Ex Parte DAVIS et al

Patent Trial and Appeal Board

Sep 11, 2018

13469519 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/469,519
98068 7590
Hollingsworth Davis
8000 West 78th Street
Suite 450
05/11/2012
09/13/2018
Minneapolis, MN 55439
FIRST NAMED INVENTOR
David Michael DA VIS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STX.149.Al 9643
EXAMINER
JAMI,HARES
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
09/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tdotter@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. DA VIS, KENNETH K. CLAFFEY, and
CHRISTOPHER BLOXHAM
Appeal 2016-006068
Application 13/469,519
Technology Center 2100
Before BRADLEY W. BAUMEISTER, GREGG I. ANDERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-14 and 16-22. Claim 15 was previously cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention is a storage unit for "High Performance
Computing" systems (HPC). Spec. 3. The storage unit includes an
enclosure, storage devices, a network connector, and at least one integrated
application controller to run a scalable parallel file system and access data
on the storage devices, as well as file access via the network connector. Id.
Appeal 2016-006068
Application 13/469,519
Claim 1 is illustrative:
1. A storage unit, comprising:
a plurality of storage devices located in an enclosure, the
enclosure constructed and arranged to receive the plurality
of storage devices;
a network connector in the enclosure, the network connector
configured to facilitate communication with the storage unit
by a plurality of clients; and
a plurality of integrated application controllers in the enclosure,
each constructed and arranged to run a scalable parallel file
system for accessing data stored on the storage devices and
providing server functionality to provide file access to the
plurality of clients via the network connector.
THE REJECTIONS
1. The Examiner rejected claims 1, 3, 4, and 7 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Loy et al., US 2002/0144047
Al, published Oct. 3, 2002 ("Loy") and Hara, US 2008/0027998 Al,
published Jan. 31, 2008 ("Hara"). Final Rej. 4--6; Ans. 2--4. 1
2. The Examiner rejected claims 2, 5, and 6 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Loy, Hara, and Nowoczynski
et al., US 2010/0223539 Al, published Sept. 2, 2010 ("Nowoczynski").
Final Rej. 7-8; Ans. 4--6.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed June 5,
2015 ("Final Rej."); (2) the Appeal Brief filed November 9, 2015 ("App.
Br."); (3) the Examiner's Answer mailed March 25, 2016 ("Ans."); and
(4) the Reply Brief filed May 25, 2016 ("Reply Br.").
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Application 13/469,519
3. The Examiner rejected claims 8, 10-12, 14, 17, 18, and 20-222
under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Loy, Hara,
and Aviles et al., US 2009/0182945 Al, published July 16, 2009 ("Aviles").
Final Rej. 8-12; Ans. 6-10.
4. The Examiner rejected claims 9 and 19 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Loy, Hara, Aviles, and US
2010/0228888 Al, published Sept. 9, 2010 ("Uchi"). Final Rej. 13-14;
Ans. 10-11.
5. The Examiner rejected claims 13 and 16 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Loy, Hara, Aviles, and
Nowoczynski. Final Rej. 14--15; Ans. 12-13.
ISSUES
1. Did the Examiner err in finding that a person of ordinary skill
in the art would have understood that it was common knowledge that a
personal computer possessed an "enclosure," as recited in independent
claims 1, 11, and 21?
2. Is the Examiner's combining of the teachings of Loy, Hara, and
common knowledge supported by articulated reasoning with some rational
underpinning to justify the Examiner's obviousness conclusion?
3. Did the Examiner err in finding a person of ordinary skill in the
art would have understood that Nowoczynski would have taught or
suggested "RAID data protection," as recited in dependent claims 2 and 13?
2 The Final Rejection and Answer erroneously list claims 13 and 16 as part
of this rejection, but those claims are instead rejected over Loy, Hara,
Aviles, and Nowczynski (number 5 below). Appellants make the same
mistake in making their arguments. See App. Br. 12-14.
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Application 13/469,519
ANALYSIS
Issue No. 1: Was it common knowledge that a computer system, like
a personal computer, included an "enclosure"?
The term "enclosure" is recited in every independent claim----claims 1,
11, and 21. As reproduced above, illustrative claim 1 recites, in pertinent
part, "a plurality of storage devices located in an enclosure, the enclosure
constructed and arranged to receive the plurality of storage devices."
Applying the "broadest and reasonable interpretation of the claim in light of
the Specification and not reading the limitation of Specification into the
claim," the Examiner determines, inter alia, that "during the time that
invention was made, it was a common knowledge in the art that a case in a
personal computer ( e.g. PC or laptop) contained a network adapter, multiple
storage devices ( e.g. disk drives, RAM, disc), and a plurality of applications
running the computer." Final Rej. 4. Appellants argue the Examiner's
interpretation of "enclosure" to encompass "a room or a building" (Final
Rej. 4) is unreasonably broad, and they argue why Hara does not teach an
enclosure (id. at 3), but they do not address the Examiner's alternative
reliance on common knowledge. See App. Br. 6-9.
It is appropriate that the Examiner timely takes official notice of what
is common knowledge under the circumstances presented here. Specifically,
the Examiner finds as a factual matter that it would have been common
knowledge to enclose the entirety of a computer system in a case. Final
Rej. 4; see also Ans. 18 (restating this finding). The Examiner's assertion is
"capable of instant and unquestionable demonstration as being well-known."
See MPEP 2144.02.A. "To adequately traverse such a finding, an applicant
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Application 13/469,519
