Appeal 2007-0339
Application 09/872,600
Here, claim 1 recites in pertinent part the following limitations:
"automatically isolating the first bus controller from the bus in response to
the detection signal." Claims 13, 21, 23, 35, 44, 52, and 53 include similar
limitations. Considering all these claim limitations, the independent claims
require responding to a detection signal by automatically isolating a first bus
controller from a bus.
IV. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). "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 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, Alexander "illustrates a circuit 100, such as an integrated
circuit [i.e., "IC"], in a host (e.g., server, work station, personal computer
and the like) that allows a peripheral component interconnect (PCI)
device 105 (e.g., a RAID or other conventional storage devices) to utilize a
conventional disk controller 110 (e.g., an LSI 1030 SCSI controller) in the
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