Ex Parte Johnson et al

Board of Patent Appeals and Interferences

Sep 28, 2010

09845839 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT E. JOHNSON and PAULENE PURDY
____________________

Appeal 2009-004412
Application 09/845,839
Technology Center 2100
____________________

Before JAMES D. THOMAS, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004412
Application 09/845,839

I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-30
under 35 U.S.C. § 134(a) (2002). We have jurisdiction under 35 U.S.C.
§ 6(b).

We reverse.

A. INVENTION
According to Appellants, the invention relates to storage devices, and
in one aspect to a system and method for validation of storage device
addresses (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method comprising:

storing discovery information relating to a storage
device;

querying said storage device for device identification
information; and

comparing at least a portion of returned device
identification information to at least a portion of said stored
discovery information.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Blumenau US 6,263,445 B1 Jul. 17, 2001
Claims 1-30 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Blumenau.

II. ISSUE
Has the Examiner erred in holding that Blumenau teaches “querying
said storage device for device identification information” and “comparing at
least a portion of returned device identification information to at least a
portion of said stored discovery information” (claim 1)? In particular, the
issue turns on whether Blumenau teaches querying the storage device for
information to be compared to at least a portion of stored information.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Blumenau
1. Blumenau discloses a shared resource that selectively services
requests from devices (host processors, file servers and the like) for
portions of data at the shared resource in response to configuration
data associated with each of the portions, wherein the configuration
data identifies which volume of data are available for access by each
of the devices (col. 3, ll. 12-24).
2. Values of data at the storage system are configured according to the
identity of the host devices coupled to the storage system, wherein the
configuration data used to manage the allocation of volumes to
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Application 09/845,839

different hosts is provided by a system administrator of the network
and as a new host device enters the network, the system administrator
allocates storage systems volume to the host (col. 9, ll. 42-52).
3. As each device enters the network, it queries the network to identify
the other devices coupled to the network, wherein each device that
responds to the query returns one or more identifiers for the device
(col. 4, ll. 62-67).
4. Configuration data in a transient filter table is accessed for each
request, wherein the address is compared with an entry in the transient
filer table (col. 8, ll. 9-17).
5. In one embodiment, to support authentication of host requests, the
storage system issues a number of unique, expected identifiers to each
host bus adapter (HBA) of each host device and the storage system
maintains a copy of the identifier, wherein when the HBA initiates a
series of transactions, it forwards the expected identifiers that were
received from the storage system back to the storage system and the
storage system compares each received identifier against the expected
identifier (col. 9, ll. 26-39).

IV. ANALYSIS
Appellants argue that “while[] Blumenau may disclose querying its
host processors, file servers, etc. for identification information, it does not
disclose querying a storage device for identification information, as recited
in claim 1” (App. Br. 12). Further, Appellants argue that “while Blumenau
may disclose comparing a host processor’s identification information with
information stored in a table, it does not teach comparing returned storage
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device identification information with stored discovery information relating
to the storage device” (App. Br. 13).
The Examiner finds that Blumenau does disclose querying a storage
device for identification information because “giving the broadest
reasonable interpretation a storage device is a component something used to
perform a storage task, thus the storage system of Blumenau is a storage
device” (Ans. 16-17). However, after reviewing the record on appeal, we
agree with the Appellants that the portions of Blumenau cited by the
Examiner fail to disclose “querying said storage device for device
identification information”, as required by claim 1. That is, according to the
portions cited by the Examiner, Blumenau discloses a shared resource
(storage system) that selectively services requests from devices such as host
processors, file servers and the like (FF 1), wherein values of data at the
storage system are configured according to the identify of the host device
(FF 2). As each device enters the network, it queries the network to identify
the other devices coupled to the network and each device that responds to
the query returns one or more identifiers for the device (FF 3).
Though we agree with the Examiner that the storage system of
Blumenau may be a storage device, we find that, in the portions of
Blumenau cited by the Examiner, the storage system is not queried for
identification. Instead, the values of data at the storage devices are
configured according to the identify of the host devices, and the network is
queried to identify the other devices.
Furthermore, Blumenau discloses configuration data in a transient
filter table that is accessed for each request and the address is compared with
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an entry in the transient filer table (FF 4). We agree with Appellants’
argument that “while Blumenau may disclose comparing a host processor’s
identification information with information stored in a table, it does not
teach comparing returned storage device identification information with
stored discovery information relating to the storage device” (App. Br. 13).
That is, in the portion of Blumenau cited by the Examiner, the other devices
coupled to the network are identified, but there is no comparison of such
identification with stored information relating to the storage device.
We note that, given the claims the broadest reasonable interpretation
consistent with the specification, Appellants’ claimed invention is merely
directed to an authentication method, wherein the claims merely require
storing information related to a device, querying said device for
identification, and comparing the retrieved identification to the stored
information to authenticate. We also note that Blumenau discloses a method
to support authentication of host requests, wherein the storage system stores
identifiers (FF 5). The storage system provides an identifier to an HBA
when queried, wherein, when the HBA initiates a series of transactions, it
sends the identifier to the storage system and the storage system compares
each received identifier against the stored expected identifier (id.).
Though we note that Blumenau to disclose an authentication method,
we do not find any reference to such authentication method in the sections
referenced by the Examiner. As such, we agree with Appellants that the
Examiner erred in finding that the portions cited by the Examiner teach the
claimed limitations. Accordingly, we will reverse the rejection of
representative claim 1, independent claim 29 standing therewith, and 2-28
and 30 depending respectively therefrom.
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V. CONCLUSION
Appellants have shown that the Examiner erred in holding claims 1-30
unpatentable under 35 U.S.C. § 102(e).

VI. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1-30 is
reversed.

REVERSED

peb

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