Ex Parte Kale et al

Patent Trial and Appeal Board

Aug 29, 2014

12049440 (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/049,440 03/17/2008 Shreyas Abhay Kale RPS920070316US1 6881
63638 7590 08/29/2014
STREETS & STEELE - IBM CORPORATION
13100 WORTHAM CENTER DRIVE, SUITE 245
HOUSTON, TX 77065
EXAMINER
RHU, KRIS M
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
08/29/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHREYAS ABHAY KALE, JULIE MORRIS,
JUSTIN MONROE PIERCE, and
RICHARD W. VANDERPOOL III
____________________

Appeal 2012-001380
Application 12/049,440
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
10, 12–19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 12/049,440
2
The claims are directed to enhanced throughput communication with a
peripheral device. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:

communicating data between an operating system and a
single peripheral device over a universal serial bus having a
plurality of ports; and

sequentially directing portions of the data through the
plurality of ports.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dan
James
US 2008/0028146 A1
US 2008/0071948 A1
Jan. 31, 2008
Mar. 20, 2008

REJECTIONS
The Examiner made the following rejections:
Claims 1–9, 12–18, 21, and 22 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over James and Dan.
Claims 10 and 19 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over James, Dan, and Appellants’ admitted prior art.

ANALYSIS
Claims 1–3, 5, 6, 9, 10, 12–14, 16, 17, 19, 21, and 22
Regarding claim 1, Appellants contend “James does not send data
sequentially. Rather, James sends data over multiple lanes during each
bytetime. . . . James may use a striping protocol, but James fails to teach or
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suggest sequentially directing portions of the data through the plurality of
ports, as claimed.” (Br. 10). Appellants argue “[t]he use of the term
sequentially in claim 1 should be interpreted in a manner consistent with the
specification as described above in relation to Appellant’s FIG. 3B.” (Id.)
“The examiner’s suggested interpretation of the term sequentially does not
fully address the term sequentially directing and is unreasonably broad in
light of the Appellant’s specification.” (Id. at 11).
Appellants further contend Dan “teaches two separate physical
devices, and is inconsistent with the ‘single peripheral device’ of claim 1”
and “embodiments that are disclose[d] by Dan as having two combined
UFDs [universal serial bus (USB) flash disks] . . . do not have their
respective USB connectors in a configuration that would allow them to be
simultaneously coupled to USB ports” (Br. 12). Appellants also contend
Dan is not fairly characterized as teaching “a host being an operating
system,” (id.) and even if “Dan’s host computer may run an operating
system, [this fact] does not mean that James’ host runs, or is capable of
running, an operating system” (id. at 13). Additionally, Appellants contend
the Examiner failed to state a proper motivation to combine the references
(id.).
We disagree with Appellants.
We agree with the Examiner’s broad but reasonable interpretation of
the claim 1 limitation “sequentially directing portions of the data through the
plurality of ports” as encompassing James’s striping of data over multiple
paths (see Ans. 5, 22–23), and further clarify the proper construction here.
Based on the plain meaning of claim 1, the adverb “sequentially” modifies
the verb “directing.” Thus, it is the directing of the data portions through the
ports that is sequential. Importantly, claim 1 does not specify the timing of
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the actual transfer of the portions of data over the multi-port USB between
the operating system and peripheral device, and thus does not preclude
sending portions of data simultaneously over the multi-port USB after
sequentially directing the data portions through the ports. In other words,
claim 1 requires “sequentially directing” data portions through the ports, but
not sequentially sending data portions to the peripheral device.
Based on this construction, we agree with the Examiner and find
James discloses the claimed “sequentially directing” feature. Specifically,
James describes data communication between a host 120 and a peripheral
device, such as network search engine (NSE) 130, where the host and NSE
are connected via serial interface 200 comprising multiple unit interfaces
202–204 (James ¶¶ 21–24, 30; Figs. 1A and 2).
Each of the lanes [of the serial interface] can use the striping
protocol by providing a byte of information across each lane
during a bytetime, the time that it takes to send a byte of
information across each lane. A set of lanes can include a
number of lanes (e.g., four serial lanes) that can work together
to provide the communicated data. During a bytetime, a set of
lanes having four serial lanes would transmit 32 bits of data per
bytetime (4 serials [sic] lanes*8 bits of data per lane). If there
is a 64 bit message to be transmitted from host 120 to serial
interface 200 through the four serial lanes, it would take two
bytetimes to transmit the entire message.

