Ex Parte Grasso et al

Patent Trial and Appeal Board

Sep 17, 2012

11000318 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LAWRENCE JOSEPH GRASSO, BARNEY LOUIS HALLMAN,
BRUCE JAMES WILKIE
____________________

Appeal 2010-005911
Application 11/000,318
Technology Center 2100

____________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT, JOHNNY A.
KUMAR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005911
Application 11/000,318

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a non-final
rejection of claims 1, 4-10, 21-23, and 26-31. We have jurisdiction under 35
U.S.C. § 6(b). Claims 2-3, 11-20, 24, 25, and 32 have been cancelled (App.
Br. 2).
We AFFIRM-IN-PART.
Introduction
According to Appellants, the invention relates to data processing
systems employing external or remote I/O resources (Spec. 1, §1. Field of
the Present Invention).

STATEMENT OF THE CASE

Exemplary Claim
Claims 1 and 21 are exemplary claims and are reproduced below:
1. An expansion apparatus suitable for use with a first host
system, comprising:

a chassis;

a first expansion buss port for receiving an expansion buss [sic]
connection from the first host;

a first expansion card within the chassis, wherein the first
expansion card includes multiple adapter slots;

a bridge device providing an interface between each adapter slot
and the expansion buss [sic.];

a means for monitoring settings and conditions within the
chassis;

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a storage means within the chassis;

a means for storing an assignment state of the first expansion
card in the storage means and for providing the assignment state to
the first host, wherein the assignment state is indicative of whether
the first host may configure the first expansion card; and

a first management port for receiving a chassis management
cable, the chassis management cable connecting a chassis controller
to the first host, the chassis management cable transmitting, between
the chassis controller and the first host, information describing
environmental conditions within the chassis, and the assignment
state of the first expansion card.

21. A data processing assembly comprising:

a first host of a first platform type;

at least one expansion drawer connected to the first host by a
first expansion buss [sic] cable and including a first expansion card
assigned to and configured by the first host, wherein the first host
further includes a second expansion buss [sic] connected to a second
expansion card, wherein the first host configures the first expansion
card via the first expansion buss [sic], and the second expansion card
via the second expansion buss [sic];

a storage device of the expansion drawer containing an
assignment state indicative of the assignment of the first expansion
card;

wherein the host is enabled to retrieve the assignment state
from storage device and to determine whether to configure the first
expansion card depending upon information in the assignment state
and the host is configured not to retain the assignment state across
boot cycles; and

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the assembly is configured to enable the first host to access the
first and second expansion cards via the second expansion buss [sic]
responsive to a failure of the first expansion buss [sic].

References
Behrbaum US 6,462,745 B1 Oct. 8, 2002
Chinnaswamy US 6,611,526 B1 Aug. 26, 2003
Bouchier US 6,725,317 B1 Apr. 20, 2004
Hewlett-Packard, “AlphaServer GS80, GS160, and GS320 Systems
Technical Summary,” 2002, (herein “HP”)

Hewlett-Packard, “TruCluster Software Products, Technical Update for
TruCluster Software Products Version 1.6 with Tru64 UNIX Version 4.0G
and AlphaServer GS160 Hard Partitions”, June 2000, (herein “HP2”)

Hewlett-Packard, “AlphaServer Management Station, Adding a GS80, or
GS320 to an AMS Environment”, June 2004, (herein “HP3”)

Rejections
(1) Claims 1 and 4-10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over HP, Behrbaum, Bouchier, and Chinnaswamy.
(2) Claims 21-23, 26, and 28-31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over HP, Behrbaum, Bouchier,
Chinnaswamy, and HP2.
(3) Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over HP, Behrbaum, Bouchier, Chinnaswamy, HP2, and HP3. 1

1 We note Appellants misstate the basis of rejection for claim 27 in Grounds
of Rejection (App. Br. 5) omitting Bouchier and Chinnaswamy. However,
Appellants did indicate the proper grounds of rejection in their “Argument
Regarding The Third Ground Of Rejection On Appeal” (App. Br. 13).
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GROUPING OF CLAIMS

Based upon Appellants’ arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1 and 4-10. (See
App. Br. 6-10).
Based upon Appellants’ arguments, we select representative claim 21
to decide this appeal for the group consisting of claims 21-23, 26, and 28-31.
(See App. Br. 10-13).
Based upon Appellants’ arguments, we address claim 27 individually.
(See App. Br. 13-14).
Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 103(a): claims 1 and 4-10
Appellants assert their invention is not obvious over HP, Behrbaum,
Bouchier, and Chinnaswamy because the combination does not teach or
suggest “a first management port for receiving a chassis management cable,
the chassis management cable connecting a chassis controller to the first
host” (App. Br. 8-10). Specifically, Appellants contend Chinnaswamy
teaches an interchassis link port for connecting one chassis to another but
does not teach or suggest a management port for receiving a chassis
management cable (App. Br. 8). According to Appellants, a chassis is not a
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host (App. Br. 9). Further, Appellants argue the recited chassis management
cable transmits at least two kinds of information whereas Chinnaswamy’s
interchassis link port does not receive a chassis management cable that
transmits both kinds of information (App. Br. 8 and Reply Br. 6).

