Ex Parte Priborsky et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201612391727 (P.T.A.B. Feb. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/391,727 0212412009 75635 7590 02/24/2016 Hall Estill Attorneys at Law (Seagate - MKM) 100 North Broadway Suite 2900 Oklahoma City, OK 73102 FIRST NAMED INVENTOR Anthony Leigh Priborsky 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 ATTORNEY DOCKET NO. CONFIRMATION NO. STL14383 7537 EXAMINER BARTELS, CHRISTOPHER A ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 02/24/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mmccarthy@hallestill.com pmanderson@hallestill.com danderson@hallestill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY LEIGH PRIBORSKY and MARC STEPHEN HILDEBRANT Appeal2014-007052 Application 12/391,727 Technology Center 2100 Before CARL W. WHITEHEAD JR., JOHN P. PINKERTON and NABEEL U. KHAN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants are appealing the final rejection of claims 1-20 under 35 U.S.C. § 134(a). Appeal Brief 14. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Introduction The invention is directed to serial communications and to "controlling a transceiver in a serial link to perform with a desired physical layer quality during communication between devices connected via the serial link." Specification 2. 1 An Oral hearing was held on February 16, 2016. Appeal2014-007052 Application 12/391,727 Representative Claim (disputed limitations emphasized) 1. A method comprising: a first device transmitting a COMWAKE signal to a second device via a serial bus; in response to the first device transmitting the COMW AKE signal, the second device transmitting a training signal that is not a COMW AKE signal to the first device via the serial bus; after transmitting the training signal, setting a first parameter value based on a characterization of the training signal to obtain a desired physical layer quality between the first and second devices; and after setting the first parameter value, transmitting a second training signal that is not a COMW AKE signal to the second device via the serial bus before the second device transmits a COMWAKE signal to the first device. ,,_Rejections on 14ppeal Claims 1, 2, 5-9, 12 and 15-20 stand rejected under 35 U.S.C. §102(e) as being anticipated by Bailey et al. (US Patent Number 7,774,424 Bl; issued August 10, 2010). Final Rejection 2-7. Claims 3, 4, 10, 11, 13 and 14 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Bailey and Sobelman (US Patent Application Number 2006/0129733 Al; published June 15, 2006). Final Rejection 7-10. 2 Appeal2014-007052 Application 12/391,727 ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed February 3, 2013), the Reply Brief (May 27, 2013), the Answer (mailed March 26, 2013) and the Final Rejection (mailed July 18, 2013) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Appellants argue that because "The Office reads the training signal feature on Bailey's Dword data stream, and reads the parameter value feature on Bailey's ALIGNO data stream" the anticipation rejection of claim 1 is improper. Appeal Brief 7-9. Appellants argue that Bailey's ALIGNO data stream is transmitted as a result of characterizing a COMWAKE signal, not a Dword data stream. Appeal Brief 8. The Examiner finds in response to Appellants' arguments that Bailey discloses in column 6, lines 35-40 that the SAT A device transmit a reply data stream (ALIGNO) based upon the Dword data stream disclosed in column 5, lines 36-40.2 Answer 4. We do not agree with the Examiner's findings. Bailey discloses in column 5, lines 25-67 and column 6, lines 1-14, the communication between the port selector and the SAS (Serial Attached SCSI) device. Bailey discloses in column 6, lines 14-67 and column 7, lines 1-24, the communication between the port selector and the SATA device. As Appellants argue, Bailey does not disclose the employment of a COMW AKE signal in association with the SAS device where the Examiner finds the ALIGNO signal. See Appeal Brief 6; see also Bailey's Figure 3; 2 "In Bailey Col 6, lines 35-40, we see 'Device 22 typically transmits [and sets] a reply data stream, seen as an ALIGNO data stream' as a reply/based on the training signal 'transmits a data stream, seen as a 010.2 data stream of Dwords' just prior to said ALIGNO (Bailey Col 5, lines 30-34)." Ans. 4. 3 Appeal2014-007052 Application 12/391,727 column 5, lines 25-67 and column 6, lines 1-14. Further, the Examiner's findings in response to Appellants' arguments are not congruent with the Examiner's findings in the rejection. See Final Rejection 4 (citing Bailey column 8, lines 50-54). Claim 1 requires a first device to transmit a COMWAKE signal to a second device, wherein the second device transmits a signal that is not a COMWAKE signal to the first device, after an undefined parameter is set based upon an undefined characterization of the training signal, a second training signal that is not a COMWAKE signal is sent via the serial bus before the second device transmits a COMWAKE signal to the first device. The Examiner finds that Bailey discloses an invention wherein several devices both transmit and receive signals cited in claim 1; however, Bailey fails to anticipate the designed configuration of signals employed by Appellants' invention. 3 Therefore, we reverse the Examiner's anticipation rejection of independent claims 1, 12 and 20 commensurate in scope, as well as dependent claims 2, 5-9 and 15-19. We reverse the Examiner's obviousness rejection of claims 3, 4, 10, 11, 13 and 14 because Sobelman does not cure Bailey's deficiency. DECISION The Examiner's anticipation rejection of claims 1, 2, 5-9, 12, 15-19 and 20 is reversed. 3 Anticipation requires the presence in a single prior art reference of a disclosure of each and every element of the claimed invention, arranged as in the claim. Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 220 USPQ 193 (Fed.Cir.1983); SSIH Equip. S.A. v. USITC, 718 F.2d 365, 218 USPQ 678 (Fed.Cir.1983). 4 Appeal2014-007052 Application 12/391,727 The Examiner's obviousness rejection of claims 3, 4, 10, 11, 13 and 14 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation