Ex Parte Klein et al

Patent Trial and Appeal Board

Oct 18, 2013

11283098 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN EDWARD KLEIN,
MICHAEL THOMAS BENHASE,
JAMES CHIEN-CHIUNG CHEN,
and MINH-NGOC LE HUYNH
____________________

Appeal 2011-004577
Application 11/283,098
Technology Center 2100
____________________

Before JASON V. MORGAN, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004577
Application 11/283,098

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
16 and 19-39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The claims are directed to selecting a path including ports on primary
and secondary clusters, the ports to be used for the transmission of data from
a primary volume to a secondary volume. Abst. Claim 16, reproduced
below, is representative of the claimed subject matter:
16. A method, comprising:
receiving a request to copy data from a primary storage
location to a secondary storage location;
determining from a plurality of primary clusters an owner
primary cluster for the primary storage location, wherein the
primary clusters are configured to access the primary storage
location, wherein primary and secondary clusters designated as
an owner of a storage location handle writes to the storage
location;
determining whether there is at least one port on the
owner primary cluster providing an available path to the
secondary storage location, wherein one path is operational
when the path is available;
selecting one port on the owner primary cluster to use to
copy the data to the secondary storage location in response to
determining that there is at least one port on the owner primary
cluster available to transmit to the secondary storage location;
selecting an available port on one primary cluster not
owning the primary storage location to use to copy the data to
the secondary storage location in response to determining that
there is not at least one port on the owner primary cluster
available to transmit to the secondary storage location;
determining from a plurality of secondary clusters an
owner secondary cluster for the secondary storage location,
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wherein the secondary clusters are configured to access the
secondary storage location;
determining whether there is at least one port on the
owner secondary cluster available through the selected port on
the owner primary cluster; and
selecting one port on the owner secondary cluster to use to
copy the data in response to determining that there is at least
one port on the owner secondary cluster available to transmit to
the secondary storage location; and
wherein a first set of operations comprises the
determining of the owner primary cluster, the determining of
whether there is one port on the owner primary cluster to use,
and the selecting of the port on one of the owner primary cluster
or primary cluster not owning the primary storage location to
use, wherein a second set of operations comprises the
determining of the owner secondary primary1 cluster, the
determining of whether there is one port on the owner
secondary cluster to use, and the selecting of the port on the
owner secondary cluster to use, and wherein one of the first and
second sets of operations is performed before performing the
other of the first and second sets of operations.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yamagami
Paul
Satoyama
US 2002/0143999 A1
US 2003/0225950 A1
US 2004/0103254 A1
Oct. 3, 2002
Dec. 4, 2003
May 27, 2004

1 The occurrence of the word “primary” in connection with the second set of
operations appears to be a typographical error; the associated action
presumably requiring a determination of the “owner secondary cluster.”
Appropriate correction should be required should prosecution continue.
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REJECTIONS2
The Examiner made the following rejections:
Claims 16, 20-23, and 26-39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Satoyama and Paul. Ans. 3.
Claims 19, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Satoyama, Paul, and Yamagami. Ans. 23.

APPELLANTS’ CONTENTIONS
1) Claims 16, 28, and 34:
a) “The Examiner has not shown where Satoyama teaches selecting ports
based on whether the clusters are an owner or non-owner of the
primary and secondary storage locations involved in the copy
operations as claimed.” App. Br. 23.
b) Satoyama’s teaching of selecting a port with a lighter load state does
not teach or suggest the claimed port-related determinations. App. Br.
23.
2) Claims 20, 29, and 35: Satoyama describes that controller 10, but not
specifically disk adapter (DKA) 14, performs the operations of Fig. 8 to
select a port thereby failing to disclose that an adaptor selects a port on
secondary cluster. App. Br. 25.

2 Based on Appellants’ arguments, we decide the appeal of claims 16, 19,
21-26, 28, 30-32, 34, and 36-38 on the basis of representative claim 16, the
appeal of claims 20, 29, and 35 on the basis of representative claim 20, and
the appeal of claims 27, 33, and 39 on the basis of representative claim 27.
See 37 C.F.R. § 41.37(c)(1)(vii).

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3) Claims 27, 33, and 39: Satoyama’s channel adapters (CHA) are provided
in a controller separate from the ports and therefore fails to teach an
adaptor performing the recited second set of operations. App. Br. 28.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 22-29)
and Reply Brief (Reply Br. 1-3),3 the issues presented on appeal are whether
the combination of Satoyama and Paul teaches or suggests the disputed
claim limitations.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.

3 Appellants additionally argue for the first time in the Reply Brief that
Satoyama fails to teach determining from a plurality of primary clusters that
can access the storage location an owner primary cluster. Reply Br. 3.
Because this argument was not a response to a new argument presented by
the Examiner and Appellants have not shown any cause as to why this issue
was first raised in the Reply Brief, it is untimely. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).

