Ex Parte Erdmann et al

Patent Trial and Appeal Board

Feb 24, 2017

14107821 (P.T.A.B. Feb. 24, 2017)

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.
14/107,821 12/16/2013 Michael A. Erdmann 1002.0890008[11-027001US] 6854
59752 7590 02/28/2017
BROOKS, CAMERON & HUEBSCH , PLLC
1201 MARQUETTE AVENUE SOUTH, SUITE 400
MINNEAPOLIS, MN 55403
EXAMINER
FRANKLIN, RICHARD B
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
02/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Micron .Docketing @ bipl. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. ERDMANN, KEITH J. LUNZER, and JOSEPH M.
JEDDELOH
Appeal 2016-008229
Application 14/107,8211
Technology Center 2100
Before STEPHEN C. SIU, JAMES R. HUGHES, and SCOTT B.
HOWARD, Administrative Patent Judges.
SIU, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—6 and 10—20. We have jurisdiction
under 35 U.S.C. § 6(b).
The disclosed invention relates generally to memory system
controllers. Spec 12. Independent claim 1 reads as follows:
1. An apparatus, comprising:
a memory controller including:
a host bus adapter (HBA); and
1 According to Appellants, the real party in interest is Micron Technology,
Inc. (Appeal Brief, filed January 14, 2016 (“App. Br.”) 3).
Appeal 2016-008229
Application 14/107,821
a serial attachment (SA) programming compliant device
coupled to the HBA via a function-specific interconnect
configured to simultaneously transfer a command, a response,
and other information between the HBA and the SA
programming compliant device.
Appellants appeal the Examiner’s rejection of claims 1, 4, 5, and 12—
20 on the ground of nonstatutory double patenting over claims 1,10, 14, 15,
17, and 18 of US 8,621,113 and US 8,694,723; claims 1—4, 6, 11—14, and 18
under 35 U.S.C. § 103(a) as unpatentable over Masiewicz et al. (US
5,784,390, issued July 21, 1998, “Masiewicz”), Ellis et al. (US 8,006,001
B2, issued August 23, 2011, “Ellis”) and Chakhaiyar (US 8,694,723 B2,
issued April 8, 2014, “Chakhaiyar”); and claim 10 under 35 U.S.C. § 103(a)
as unpatentable over Masiewicz, Ellis, Chakhaiyar, and Bianchi (US
2009/0119452 Al, published May 7, 2009, “Bianchi”).
ISSUE
Did the Examiner err in rejecting claims 1—6 and 10—20?
ANALYSIS
Non-Statutory Double Patenting
As noted above, the Examiner rejects claims 1, 4, 5, and 12—20 on the
ground of nonstatutory double patenting over claims 1, 10, 14, 15, 17, and
18 of US 8,621,113 and US 8,694,723, which Appellants do not dispute.
Therefore, we summarily affirm the Examiner’s rejection with respect to this
issue.
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Obviousness
Claim 1 recites a serial attachment (SA) programming compliant
device. The Examiner finds that Masiewicz discloses this feature. Final
Act. 5 (citing Masiewicz Fig. IB). Claim 12 recites a similar feature.
Appellants argue that Masiewicz discloses a “parallel attachment interface”
but fails to disclose a “serial” attachment programming compliant device
and that Masiewicz fails to disclose a device that is “serial attachment (SA)
programming compliant,” as recited in claim 1 or claim 12. App. Br. 9—10.
We are not persuaded by Appellants’ argument.
First, Appellants assert that Masiewicz discloses “an ATA-compatible
drive interface” (App. Br. 10 (citing Masiewicz Abstract)) and argue from
this alleged disclosure of Masiewicz that “AT attachments are parallel
attachment interfaces.” App. Br. 10. However, Appellants provide
insufficient evidence supporting this assertion that “AT attachments are
parallel attachment interface,” that Masiewicz, in fact, fails to disclose or
suggest a serial attachment (SA) programming compliant device, as recited
in claim 1, or that the alleged “AT attachments [that] are parallel attachment
interface^]” differ from the claimed “serial attachment (SA) programming
compliant device,” and in what way. For example, claim 1 recites that the
“serial attachment (SA) programming compliant device” is coupled to the
HBA via a function-specific interconnect. Appellants do not assert or
demonstrate persuasively that the alleged “AT attachments” of Masiewicz
are not “coupled to the HBA via a function-specific interconnect,” as recited
in claim 1 or that the alleged “AT attachments” of Masiewicz differ in any
other (specific) way from the claimed “serial attachment (SA) programming
compliant device.”
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Second, even assuming that Masiewicz discloses that “AT
attachments are parallel attachment interfaces,” as Appellants appear to
assert, and that this alleged disclosure somehow indicates that the alleged
“AT attachments” differ from the claimed “serial attachment” compliant
device in some way, we are still not persuaded by Appellants’ argument at
least because, according to the Examiner, the “Serial ATA (SATA)
specification” discloses that it was known to those of skill in the art that
“SATA devices are backwards compatible with legacy ATA devices” such
that “legacy ATA devices [are] compliant with” serial attachment. Ans. 12.
Appellants argue that “[a]ny backward compatibility of SATA with ATA
does not necessarily mean that ATA is forward compatible with SATA.”
Reply Br. 2. However, Appellants do not assert or demonstrate persuasively
that one of skill in the art would have understood that a device that is
“compatible” with another device is nevertheless somehow “non-complianf ’
with the other device. Indeed, one of skill in the art would not have
understood that such contradictory conditions would occur simultaneously.
In addition, even assuming that Masiewicz discloses only “parallel
attachments” and that the alleged “parallel attachments” are not “serial
attachments,” as recited in claim 1, we are still not persuaded by Appellants’
argument because there is a finite number of identified, predictable modes of
data transfer that one of skill in the art would have had good reason to
pursue and would have been within the technical grasp of the skilled artisan
