Ex Parte Thomas et al

Patent Trial and Appeal Board

Sep 2, 2014

12169724 (P.T.A.B. Sep. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/169,724 07/09/2008 Lintu THOMAS 2120-03800 9819
85421 7590 09/03/2014
Conley Rose, P.C.
P.O. Box 3267
Houston, TX 77253-3267
EXAMINER
KATSIKIS, KOSTAS J
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
09/03/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINTU THOMAS and SURESH VOBBILISETTY
____________

Appeal 2012-005262
Application 12/169,7241
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1–4, 7, 8, 10, 12,
13, 15, 19, 21–24, and 26–30. We have jurisdiction under 35 U.S.C. §§ 134
and 6.
The claimed invention pertains to an iSCSI port that is configured to
facilitate communication between targets and an iSCSI initiator. See
Abstract. Claim 1, which is reproduced below, is illustrative of the claimed
subject matter.

1 Appellants state that the real party in interest is Brocade Communication
Systems, Inc. App. Br. 3.
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1. A gateway, comprising:
a first port; and
a second port,
wherein the second port is configured to facilitate
communication between a plurality of first protocol
targets and a second protocol initiator, a second protocol
different from a first protocol, the second protocol
comprising iSCSI protocol;
wherein the second port is configured to use
multiple Logical Unit Numbers (“LUNs”) assigned to a
first protocol target out of the plurality of first protocol
targets for communication between the first protocol
target and the second protocol initiator.
App. Br., Claims App.
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Crespi US 2006/0242312 A1 Oct. 26, 2006
Birk, et al., Distributed-and-Split Data-Control Extension to SCSI for
Scalable Storage Area Networks, Proceedings of the 10th Symposium
on High Performance Interconnects Hot Interconnects, Hotl’02, IEEE
(2002) (hereinafter “Birk”).
Claims 1–4, 7, 10, 12, 13, 15, 21–23, and 26–30 are rejected under
35 U.S.C. § 102(b) as being anticipated by Birk. Ans. 5.
Claims 8, 19, and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Birk in view of Crespi. Id. at 19.
We AFFIRM-IN-PART.
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ANALYSIS
Rejection of claims 1–4, 7, 10, 12, 13, 15, 21–23,
and 26–30 under 35 U.S.C. §102(b)
Claims 1, 2, 4, 10, 12, 13, 15, 21–23, 27, 29, and 30
Independent claim 1 requires “multiple Logical Unit Numbers
(‘LUNs’) assigned to a first protocol target . . . .” App Br., Claims App.
Independent claims 12 and 21 similarly require a “first protocol target
associated with multiple LUNs.” Id. The remaining claims at issue in this
appeal all depend either directly or indirectly from these independent claims,
and thus also require “multiple LUNs” that are either “assigned to” or
“associated with” a “first protocol target.” See id.
Appellants concede that Birk discloses Target Logical Unit Numbers
(“LUNs”)2 that are associated with targets. See App. Br. 10. Appellants
assert that the Examiner nevertheless erred in rejecting the claims because
Birk “does not disclose that multiple [LUNs] are used for a particular
target.” Id. (emphasis added). Appellants’ argument is not persuasive.
Birk discloses that targets may be “a JBOD, (Just a bunch of disks),
an advanced disk array, or even another storage Controller in a hierarchical
architecture.” Ans. 25, citing Birk Fig. 1, § 1.1 ¶ 3. The Examiner finds that
it was “readily known” at the time of Appellants’ alleged invention that “a
Target that was comprised of a JBOD or advanced disk array system would
necessarily include multiple Logical Units,” and thus have multiple LUNs.
See id. The Examiner cites extrinsic evidence to support this contention,

