Ex Parte Bandholz et al

Patent Trial and Appeal Board

Mar 10, 2014

11768551 (P.T.A.B. Mar. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUSTIN P. BANDHOLZ, KEVIN M. REINBERG, and
PHILIP L. WEINSTEIN
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Appeal 2011-011362
Application 11/768,551
Technology Center 2100
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 and 16-20. Claims 14 and 15 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
The Examiner’s Rejections
(1) The Examiner rejected claims 1-4, 7-10, 13, and 16-18 under 35
U.S.C. § 102(e) by Maroney (US 2009/0157958 A1). Ans. 4-7.
(2) The Examiner rejected claims 5, 11, and 19 under 35 U.S.C.
§ 103(a) over the combination of Maroney and Lucas (US 2008/0028238
A1). Ans. 7-9.
(3) The Examiner rejected claims 6, 12, and 20 under 35 U.S.C. §
103(a) over the combination of Maroney, Lucas, and Heil (US
2004/0111559 A1). Ans. 9-10.
Appellants’ Contentions1
(1) Appellants contend (Br. 5-7 and 10-11) that the Examiner erred in
rejecting claims 1-13 and 16-20 for numerous reasons, including;
(a) Maroney discloses internal RAID controllers as shown in
Figures 3 and 4, and not one external RAID controller as recited in
claims 1, 7, and 13;2 and

1 We recognize that Appellants’ arguments present additional issues.
Nonetheless, we are persuaded of error with respect to the issues discussed
in our analysis herein, and as such we do not reach the additional issues as
the issues discussed herein are dispositive of the appeal.
2 Independent claims 1, 7, and 13 each recite a method, apparatus, and
computer program product for implementing a redundant array of
inexpensive devices (RAID) with an external RAID controller, i.e., a
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(b) nothing in Maroney teaches or suggests external RAID
controllers (Br. 6).
Issues on Appeal
Based on Appellants’ arguments presented in the Appeal Brief (Br. 4-
12), we are presented with the following issues on appeal:
(1) Did the Examiner err in rejecting claims 1-4, 7-10, 13, and 16-18
under 35 U.S.C. § 102(e) as anticipated by Maroney because:
(a) Maroney fails to disclose an external RAID controller;
and/or
(b) the Examiner has improperly combined multiple different
embodiments of Maroney to meet the limitations recited in claims 1,
7, and 13, resulting in the relied upon portions of Maroney not being
arranged as recited in claims 1, 7, and 13?
(2) Did the Examiner err in rejecting claims 5, 6, 11, 12, 19, and 20
under 35 U.S.C. § 103(a) over the combinations of Maroney with various

hardware RAID controller that is “installed externally with respect to the
separate computers” (see claims 1, 7, and 13). In formulating the
anticipation rejection for claims 1, 7, and 13 with Maroney, the Examiner
relies upon Figures 2-6 of Maroney, as well as several textual passages
found in various portions of paragraphs [0014], [0022], [0032], [0033],
[0036], [0047], and [0051]. While the obviousness rejections of claims 5, 6,
11, 12, 19, and 20 were argued separately (see Br. 10-11), we find that the
issue with regards to the claims rejected under 35 U.S.C. § 103(a) and the
claims rejected under 35 U.S.C. § 102(e) to essentially be the same: whether
or not the Examiner has improperly combined multiple different
embodiments of Maroney in rejecting claims 1-4, 7-10, 13, and 16-18 under
35 U.S.C. § 102(e), thereby also providing an improper basis for the
obviousness rejections of claims 5, 6, 11, 12, 19, and 20 which all rely upon
the erroneous findings and determinations made with regard to the
anticipation rejection based on Maroney.
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other secondary and/or tertiary references, because the Examiner bases the
obviousness rejections upon the erroneous findings and determinations made
with regard to the anticipation rejection based on Maroney? The outcome of
the second issue regarding the obviousness rejections of claims 5, 6, 11, 12,
19, and 20 will stand/fall with the outcome of the first issue regarding the
anticipation rejection of claims 1, 7, and 13.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 4-12) that the Examiner has erred,
and the Examiner’s response to the Appellants’ arguments (Ans. 11-14).
Appellants’ Specification (Spec. 5:6-11) describes RAID controller
302 as “external.” All of the independent claims on appeal (claims 1, 7, and
13), recited an external RAID controller.
Appellants’ arguments (Br. 5-7) that Maroney fails to teach or suggest
external RAID controllers, and instead discloses one internal RAID
controller (325 in Fig. 3 and 420a in Fig. 4) are persuasive. We agree with
Appellants (Br. 5-7) that the cited portions of Maroney do not disclose an
external RAID controller arranged as recited in claims 1, 7, and 13. In view
of the foregoing, we concur with Appellants’ conclusion that the Examiner
erred in finding that Maroney discloses an external RAID controller.
We agree with Appellants’ above contentions that the Examiner did
not establish that claims 1-4, 7-10, 13, and 16-18 are anticipated, and claims
5, 6, 11, 12, 19, and 20 are obvious, because Maroney discloses internal
RAID controllers, and not an external RAID controller, as recited in claims
1, 7, and 13.
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In addition, we are constrained by the record before us to find that the
Examiner erred in rejecting claims 1-13 and 16-20 based on the Examiner’s
reliance on a plurality of different and mutually exclusive embodiments to
support the anticipation rejection (in rejecting claims 1-4, 7-10, 13, and 16-
18 as being anticipated by Maroney, the Examiner relies on Figs. 2-6, which
represent at least two or more embodiments).
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the
reference must “clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not directly related to
each other by the teachings of the cited reference.” Id. (quoting In re Arkley,
455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection . . . it has no place in the making of a 102, anticipation
rejection.” Arkley, 455 F.2d at 587-88.
Maroney’s Figures 2-6 represent at least two or more different
embodiments of Maroney’s invention. These multiple embodiments cannot
be combined in making a prima facie case of anticipation. Arkley, 455 F.2d
at 587-88.
Because the analysis of Maroney with respect to claims 1, 7, and 13 is
relied upon for the remaining obviousness rejections, we likewise do not
sustain the obviousness rejections relying on Maroney in combination with
various other references. Notably, the Examiner has not provided any
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articulated reasoning to support the legal conclusions of obviousness with
regard to combining the various teachings of the plural embodiments and
disclosed prior art of Maroney to teach or suggest the claimed invention
recited in claims 5, 6, 11, 12, 19, and 20.
Accordingly, we will not sustain the Examiner’s rejections of claims
1-13 and 16-20.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-4, 7-10, 13, and 16-18 under 35 U.S.C. § 102(e) by Maroney
because:
(a) Maroney fails to disclose an external RAID controller; and
(b) the Examiner has improperly combined multiple different
embodiments of Maroney to meet the limitations recited in claims 1,
7, and 13, resulting in the relied upon portions of Maroney not being
arranged as recited in independent claims 1, 7, and 13.
(2) Appellants have established that the Examiner erred in rejecting
claims 5, 6, 11, 12, 19, and 20 under 35 U.S.C. § 103(a) because the
limitations of independent claims 1, 7, and 13, as well as claims 5, 6, 11, 12,
19, and 20 depending respectively therefrom, are either not met by Maroney
or have not been rationally articulated so as to support the legal conclusions
of obviousness.

DECISION
The Examiner’s rejections of claims 1-13 and 16-20 are reversed.

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REVERSED

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