Ex Parte Luse et al

Board of Patent Appeals and Interferences

Sep 20, 2006

10113458 (B.P.A.I. Sep. 20, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Paul E. Luse, Dieter E. Massa, and Norbert Lewalski-Brechter

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Appeal No. 2006-0721
Application No. 10/113,458

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ON BRIEF
____________

Before JERRY SMITH, BARRY, and MacDONALD, Administrative Patent Judges.
BARRY, Administrative Patent Judge.

A patent examiner rejected claims 1-30. The appellants appeal therefrom under
35 U.S.C. § 134(a). We affirm.

I. BACKGROUND
The invention at issue on appeal concerns "device resource allocation." (Spec.,
p. 1, l. 4.) In a modular redundant array of independent or inexpensive disks on a
motherboard ("MROMB"), MROMB circuitry on a circuit card is used to configure and
control an input/output ("I/O") controller independently of a host processor. More
specifically, the circuitry allocates predetermined addresses to the I/O controller.
Depending upon the addresses that the host processor allocates to other devices,
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Application No. 10/113,458

however, the I/O controller's addresses may conflict with those of the other devices. (Id.
at ll. 7-19.)

In contrast, the appellants' invention allocates of a set of addresses to an I/O
processor on a MROMB circuit card. The I/O processor, in turn, allocates a subset of
those addresses to an I/O controller. lf the set of addresses to an I/O processor is
changed, the I/O processor changes the subset of of those addresses allocated to the
I/O controller. (Id., p. 29, ll. 5-10.) An further understanding of the invention can be
achieved by reading the following representative claims.
1 . A method comprising:

if a first device determines that a processor has initiated a
configuration cycle, holding off by the first device the configuration cycle;

after the holding off the configuration cycle, allocating by the
processor a first set of resources to the first device;

allocating, by the first device, a second set of resources to a
second device, the first set of resources comprising the second set of
resources; and

if the first set of resources is changed, changing, by the first device,
the second set of resources.

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5. A method comprising:

enabling, by a first device, a second device to perform one or more
pending operations; and

prior to the enabling of the second device to perform the one or
more pending operations, determining, by the first device, whether a
change has occurred to a first set of resources associated with the first
device;

wherein the second device is associated with a second set of
resources comprised in the first set of resources, and the first set of
resources is allocated to the first device by a processor after the first
device has held off a configuration cycle initiated by the processor.

Claims 1-30 stand rejected under 35 U.S.C. § 102(a) as anticipated by Intel
Corporation, MROMB Design Considerations Using the Intel 80303® I/O Processor
Application Note ("MROMB Note").

II. OPINION
At the outset, we remind the appellants that in a specification "[a] brief summary
of the invention indicating its nature and substance, which may include a statement of
the object of the invention, should precede the detailed description. Such summary
should, when set forth, be commensurate with the invention as claimed and any object
recited should be that of the invention as claimed." 37 C.F.R. § 1.73. "The brief
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summary, if properly written to set out the exact nature, operation, and purpose of the
invention, will be of material assistance in aiding ready understanding of the patent in
future searches." M.P.E.P. § 608.01(d). Here, because the appellants' instant
specification omits such a brief summary, one should be added.

"When multiple claims subject to the same ground of rejection are argued as a
group by appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (Sep. 30, 2004).

Here, the only claims that the appellants argue individually are claims 1 and 5.
(Appeal Br.1 at 12.) Therefore, we select claim 1 as the sole claim on which to decide

1We cite to the appellants' amended appeal brief, filed June 6, 2005, because
their original appeal brief was defective. (Notification of Non-Compliant Appeal Br.)
The latter brief has not been considered in deciding the appeal.
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the appeal of claims 1-4, 8-11, 15-18, and 22-24 and claim 5 as the sole claim on which
to decide the appeal of claims 5-7, 12-14, 19-21, and 25-30.
A. CLAIMS 1-4, 8-11, 15-18, AND 22-24
With the aforementioned representation in mind, rather than reiterate the
positions of the examiner or the appellants in toto, we focus on the point of contention
therebetween. The examiner finds, "MROMB Note does disclose the limitation 'if the
first set of resources (i.e. address range) is changed (i.e. host relocates the base
address originally assigned to the IOP BAR), changing (i.e. reprogramming), by the first
device, the second set of resources (Section 4.1 , Second Paragraph).'" (Examiner's
Answer at 10.) The appellants do not address the examiner's specific application of
Section 4.1 of the MROMB Note. Instead, they merely underline limitations is claim 1
and allege, "These specific combinations of limitations of the independent claims are
nowhere disclosed or suggested in the MROMB Note." (Appeal Br. at 12.)

"In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the representative claim at issue to determine its scope. Second, we
determine whether the construed claim is anticipated." Ex parte Pittaro, No. 2005-
2057, 2006 WL 1665401, at *2 (Bd.Pat.App & Int. 2006).

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1. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000)). "Moreover, limitations are not to be read into the claims from the specification."
In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).

Here, claim 1 recites in pertinent part the following limitations: "if the first set of
resources is changed, changing, by the first device, the second set of resources."
Giving the representative claim its broadest, reasonable construction, the limitations
require a first device to change resources allocated to a second device in response to a
change in the resources allocated to the first device.

