Ex parte KONIGSBURG et al. - Page 8




          Appeal No. 1999-2747                                                        
          Application 08/757,979                                                      


          reference teaches that defective cache locations may be mapped              
          out using validity bits, because forcing a validity bit to                  
          indicate that the defective location does not contain valid                 
          data would force a main memory access instead of a cache                    
          access, thereby effectively bypassing the cache only for those              
          locations which contain defective or invalid data.                          
               Handy is cited by the Examiner to teach that the MESI                  
          cache protocol is a common protocol.  The Examiner then                     
          asserts that an artisan at the time the invention was made                  
          would have realized that the Invalid bit of a cache using the               
          MESI protocol is the same Invalid bit used in non-MESI                      
          protocol caches to indicate whether a particular cache                      
          location is valid.                                                          
               As pointed out by our reviewing court, we must first                   
          determine the scope of the claim.  "[T]he name of the game is               
          the claim.”  In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d              
          1523, 1529 (Fed. Cir. 1998).                                                


               We therefore consider claim 20 to determine its scope.                 
          The preamble of this claim reads: "A method for controlling                 
          operation of a storage array after a failure comprising the                 
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