Ex Parte Thomas et alDownload PDFPatent Trial and Appeal BoardMar 15, 201613054610 (P.T.A.B. Mar. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/054,610 01/18/2011 22879 7590 03/17/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Fred Charles Thomas UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 82621207 8271 EXAMINER LANE, JOHNA ART UNIT PAPER NUMBER 2139 NOTIFICATION DATE DELIVERY MODE 03/17/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED CHARLES THOMAS, PHILLIP M.WALKER, and GREG J. LIPINSKI Appeal2014-003619 Application 13/054,610 Technology Center 2100 Before CARLA M. KRIVAK, DANIEL N. FISHMAN, and NABEEL U. KHAN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2014-003619 Application 13/054,610 STATEMENT OF THE CASE Appellants' invention is directed to a "direct attached storage (DAS) system configurable to simultaneously implement a plurality of data storage schemes" (Spec. i-f 5). Independent claims 1 and 16, reproduced below, are exemplary of the subject matter on appeal (disputed limitations emphasized). 1. A direct attached storage (DAS) system configurable to simultaneously implement a plurality of data storage schemes, compnsmg: one or more storage devices; a controller coupled to the storage devices for implementing and managing a plurality of data storage schemes on the storage devices; a data input/output (I/O) port coupled to the controller for inputting data to and outputting data from the storage devices; and an apportionment selector coupled to the controller for selecting a portion of the storage devices to be allocated to a determined data storage scheme. 16. A method for simultaneously implementing a plurality of data storage schemes in a direct attached storage (DAS) system, compnsmg: determining at least one data storage scheme; using a physical selector to select at least a portion of one or more storage devices of the DAS system to be allocated to the determined scheme; and implementing a plurality of data storage schemes on said storage devices, including the determined storage scheme on the selected portion of the storage devices. REFERENCES and REJECTIONS The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Lubbers (US 8,131,926 B2; Mar. 6, 2012) (Final Act. 2). 2 Appeal2014-003619 Application 13/054,610 The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Gentry (US 5,568,629; Oct. 22, 1996) (Final Act. 3). The Examiner rejected claims 16-20 under 35 U.S.C. § 103(a) based upon the teachings of Gentry or Lubbers and Appellants' Admitted Prior Art (AAP A) (Final Act. 4). ANALYSIS Rejection under 35 US.C. § 102(e) Appellants contend Lubbers fails to disclose an apportionment selector or a physical selector for selecting a portion of one or more storage devices as respectively recited in claims 1 and 16 (App. Br. 7). We agree. The Examiner finds Lubbers discloses a controller 108, including a processor 112 and memory 116/114, as shown in Figure 3 and discussed in column 4, line 37 through column 6, line 12, corresponds to an "'apportionment selector (physical selector) ... for selecting ... devices ... allocated to ... [a] scheme,"' as claimed (Final Act. 3). The Examiner also finds one skilled in the computer arts would know how to implement a physical switch/selector input device rather than a controller/processor for selecting a portion of the storage devices to be allocated to a determined data storage scheme as claimed (Ans. 5). The rigorous requirements of an anticipation rejection require a one- for-one mapping of each claim limitation to the corresponding portion of the reference, arranged as claimed, which the Examiner must identify with particularity. In this instance, the Examiner has not met these requirements. That is, the Examiner has not clearly identified the switch/selector and the controller of Lubbers (Final Act. 3; Ans. 5). The switch/selector appears to 3 Appeal2014-003619 Application 13/054,610 be part of the controller 108 (Lubbers Fig. 2) and includes elements 112 (processor) and 116 (DRAM) (Fig. 3). Although paragraphs 19 and 23 of Appellants' Specification disclose using a controller to implement a storage scheme, claim 1 requires three separate elements. The Examiner's finding the claims are "interpreted as having a selection function performed by a controller or processor either automatically/dynamically and with or without user input" (Ans. 3) implies the selector and controller are the same element; whereas claim 1 clearly requires separate elements. 1 Further, the Examiner relies on speculation, dependent claim 12, and the Background of the Invention to meet the claim limitations. (Ans. 3---6). It is not enough in an anticipation rejection that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Thus, for the above reasons, and on this record, we do not sustain the Examiner's anticipation rejection of independent claims 1 and 16, and dependent claims 2-15 and 17-20 over Lubbers. With respect to Gentry, we agree with Appellants the Examiner has not identified where Gentry teaches the apportionment selector or any type of physical selector (App. Br 10). 1 When a claim requires plural distinct structural elements, it is improper to map a single disclosed element to the plural recited elements. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three separate means not anticipated by structure containing only two means using one element twice). 4 Appeal2014-003619 Application 13/054,610 Thus, the Examiner fails to establish Gentry anticipates claims 1-20, as no direct mapping of the claim elements to the components of Gentry is provided. The Examiner cites to Figures 1--4 of Gentry, however, this disclosure merely recites different disk array controller data configurations for various storage formats (Final Act. 3). We do not find any disclosure in the cited portions of Gentry of an "apportionment selector" or "physical selector," as claimed. Thus, for these reasons we also do not sustain the Examiner's anticipation rejection of claims 1-20 over Gentry. Rejection under 35 USC§ 103 As to claim 16, the Examiner has not shown how Lubbers or Gentry in combination with AAP A discloses a physical selector. Appellants contend Lubbers or Gentry, alone or in combination, with the Alleged Prior art fails to disclose all of the elements of claim 16 (App. Br. 11-12). The Examiner finds "[t]he admitted prior art teaches using a DIP switch or rotational switch as a hardware selecting mechanism for selecting the particular storage scheme a product will implement" (Final Act. 4 ). As Appellants assert, "the background section of the present specification provides a 'hardware mechanism for selecting [a] particular storage scheme."' This is different than the scope of claim 16, which requires "a physical selector to select at least a portion of one or more storage devices" (App. Br. 12). We find Appellants' arguments to be persuasive. In light of the above, we sustain the Examiner's obviousness rejection of claims 16-20. 5 Appeal2014-003619 Application 13/054,610 DECISION The Examiner's 35 U.S.C. § 102 (e) rejection of claims 1-20 over Lubbers is reversed. The Examiner's 35 U.S.C. § 102 (e) rejection of claims 1-20 over Gentry is reversed. The Examiner's 35 U.S.C. § 103 (a) rejection of claims 16-20 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation