Ex Parte ITOH et al

Board of Patent Appeals and Interferences

Jul 22, 2004

09030829 (B.P.A.I. Jul. 22, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SAKAE ITOH, TATSUYA SAKAI, MASAYUKI MURAKAMI
and TSUTOMU NUMATA
____________
Appeal No. 2003-0965
Application No. 09/030,829
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and MACDONALD, Administrative Patent
Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-10.
Invention
Appellants' invention relates to control of the input/output
operation between a microcomputer unit (MCU) and a hard disc
controller (HDC). The MCU and HDC are synchronized with a clock.
(Appellants' specification, page 25, lines 20-25). In the case
of an output operation, the MCU sends a data read request signal
Appeal No. 2003-0965
Application No. 09/030,829
2
to the HDC to request data be sent from the HDC to the MCU.
(Specification, page 33, lines 12-13). The HDC sends a response
status signal (acknowledgment signal ACK) to the MCU, which
causes the MCU to read a "read data" (a data word) from the HDC.
(Specification, page 33, line 19-33). The timings of the ACK
signals are continuous, discrete, or a combination of both
depending on the processing condition of the HDC.
(Specification, page 25, lines 26-31). For a single request
signal from the MCU, in a first mode the HDC sends one (discrete)
ACK signal, in a second mode the HDC sends plural (continuous)
ACK signals, and in a third mode some combination of the ACK
signals.
Claim 1 is representative of the claimed invention and is
reproduced as follows:
1. A data access unit including a hard disk controller and a
microcomputer unit connected to said hard disk controller, said
data access unit comprising:
clock synchronizing means for operating said hard disk
controller and said microcomputer unit in synchronization with a
clock signal; and
control means for controlling timing of outputting a hard
disk controller-to-microcomputer response status for each read
data depending on a processing condition of the hard disk
controller, the timing of the output of the response status being
continuous, discrete or a combination thereof for each read data.
Appeal No. 2003-0965
Application No. 09/030,829
1 Appellants filed an appeal brief on October 7, 2002. The
Examiner mailed out an Examiner's Answer on December 17, 2002.
3
References
The references relied on by the Examiner are as follows:
Culley 5,159,679 Oct. 27, 1992
Henson et al. (Henson) 5,465,343 Nov. 7, 1995
Squires et al. (Squires) 5,610,808 Mar. 11, 1997
Rejections At Issue
Claims 1, 2, and 10 stand rejected under 35 U.S.C. § 103 as
being obvious over the combination of Squires and Culley.
Claims 3-9 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Henson and Culley.
Throughout our opinion, we make references to the
Appellants' brief, and to the Examiner's Answer for the
respective details thereof.1
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner's rejections and the arguments of the
Appellants and the Examiner, for the reasons stated infra, it is
our view, after consideration of the record before us, that the
Examiner has not established a prima facie case of obviousness
with respect to claims 1-10. Accordingly, we reverse the
Examiner's rejection of claims 1-10 under 35 U.S.C. § 103.
Appeal No. 2003-0965
Application No. 09/030,829
4
We also use our authority under 37 CFR § 1.196(b) to enter a
new ground of rejection of claims 1-10. The basis for this is
set forth in detail below.
Appellants have indicated that for purposes of this
appeal, the claims stand or fall together in two groupings:
Claims 1, 2, and 10 as Group I; and
Claims 3-9 as Group II.
See page 14 of the brief. Furthermore, Appellants argue
each group of claims separately and explain why the claims of
each group are believed to be separately patentable. See pages
14-19 of the brief. Appellants have fully met the requirements
of 37 CFR § 1.192 (c)(7) (July 1, 2002) as amended at 62 Fed.
Reg. 53169 (October 10, 1997), which was controlling at the time
of Appellants' filing of the brief. 37 CFR § 1.192 (c)(7)
states:
Grouping of claims. For each ground of
rejection which appellant contests and which
applies to a group of two or more claims, the
Board shall select a single claim from the
group and shall decide the appeal as to the
ground of rejection on the basis of that
claim alone unless a statement is included
that the claims of the group do not stand or
fall together and, in the argument under
paragraph (c)(8) of this section, appellant
explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims
cover is not an argument as to why the claims
are separately patentable.
Appeal No. 2003-0965
Application No. 09/030,829
5
We will, thereby, consider Appellants' claims as standing or
falling together in the two groups noted above, and we will
treat:
Claim 1 as a representative claim of Group I; and
Claim 3 as a representative claim of Group II.
"If the brief fails to meet either requirement, the Board is free
to select a single claim from each group and to decide the appeal
of that rejection based solely on the selected representative
claim." In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462,
1465 (Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362,
69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Rejection of Claims 1-10 Under 37 CFR § 1.196(b).
We make the following new grounds of rejection using our
authority under 37 CFR § 1.196(b).
Claims 1-10 are rejected under 35 U.S.C. § 112, first
paragraph, because the specification, while being enabling for
"the timing of the output of the response status being . . .
