Ex Parte Todd et alDownload PDFBoard of Patent Appeals and InterferencesFeb 26, 200909962790 (B.P.A.I. Feb. 26, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte STEPHEN TODD, MICHEL FISHER, and PAUL BOBER _____________ Appeal 2008-4626 Application 09/962,790 Technology Center 3600 ________________ Decided:1 February 27, 2009 ________________ Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and JOSEPH A. FISCHETTI, Administrative Patent Judges. JOSEPH A. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from the final rejection of claims 1, 5, 7-11 and 14-22. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-4626 Application 09/962,790 2 Representative claim 1 reads as follows: 1. A method of providing data storage resources controlled by a service provider to a customer of the service provider, comprising: allocating a data storage resource to the customer for connection to and use by equipment controlled by the customer; storing a registration request in a storage area on the allocated data storage resource, the registration request being generated by the customer on the equipment and comprising an equipment identifier and a customer account identifier; detecting the registration request in the storage area; matching the equipment identifier in the registration request to a stored equipment identifier stored in a database table maintained by the service provider, the stored equipment identifier being associated with an identifier of the data storage resource; and storing the customer account identifier with the equipment identifier and the data storage resource identifier in the database table to associate a customer account corresponding to the customer account identifier with the stored equipment identifier and the data storage resource identifier to track usage of the allocated data storage resource by the customer for storage resource management and billing. The reference set forth below are relied upon as evidence of anticipation: Crawford 6,411,943 B1 Jun. 25, 2002 Appeal 2008-4626 Application 09/962,790 3 Claims 1 and 15 are the sole independent claims from which all dependent appealed claims depend. The Examiner rejected claims 1, 5, 7-11 and 14-22 under 35 U.S.C. § 102 (e) as being anticipated by Crawford. Claims 1 and 15 require: i. storing a registration request in a storage area on the allocated data storage resource, the registration request being generated by the customer on the equipment and comprising an equipment identifier and a customer account identifier. The Specification 12:19, 20 describes step (i) in the context of “…the application causes the server 18 to store the registration information in scratch pad 126 as a "registration request" (step 164).” The server 18 is the allocated data storage resource used by the customer (Specification 9:4-6). The information which is inputted to the server 18 as a registration request resides in memory on the customer’s allocated data resource until the SPMS server “periodically searches the scratch pad for new information, detects the registration request, and pulls the associated registration information out of the storage 18 and into memory on the SPMS server (step 166)” for purposes of billing, ownership rights, etc. (Specification 12:20-23; 5:14-17). Claims 1 and 15 further require the step of: ii. detecting the registration request in the storage area. The Specification describes the reason for step ii is that “…the SPMS server is not directly connected to the servers 18 that use the storage 24. Appeal 2008-4626 Application 09/962,790 4 Because the SPMS server needs information about those servers and associated host bus adapters (HBAs) which are connected to the storage, a mechanism which enables an indirect transfer of information from each server 18 to the SPMS server 12 is required.” (Specification 8:28-31). Thus, the billing SPMS server 12 must somehow link storage usage to customer accounts. “The SPMS server 12 accomplishes this linkage by associating customer account information with the World Wide Name (WWN) of the Host Bus Adapter (HBA) that is installed on each server 18 in the CxSP 16 and uses the storage, and storing each association in the database 26.” (Specification 5: 2-4). Linking of storage usage to customer accounts occurs in the matching step of claims 1 and 15 as follows: iii. matching the equipment identifier in the registration request to a stored equipment identifier stored in a database table maintained by the service provider, the stored equipment identifier being associated with an identifier of the data storage resource. The Examiner maintains that the customer control block created based on the registration as disclosed in Crawford at col. 57, ll. 24-44, describes the storing and detecting claim limitations (Answer 4). A review of this section of Crawford reveals that the registration information contained in the customer control block shown in Figure 16A is inputted to an on-line service sign up computer system that builds portions of the customer control block data. (Crawford, col. 57, ll. 24-27). Thereafter, the sign up computer uploads Appeal 2008-4626 Application 09/962,790 5 the built control block to a host computer 104 where it resides in memory of the host computer 104. (Crawford, col. 57, ll. 40-43). Thus, Crawford describes only uploading the customer control block to a host computer without mention of first storing it in a storage area which is the allocated data storage resource used by the customer, and does not disclose detecting a registration request resident in the storage area in order to store a customer account identifier with the equipment identifier and the data storage resource identifier in a database table to associate a customer account corresponding to the customer account identifier with the stored equipment identifier and the data storage resource identifier as required by the claims. Accordingly, claims 1 and 15 are not anticipated by Crawford. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Regarding the matching step (iii), the Examiner states that Crawford discloses this feature at column 39, line 48 through column 40, line 14 wherein “correlating customer information control block information with drive information” occurs. (Answer, 4). However, the Examiner’s reference to a correlating step in Crawford is in fact an updating process (Crawford, col. 39, ll. 54-63). We do not interpret updating as a form of matching as required by the claims, because the process of updating presupposes a correct match between customer identification and the resource being used by the Appeal 2008-4626 Application 09/962,790 6 user, which under Appellants’ claims, cannot occur until after the match has been made. Therefore, we cannot sustain a rejection of claims 1 and 15 under 35 U.S.C. § 102 (e) based on the disclosure of Crawford alone. Since claims 5, 7-11, 14, 16-22 depend from claims 1 and 15, and since we cannot sustain the rejection of claims 1 and 15, the rejection of claims 5, 7-11, 14, 16-22 likewise cannot be sustained. The decision of the Examiner is reversed. REVERSED JRG EMC CORPORATION c/o DALY, CROWLEY, MOFFORD & DURKEE, LLP 354ATURNPIKE STREET SUITE 301A CANTON, MA 02021-2714 Copy with citationCopy as parenthetical citation