Ex parte Giorgio et al.

Board of Patent Appeals and Interferences

May 7, 1999

08219555 (B.P.A.I. May. 7, 1999)

Application for patent filed March 29, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL J. GIORGIO and STEPHEN J. AMURO
____________
Appeal No. 97-1206
Application No. 08/219,5551
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the patent examiner’s final rejection of claims 1 through
5, all the claims pending in the application. The appellants
filed an amendment after final rejection on January 29, 1996.
The examiner denied entry thereof.
Appeal No. 97-1206
Application No. 08/219,555
We REVERSE.
Appeal No. 97-1206 Page 3
Application No. 08/219,555
BACKGROUND
The appellant's invention is a method of operating a
controller as a network file server. The controller
interfaces a plurality of host processors to a plurality of
Small Computer System Interface (SCSI) peripheral devices,
i.e., SCSI targets, via a single SCSI initiator within the
controller. When a host processor requests status data, i.e.,
ATTENTION DATA, from a target the data are written to a memory
in the controller from which the processor can read the
requested data. The memory contains separate address spaces
for each of the processors. The requested data are replicated
and a separate copy is stored at each of the address spaces so
that the data are available independently to each of the
processors. Therefore, each of the processors has independent
access to the most currently requested status data.
Claim 1, which is representative of the claims, follows:
1. A method of providing any of a plurality of host
processors ATTENTION DATA and PM DATA on any of a plurality of
SCSI targets through a controller, said controller including a
host adapter, microprocessor, only one SCSI initiator, and
memory, with said memory comprising separate addresses for
ATTENTION DATA from each of said plurality of SCSI targets for
each of said plurality of host processors on a one to one
Appeal No. 97-1206 Page 4
Application No. 08/219,555
basis so that ATTENTION DATA from one of said plurality of
SCSI targets for one of said host processors can be cleared
without clearing any other ATTENTION DATA, with said method
comprising the steps of:
receiving at said controller a command from one of said
plurality of host processors for one of said plurality of SCSI
targets;
determining if said controller contains ATTENTION DATA
from said one of said plurality of SCSI targets;
determining if said command is a request for ATTENTION
DATA when said controller contains ATTENTION DATA from said
one of said plurality of SCSI targets;
returning ATTENTION DATA from said controller to said one
of said plurality of host processors for said one of said
plurality of SCSI targets and clearing at said controller only
the ATTENTION DATA for said one of said plurality of host
processors from said one of said plurality of SCSI targets
when said command is a request for ATTENTION DATA; and
returning PM DATA for said one of said plurality of SCSI
targets when said controller does not contain ATTENTION DATA
and command is a PM REQUEST.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims follows:
Fischer 4,783,730 November 8,
1988
Appeal No. 97-1206 Page 5
Application No. 08/219,555
Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Fischer. Rather than repeat the
arguments of the appellants or examiner, we make reference to
the appeal brief, reply brief, and examiner’s answer for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we have
considered the subject matter on appeal, the rejection
advanced by the examiner, and the evidence of anticipation
relied on by the examiner as support for the rejection. We
have also considered the appellants’ arguments contained in
the briefs along with the examiner’s rationale in support of
the rejection and arguments in rebuttal contained in the
examiner’s answer. After considering the record before us,
it is our view that the Fischer does not meet fully the
invention as recited in claims 1-5. Accordingly, we reverse.
As a preliminary matter, the appellants contends that for
purposes of the appeal the claims do not stand or fall
Appeal No. 97-1206 Page 6
Application No. 08/219,555
together. (Brief, p. 5) This contention appears to be based
on enumerated differences in what the claims cover. (Id. at
4-5) The appellants fails to present arguments why the
dependent claims (i.e., claims 2-5), which are subject to the
same rejection as the independent claim (i.e., claim 1), are
separately patentable. In the argument section of the appeal
brief the appellants makes no comment on the dependent claims
but only argues about the independent claim. Accordingly, it
is appropriate for us to treat the claims subject to the
rejection as standing or falling together as a single group.
See 37 C.F.R. § 1.192(c)(7); M.P.E.P. § 1206. See In re King,
801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
Appeal No. 97-1206 Page 7
Application No. 08/219,555
388 (Fed. Cir. 1984); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
The examiner basically makes a blanket anticipation
rejection of claims 1-5 on Fischer without meaningful
analysis. (Answer, p. 4) The rejection does not indicate how
the examiner is reading the claims on the disclosure of
Fischer. The first time in the answer that the examiner makes
any correspondence between elements of the claims and the
disclosure of Fischer occurs in the response to arguments
section of the answer. There the examiner reads only selected
limitations from the claims on
the disclosure of Fischer. The examiner’s correspondence of
elements, however, fails to consider all the language of
claims 1-5.
Regarding independent claim 1, notwithstanding the many
limitations of the claim ignored by the examiner, the
appellants makes a single relevant argument in support of its
Appeal No. 97-1206 Page 8
Application No. 08/219,555
position that Fischer does not anticipate the invention of the
claims. Appellants make several arguments which compare the
disclosure of their invention with Fischer (i.e., arguments
concerning a limitation of an ANSI standard) but the disclosed
invention is not the measure of patentability. The relevant
argument made by appellants are that Fischer fails to
discloses the claimed memory comprising separate address
spaces for storing ATTENTION DATA from each of the targets for
each of the processors on a one-to-one basis such that
ATTENTION DATA from one of the targets for one of the hosts
can be cleared without clearing ATTENTION DATA for any of the
other hosts. (Reply Brief, p. 3) The examiner fails to
address this argument.
We agree with the appellants that Fischer fails to
disclose the invention of independent claim 1. Fischer
discloses
interfacing a plurality of processors 2 to a plurality of I/O
devices 42a-42c via an I/O adapter 22a and a main memory 26.
Data transferred between the processors and peripheral devices
are written to the memory in the controller (col. 4, lines 14-
Appeal No. 97-1206 Page 9
Application No. 08/219,555
20). The memory of Fischer does not replicate data being
transferred from a device, however, and store a separate copy
of the data at separate addresses so that the data are
available independently to each of the processors. The memory
of Fischer employs Queue Descriptors to store data being
transferred between the processors and devices. A single
Queue Descriptor is allocated to each device (col. 5, lines
36-37). Thus, status data from a particular device are not
replicated and stored in separate address spaces for each
processor in Fischer. The status data are stored only at one
address space. Because the invention of claims 1-5 is not
fully disclosed by Fischer, we do not sustain the rejection
based on Fischer.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-5 under 35 U.S.C. § 103 is reversed.
Appeal No. 97-1206 Page 10
Application No. 08/219,555
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 97-1206 Page 11
Application No. 08/219,555
LLB/kis
Michael J. McGowan
Office of Counsel, Bldg. 112T
NAVAL UNDERSEA WARFARE CENTER
Division, Newport
Newport, RI 02841-5047
APPEAL NO. 97-1206 - JUDGE BARRY
APPLICATION NO. 08/219,555
APJ BARRY
APJ JERRY SMITH
APJ HAIRSTON
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 11 Jan 00
FINAL TYPED: