Ex parte Saito

Board of Patent Appeals and Interferences

Apr 4, 2002

08604829 (B.P.A.I. Apr. 4, 2002)

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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENJI SAITO
____________
Appeal No. 2000-1289
Application No. 08/604,829
____________
ON BRIEF
____________
Before THOMAS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected claims 6, 7, and 9-11. The
appellant appeals therefrom under 35 U.S.C. § 134(a). We
reverse.
BACKGROUND
The invention at issue in this appeal relates to
controlling magnetic storage devices. Digital compression of
visual and audio signals enables such signals to be processed
by a computer and stored by the computer’s magnetic storage
Appeal No. 2000-1289 Page 2
Application No. 08/604,829
device. When the processing of a prescribed amount of data is
not completed in a certain time, however, reproduction of a
resulting image or a sound is impeded. A high-speed magnetic
storage device is required to solve this problem.
The appellant’s invention switches between two memory
groups having the same structure so that the two groups are
used alternately. As shown in Figure 1 of the appellant’s
specification, the first memory group (10) and the second
memory group (11) each comprise a number of memory devices
(101-106 and 111-116, respectively) equal to a number of
magnetic disk communication means (4-9). A switch (12)
enables connection between one of the first and second memory
groups and the magnetic disk communications means and also
between the other one of the memory groups and an external
communication means (2). When the memory devices in one of
the two memory groups communicate with the magnetic disks, the
memory devices in the other group communicate with the
external equipment, and vice versa. Such an arrangement
permits parallel processing of data at a high speed.
Appeal No. 2000-1289 Page 3
Application No. 08/604,829
Claim 11, which is representative, follows:
11. An information storage controller for
controlling a reading and writing of information to
and from a plurality of magnetic disks and an
external equipment, said controller comprising:
an external communication means for
communicating information with the external
equipment;
a plurality of magnetic disk communication means
for communicating information with the plurality of
magnetic disks;
a first group of memory devices comprising a
plurality of memory devices equivalent in number to
said plurality of magnetic disk communication means;
a second group of memory devices comprising a
plurality of memory devices equivalent in number to
said plurality of magnetic disk communication means;
a switch means for enabling connection
alternately between (a) and (b):
(a) said second group of memory devices and
said magnetic disk communication means and
between said first group of memory devices and
said external communication means; and
(b) said first group of memory devices and
said magnetic disk communication means and
between said second group of memory devices and
said external communication means;
wherein each of said plurality of magnetic disk
communication means is alternately connected to one
of aid plurality of memory devices from said first
group of memory devices and to one of said plurality
Appeal No. 2000-1289 Page 4
Application No. 08/604,829
of memory devices from said second group of memory
devices; and
a switch controller for controlling said switch
means so as to enable communication alternately
between (a) and (b):
(a) said second group of memory devices and
said magnetic disk communication means and
between said first group of memory devices and
said external communication means; and
(b) said first group of memory devices and
said magnetic disk communication means and
between said second group of memory devices and
said external communication means.
The prior art applied by the examiner in rejecting the
claims follows:
Asfour 5,182,801 Jan. 26, 1993
Farr 5,088,081 Feb.
11, 1992.
Claims 6, 7, and 9-11 stand rejected under 35 U.S.C. § 103(a)
as obvious over Asfour in view of Farr.
OPINION
Appeal No. 2000-1289 Page 5
Application No. 08/604,829
After considering the record, we are persuaded that the
examiner erred in rejecting claims 6, 7, and 9-11.
Accordingly, we reverse.
Rather than reiterate the positions of the examiner or
appellant in toto, we address the main point of contention
there between. The examiner asserts, "Asfour clearly teaches
two distinct groups, although the Asfour device has
significantly more flexibility.” (Examiner's Answer at 8.)
He explains, “Asfour teaches one group of memory connected to
the devices 10 and 11 and another distinct group
simultaneously connected to the external device 90 (see
Asfour, column 8, line 53-column 9, line l2). Asfour's groups
are ‘virtual’ groups in that any of the individual memories
70-73 may be connected to any of the devices 10, 11 or 90. . .
.” (Id.) The appellant argues, "while the Asfour reference
does in fact teach a single memory pool 55 comprising a
plurality of memory banks each of which may be accessed by
either of device 10 or device 11 shown in Figure 1 of the
Asfour reference, it is quite clear that the Asfour reference
Appeal No. 2000-1289 Page 6
Application No. 08/604,829
does not disclose, teach, or render obvious a first group of
memory devices 10 and a second group of memory devices 11. . .
." (Appeal Br. at 5.)
In deciding obviousness, “[a]nalysis 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). Here, independent claim 11
specifies in pertinent part the following limitations: "a
first group of memory devices comprising a plurality of memory
devices equivalent in number to said plurality of magnetic
disk communication means; a second group of memory devices
comprising a plurality of memory devices equivalent in number
to said plurality of magnetic disk communication means; a
switch means for enabling connection alternately between (a)
and (b): (a) said second group of memory devices and said
magnetic disk communication means and between said first group
of memory devices and said external communication means; and
(b) said first group of memory devices and said magnetic disk
communication means and between said second group of memory
Appeal No. 2000-1289 Page 7
Application No. 08/604,829
devices and said external communication means enabling
connection alternately between (a) and (b): (a) said second
group of memory devices and said magnetic disk communication
means and between said first group of memory devices and said
external communication means; and (b) said first group of
memory devices and said magnetic disk communication means and
between said second group of memory devices and said external
communication means. . . ." Accordingly, the claim requires
switching between two groups of memories having the same
structure so that the two groups are used alternately.
Having determined what subject matter is being claimed,
the next inquiry is whether the subject matter is obvious.
“In rejecting claims under 35 U.S.C. Section 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "’A prima
facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the
Appeal No. 2000-1289 Page 8
Application No. 08/604,829
claimed subject matter to a person of ordinary skill in the
art.’" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976)).
Here, Asfour teaches only one group of memories.
Specifically, “memory pool 55 is made up of a number of memory
ports 60, 61, 62 and 63. Each of these memory ports 60-63
contains a single memory bank.” Col. 3, ll. 59-61. Within
the group, one memory bank may be connected to one processing
or data acquisition device at a time. Specifically, “data
acquisition device 90 will load memory bank after memory bank,
as it acquires data. As one memory bank 70 is filled, the
data acquisition device 90 will be connected to a different
memory bank 71 so that
it can load that memory bank.” Col. 9, ll. 4-8. “The
processing device 10 will be connected to the memory bank 70
after the memory bank 70 has been filled by the data
acquisition device 90. The device 10 can then process the
Appeal No. 2000-1289 Page 9
Application No. 08/604,829
information in the memory bank 70 at its own speed.” Id. at
ll. 8-13.
Relying on Farr merely to “teach[] a disk storage system
which operates in a RAID level 5 mode,” (Examiner’s Answer at
6), the examiner fails to allege, let alone show, that the
secondary reference cures the defect of the primary
references. Therefore, we reverse the rejection of
independent claim 11 and of claims 6, 7, 9, and 10, which
depend therefrom.
CONCLUSION
In summary, the rejection of claims 6, 7, and 9-11 under
§ 103(a) is revered.
Appeal No. 2000-1289 Page 10
Application No. 08/604,829
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-1289 Page 11
Application No. 08/604,829
WENDEROTH, LIND & PONACK, L.L.P.
2033 K STREET N. W.
SUITE 800
WASHINGTON, DC 20006-1021
Once signed, forward to Team 3 for mailing.
APPEAL NO. 2000-1289 - JUDGE BARRY
APPLICATION NO. 08/604,829
APJ BARRY - 2 copies
APJ FLEMING
APJ THOMAS
After signing, return to APJ Barry for
disk.
Prepared By: APJ BARRY
DRAFT SUBMITTED: 10 Sep 02
FINAL TYPED:
Team 3:
I typed all of this opinion.
Please proofread spelling, cites, and quotes. Mark your
proposed changes on the opinion, but do NOT change matters of
form or style. I will include the diskette with the
signed copy so that you can make all changes before
mailing.
For any additional reference provided, please prepare PTO 892
and include copy of references
Thanks,
Judge Barry