discrete . . . for each read data," does not reasonably provide
enablement for "the timing of the output of the response status
being . . . continuous . . . for each read data." The
specification does not enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to
Appeal No. 2003-0965
Application No. 09/030,829
6
make and use the invention commensurate in scope with these
claims.
The question before us is, what would Appellants'
specification have taught one having ordinary skill in the art?
To answer this question we find the following facts:
1. Appellants' specification, page 25, lines 29-30, states
that, "the timing of outputting the signal ACK can be set
continuous . . . for each word."
2. Appellants' specification, page 33, lines 19-33, shows
that a "word" is equivalent to a "read data" as found in
claim 1.
3. The specification, page 21, lines 29-30, states that,
"the HDC outputs the response status signal to the MCU
for each access." We read "access" as "read data access"
or "word access" since the FIFO at line 30 is word based
(see line 25).
4. The specification, page 22, line 2, states that, "[t]he
response status signal is generated for each access."
Again we read "access" as "read data access" or "word
access."
5. The specification, page 22, lines 9-10, states that,
"the response status signal is applied to the MCU upon
each data transfer." We read, "transfer" as "word
transfer."
6. The specification, page 33, lines 21-24 and 29-32,
shows that in the continuous access method (see line 5)
the timing of the response status (ACK) signal is
discrete for each read data.
We find that nowhere in Appellants' specification, except
for 1 above, is there anything about "the timing of the output of
the response status being continuous for each read data."
Appeal No. 2003-0965
Application No. 09/030,829
7
Rather, as shown at 3-6 above, the timing of the output of the
response status is actually taught as being discrete for each
read data. We find that if the response status (ACK) signal were
indeed to be continuous for any data read (data word), then the
device of Appellants' specification would be inoperative. Given
that the MCU inputs (or outputs) a data word for each ACK, if a
second ACK were sent in the middle of a read data (data word) by
the MCU, then the MCU would attempt a second input operation on
top of the first.
We note that had the phrase "each read data" in claim 1,
instead been "each access request signal," then the result would
be the opposite. We find that all of Appellants' specification
is directed to the timing of the output of the response status
(ACK signal) being discrete or continuous for each access request
signal. Thus, the specification would be enabled for a claim
where the MCU retrieves a data word for each ACK signal the MCU
receives, and for a single access request signal sent from the
MCU, in a first mode the HDC sends one (discrete) ACK signal and
in a second mode the HDC sends plural (continuous) ACK signals.
Appeal No. 2003-0965
Application No. 09/030,829
8
II. Whether the Rejection of Claims 1, 2, and 10 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1, 2, and 10. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
Appeal No. 2003-0965
Application No. 09/030,829
9
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency's conclusion." In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 1, we find that the Examiner
has not addressed the limitation of Appellants' claims that require
that "the timing of the output of the response status being . . .
continuous. . . for each read data." For this reason alone, we find
that the Examiner has not met the initial burden of establishing a
prima facie case of obviousness with respect to the rejection based on
these two references. Therefore, we will not sustain the Examiner's
rejection under 35 U.S.C. § 103.
III. Whether the Rejection of Claims 3-9 Under 35 U.S.C. § 103
is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 3-9. Accordingly, we reverse.
Appeal No. 2003-0965
Application No. 09/030,829
10
With respect to independent claim 3, we find that the Examiner
has not addressed the limitation of Appellants' claims that require
that "the timing of the output of the acknowledgment signal being
. . . continuous . . . for each read data." For this reason alone, we
find that the Examiner has not met the initial burden of establishing
a prima facie case of obviousness with respect to the rejection based
on these two references. Therefore, we will not sustain the
Examiner's rejection under 35 U.S.C. § 103.
Conclusion
In summary we have not sustained the rejection under
35 U.S.C. § 103 of claims 1-10. We have entered a new ground of
rejection against claims 1-10 under 37 CFR § 1.196(b).
As indicated supra, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
December 1, 1997, by final rule notice, 62 Fed. Reg 53131, 53197
(October 10, 1997), 1203 Off. Gaz. Pat, Office 63, 122 (October
21, 1997)). 37 CFR § 1.196(b) provides that, "[a] new ground of
rejection shall not be considered final for the purposes of
judicial review."
37 CFR § 1.196(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
Appeal No. 2003-0965
Application No. 09/030,829
11
rejection to avoid termination of proceedings (§ 1.197 (c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded to
the examiner . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 1.196(b)
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM/lbg
Appeal No. 2003-0965
Application No. 09/030,829
12
BURNS DOANE SWECKER & MATHIS, LLP
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404