Ex Parte Byers et al

Board of Patent Appeals and Interferences

Sep 4, 2012

11231295 (B.P.A.I. Sep. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY L. BYERS, JOSEBA M. DESUBIJANA,
GARY R. ROEBECK, and WILLIAM W. DENNIN
____________

Appeal 2010-001651
Application 11/231,295
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 14-19 and 23-28. App. Br. 3.1 Claims 1-13 and 20-22
have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed March 16,
2009; the Examiner’s Answer mailed June 19, 2009; and, the Reply Brief
filed August 18, 2009.
Appeal 2010-001651
Application 11/231,295

2
STATEMENT OF THE CASE
Appellants’ invention is directed to a system for monitoring plural
components in an embedded disk controller. See Spec. 51, Abstract of the
Disclosure.
Claim 14, the only independent claim, is illustrative, with key
disputed limitations emphasized:
14. An embedded disk controller, comprising:
a first bus located in the embedded disk controller;
a first processor that communicates with said first bus;
a second bus located in the embedded disk controller;
a first device that communicates with one of said first and
second buses;
a second processor that communicates with said second bus;
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 said first device and
masks transaction information of said first device based on setup
information.

The Examiner relies on the following as evidence of unpatentability:
Hester US 2004/0093538 A1 May 13, 2004

THE REJECTIONS2
1. The Examiner rejected claims 14-19, 23-25, and 28 under 35
U.S.C. § 102(e) as anticipated by Hester. Ans. 3-5.
2. The Examiner rejected claims 26 and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Hester. Ans. 5-6.

2 The rejection of claim 24 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement is withdrawn. Ans. 6.
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Application 11/231,295

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ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal: Under §102, has the Examiner erred
in rejecting claim 14 by finding that Hester discloses a first and second bus
located within an embedded disk controller?

ANALYSIS
Appellants argue that the Examiner has improperly rejected claims
14-19 and 23-28 as either anticipated by or unpatentable over Hester in view
of the failure of Hester to disclose a first and second bus located within an
embedded disk controller. The basis for Appellants’ position is an assertion
that the bus labelled “TO/FROM HOST” in Figure 3 of Hester is necessarily
external to disk controller 301. App. Br. 6-7.
The Examiner finds that Hester expressly discloses that the various
components of Hester that are shown and described “may be combined as a
single module” (Hester, ¶[0042]) (Ans. 9) and further, that the bus labelled
“TO/FROM HOST” in Figure 3 of Hester, even if external to disk controller
301, must necessarily be connected to an internal bus, within disk controller
301, which couples processor 321 to an external connection. Ans. 7-8.
Appellants argue, in their Reply Brief, that there is no evidence that a
connection exists between processor 321 and the “TO/FROM HOST” bus,
or that such a connection is a “bus.” Reply Br. 8-9.
We find Appellants’ Reply Brief arguments unpersuasive. That is, we
find that the Examiner’s assertion to be well founded that a connection
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Application 11/231,295

4
between processor 321 and the “TO/FROM HOST” bus must exist within
the depicted disk controller, and that such connection must be a “bus.”
Further, even in the absence of such a finding, we are convinced that
Hester, as noted by the Examiner, expressly contemplates the inclusion of all
disclosed elements of their system within a single module.
Consequently, we find the Examiner did not err in rejecting claim 14
as anticipated by Hester, and it follows that claims 15-19 and 23-28, not
separately argued, are properly rejected as well.

CONCLUSION
The Examiner did not err in rejecting claims 14-19 and 23-28 under
either § 102 or § 103.

ORDER
The Examiner’s decision rejecting claims 14-19 and 23-28 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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