2 In their Appeal Brief, Appellants use the abbreviation “TLUN” to refer to
the Target Logical Unit Numbers of Birk. But Birk uses the abbreviation
“LUN.” Thus, we also use the abbreviation “LUN” in this decision.
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including two prior art patents (U.S. Patent No. 6,834,315 B2 to Johnson,
and U.S. Patent No. 6,304,942 B1 to DeKoning). Ans. 25–28; see also In re
Baxter, 952 F.2d 388, 390 (Fed. Cir. 1991) (“Extrinsic evidence may be
considered when it is used to explain, but not to expand, the meaning of a
reference [relied upon to show anticipation].”)
Appellants did not file a Reply Brief. Thus, the Examiner’s finding
that Birk contains “an implicit and inherent teaching . . . [that] multiple
LUNs would be used to reference a given particular disk of a JBOD or
Target” stands unrebutted. Ans. 28. We therefore sustain the Examiner’s
rejections of claims 1, 12, and 21.
Appellants do not make any separate patentability arguments with
respect to claims 2, 4, 10, 13, 15, 22, 23, 27, 29, and 30, all of which depend
from claim 1, claim 12, or claim 21. Thus, we also sustain the Examiner’s
rejections of claims 2, 4, 10, 13, 15, 22, 23, 27, 29, and 30.
Claim 3
Claim 3 depends from claim 1, and further requires that the second
port be configured to “insert a first protocol communication identifier
associated with the second protocol initiator into the communication.” App.
Br., Claims App. Appellants assert that the Examiner erred in rejecting
claim 3 “because the [Birk] reference fails to teach or suggest [this]
limitation.” Id. at 11. In particular, Appellants argue that the Target Task
Tag (“TTT”) of Birk—which the Examiner identified as corresponding to
the “first protocol communication identifier” of claim 3—does not
necessarily “belong to a different protocol than the [second protocol]
initiator. . . .” See id.
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The Examiner does not dispute Appellants’ contention that Birk does
not necessarily teach a “first protocol communication identifier” that belongs
to a different protocol than the “second protocol initiator.” See Ans. 29–32.
Instead, the Examiner asserts that Appellants’ argument is moot because the
claims do not require that the “second protocol initiator” and “first protocol
communication identifier” belong to different protocols. See id. at 32.
The dispute between the Examiner and Appellants turns on the
meaning of the following language from claim 1 (which is incorporated into
claim 3 by way of dependence):
wherein the second port is configured to facilitate
communication between a plurality of first protocol targets and
a second protocol initiator, a second protocol different from a
first protocol, the second protocol comprising iSCSI protocol
App Br., Claims App. (emphasis added). Appellants read the underlined
claim language above as an additional limitation on the protocols of the
“first protocol targets,” the “second protocol initiator,” and the “first
protocol communication identifier.” Thus, Appellants interpret claims 1 and
3 as requiring that the “first protocol targets” and the “first protocol
communications identifier” use a protocol that is different than the protocol
of the “second protocol initiator.” See id. at 11; Ans. 29–32.
The Examiner, in contrast, reads the language “a second protocol
different from a first protocol” as a stand-alone limitation that requires the
presence of two different protocols, but which does not limit the protocols of
the “first protocol targets,” the “second protocol initiator,” or the “first
protocol communications identifier.” See Ans. 29–32. In other words, the
Examiner concludes: “the claimed ‘a first protocol’ is not necessarily the
same ‘protocol’ as that of the claimed ‘a plurality of first protocol targets,’”
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and “the claimed ‘a second protocol’ . . . is not necessarily the same
‘protocol’ as that of the claimed ‘a second protocol initiator.’” Id. at 30.
We give Appellants’ claims “their broadest reasonable construction
consistent with the specification.” See, e.g., In re Suitco Surface, Inc., 603
F.3d 1255, 1259 (Fed. Cir. 2010). Appellants’ Specification states that the
claimed invention is intended to satisfy a “need for intercommunication
between computer networks that use different protocols.” Spec. ¶ 1
(emphasis added). The invention solves this problem by providing a port
that facilitates communications between an “initiator” in one network, and
“targets” in a different network. See id. at ¶ 2. The Specification also
consistently describes the “targets” and “communications identifier” as
having a protocol that is different than the protocol of the “initiator.” In the
preferred embodiment, the “initiator” uses the Internet Small Computer
System Interface (“iSCSI”) protocol, and the “targets” use the Fiber Channel
(“FC”) protocol. See id. at ¶¶ 17, 19. The Origin Exchange Identifier
(“OX_ID”)—which corresponds to the “communication identifier” of claim
3—also uses the FC protocol. See id. at ¶¶ 16, 23.
In view of the fact that the raison d'être for the claimed invention is
the fact that the “initiator” and “targets” use different protocols, and the fact
that the Specification consistently describes the “targets” and
“communication identifier” as having a protocol different than that of the
“initiator,” we find that the Examiner’s reading of the claim language “a
second protocol different from a first protocol” is inconsistent with the
Specification. One skilled in the art, reading the claims in view of the
Specification, would interpret this claim language as requiring that the “first
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protocol targets” and the “first protocol communication identifier” use a
protocol different from that of the “second protocol initiator.”
As set forth above, the Examiner does not dispute that under the claim
construction we adopt, Birk would not necessarily not disclose “a first
protocol communication identifier associated with the second protocol
initiator.” See Ans. 32. The Examiner does not find that any other prior art
references disclose this limitation. We therefore do not sustain the
Examiner’s rejection of claim 3.
Claims 7 and 28
Claim 7 depends from claim 1 and recites the further limitation
“wherein the LUNs are part of a subdivided LUN range.” App Br., Claims
App. Claim 28 depends from claim 27, which, in turn, depends from
claim 1. Id. Claim 28 recites the further limitation “wherein the multiple
LUNs are in one of the subdivided communication identifier ranges.” Id.
Thus, claims 7 and 28 both require that the “multiple LUNs” be part of a
subdivided range.
Appellants assert that the Examiner erred in rejecting claims 7 and 28
because Birk “fails to teach or suggest that the multiple LUNs used for one
target are part of a range . . . .” App. Br. 12. Appellants also contend that
the Examiner erred because “Birk is silent as to whether the aggregated
[LUNs] would form a range.” Id. These arguments are not persuasive.
Birk discloses a system with an initiator and multiple targets. See,
e.g., Birk Fig. 1. The Targets of Birk have LUNs. See Ans. 10, citing Birk
§ 2.2 ¶ 3. As discussed above, Appellants have failed to rebut the
Examiner’s finding that Birk inherently discloses the use of targets (e.g.,
JBODs) that have multiple LUNs. We agree that in a system with multiple
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targets, one of which is a JBOD target, the LUNs of individual disks within
the JBOD target would be “part of a subdivided LUN range.”3 See Ans. 34.
Appellants did not file a Reply Brief and do not provide any persuasive
evidence of scientific reasoning in support of their contention that the
Examiner erred. We therefore sustain the Examiner’s rejections of claims 7
and 28.
Claim 26
Claim 26 depends from claim 1, and further requires that the second
port be “configured to proxy the plurality of first protocol targets as a virtual
second protocol target.” App. Br., Claims App. Appellants assert that the
Examiner erred in rejecting claim 26 because Birk “does not disclose that
multiple targets of one protocol are impersonated as a single target of a
different protocol.” Id. at 12. Appellants’ argument is persuasive.
The Examiner does not dispute Appellants’ factual contentions
concerning the disclosure of Birk. Instead, the Examiner again reads the
claim language “a second protocol different from a first protocol” as a stand-
alone limitation that does not require that the “first protocol targets” have a
different protocol than the “virtual second protocol target.” See Ans. 35–38.
For the reasons set forth above, we find that the Examiner’s interpretation of
this language is contrary to Appellants’ Specification, and conclude that the
claim limitation “a second protocol different from a first protocol” (which is
incorporated into claim 26 by way of dependence) requires that the “first