Issue 1: Has the Examiner erred in finding the combination of HP,
Behrbaum, Bouchier, and Chinnaswamy would have taught or suggested “a
first management port for receiving a chassis management cable, the chassis
management cable connecting a chassis controller to the first host” as recited
in claim 1?
ANALYSIS
Initially, we agree with the Examiner’s interpretation of “chassis
management cable” (Ans. 19) and therefore find the chassis management
bus is a chassis management cable. We further find Appellants’ definition
of “host” attempts to read limitations from the Specification into the claims
(see App. Br. 9). However, Appellants specifically define host as “a
processing system” (see Spec. 1, l. 15; see also Spec. 15, ll. 5-6 which
describes a host as including a general purpose processor connected to a
common bus). Therefore we decline to import limitations asserted by
Appellants into the interpretation of “host.”
In light of this interpretation, we find the application module taught by
Chinnaswamy teaches or suggests a processing system and thus, a first host.
Indeed, Figure 16 of Chinnaswamy teaches an exemplary application
module – a processing system.
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We further find Chinnaswamy in Figure 6 teaches or suggests the
chassis management bus 432 connecting a chassis controller 428/430 to the
first host 422 (see col. 3, l. 56 to col. 4, l. 1). Further, Chinnaswamy teaches
or suggests a first management port for receiving a chassis management
cable (Fig. 5, Interchassis Link Port), as set forth by the Examiner (Ans. 19).
Appellants have not shown the Examiner’s interpretation of management
port is in error. Further, Appellants are arguing limitations not recited in the
claim (App. Br. 9). Specifically, claim 1 does not recite any functionality of
the first management port aside from “for receiving a chassis management
cable.” We find the interchassis link port is a port for receiving the chassis
management cable.
Appellants further argument that Chinnaswamy does not teach or
suggest transmitting two kinds of information is also non-persuasive. First
we note the type of information is non-functional descriptive matter. Indeed,
the information itself has no function. Further, even if we were to give
weight to the terms, the Examiner has relied on Bouchier as teaching the
type of information being transmitted (Ans. 6). One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Accordingly, the Examiner did not err in finding the combination of
HP, Behrbaum, Bouchier, and Chinnaswamy would have taught or
suggested “a first management port for receiving a chassis management
cable, the chassis management cable connecting a chassis controller to the
first host” as recited in independent claim 1 and dependent claims 4-10, not
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separately argued. Therefore, the Examiner did not err in rejecting claims 1
and 4-10 under 35 U.S.C. § 103(a) for obviousness over HP, Behrbaum,
Bouchier, and Chinnaswamy.

ISSUE 2
35 U.S.C. § 103(a): claims 21-23, 26, and 28-31
Appellants assert their invention is not obvious over HP, Behrbaum,
Bouchier, Chinnaswamy, and HP2 because the combination does not teach
or suggest “wherein the first host further includes a second expansion buss
[sic] connected to a second expansion card” (App. Br. 12-13). Specifically,
Appellants contend Chinnaswamy discloses one bus, not a first expansion
bus and a second expansion bus (App. Br. 12). Appellants further argue the
two parallel lines illustrated in Figure 6 of Chinnaswamy indicates one
element (id.).

Issue 2: Has the Examiner erred in concluding the combination of
HP, Behrbaum, Bouchier, Chinnaswamy, and HP2 would have taught or
suggested “wherein the first host further includes a second expansion buss
[sic] connected to a second expansion card” as recited in claim 21?

ANALYSIS
We agree with Appellants (Reply Br. 10-11). We do not find
Chinnaswamy teaches or suggests two chassis management buses. Instead,
Figure 6 and the related disclosure suggest one chassis management bus.
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The Examiner relies on Figure 16 and column 4, lines 31-37 as teaching the
second expansion bus (Ans. 14 and 20-21). However, these portions are
directed to the backplane which is a different element than the chassis
management bus. Therefore, although we agree Chinnaswamy teaches two
separate management busses for failure protection (col. 4, ll. 31-37), the
Examiner has not shown that Chinnaswamy teaches or suggests a second
expansion bus connected to a second expansion card that is enabled for
access by the first host responsive to failure of the chassis management bus.
Accordingly, the Examiner erred in finding the combination of HP,
Behrbaum, Bouchier, Chinnaswamy, and HP2 would have taught or
suggested “wherein the first host further includes a second expansion buss
[sic] connected to a second expansion card” the invention as recited in
independent claim 21 and dependent claims 22, 23, 26, and 28-31, not
separately argued. Therefore, the Examiner erred in rejecting claims 21-23,
26, and 28-31 under 35 U.S.C. § 103(a) for obviousness over HP,
Behrbaum, Bouchier, Chinnaswamy, and HP2.

ISSUE 3
35 U.S.C. § 103(a): claim 27
ANALYSIS
Claim 27 depends from claim 21. The Examiner has not shown HP3
cures the deficiencies of the combination of HP, Behrbaum, Bouchier,
Chinnaswamy, and HP2. Therefore, the Examiner erred in rejecting claim
27 under 35 U.S.C. § 103(a) for obviousness over HP, Behrbaum, Bouchier,
Chinnaswamy, HP2, and HP3.
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Application 11/000,318

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DECISION
The Examiner’s rejection of claims 1 and 4-10 under 35 U.S.C. §
103(a) as being unpatentable over HP, Behrbaum, Bouchier, and
Chinnaswamy is affirmed.
The Examiner’s rejection of claims 21-23, 26, and 28-31 under 35
U.S.C. § 103(a) as being unpatentable over HP, Behrbaum, Bouchier,
Chinnaswamy, and HP2 is reversed.
The Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) as
being unpatentable over HP, Behrbaum, Bouchier, Chinnaswamy, HP2, and
HP3 is reversed.

AFFIRMED-IN-PART

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