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Claims 16, 19, 21-26, 28, 30-32, 34, and 36-38
Appellants contend that Satoyama’s description of “looking at the
load on ports classified as remote copy ports to use for the copying of data”
fails to teach selecting ports based on ownership of storage locations. App.
Br. 23. The Examiner responds that in the case of a remote copy Satoyama
teaches preferring use of ports in a cluster to which the source volume
“belongs.” Ans. 28 (citing Satoyama [0079], ll. 8-10). “By stating that a
port from the ports in the cluster is ‘preferentially selected’, it is implying
that if none of the ports in the cluster are meeting the load threshold, a port
that is not in the cluster to which the source volume belongs will be chosen.”
Id. The Examiner further finds that Satoyama’s description of using the
“same processing” teaches preference of ports based on ownership in the
target volume (i.e., the claimed secondary cluster). Id. We agree with the
Examiner. In the absence of sufficient rebuttal evidence by Appellants, we
find that Satoyama’s preference for ports of a cluster to which the source or
target volume belongs teaches or suggests selecting ports based on whether
the cluster is an owner of the respective primary and secondary storage
locations. Because Paul teaches port selection based on availability criteria
instead of Satoyama’s loading criteria, we find that the combination teaches
or suggests the claimed port-related determinations including (i) selection of
a port on an owner primary or secondary cluster in response to availability of
such a port and, otherwise, (ii) selection of an available port on a primary/
secondary cluster not owning the respective primary or secondary storage
location being accessed.
Appellants further argue that Satoyama fails to classify ports based on
cluster ownership status of the associated storage location involved. App.
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Br. 24. The Examiner responds that in Satoyama, each system 1 contains
multiple clusters 11 with each cluster 11 having logical volumes 15, ports
18, and a controller 10. Ans. 29. “Thus, each cluster has storage volumes
that belong to it, ports that belong to it, and a controller 10 that handles reads
and writes to the storage volumes that belong to the cluster.” Id. (emphasis
omitted). We agree with the Examiner that, given Satoyama’s arrangement
of clusters, volumes, and controllers and preference for selecting “from the
ports in the cluster to which the source volume belongs” (Satoyama [0079]
(internal quotation marks omitted)), Satoyama teaches or suggests
classifying ports by cluster ownership status. Therefore, Appellants’
arguments are not persuasive of reversible Examiner error.
For the reasons supra and in the absence of sufficient evidence of
Examiner error, we sustain the rejection of independent claim 16 and, for the
same reasons, the rejections of independent claims 28 and 34 under
35 U.S.C. § 103(a) together with the rejections of dependent claims 19, 21-
26, 30-32, and 36-38 not separately argued.

Claims 20, 29, and 35
Appellants argue that because Satoyama generally describes that
controller 10 performs port selection without specifying that selection is
performed by constituent disk adapter (DKA) 14, the reference fails to teach
or suggest that “an adaptor select a port on secondary cluster” as required by
the claims. App. Br. 25. The Examiner responds that Satoyama discloses
both CHAs 13 and DKAs 14 are processors such that it would have been
obvious to run programming stored in memory 19 using one of the adapters.
Ans. 30. We agree with the Examiner.
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Satoyama teaches port selection implemented by program code stored
in memory. That program code must be executed by a processor
somewhere. Having described adapters 13 and 14 as processors, one of
ordinary skill in the relevant art at the time of the invention would have
found it obvious to have the code executed by one or more of the adapters of
controller 10. Because Satoyama’s controller 10 provides a finite number of
options for executing port selection program code, most notably by the
adapters,4 we find an adapter including the selected port on one secondary
cluster that performs the second set of operations to be an obvious design
choice. As Appellants have provided no persuasive evidence in rebuttal, we
agree with the Examiner and find no reversible error. Therefore, we sustain
the rejections of claims 20, 29, and 35 under 35 U.S.C. § 103(a) over
Satoyama and Paul.

Claims 27, 33, and 39
Appellants argue that Satoyama’s channel adapter (CHA) performs
remote copy processing but, because ports 18 are external to the CHAs,
there is no teaching of “an adaptor including the selected port on the primary
cluster performs the determined second set of operations to select the port on
the owner secondary cluster to use.” App. Br. 29. The Examiner responds
that external ports are a mere alternative arrangement or design choice that
does not affect the functionality of the cluster. Ans. 34. We agree with the

4 See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
in the art has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.”).
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Examiner that, given Satoyama’s teaching of ports that are separate from the
CHAs, it would be mere design choice and therefore obvious to combine the
functionality such that an “adapter” includes the selected port. A design
choice may be an acceptable rationale for an obviousness rejection when a
claimed product merely arranges known elements in a configuration that
provides no novel or unexpected results. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975). Absent persuasive evidence or argument in rebuttal, we find
the Examiner’s rationale and conclusion to be reasonable and agree that
Appellants’ argument is not persuasive of reversible error. Accordingly we
sustain the rejection of claims 27, 33, and 39 under 35 U.S.C. § 103(a) over
Satoyama and Paul.

CONCLUSION
We conclude that the Examiner did not err in rejecting representative
claims 16, 20, and 27. Accordingly, we affirm the Examiner’s rejection of
independent claims 16, 28, and 34, dependent claims 20, 29, and 35 and
dependent claims 27, 33, and 39 under 35 U.S.C. § 103(a) together with the
rejection of dependent claims 21-23, 26, 30-32, and 36-38, not separately
argued,5 as being unpatentable over Satoyama and Paul. For the same
reasons, we affirm the rejections of dependent claims 19, 24, and 25 under
35 U.S.C. § 103(a) over Satoyama, Paul, and Yamagami, also not separately
argued.

5 Merely restating with respect to a second claim an argument previously
presented with respect to a first claim, is not an argument for separate
patentability of the two claims.
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DECISION
The Examiner’s decision to reject claims 16 and 19-39 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)(1)(iv).

AFFIRMED

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