2. Anticipation Determination
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"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002).
"[A]nticipation is a question of fact." Hyatt, 211 F.3d at 1371, 54 USPQ2d at 1667
(citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15 (1869); In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). "A reference anticipates a
claim if it discloses the claimed invention 'such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and be in
possession of the invention.'" In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697,
1701 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372
(CCPA 1962)).

Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d
831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990) (citing Akzo N.V. v. United States
Int'l Trade Comm'n, 808 F.2d 1471, 1479 & n.11, 1 USPQ2d 1241, 1245 & n.11 (Fed.
Cir. 1986)). "An anticipatory reference . . . need not duplicate word for word what is in
the claims." Standard Havens Prods. v. Gencor Indus., 953 F2d 1360, 1369, 21
USPQ2d 1321, 1328 (Fed. Cir. 1991).

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Application No. 10/113,458

Here, "[t]he purpose of th[e] [MROMB Note] is to provide to system design
engineers the design considerations to take into account when designing Modular RAID
on Motherboard (MROMB) solutions using the Intel® 80303 I/O Processor (80303
IOP)." (§ 1.0 (internal footnote omitted.)) The reference explains that "[t]he 80303 IOP
communicates with the I/O controller via the 80303 IOP's primary PCI bus which is
visible to the host system" (§ 2.1.) Such communication enables "the 80303 IOP . . . to
setup the necessary resources in host memory for the I/O controller," (§ 3.2, ¶ 2), and
"to reserve space for the I/O controller within the BAR (Base Address Register) of the
80303 IOP," (§ 4.1, ¶ 2); "[t]he IOP configures the I/O controller to respond to PCI
transactions within this address range." (Id.)

"[I]t is possible for the host to relocate the base address originally assigned to
the IOP BAR." (Id.) We agree with the examiner's finding that reallocating such
address resources to the IOP teaches the claim's change in resources allocated to a
first device. Such a reallocation, explains the MROMB "require[s] the IOP to . . .
reprogram the I/O controller accordingly," (id.), i.e., to change the space reserved for
the I/O controller within the IOP's relocated BAR so that the I/O controller can respond
to PCI transactions within the relocated address range. We further agree with the
examiner's finding that the IOP's changing of the space reserved for the I/O controller
teaches the claim's first device's changing resources allocated to a second device in
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response to a change in the resources allocated to the first device. Therefore, we affirm
the rejection of claim 1 and of claims 2-4, 8-11, 15-18, and 22-24, which fall therewith.

B. CLAIMS 5-7, 12-14, 19-21, AND 25-30
The examiner finds, "MROMB Note discloses . . . determining, by the first device
(i.e. IOP), whether a change has occurred to a first set of resources (i.e. address range)
associated with the first device (i.e. host relocates the base address originally assigned
to the IOP BAR), wherein the second device is associated with a second set of
resources comprised in the first set of resources (section 4.1). . . ." (Examiner's Answer
at 4.) The appellants do not address the examiner's specific application of Section 4.1
of the MROMB Note. Instead, they merely underline limitations is claim 5 and allege,
"These specific combinations of limitations of the independent claims are nowhere
disclosed or suggested in the MROMB Note." (Appeal Br. at 12.)

1. Claim Construction
Claim 5 recites in pertinent part the following limitations: "prior to the enabling of
the second device to perform the one or more pending operations, determining, by the
first device, whether a change has occurred to a first set of resources associated with
the first device." Giving the representative claim its broadest, reasonable construction,
the limitations require a first device to determine whether resources allocated thereto
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Application No. 10/113,458

have been changed before the first device enables a second device to perform
additional operations.

2. Anticipation Determination
As explained regarding claim 1, supra, the MROMB Note discloses that the IOP
changes the space reserved for the I/O controller in response to the host relocating the
base address originally assigned to the IOP's BAR. A skilled artisan knows that the IOP
must first determine that the base address originally assigned to its BAR has been
relocated before it responds to the relocation. We agree with the examiner's finding that
the IOP's determining that the base address originally assigned to its BAR has been
relocated teaches the first device's determining whether resources allocated thereto
have been changed as claimed.

As also explained regarding claim 1, supra, the reference further discloses that
its IOP responds to the relocation of the address originally assigned to its BAR by
changing of the space reserved for the I/O controller. A skilled artisan knows that such
a change must be performed before the I/O controller is enabled to perform additional
operations; the I/O controller's proceeding before making the change cold lead to errors.
Therefore, we affirm the rejection of claim 5 and of claims 6, 7, 12-14, 19-21, and 25-
30, which fall therewith.
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III. CONCLUSION
In summary, the rejection of claims 1-30 under § 102(a) is affirmed.

"Any arguments or authorities not included in the brief or a reply brief filed
pursuant to § 41.41 will be refused consideration by the Board, unless good cause is
shown." 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, our affirmance is based only on the
arguments made in the appellant's amended appeal brief. Any arguments or authorities
omitted therefrom are neither before us nor at issue but are considered waived. Cf. In
re Watts, 354 F.3d 1362, 1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is
important that the applicant challenging a decision not be permitted to raise arguments
on appeal that were not presented to the Board.") No time for taking any action
connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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Application No. 10/113,458

AFFIRMED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MacDONALD )
Administrative Patent Judge )

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Application No. 10/113,458

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