10345357 (B.P.A.I. Jan. 29, 2009)

Ex Parte Beck

Board of Patent Appeals and InterferencesJan 29, 2009

10345357 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KEN BECK _____________ Appeal 2008-3706 Application 10/345,357 Technology Center 2100 ____________ Decided: January 30, 2009 ____________ Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-3706 Application 10/345,357 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION Appellant’s claimed invention is directed to a cluster computing system including a storage area network in which disk drives 28 are connected to nodes 22, 24, and 26 via Fibre Channel switch 30 and Fibre Channel connections 32 (Fig. 2 and Spec. ¶[0023]). The nodes 22, 24, and 26 are also connected via a local area network (LAN) 34 to provide messaging and heartbeat signals (Fig. 2 and Spec. ¶[0023]). During relocation, a new server for a filesystem informs all nodes in the cluster of the new server’s location (¶[0010]). During recovery, a process executing on each node deletes entries related to the distributed name service for any filesystem that does not have a server in the recovering cluster (¶[0009]). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method of administering a distributed name service for a cluster filesystem accessed by computer system nodes sharing direct read/write access to storage devices via a storage area network, comprising: automatically updating entries related to a distributed name service stored on the computer system nodes upon one of relocation of a server for the cluster filesystem and recovery of a cluster if no node in the cluster provides the server for the cluster filesystem. Appeal 2008-3706 Application 10/345,357 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Slaughter US 6,058,400 May 02, 2000 Kogota US 6,711,559 B1 Mar. 23, 2004 (filed Sep. 29, 2000) Katrina Elizabeth Falkner, The Provision of Relocation Transparency through a Formalized Naming System in a Distributed Mobile Object System, Thesis for the degree of Doctor of Philosophy, Department of Computer Science, University of Adelaide, October 3, 2000 (hereinafter Falkner). The following rejections are before us for review: 1. The Examiner rejected claims 1 and 4-7 under 35 U.S.C. § 103(a) as being unpatentable over Falkner in view of Slaughter. 2. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Falkner in view of Slaughter and further in view of Kogota. OBVIOUSNESS ISSUE The Examiner asserts that Slaughter teaches a cluster filesystem layer 120 which interfaces to local filesystem 122 and other instances of the cluster filesystem on other nodes and further discloses a read/write portion 202 that handles data accesses to files and locates the desired file within storage device 106 (Ans. 12). With respect to claim 5, the Examiner asserts that the preamble requires a different functionality (i.e., recovering a cluster filesystem accessed by computer system nodes sharing direct read/write access to storage devices via a storage area Appeal 2008-3706 Application 10/345,357 4 network) than the functionality performed by the body of the claim (i.e., executing a process on each of the computer system nodes in a recovering cluster to delete entries related to a distributed name service for any filesystem), and thus, the body of the claim does not depend on the preamble for completeness and is therefore not accorded patentable weight. The Examiner articulated as a motivation to combine the references that Slaughter’s teaching of “read/write access to storage” would have allowed Falkner’s system to provide a cluster filesystem that supports a plurality of coherency algorithms (Ans. 4). Appellant contends that the Examiner has failed to cite anything that ties Slaughter’s description of the “[r]ead/write portion . . . [which] handles data accesses to files . . . [and] locates the desired file within storage device 106” to a cluster file system or computer system nodes or to anything discussed in Falkner (App. Br. 8 and Reply Br. 4). The issue before us, then, is as follows: Has the Appellant shown that the Examiner erred by articulating as a motivation to combine the references that Slaughter’s teaching of “read/write access to storage” would have allowed Falkner’s system to provide a cluster filesystem that supports a plurality of coherency algorithms? FINDINGS OF FACT The relevant facts include the following: 1. Slaughter teaches a cluster filesystem layer 120 which interfaces to local filesystem 122 and other instances of the cluster filesystem on other nodes (col. 6, ll. 42-44). Appeal 2008-3706 Application 10/345,357 5 2. Slaughter discloses a read/write portion 202 that handles data accesses to files and locates the desired file within storage device 106 (col. 7, ll. 38-41). PRINCIPLES OF LAW The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is met, then the burden shifts to the Appellants to overcome the prima facie case with argument and/or evidence. Id. The Supreme Court, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), stated that “‘ [r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Language in a claim preamble acts as a claim limitation only when it gives meaning to a claim and properly defines the invention and not merely when it states a purpose or intended use of the invention. In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). Appeal 2008-3706 Application 10/345,357 6 ANALYSIS Has the Appellant shown that the Examiner erred by articulating as a motivation to combine the references that Slaughter’s teaching of “read/write access to storage” would have allowed Falkner’s system to provide a cluster filesystem that supports a plurality of coherency algorithms? Slaughter teaches a cluster filesystem layer 120 which interfaces to local filesystem 122 and other instances of the cluster filesystem on other nodes and further discloses a read/write portion 202 that handles data accesses to files and locates the desired file within storage device 106 (Finding of Fact 1 and Finding of Fact 2). However, the articulated motivation by the Examiner does not possess a rational underpinning to support the legal conclusion of obviousness because it is unclear as to why one skilled in the art would be motivated to modify Falkner with Slaughter’s cluster system having a read/write access to storage for the purpose of supporting a plurality of coherency algorithms. KSR, 127 S. Ct. at 1741. Furthermore, the language in the preamble of independent claims 1, 5, and 6, reciting a “computer system nodes sharing direct read/write access to storage devices via a storage area network” acts as a claim limitation because it gives meaning to the body claim which refers back to “the computer system nodes” as defined in the preamble, and thus, properly defines the invention and does not merely state a purpose or intended use of the invention. In re Paulsen, 30 F.3d at 1479. Moreover, we note that the Examiner combined the references to transplant Slaughter’s teaching of “read/write access to storage” into Falkner (Ans. 4). Thus, the Examiner’s reasoning that the preamble of claim 5 reciting a read/write access Appeal 2008-3706 Application 10/345,357 7 to storage does not constitute a limitation and is not afforded patentable weight runs contrary to the articulated motivation to combine the references. For the above reasons, Appellant has shown error in the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as well as independent claims 1 and 6 which recite commensurate limitations. Furthermore, Kogota does not remedy the shortcomings of Falkner and Slaughter. We are therefore likewise persuaded of error in the Examiner’s obviousness rejections of claims 2-4 and 7 under 35 U.S.C. § 103(a) for similar reasons as these claims depend directly or indirectly from independent claims 1 and 6. CONCLUSION OF LAW Appellant has shown that the Examiner erred by articulating as a motivation to combine the references that Slaughter’s teaching of “read/write access to storage” would have allowed Falkner’s system to provide a cluster filesystem that supports a plurality of coherency algorithms. ORDER The decision of the Examiner to reject claims 1-7 under 35 U.S.C. § 103(a) is reversed. REVERSED Appeal 2008-3706 Application 10/345,357 8 tdl STAAS & HALSEY LLP SUITE 700 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005