Ex parte Giorgio et al.Download PDFBoard of Patent Appeals and InterferencesMay 7, 199908219555 (B.P.A.I. May. 7, 1999) Copy Citation 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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: Copy with citationCopy as parenthetical citation