Ex Parte Thomas et al

Patent Trial and Appeal Board

Mar 15, 2016

13054610 (P.T.A.B. Mar. 15, 2016)

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).
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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
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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).
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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.
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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
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