Ex Parte Lumb et al

Board of Patent Appeals and Interferences

Jun 12, 2009

10400232 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER LUMB, ARIF MERCHANT,
and GUILLERMO ALVAREZ
____________

Appeal 2008-004591
Application 10/400,232
Technology Center 2100
____________

Decided1: June 12, 2009
____________
Before LEE E. BARRETT, ST. JOHN COURTENAY III, and
THU A. DANG, 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 C.F.R. § 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 Date (electronic delivery).

Appeal 2008-004591
Application 10/400,232

2
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-6, 24, and 28.2 We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

THE INVENTION
The disclosed invention relates to data storage systems. More
particularly, the present invention relates to emulation of the data storage
systems. (Spec. 1, ll. 9-10).
Independent claim 1 is illustrative:
1. A method of emulating a data storage system comprising:

obtaining a performance characterization of a data
storage device to be emulated and a specification of a workload,
the specification of the workload including a specification of a
plurality of data stores for the workload;

assigning the data stores to an emulation data storage
device according to the performance characterization and
according to the specification of the workload such that
sufficient resources of the emulation data storage device are
allocated to the workload to meet the performance
characterization of the data storage device to be emulated; and

operating the emulation data storage device under the
workload.

2 Claims 19-23 are allowed. Claims 7-18, 25-27, and 29-38 are objected to
for being dependent from a rejected base claim.

Appeal 2008-004591
Application 10/400,232

3
THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the obviousness rejections:
Guineau US 5,426,736 June 20, 1995
Courtright US 6,157,963 Dec. 5, 2000
Leonhardt US 2002/0188592 Dec. 12, 2002
Alvarez “Minerva: An Automated Resource Provisioning Tool
for Large Scale Storage Systems,” Nov. 2001
Wilkes, “Persistent Storage for Distributed Applications”, 1998

THE REJECTIONS
1. The Examiner rejected claims 1-5 and 24 under 35 U.S.C.
§ 103(a), as being unpatentable over Leonhardt in view of
Alvarez and Wilkes.
2. The Examiner rejected claims 6 and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Leonhardt in view of
Alvarez, Wilkes, Courtright, and Guineau.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:
1. Leonhardt teaches that virtual data storage devices 30, 32, and
36 provide physical data storage device emulation and also
provide for new representations of physical data storage devices
that have yet to be assigned or sold. Each virtual data storage
device is actually a shared portion of a physical data storage
device. (Para. [0031]).
Appeal 2008-004591
Application 10/400,232

4
2. Leonhardt teaches the selection (assignment) of data storage
devices used for the storage of each received data set. (Para.
[0034])
3. The Examiner admits that Leonhardt does not specifically teach
the second step. (Ans. 6)
4. Leonhardt does not teach assigning the data storage devices to
an emulation storage device.
5. Alvarez is directed to the design of large-scale computer
storage systems. (pg. 484, 3rd para.)
6. Alvarez teaches an assignment of storage devices that is based
on descriptions of the workload being designed and the
capabilities of available storage devices. (p. 484, last para.)
7. Alvarev does not teach or suggest emulation.
8. Wilkes does not teach or suggest emulation.

Appellants’ Contentions
Appellants’ contend that the cited references fail to teach or
suggest the limitation of “assigning the data stores to an emulation
data storage device according to the performance characterization and
according to the specification of the workload such that the sufficient
resources of the emulation data storage device are allocated to the
workload to meet the performance characterization of the data storage
device to be emulated.” (Reply Br. 5.)

Appeal 2008-004591
Application 10/400,232

5
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Have Appellants shown the Examiner erred in determining that the
cited references teach or suggest “assigning the data stores to an emulation
data storage device according to the performance characterization and
according to the specification of the workload such that sufficient resources
of the emulation data storage device are allocated to the workload to meet
the performance characterization of the data storage device to be emulated?”

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellants’ Briefs to show error in the
proffered prima facie case.

Obviousness under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U. S. 398, 419
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 417.
Appeal 2008-004591
Application 10/400,232

6
ANALYSIS
Claims 1-5 and 24
As noted above, Appellants contend that the cited references fail to
teach the second (“assigning”) step of claim 1. We agree for the reasons
discussed infra.
The Examiner contends that Leonhardt teaches two of the three steps
recited in claim 1, and relies upon Alvarez/Wilkes to teach the “assigning”
step that is outlined above. (See claim 1, FF 1-3 and Ans. 14-15). As noted
above, Alvarez is directed to storage system design, and does not teach or
suggest emulation. (FF 5 and 7.) The Examiner “clarified” his previous
position and stated that the teachings “pertaining to emulation data storage
devices do not affect the teaching of [Alvarez], as [Alvarez] is used in
combination with Leonhardt.” It is our view that in order to present a prima
facie case of obviousness, the secondary references, in this case
Alvarez/Wilkes, must contain a teaching or a suggestion of emulation in
order for the cited combination of references to teach or suggest the
“assigning” limitation as recited in claim 1, and to be properly combined
with the teachings of Leonhardt. Otherwise, the combination fails to yield
assigning the data stores to an “emulation data storage device,” as claimed.
Thus, we agree with Appellants that because Alvarez and Wilkes are
unrelated to storage device emulation, the cited references fail to teach or
suggest the “assigning” step as recited in claim 1. Accordingly, Appellants
have shown the Examiner erred in determining that the cited references
teach or suggest the “assigning” step.
Appeal 2008-004591
Application 10/400,232

7
We further note that independent claim 24 similarly recites “assigning
data stores to an emulation data storage device.” Therefore, Appellants have
shown the Examiner erred in rejecting claim 24 for the same reasons
discussed supra, as well as dependent claims 2-5 which stand therewith.

Claims 6 and 28
We next consider the Examiner’s rejection of claims 6 and 28 under
35 U.S.C. § 103(a) as being unpatentable over Leonhardt in view of Alvarez,
Wilkes, Courtright and Guineau. Based upon our review of the record
before us, we do not find, nor has the Examiner established, that Courtright
or Guineau cures the deficiencies of Leonhardt, Alvarez, and Wilkes
discussed above. Accordingly, we reverse the Examiner’s rejection of
claims 6 and 28.

CONCLUSION
Based on the findings of facts and analysis above, we conclude the
following:
Appellants have shown the Examiner erred in determining that the
cited references teach or suggest “assigning the data stores to an emulation
data storage device according to the performance characterization and
according to the specification of the workload such that sufficient resources
of the emulation data storage device are allocated to the workload to meet
the performance characterization of the data storage device to be emulated.”

Appeal 2008-004591
Application 10/400,232

8
DECISION
The decision of the Examiner rejecting of claims 1-6, 24, and 28
under 35 U.S.C. § 103(a) is reversed.

REVERSED

pgc

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS CO 80527-2400