Appeal No. 95-1308
Application 07/999,502
database is stored and so must conclude that the examiner erred in finding a "non-volatile,
non-moving storage." Coale suggests that the Subsystem Environment database is a separate memory
from the DAS subsystem (the rotatable data storage medium) because the prior art describes data
checks being "recorded in ordinary bookkeeping associated with the DAS subsystem" (emphasis
added) (column 2, lines 24-25), rather than in the DAS subsystem, and because subsystem memory
29 is described separately from the DAS subsystem. One skilled in the art would have appreciated
that any memory for storing the kind of configuration, usage, and exception information in the
Subsystem Environment database would have to be stored in a non-volatile memory so the
information is not lost when the power is turned off and thus a non-volatile storage would have been
obvious. However, the database could be stored on a moving, non-volatile memory such as a hard
disk, floppy disk, or tape. "All words in a claim must be considered in judging the patentability of
that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). The examiner has not explained why such limitation would have been obvious. While the
examiner has not addressed the "non-volatile" or "non-moving" storage limitations, we do not base
our decision to reverse on these limitations alone.
As to the alleged difference (3), the examiner finds the service alert message output (4) in
figure 2 to be "an external connection port to the non-volatile, non-moving storage allowing read
access to the partitions thereof while bypassing the device controller" (Examiner's Answer, page 5).
Coale shows the I/O operation commands and data input to the I/O devices 23 separate from the
output (4); thus, output (4) bypasses the device controllers. While the analysis structure in figures
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