10969149 (B.P.A.I. Aug. 9, 2010)

Ex Parte Ghanem et al

Board of Patent Appeals and InterferencesAug 9, 2010

10969149 (B.P.A.I. Aug. 9, 2010)

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. 10/969,149 10/20/2004 Ayman Mohammad Ghanem STL12359 4395 7590 08/09/2010 Fellers, Snider, Blankenship, Bailey & Tippens P.C. 100 North Broadway, Suite 1700 Oklahoma City, OK 73102-8820 EXAMINER ROJAS, MIDYS ART UNIT PAPER NUMBER 2185 MAIL DATE DELIVERY MODE 08/09/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte AYMAN MOHAMMAD GHANEM and ROBERT GEORGE BEAN ____________________ Appeal 2009-007389 Application 10/969,1491 Technology Center 2100 ____________________ Before JAY P. LUCAS, ST. JOHN COURTENAY III, AND DEBRA K. STEPHENS, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING2 1 Application filed October 20, 2004. The real party in interest is Seagate Technology, LLC. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007389 Application 10/969,149 Appellants request a rehearing of the Decision mailed January 28, 2010 affirming the final rejection3 of claims 1 to 20. Appellants’ invention relates to a system and method for switching redundant storage controllers in a failure situation. Representative claim 1 reads as follows: 1. A redundant data storage system comprising a first controller with top-level control of a first memory space and a second controller with top-level control of a second memory space different than the first memory space, the arrangement adapted for asynchronously writing state information by the first controller to the second memory space. (emphasis added). Appellants, in their Request for Rehearing, contend that the Board, in their analysis, should not only have read into the word “asynchronously” the definition provided in the Specification, but should also have read into the claimed term a comment about the operation of the master controller 108. (Req. Reh. 3, top). We decline to do so. Ordinarily terms in a claim, when in prosecution before the Office, are given a broad but reasonable interpretation. (In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). This is the practice before the Office, where the Appellants retain the opportunity to amend the claims to avoid anticipating prior art or to improve the claim clarity. 3 Final Rejection dated 8/10/2007. 2 Appeal 2009-007389 Application 10/969,149 When interpreting a claim, “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). “Consistent with that general principle, our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” (Id. at 1316). However, we are cautioned that the disclosure of the specification is not to be read as limitations of the claim, unless the terms actually appear there. Although "the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Thus, we find it proper to include the definition of the word “asynchronously” into our analysis of the representative claim. However, we would not go so far as to include the proposed limitation “the master controller 108 reflectively writes modified state information asynchronously for substantially instantaneous access of the redundant controller 108 to the most current state information” (Req. Reh. 3, top) into the claim, as proposed by the Appellants, without that clause being written. A definition explains the words of a claim. Adding a limitation of the type proposed would be an impermissible reading of the specification into the claim language. DECISION The Request for Rehearing has been considered, and is denied. 3 Appeal 2009-007389 Application 10/969,149 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED peb FELLERS, SNIDER, BLANKENSHIP, BAILEY & TIPPENS P.C. 100 NORTH BROADWAY, SUITE 1700 OKLAHOMA CITY, OK 73102-8820 4