must specifically point out the supposed errors in the examiner's action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art." MPEP 2144.02.C (citing
37 CPR§ 1.11 l(b )).
Appellants argue that neither Loy nor Hara teaches an enclosure.
App. Br. 7. 3 This argument is not responsive to the Examiner's separate
position that enclosures were common knowledge and well known.
Appellants also argue that the Examiner's use of common knowledge
"impermissibly reads out of the claims several features and interactions
between features that are not found in the asserted personal computer
casing." App. Br. 9--10; Reply Br. 7. Appellants' argument ignores the fact
that common knowledge is relied on only to show the enclosure. The
Examiner relies on the remaining references Loy and Hara to show the other
limitations of claim 1. Final Rej. 3 ( citing In re Keller, 642 F .2d 413, 425
(Fed. Cir. 1981); In re Merk, 820 F2d 1090, 1091) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.")).
Appellants do not point out the supposed errors in the Examiner's
action, including "why the noticed fact is not considered to be common
knowledge or well-known in the art." See MPEP 2144.02.C. Appellants'
remaining arguments are not directed to the Examiner's reliance on common
knowledge. See App. Br. 8.
3 Appellants' argument includes all of claims 1, 3, 4, and 7. App. Br. 6.
However, only claim 1 is specifically argued.
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For the foregoing reasons, we are not persuaded that the Examiner
erred in finding that the combination of Loy, Hara, and common knowledge
teaches an "enclosure."
Issue No. 2: Is the Examiner's combining of the teachings of Loy,
Hara, and common knowledge supported by articulated reasoning with some
rational underpinning to justify the Examiner's obviousness conclusion?
The Examiner finds that a person of ordinary skill would have
modified Loy's general enclosure with an enclosure of a plurality of devices,
such as taught by both Hara and that which was well known, including "a
network connector, and a plurality of integrated application controller in an
enclosure." Final Rej. 5---6. The motivation for doing so would have been to
reduce device size by including multiple devices in one container or system
and increase portability. Final Rej. 6; Ans. 19--20.
Appellants argue the Specification "highlights various enhanced
features," such as "close coupling between application controllers" and "fast
response times." App. Br. 10 (citing Spec. 21:5-22:4). None of these
features are claimed and the argument is therefore not persuasive.
Appellants also argue, as they did with respect to Issue No. 1 above, that
Hara does not teach a single enclosure. Reply Br. 7. This argument is not
persuasive for the reasons discussed above. Id.
Issue No. 3: Did the Examiner err in finding a person of ordinary
skill in the art would have understood that N owoczynski would have taught
or suggested "RAID data protection," as recited in claims 2 and 13?
Appellants argue that paragraphs 25, 29, and 50 ofNowoczynski
teach avoiding using "RAID protection." App. Br. 11-12, 15-16. Thus,
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Appellants contend that"[ w ]hile Nowoczynski mentions the existence of
RAID protection, Nowoczynski teaches avoiding using it." Id. at 11.
The Examiner responds that the last paragraph of N owoczynski 's
summary of the invention "describes using parity for protection of data in
RAID." Ans. 21-22 (citing Nowoczynski ,r,r 10, 30-35, Figs. 2-3). The
Examiner persuasively quotes from N owoczynski that "[ s ]ince embodiments
of the present invention do not rely on this form of RAID protection, it is
able to use the disk drives in a decoupled fashion." Id. (quoting
Nowoczynky ,r 25). The "form" of RAID referenced is "enterprise class
storage systems aggregate groups of disks for the purpose of redundancy via
a RAID mechanism," which is a singular address spanning the constituent
disks. Id.
We find that substantial evidence supports the Examiner's finding that
Nowoczynski teaches RAID data protection in the form of redundant storage
disks. See Final Rej. 7; Ans. 21-22. Specifically, Nowoczynski states that
"[t]ypically, enterprise class storage systems aggregate groups of disks for
the purpose of redundancy via a RAID mechanism." Nowoczynski ,r 25.
This disclosure in Nowoczynski teaches that RAID mechanisms were known
to those of skill in the art.
Appellants argue that paragraphs 10, 30-35, and Figures 2-3 of
Nowoczynski are newly-cited in the Examiner's answer, but nevertheless
fail to provide a reason to combine Nowoczynski with Loy and Hara
because "[ t ]he fact that RAID data protection was known fails to provide
motivation for introducing it to the asserted combination of Loy and Hara."
Reply Br. 6.
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The Examiner does not merely rely on the fact that RAID was known
to provide the motivation, as Appellants contend. The Examiner finds that a
person of ordinary skill in the art would have been motivated to introduce
RAID into the combination of Loy, Hara, and well-known facts "to improve
storing data by providing redundant storage disks." Final Rej. 7. We are
persuaded, therefore, that the Examiner has articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. KSR
Int'l. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977,988 (Fed. Cir. 2006)).
SUMMARY AND CONCLUSION
Claims 1, 2, and 13 are specifically discussed above. Appellants
argue that independent claims 11 and 21 are patentable for the same reasons
as independent claim 1, and that dependent claims 3-10, 12, 14, 16-20, and
22 are patentable for the same reasons as the independent claims from which
they depend. App. Br. 11-14. We are not persuaded by those arguments for
the reasons discussed above. The Examiner did not err in rejecting
claims 1-14 and 16-22 under § 103.
ORDER
The Examiner's decision rejecting claims 1-14 and 16-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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