(James ¶ 31). One of ordinary skill in the art would have understood
James’s striping protocol as sequentially directing bytes of data from a
message through the serial lanes in round-robin fashion. That is, each
successive byte in the message is directed through the next available lane,
which we find meets the limitation “sequentially directing portions of the
data through the plurality of ports,” as recited in claim 1.
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Appellants argue that once a byte of data has been provided to each of
four serial lanes in James, the 32 bits of data are transmitted in one bytetime,
i.e., simultaneously (see Br. 10). In contrast, Appellants argue, the present
invention sends data portions sequentially to USB flash drive 80, i.e., not
simultaneously (see id. at 9–10). In other words, James breaks up a message
into portions, assigns them to serial lanes, and then sends the portions
simultaneously across the multiple lanes (see James ¶ 31), while the present
invention breaks up data into portions, directs them through multiple ports,
but sends the portions in staggered fashion (see Spec. ¶ 32; Fig. 3B). This
argument, however, is not persuasive because, as discussed above, claim 1
merely requires “sequentially directing” the data portions through the ports,
but does not specify the timing of transmission to the peripheral device.
Alternately, even if we construed the claim 1 limitation “sequentially
directing” to require actually sending one portion of data before another to
the peripheral device, this disputed claim 1 feature would still read on
James. As the Examiner finds (Ans. 23), claim 1 encompasses an example
where three bytes of data are sent simultaneously over three lanes, followed
by another three bytes over the three lanes. Claim 1 reads on this example
because “[e]ven though the 3 bytes may be sent simultaneously, they
nonetheless are sending data sequentially in 3-byte portions over the 3
lanes” (id.). Appellants argue such interpretation is overly broad (see
Br. 11). We disagree, because claim 1 does not specify that each portion of
data be directed through a single port. Rather the claim language
“sequentially directing portions of the data through the plurality of ports”
encompasses either sending each data portion over a single port or over
multiple ports. Similar to the Examiner’s example, James describes sending
32 bits of data, i.e., a portion of data, followed by another 32 bits of data of a
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64 bit message over four serial lanes (See James ¶ 31). We agree with the
Examiner (see Ans. 23) and find that this meets the limitation of sequentially
sending “portions of the data through the plurality of ports” under the
alternate construction mentioned above.
Further, Appellants’ argument that Dan does not teach a single USB
flash disk with connections to multiple USB ports (see Br. 11-12), is
unavailing. As discussed above, James discloses connecting a host to a
single peripheral device through multiple serial lanes, i.e., “a plurality of
ports.” Dan is important for disclosing that it was known in the art to
connect a host computer to a USB device (see Ans. 5; Dan ¶ 3). The
Examiner also finds that one of ordinary skill in the art would have known
that a host computer can run an operating system (Ans. 5). Thus, Dan
discloses an operating system communicating data with a single USB
peripheral device. The Examiner then applies James’s concept to the USB
art disclosed by Dan (see id. at 5–6, 26). Accordingly, it is the combination
of references, not Dan alone, that collectively disclose an operating system
communicating data with a USB device over multiple ports.
We disagree with Appellants that the Examiner fails to state a proper
motivation to combine the references. The Examiner concludes that “it
would have been obvious to one of ordinary skill in the art, having the
teachings of James and Dan before him or her, to modify James . . . because
it would merely involve applying the concept of connecting one host and
one device through multiple serial ports as taught in James to the host
computer-UFD relationship taught in Dan” (Ans. 5-6). Under KSR Int’l Co.
v. Teleflex Inc., “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
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actual application is beyond his or her skill.” 550 U.S. 398, 417 (2007).
This rationale applies here because James’s technique of communicating
data between a host and a peripheral device over multiple ports would
provide a similar improvement—“the higher the throughput of the
networking system and lower the latency” (James ¶ 9)—in the context of a
system communicating data between a host computer running an operating
system and a USB device as disclosed in Dan. Such combination would
require creating a multi-port connection between the operating system and
USB device. However, Appellants have presented no evidence showing this
would be beyond the level of ordinary skill in the art.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–3, 5, 6, 9, 10, 12–14, 16, 17, 19, 21, and 22 not
specifically argued separately.

Claims 4, 15, and 18
Appellants “acknowledge[] that Dan discloses a storage device, but
does not teach or suggest ‘communicating data between an operating system
and a single peripheral device over a universal serial bus having a plurality
of ports,’ where the single peripheral device is a single mass storage device”
(Br. 13). We disagree with Appellants.
As discussed above, the combination of James and Dan discloses
“communicating data between an operating system and a single peripheral
device over a universal serial bus having a plurality of ports,” as recited in
claim 1. The additional limitation of “mass storage device” in claim 4 does
not differentiate the claimed invention from the combination, which includes
Dan’s USB flash disk—a “well known device[] in the art of computer
engineering for storing and porting information” (Dan ¶ 3). Appellants’
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Specification does not define what constitutes “mass” storage, and thus this
relative term fails to distinguish the claimed invention from the prior art.
We are therefore not persuaded the Examiner erred in rejecting claim
4, and claims 15 and 18 not specifically argued separately.

Claim 7
Appellants contend “the rejection fails to identify the claimed
‘plurality of hubs’” (Br. 13). The Examiner finds Dan discloses plugging
two USB flash disks into the same host computer, which would have
suggested two USB hubs on the host computer to one of ordinary skill in the
art (Ans. 9, 28). Appellants do not specifically contest this factual finding
regarding two USB flash disks communicating with the same host computer.
Thus, absent more argument or evidence to the contrary, we are not
persuaded the Examiner erred in rejecting claim 7.

Claim 8
Appellants contend “the rejection fails to clarify how James’
disclosure of two or more unit interfaces is a teaching of a single peripheral
device being exposed to an operating system as a single logical device”
(Br. 14). The Examiner cites to James (Ans. 9), which discloses “[t]he
controller has the ability to bond two or more unit interfaces to function as a
single entity when the two or more unit interfaces communicate with a
single host” (James ¶ 10). The Examiner explains, “[b]y bonding the two or
more unit interface[s] to function as a single entity, a peripheral device
connected to the bonded two or more unit interfaces will be viewed as a
single entity” (Ans. 29). In other words, the peripheral device will appear as
“a single logical device” to the host despite the fact that there are at least two
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connections between the host and the peripheral device. Appellants have not
specifically explained any shortcoming in the Examiner’s finding as quoted
above.
We are therefore not persuaded that the Examiner erred in rejecting
claim 8.

CONCLUSION
The Examiner did not err in rejecting claims 1–10, 12–19, 21, and 22
under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner’s rejections of claims 1–10, 12–
19, 21, and 22 are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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