Ex Parte Leigh et al - Page 6

               Appeal 2007-0339                                                                           
               Application 09/872,600                                                                     
               host device."  (Col. 2, ll. 46-52.)  The IC "provides the peripheral device                
               with sole access to the disk controller when operating in a straight mode.                 
               In [the] straight mode, the peripheral device may communicate with the disk                
               controller through a PCI bus to perform operations, such as retrieving or                  
               writing data to the peripheral device."  (Abs. ll. 5-10.)  The abstract, to                
               which the Examiner cites, supra, discusses isolating controllers from the                  
               disk controller.  To wit, "in [the] straight mode, other controllers, including            
               the host's CPU, may be prevented from using the disk controller to avoid                   
               data collisions, data loss and possible system failure."  (Id. 10-13.)                     

                     We are unpersuaded, however, that the IC isolates the other                          
               controllers from the PCI bus.  To the contrary, the reference explains that                
               "because IDSEL 135 is disconnected from PCI bus 115, other devices . . .                   
               may become master of PCI bus 115 [although the other devices] cannot                       
               detect disk controller 110 when they perform a configuration cycle."                       
               (Col. 3, ll. 46-49.)  We agree with the Appellants aforementioned argument                 
               that "isolating the disk controller 110 from the other masters is wholly                   
               different from 'isolating the first bus controller from the bus'. . . ."  (Reply           
               Br. 2.)                                                                                    

                                           V. CONCLUSION                                                  
                     Absent a teaching or suggestion of responding to a detection signal by               
               automatically isolating a first bus controller from a bus, we are unpersuaded              
               of a prima facie case of obviousness.  Therefore, we reverse the rejection of              
               claims 1, 13, 21, 23, 35, 44, 52, and 53 and of claims 2-10, 12, 12-20, 24-31,             
               36-41, 45-50, 54, and 55, which depend therefrom.                                          

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