Ex Parte Dash et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10740302 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRASANTA DASH and MICHAEL WAHL
____________

Appeal 2008-004516
Application 10/740,302
Technology Center 2100
____________

Decided:1 June 30, 2009
____________

Before LEE E. BARRETT, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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 Data (electronic delivery).

Appeal 2008-004516
Application 10/740302

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-33 and 35-39. Claim 34 stands objected to as being
dependent upon a rejected base claim. (Final Rejection 9.) The Examiner
indicated that claim 34 would be allowable if rewritten in independent form.
We have jurisdiction under 35 U.S.C. § 6(b). (Id.) We affirm.

The Invention
Appellants’ invention relates to storage devices in distributed
computer systems. More particularly, the present invention relates to
accommodating expandable storage devices in a storage virtualization
environment. (Spec. 1).

Claim 1 is illustrative:
1. A method comprising:

receiving information describing storage expansion in an
expandable storage device;

determining changes to be made to information for
converting input/output (I/O) operations directed at a virtual
storage device to I/O operations directed at the expandable
storage device, wherein the determining uses the information
describing storage expansion in an expandable storage device;
and
applying the changes to be made to the information for
converting I/O operations directed at a virtual storage device to
I/O operations directed at the expandable storage device.

Appeal 2008-004516
Application 10/740302

3
Prior Art
The Examiner relies on the following reference as evidence:
Fuller US 2004/0078542 A1 Apr. 22, 2004

The Rejection
The Examiner rejected claims 1-33 and 35-39 as being anticipated by
Fuller under 35 U.S.C. § 102(e).

Claim Grouping
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 2, and 3. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT (FF)
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:
1. Appellants’ Specification describes an “expandable storage
device,” as follows: “Storage devices that can increase or decrease in size,
whether by the addition/removal of storage or by the addition/removal of
access to existing storage, can be referred to as expandable storage devices.
Thus, expandable storage devices include storage devices that can both
increase and decrease in available storage capacity.” (Spec. Para. [0007],
emphasis added).
2. Fuller discloses storage devices 104, 103 and 16 and 17 that can
increase the available storage capacity. (See Figs. 3a and 3b).
Appeal 2008-004516
Application 10/740302

4
3. Fuller discloses an “expansion storage element” 104. (Para.
[0084].
4. Fuller discloses “recognizing a single logical drive with the
characteristics of the native drive.” (Para. [0084]).
5. Fuller discloses a read request (I/O operation) is allowed after
the steering tables are set up (i.e., subsequent to applying the changes).
(Para. [0112]).
6. Fuller discloses that storage element requests are packaged, or
encapsulated, such that they are passed to the correct standard Network
Driver, that in turn accesses the device. In this case, the device is an
intelligent External Storage Subsystem 16. (Pg. 10, Para. [0113]).

APPELLANTS’ CONTENTIONS
1. Appellants contend that Fuller fails to disclose receiving
information describing storage expansion in an expandable storage device.
(App. Br. 6).
2. Appellants contend that Fuller fails to disclose information for
converting input/output (I/O) operations directed at a virtual storage device
to I/O operations directed at the expandable storage device. (App. Br. 7).
3. Appellants contend that Fuller fails to disclose at least one I/O
operation from being directed to the expandable storage device; and
allowing the at least one I/O operation to be directed to the expandable
storage device subsequent to the applying the changes, as recited in
commensurate form by claims 2, 16, 27, and 36. (App. Br. 9).
Appeal 2008-004516
Application 10/740302

5
4. Appellants contend that Fuller fails to disclose sending at least
one I/O interface command included in a standard I/O protocol to the
expandable storage device, as recited in claims 3, 20, and 28. (App. Br. 10).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown that the Examiner erred in determining
that Fuller discloses receiving information describing storage expansion in
an expandable storage device?
2. Have Appellants shown that the Examiner erred in determining
that Fuller discloses information for converting input/output (I/O) operations
directed at a virtual storage device to I/O operations directed at the
expandable storage device?
3. Have Appellants shown that the Examiner erred in determining
that Fuller discloses preventing at least one I/O operation from being
directed to the expandable storage device; and allowing the at least one I/O
operation to be directed to the expandable storage device subsequent to
applying the changes?
4. Have Appellants shown that the Examiner erred in determining
that Fuller discloses sending at least one I/O interface command included in
a standard I/O protocol to the expandable storage device?

Appeal 2008-004516
Application 10/740302

6
PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Claims 1, 4-15, 17-19, 21-26, 29-33, 35, and 37-39
Issue 1
We decide the question of whether Appellants have shown the
Examiner erred in determining that Fuller discloses receiving information
describing storage expansion in an expandable storage device, as recited in
representative claim 1.

