Ex Parte LEAK

Board of Patent Appeals and Interferences

Sep 28, 2004

09336649 (B.P.A.I. Sep. 28, 2004)

1 Application for patent filed June 18, 1999.
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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL LEAK
____________
Appeal No. 2003-1473
Application No. 09/336,6491
____________
ON BRIEF
____________
Before KRASS, BARRY, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-8, which are all of the claims pending in
this application.
We reverse.
BACKGROUND
Appellant’s invention is directed to a method and system for
management of multiple storage devices coupled to a common small
Appeal No. 2003-1473
Application No. 09/336,649
2
computer systems interface (SCSI) bus by automatically altering
the IDs of each target device on a cross-linked bus. Since
different devices on each section of the bus must be uniquely
recognized, it is necessary to avoid SCSI ID numbers that are
duplicates of numbers in another section of the bus
(specification, page 3).
Representative independent claim 1 is reproduced below:
1. A method for selectively interconnecting two SCSI host
buses where each SCSI host bus includes a host device and a
plurality of addressable SCSI devices each having a SCSI ID, said
method comprising the steps of:
interposing a repeater between a first SCSI host bus and a
second SCSI host bus;
selectively enabling the repeater; and
automatically altering the SCSI ID of each SCSI device on
the second SCSI host bus in response to the enabling of the
repeater such that there are no overlapping SCSI IDs within the
two combined SCSI host buses.
The Examiner relies on the following references in rejecting
the claims:
Pascarella et al. (Pascarella) 6,055,582 Apr. 25, 2000
(filed Jan. 16, 1998)
IBM Technical Disclosure Bulletin (IBM TDB), “SCSI Switches for
Redundant Arrays,” vol. 34, no. 6, Nov. 1991, pp. 342-343.
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over IBM TDB in view of Pascarella.
Appeal No. 2003-1473
Application No. 09/336,649
3
We make reference to the answer (Paper No. 13, mailed
December 17, 2002) for the Examiner’s reasoning, and to the
appeal brief (Paper No. 12, filed November 20, 2002) for
Appellant’s arguments thereagainst.
OPINION
In rejecting the claims, the Examiner asserts that each of
the SCSI switches of IBM TDB, between the two sections of the bus
connecting devices 1-6, is the same as the claimed repeater
(answer, page 4). However, the examiner acknowledges that IBM
TDB does not teach the step of automatically altering the SCSI ID
of each SCSI device on the second bus in response to the enabling
of the repeater and relies on Pascarella for disclosing
selectively interconnecting host buses and automatically altering
the SCSI device IDs (id.).
Appellant argues that the claimed term “repeater,” as
discussed on page 3 of the specification, is intended as a device
“capable of picking up a signal, from a host, and reproducing the
signal to provide an enhanced signal for devices on the bus
(brief, page 4). Appellant specifically argues that the switches
disclosed in IBM TDB are not repeaters since they do not
reproduce a signal and are merely for opening and closing the
Appeal No. 2003-1473
Application No. 09/336,649
4
connection and establishing a conductive path for the signal
(brief, page 5).
In response, the Examiner argues that the claims do not
recite the features that may be present in the definition of
“repeater” (answer, page 7). The Examiner further asserts that
the SCSI bus switches J-M of IBM TDB and the SCSI duplex-ready
logic 42 of Pascarella are indeed repeaters because they repeat
the signals of the first SCSI host (answer, page 8).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). In considering the question of the
obviousness of the claimed invention in view of the prior art
relied upon, the Examiner is expected to make the factual
determination set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is
required in order to establish a prima facie case. In re
Appeal No. 2003-1473
Application No. 09/336,649
5
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984). However, “the 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).
We find ourselves in agreement with Appellant that the
combination of the references does not teach or suggest the
claimed subject matter since the switch taught in IBM TDB is not
the same as the recited repeater. IBM TDB, in fact, configures
three devices on a bus communicating with each initiator wherein
a switch merely connects the three devices (3,5,7) on one bus to
another bus which has its own three devices (2,4,6) in case one
of the initiators fails (page 343). Thus, the degraded bus mode
will have a total of six devices (2-7), each having its own
identification, that are connected to one initiator (id.).
Contrary to the Examiner’s assertion (answer, page 7), giving the
ordinary meaning of the term “repeater” to the claimed term is
not the same as reading limitations from the specification into
the claims. A repeater, as disclosed by Appellant
(specification, page 3), reproduces the signal on the next
section of a cable and is different from a switch which merely
Appeal No. 2003-1473
Application No. 09/336,649
2 To show a repeater in rejecting the claims, the Examiner should have
probably considered the three references (specification, page 3, lines 8-10)
cited by Appellant as examples of bus repeaters.
6
connects or isolates two buses when closed or opened.2 However,
the switches of IBM TDB merely connect and disconnect buses in
order to isolate devices connected to each initiator or connect
all the devices to one initiator in case of failure of the other
initiator.
We also note that the Examiner, for the first time in page 8
of the answer, characterizes the SCSI duplex-ready logic 42 of
Pascarella as the claimed “repeater” and reasons that element 42
repeats all the signals of the first bus and uses switches 50
(Figures 13 and 14) for reproducing the signal. Although
Appellant chose not to file a reply brief in order to address
this point, it is imperative that we clarify whether the
Examiner’s position supports a prima facie case of obviousness.
Pascarella, in col. 2, lines 24-34, discloses:
To enable a SCSI simplex mode, the bus switches are closed
and the set or sets of terminators are selectively disabled
and/or enabled. A primary SCSI bus and a secondary SCSI bus
thereby form a single electrical bus.
If a primary SCSI cable and a secondary SCSI cable are
present, the duplex-ready logic controller enables a SCSI
duplex mode. To enable a SCSI duplex mode, the bus switches
are opened and the terminators are selectively enabled
and/or disabled. The primary SCSI bus and secondary SCSI bus
thereby are electrically separate busses.
[Emphasis added.]
Appeal No. 2003-1473
Application No. 09/336,649
7
Additionally, the primary and the secondary buses 17 and 19 are
joined as a single bus in the simplex mode when switches 50 are
closed (col. 9, lines 8-12 and Figure 13) whereas the buses are
physically and electrically separate in the duplex mode when
switches 50 are open (col. 9, lines 17-20 and Figure 14).
Therefore, logic 42 control the number of available channels by
switching between a simplex and a duplex mode, at best, by
connecting and disconnecting the primary and the secondary buses
17 and 19. This is also a switching function instead of what
Appellant has described as reproducing the signal on the next
section of a cable representing the function of a repeater.
Thus, assuming, arguendo, that it would have been obvious to
combine IBM TDB with Pascarella, as held by the Examiner, the
switches that connect and disconnect the two buses would still be
different from the claimed repeater imposed between the first and
the second buses. Accordingly, as the Examiner has failed to set
forth a prima facie case of obviousness, we do not sustain the 35
U.S.C. § 103 rejection of claims 1-8 over the combination of IBM
TDB with Pascarella.
Appeal No. 2003-1473
Application No. 09/336,649
8
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-8 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2003-1473
Application No. 09/336,649
9
LSI Logic Corporation
1621 Barber Lane
MS: D-106 Legal
Milpitas, CA 95035