Ex Parte Factor et al

Patent Trial and Appeal Board

Jun 21, 2016

12955943 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/955,943 11/30/2010
877 7590
IBM CORPORATION
IP Law Department
294 Route 100
P.O. BOX 100
Somers, NY 10589-0100
06/23/2016
FIRST NAMED INVENTOR
Michael E. Factor
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.
IL920100093US1 8488
EXAMINER
NDIA YE, CHEIKH T
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
iplawyor@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAELE. FACTOR, MATTHEW ALBERT HURAS,
AAMER SACHEDINA, PAULA KIM TA-SHMA,
and A VISHAY TRAEGER
Appeal2015-002261
Application 12/955,943
Technology Center 2400
Before CATHERINE SHIANG, CARLL. SILVERMAN, and SCOTT B.
HOWARD, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-17, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal2015-002261
Application 12/955,943
STATEMENT OF THE CASE
Introduction
The present invention relates to storage appliances. See generally
Spec. 1. Claim 1 is exemplary:
1. A storage appliance system comprising:
one or more storage servers connected in a cluster to service storage
requests submitted by one or more host devices located remotely in relation
to the one or more storage servers in the storage appliance system;
one or more interface servers, located locally in relation to the one or
more storage servers, wherein at least one interface server is configured to
act as a conduit to receive a storage requests generated by a target
application executed on a host device and to communicate said storage
request to at least one of the storage servers;
an application server, located locally in relation to the one or more
storage servers, wherein at least one processor on the application server
supports the local execution of the target application, such that the target
application is executed directly on the application server, so that
communications for transmitting and servicing the storage request submitted
by the target application are directly communicated between the application
server and the storage servers to reduce or eliminate need for remote data
communications between the one or more storage servers and the host
device.
Davies
Ambat
References and Rejections
US 2010/0064169 Al
US 2012/0102455 Al
Mar. 11, 2010
Apr. 26, 2012
Claims 1, 3, 6, 7, 9, 12-14, and 17 stand rejected under 35 U.S.C.
§ 102 as being unpatentable over Davies.
Claims 2, 4, 5, 8, 10, 11, 15, and 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Davies and Ambat.
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Appeal2015-002261
Application 12/955,943
ANALYSIS
The Anticipation Rejection
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Davies discloses "one or more
interface servers, located locally in relation to the one or more storage
servers ... ; an application server, located locally in relation to the one or
more storage servers," as recited in independent claim 1. 1
The Examiner initially maps the claimed "interface server" to Davies'
storage controller 306, and the claimed "application server" to Davies'
application server 306." See Ans. 3. Because Davies does not disclose a
storage controller 306, it is unclear how the Examiner maps the claimed
interface server. See Davies, Fig. 3.
In the Response, the Examiner clarifies "Davies discloses at least one
interface server (storage application servers 106 or 306)." ii .. ns. 13.
Therefore, the Examiner maps the claimed interface server to Davies'
application server 106 or alternatively, Davies' application server 306. The
Examiner continues to map the claimed application server to Davies'
application server 306. See Ans. 9.
We disagree with the Examiner.
First, in an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an] 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
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2015-002261
Application 12/955,943
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.
As discussed above, the Examiner maps the claimed interface server
to Davies' storage application server 106, and the claimed application server
to Davies' application server 306. Appellants correctly argue that Davies'
storage application server 106 is associated with Figure 1 (prior art), while
Davies' application server 306 is associated with Figures 3 (Davies'
invention). See Reply Br. 3; Davies i-fi-f 16-18. Therefore, the Examiner
improperly supports an anticipation rejection by combining Davies' two
separate embodiments for the claimed interface server and the claimed
application server. 2
Second, as discussed above, the Examiner alternatively maps the
claimed interface server to Davies' application server 306. Because the
Examiner also maps the claimed application server to Davies' application
server 306, we agree with Appellants that the Examiner improperly maps
two separate claim elements to the same Davies' entity. See Reply Br. 4---6.
The Examiner's mapping would render the claim term application server
2 If the prosecution reopens, we leave it to the Examiner to consider whether
claim 1 is obvious over Davies alone or in combination with additional
references.
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Appeal2015-002261
Application 12/955,943
superfluous. See Mangosojt, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31
(Fed. Cir. 2008) (rejecting claim construction that would render a claim term
superfluous).
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and dependent claims 3 and 6 for similar
reasons.
For similar reasons, we do not sustain the Examiner's rejection of
independent claims 7 and 13, which recite limitations similar to the disputed
limitations of claim 1, and dependent claims 9, 12, 14, and 17.
The Obviousness Rejection
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 2, 4, 5, 8, 10, 11, 15, and 16. The Examiner
relies on Davies in the same manner discussed above in the context of claim
1, and does not rely on the additional reference in any manner that remedies
the deficiencies of the underlying anticipation rejection. See Ans. 5-8.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 2, 4, 5, 8, 10, 11, 15, and 16.
DECISION
We reverse the Examiner's decision rejecting claims 1-17.
REVERSED
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