Ex parte Donaldson

Board of Patent Appeals and Interferences

Nov 12, 1999

08461806 (B.P.A.I. Nov. 12, 1999)

Application for patent filed June 5, 1995. According to the appellant,1
this is a divisional application of application 08/119,915, filed September 10, 1993,
now issued as patent No. 5,491,593, granted February 13, 1996.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte JAMES E. DONALDSON
__________________
Appeal No. 1998-0595
Application 08/461,8061
________________
ON BRIEF
________________
Before McKELVEY, Senior Administrative Patent Judge, LEE and
SCHAFER, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-4 and 9. Claims 5-8, 10
and 11 have been canceled. No claim has been allowed.
References relied on by the Examiner
Lewis et al. 5,438,464 August 1, 1995
(Lewis) filed April 23, 1993
Appeal No. 98-0595
Application 08/461,806
2
The Rejection on Appeal
Claims 1-4 and 9 stand finally rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lewis. Claim 1 is the sole
independent claim. Claims 2-4 and 9 depend either directly or
indirectly from claim 1.
The Invention
The claimed invention is directed to a synchronizing
control system for an array of disk drive data storage
devices. Independent claim 1 is reproduced below:
1. A synchronizing control system for an array of
disk drive data storage devices comprising
a plurality of disk drives,
each said disk drive including a disk spindle
assembly driven by a spindle motor, an oscillator assembly
that supplies a precision index signal, switch means
connecting said precision index signal to an index input line,
and a spindle motor control circuit connected to said index
input line, said spindle motor control circuit including means
for regulating said disk spindle assembly speed and
synchronizing said disk spindle assembly with the index signal
on said index signal input line;
a common line interconnecting the index input
lines of each of said plurality of disk drives;
a bus interconnecting each of said plurality of
disk drives; and
means for activating one and only one of said
switch means during synchronized operation of said plurality
Appeal No. 98-0595
Application 08/461,806
3
of disk drives in response to a spindle synchronization
command on said bus, whereby the oscillator assembly connected
to said one switch means becomes the master which provides the
index signal to all of said plurality of disk drives.
Opinion
The anticipation rejection of claims 1-4 and 9 cannot be
sustained. A reversal of the rejection on appeal should not
be construed as an affirmative indication that the appellant’s
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
According to claim 1, a plurality of disk drives are
connected to each other by a bus. Each disk drive includes a
means for activating a switch means in response to a spindle
synchronization command on the bus. An oscillator assembly
activated by the switch means causes the associated disk drive
to become a master relative to the other disk drives. The key
to this appeal is the claimed feature of the presence of a
spindle synchronization command on a bus which connects all of
the disk drives.
The examiner acknowledges that Lewis does not expressly
show a spindle synchronization command on a bus that connects
Appeal No. 98-0595
Application 08/461,806
4
all the disk drives. (Answer at page 4, paragraph 13).
However, the examiner states that the “spindle synchronization
command limitation” is found in column 5, line 51 through
column 6, line 9 of Lewis, and that “this” use of a bus is
intrinsic to the operation of Lewis. (Answer at page 4,
paragraph 13). The examiner further cites case law for the
proposition that a reference nonetheless anticipates a claim
if it discloses the appellant’s claimed invention in a manner
such that a skilled artisan could take [the reference]’s
teachings “in combination with his knowledge of the prior art
and can be in possession of the invention.” (Emphasis in
original.)
We have reviewed the cited portions of Lewis and cannot
agree with the examiner that the “spindle synchronization
command limitation” is found in column 5, line 51 through
column 6, line 9 of Lewis. The cited text refers to five bits
in the diagnostic and control register 34 of the spindle
synchronizer 20 of each disk drive, one of which, the bit M_D,
determines whether the associated disk drive acts as the
master disk drive for all the other disk drives or merely as a
Appeal No. 98-0595
Application 08/461,806
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slave disk drive. Note that in column 8, lines 7-10, of
Lewis, it is stated:
The M_D bit controls the driver 50
used to drive the signal MASTER REF. This
bit is programmed to “ZERO” in master disk
drive 10, and to “ONE” in a slave disk
drive 12.”
The five bits of the diagnostic and control register do
not constitute a spindle synchronization command for the
plurality of disk drives. The register is in the spindle
synchronizer 20 and thus is internal to each disk drive. Each
disk drive has its own diagnostic and control register. If
anything, the contents of the register merely reflect the end
result of the execution of a spindle synchronization command
if there ever was a spindle synchronization command for all of
the disk drives. As is indicated in the above-quoted text,
the M_D bit in the diagnostic and control register within the
spindle synchronizer 20 of each disk drive was previously
programmed. To the extent that such prior programming
constitutes a spindle synchronization command, the examiner
has not explained why programming through a common bus would
have been inherent. The examiner finds that “this use of a
bus in Lewis et al. is intrinsic to its operation” (Answer at
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Application 08/461,806
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page 4) but fails to give the necessary explanation. Why
would it be intrinsic? Why would it have been necessarily so
that the programming is performed over a common bus? Why
couldn’t each diagnostic and control register be programmed
separately over different paths and also at different times?
We decline to speculate on the various possible manners in
which the many registers may be programmed.
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 15 USPQ2d
1655, 1657 (Fed. Cir. 1990); RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). See also In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984). The prior art reference must
either expressly or inherently describe each and every
limitation in a claim. Verdegaal Bros. v. Union Oil Co., 814
Appeal No. 98-0595
Application 08/461,806
7
F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied,
484 U.S. 827 (1987).
Inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.
Continental Can Co. USA, Inc. v. Monsanto, 948 F.2d 1264,
1268-69, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
The decision of the Court of Appeals for the Federal
Circuit in In re LeGrice, 301 F.2d 929, 938-39, 133 USPQ 365,
373-374 (CCPA 1962), cited by the examiner, is not apposite.
That case concerns the scope of enabling disclosure of a prior
art reference for purposes of an anticipation rejection. The
underlying premise was that the prior art reference already
describes what the appellant’s claim recites. The question in
doubt was whether one with ordinary skill in the art would
have known how to make that which has been described. In this
case, the issue is not whether one with ordinary skill in the
art would have known how to put a spindle synchronization
command on a common bus if directed to do so, but whether the
prior art Lewis reference describes the goal or objective of
Appeal No. 98-0595
Application 08/461,806
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putting a spindle synchronization command on a bus which
connects all of the disk drives together.
As for the Federal Circuit’s decision in In re Graves, 69
F.3d 1147, 36 USPQ2d 1697 (Fed. Cir. 1995), cert. denied, 116
S.Ct. 1362 (1996), which the examiner also cited, it appears
that the examiner is relying on the notion that what is
otherwise known to one with ordinary skill in the art need not
be described in a prior art reference. That, however, does
not help the examiner’s position here, because the examiner
has made no demonstration based on evidence in the record that
putting a spindle synchronization command on a bus commonly
connected to all disk drives was known to one with ordinary
skill in the art.
For the foregoing reasons, the rejection of claims 1-4
and 9 cannot be sustained.
Conclusion
Appeal No. 98-0595
Application 08/461,806
9
The rejection of claims 1-4 and 9 under 35 U.S.C.
§ 102(e) as being anticipated by Lewis is reversed.
REVERSED
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
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) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
JL:yrt
Appeal No. 98-0595
Application 08/461,806
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Matthew J. Bussan
IBM CORPORATION
Department 917
3605 Highway 52 North
Rochester, NY 55901-7829