— namely, data may be transferred either serially or in parallel.
[A] person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to
the anticipated success, it is likely that product [was] not of
innovation but of ordinary skill and common sense. In that
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Application 14/107,821
instance the fact that a combination was obvious to try might
show that it was obvious under § 103(a).
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In the present case,
the selection of transferring data serially would have required only a choice
of a known option among a finite number of known options (i.e., 2 options)
to achieve the predictable success of transferring data, the option itself being
well within the purview and technical grasp of the skilled artisan, the skilled
artisan being one “of ordinary skill” and “ordinary creativity” and “not an
automaton.” Id.
Claim 1 recites that the serial attachment (SA) programming
compliant device is coupled to a “host bus adapter (HBA).” The Examiner
finds that Masiewicz discloses this feature. Final Act. 5 (citing Masiewicz
Fig. IB), Advisory Action 2. Appellants argue that Masiewicz discloses a
“disk storage device and disk controller” that “do not include an HBA.”
App. Br. 10-11. Hence, Appellants argue that Masiewicz fails to disclose a
“host bus adapter,” as recited in claim 1.
The Examiner states that Masiewicz discloses that the “disk storage
device” and “disk controller” contain a “host interface 109 that links the host
computer ... to the disc controller . . . via an AT A connector” and equates
the “host interface” of Masiewicz with the claimed “host bus adapter”
because, according to the Examiner, both the “host interface” of Masiewicz
and the “host bus adapter,” as recited in claim 1, “links the device ... to the
host computer . . . over a bus.” Ans. 13. We agree with the Examiner.
Appellants do not provide arguments persuasive of Examiner error with
respect to this issue. Reply Br. 2—5.
Claim 1 recites simultaneously transferring a command, a response,
and other information between the HBA and the SA programming compliant
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Application 14/107,821
device. Claim 12 recites a similar feature. The Examiner finds that Ellis
discloses this feature. Final Act. 5 (citing Ellis 2:4—10), Advisory Action 2.
Appellants argue that Ellis “describes only a simultaneous transfer of a
command and other information, but not a response” and that “one of
ordinary skill in the art would not equate read data [of Ellis] to a response
[as claimed].” App. Br. 11, 12.
The Examiner finds that Ellis discloses returning “read data from the
previous command” simultaneously with “sending commands from an
initiator.” Ans. 13 (citing Ellis 2:5—8). Hence, the Examiner finds that Ellis
discloses simultaneously transferring a command and a response (i.e., read
data) that is responsive to a previous command (i.e., a “response”). We
agree with the Examiner. Appellants argue that Ellis fails to disclose
returning an “acknowledgement of a command.” We note claim 1 and claim
12 recite simultaneously transferring a command and a response. Claim 1
and claim 12 do not also recite simultaneously transferring a command and
an “acknowledgement.” Therefore, even assuming Appellants to be correct
that Ellis fails to disclose an “acknowledgement,” we are still unpersuaded
by Appellants’ argument.
To the extent that Appellants argue that the “read data” of Ellis is
distinct from the claimed “response,” Patent Owner fails to explain
persuasively a difference between the “read data” of Ellis and the claimed
“response.” In both cases data is transferred as a response.
Appellants argue that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Masiewicz, Ellis
and Chakhaiyar because doing so would supposedly result in “a change in
the basic principle under which Masiewicz’s construction was designed to
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Application 14/107,821
operate.” App. Br. 13. We are not persuaded by Appellants’ argument at
least for the reasons set forth by the Examiner. See e.g., Ans. 14—15.
For example, Masiewicz discloses a system and method for “fast,
reliable data transfers across a data bus between a host and a device in a
computer system having a host processor.” Masiewicz 2:55—57. Hence the
“basic principle” of Masiewicz is transferring data reliably across a data bus
between devices in a computer system. Ellis discloses a computer system in
which data (or commands) are transferred from an “initiator” in the
computer system and sent to “a device” in the system. See e.g., Ellis 2:1—8.
In other words, Ellis also discloses transferring data between devices in a
computer system. Chakhaiyar discloses a computer system that includes “a
host computer” that is “in communication” with “devices” “through an
interface.” Chakhaiyar 1:40-46. In other words, Chakhaiyar also discloses
a computer system in which data is transferred between devices in the
computer system. Given that the “basic principle” of each of Masiewicz,
Ellis, and Chakhaiyar is data transfer between components of the computer
system, one of skill in the art would have understood that the “basic
principle” of each of Masiewicz, Ellis, and Chakhaiyar are the same and that
combining disclosures of systems with the same “basic principle” would not
change the “basic principle” of any one of the references, the “basic
principle” of each of the references being the same in the first place.
Appellants provide similar arguments in support of claim 18 and do
not provide additional substantive arguments in support of other claims
under appeal or substantive arguments with respect to Bianchi.
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Application 14/107,821
DECISION
We affirm the Examiner’s rejection of claims 1—6 and 10—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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