Appeal 2008-004516
Application 10/740302

7
Appellants contend that Fuller, at best, merely discloses receiving
information about a disk drive that is connected to PC chassis 100. (App. Br.
7, ¶2). The Examiner contends that the collection of drives together form an
expandable storage device. (Ans. 10). Based upon our review of the record,
as discussed further infra, we find the weight of the evidence supports the
Examiner’s position.
At the outset, we conclude the Examiner broadly, but reasonably,
interpreted the claimed “expandable storage device” in a manner fully
consistent with Appellants’ supporting Specification. (See FF 1). It is our
reasoned view that Appellants’ claim language does not preclude the
claimed “expandable storage device” from reading on Fuller’s expandable
collection of physical storage devices. In particular, we find that Fuller’s
storage devices 104, 16, and 17 can be “increased or decreased in available
storage capacity.” (See FF 2). We particularly note that drive 104 is
expressly referred to by Fuller as an “expansion storage element.” (FF 3)
Therefore, we find that the collection of storage devices disclosed in Fuller
teach the claimed “expandable storage device,” as recited in claim 1.

Issue 2
We decide the question of whether Appellants have shown the
Examiner erred in determining that Fuller discloses information for
converting input/output (I/O) operations directed at a virtual storage device
to I/O operations directed at the expandable storage device.

Appeal 2008-004516
Application 10/740302

8
After reviewing the record before us, we agree with the Examiner’s
finding that in order for the Virtual Volume manager to respond to various
storage requests for read, write, open, size, usage, format, and compression,
the logical volume tables must (i.e., inherently) convert the I/O operations.
(See Ans. 11). This is necessary in order to treat the logical storage element
as a physical storage element, i.e., “recognizing a single logical drive with
the characteristics of the native drive.” (FF 4).
For at least the aforementioned reasons, we are not persuaded of error
in the Examiner’s rejection of representative claim 1. Accordingly, we
sustain the Examiner’s anticipation rejection of representative claim 1, and
claims 4-15, 17-19, 21-26, 29-33, 35, and 37-39 that fall therewith.

Issue 3
Claims 2, 16, 27 and 36
We decide the question of whether Appellants have shown the
Examiner erred in determining that Fuller discloses preventing at least one
I/O operation from being directed to the expandable storage device, and
allowing the at least one I/O operation to be directed to the expandable
storage device subsequent to applying the changes recited in representative
claim 2. We have fully addressed Appellants’ arguments regarding the
claimed “expandable storage device” supra.

Appeal 2008-004516
Application 10/740302

9
Again, we find the Examiner has made a reasonable determination
that operations to the expanded storage device are prevented during the
application of change to the information for converting I/O operations
because the expanded storage device is not yet fully accessible. (See Ans.
12).
In addition, Fuller’s access directors allow operations to be directed to
the expandable storage device when data is intended to be written (or read)
to/from the expandable storage device. (FF 5-6) Therefore, we agree with
the Examiner that Fuller discloses a read request (i.e., I/O operation) is only
directed to the expandable storage device after the steering tables are set up
(i.e., subsequent to applying the changes), and not during the setup. (Ans.
11-12).
We further note that the Examiner’s findings are not persuasively
rebutted by Appellants, who had the opportunity to do so in a Reply Brief.
None was filed, however. Therefore, we are not persuaded of error in the
Examiner’s rejection of representative claim 2. Accordingly, we sustain the
Examiner’s anticipation rejection of representative claim 2, and claims 6, 27,
and 36 that fall therewith.

Issue 4
Claims 3, 20, and 28
We decide the question of whether Appellants have shown the
Examiner erred in determining that Fuller discloses sending at least one I/O
interface command included in a standard I/O protocol to the expandable
Appeal 2008-004516
Application 10/740302

10
storage device. We have fully addressed Appellants’ arguments regarding
the claimed “expandable storage device” supra.
We agree with the Examiner’s determination that Fuller’s VVM,
access director, and network (or disk connection process) are used to pass
read/write commands to the expandable storage. (Ans. 12). We find that
according to Fuller’s disclosure, storage element requests are passed to the
correct standard Network Driver, that in turn access device 16. (FF 6).
Thus, contrary to Appellants’ arguments, we find Fuller discloses I/O
commands (storage element requests) that are sent to external storage
subsystem 16 (i.e., expandable storage).
Therefore, we are not persuaded of error in the Examiner’s
anticipation rejection of representative claim 3. Accordingly, we sustain the
Examiner’s anticipation rejection of representative claim 3, and claims 20
and 28 that fall therewith.

CONCLUSIONS
Appellants have not shown the Examiner erred in determining that:
1. Fuller discloses receiving information describing storage
expansion in an expandable storage device.
2. Fuller discloses information for converting input/output (I/O)
operations directed at a virtual storage device to I/O operations directed at
the expandable storage device.

Appeal 2008-004516
Application 10/740302

11
3. Fuller discloses preventing at least one I/O operation from
being directed to the expandable storage device; and allowing the at least
one I/O operation to be directed to the expandable storage device subsequent
to the applying the changes.
4. Fuller discloses sending at least one I/O interface command
included in a standard I/O protocol to the expandable storage device.

DECISION
We affirm the Examiner’s rejection of claims 1-33 and 35-39 under
35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

pgc

CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN TX 78758