3 The Examiner’s finding is consistent with Appellants’ Specification, which
uses the term “subdivided range” to refer to a subset of LUNs that is
preferably, but not necessarily, assigned to a target. See, e.g., Spec. ¶¶ 2, 21.
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protocol targets” have a different protocol than the “virtual second protocol
target.”
The Examiner does not dispute that under the claim construction we
adopt, Birk does not disclose a port “configured to proxy the plurality of first
protocol targets as a virtual second protocol target.” See Ans. 35–38. The
Examiner does not find that any other prior art references disclose this
limitation. See id. We therefore do not sustain the Examiner’s rejection of
claim 26.
Rejection of claims 8, 19, and 244
under 35 U.S.C. § 103(a)
Appellants argue that the Examiner erred in rejecting claims 8, 19,
and 24 as obvious over Birk in view of Crespi. However, Appellants do not
identify any particular errors for us to review. Instead, Appellants attempt to
rely on generalized statements that “Birk does not teach or suggest” certain
unidentified claim limitations, and that “Crespi also does not satisfy the
deficiencies of Birk.” App. Br. 13.
“Filing a Board appeal does not, unto itself, entitle an appellant to de
novo review of all aspects of a rejection.” Ex parte Frye, 94 U.S.P.Q.2d.
1072, 1075 (BPAI 2010) (precedential) (internal citations omitted). “It is
not the function of this Board to examine claims in greater detail than argued
by an appellant, looking for nonobvious distinctions over the prior art.” Ex
parte Post, No. 2005-2042, 2006 WL 1665399, at *4 (BPAI Jan. 1, 2009);

4 Appellants refer to “claim 20” in their Appeal Brief, but claim 20 is not at
issue in this appeal. It is apparent that Appellants intended to refer to claim
24. See, e.g., Ans. 9 (indicating that claims “8, 19, and 24 stand rejected as
obvious over Birk in view of Crespi . . . .”) (emphasis added).
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see also 37 C.F.R. § 41.37(c)(1)(vii) (2011) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”).
Claims 8, 19, and 24 depend, respectively, from claims 1, 12, and 22.
For the reasons set forth above, we sustain the Examiner’s rejections of
claims 1, 19, and 22. Appellants do not set forth any specific additional
patentability arguments regarding claims 8, 19, and 24. We therefore also
sustain the Examiner’s rejections of claims 8, 19, and 24.

DECISION
For the foregoing reasons, we AFFIRM the Examiner’s rejections of
claims 1, 2, 4, 7, 8, 10, 12, 13, 15, 19, 21–24, and 27–30, and REVERSE the
Examiner’s rejections of claims 3 and 26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Mls/pgc