
TRIGGERED state, which is entered based on the break point condition
value.” Ans. 20. Moreover, the Examiner finds that the counter “ends
counting, and thus capturing and storing, when the prestored value has been
decremented to zero.” Ans. 20. Thus, the Examiner finds that, after the break
point condition value reaches a threshold, “the TRIGGERED state is entered
and a predetermined number of entries are stored.” Ans. 21 (citing Swanson
col. 9 ll. 30-50, which states in part “Upon occurrence of the desired number
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of triggers [i.e., reaching a threshold] . . . causes a transition of the state
machine from the ARMED to the TRIGGERED state.”).
We agree with the Examiner’s findings. Nothing in the recited
language in claim 5 precludes both the beginning and the ending of the
recording being based on the break point condition value reaching a
threshold. Appellants appear to be arguing that, because the occurrence of a
desired number of triggers begins the recording, stopping recording cannot
be based on the same occurrence of the desired number of triggers. We
disagree and, therefore, we do not find that the Examiner erred in rejecting
claim 5 as obvious in view of the combination of Nemazie, Swanson, and
Mori.
With respect to dependent claims 2, 3, and 7-12, Appellants merely
assert that the same arguments with respect to independent claim 5 apply
and that any additional references cited do not cure the alleged deficiencies.
We do not find any deficiencies in the art cited against independent claim 5
and therefore affirm the Examiner’s rejections of dependent claims 2, 3, and
7-12 for the same reasons as discussed above.

DECISION
The Examiner’s rejection of claims 2, 3, 5, and 7-12 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)(2011).

AFFIRMED
Appeal 2010-008130
Application 11/447,572

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