11145403 (B.P.A.I. Mar. 19, 2012)

Ex Parte Rickard et al

Board of Patent Appeals and InterferencesMar 19, 2012

11145403 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/145,403 06/03/2005 Wayne Thomas Rickard STL12384 3095 7590 03/19/2012 Fellers, Snider, Blankenship, Bailey & Tippens, P.C. Suite 1700 100 North Broadway Oklahoma City, OK 73102-8820 EXAMINER VO, THANH DUC ART UNIT PAPER NUMBER 2189 MAIL DATE DELIVERY MODE 03/19/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WAYNE THOMAS RICKARD, STEPHEN JAMES SICOLA, and DIANA SHEN Appeal 2011-0020651 Application 11/145,403 Technology Center 2100 ____________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Seagate Technology, LLC. (App. Br. 1.) An oral hearing was held on this appeal on March 13, 2012. Appeal 2011-002065 Application 11/145,403 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-13. Claims 14-20 have been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection. Appellants’ Invention Appellants invented a distributed storage system having a data storage subsystem (108) connected to a network. Upon receiving an access command from a remote host (102) via the network, a virtualization processor (150) contained in a data storage subsystem (108) executes instructions to map virtual storage volumes contained in the data storage subsystem (108) to external data storage volumes (128) without communicating virtualization instructions via the network . (Spec. 7, ll. 28- 31, spec. 8, ll. 5-12.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A distributed storage system comprising: a network; and a data storage subsystem connected to the network, the data storage subsystem comprising: a plurality of rotatable spindles each supporting a storage medium adjacent a respective independently moveable actuator in a data storing and retrieving Appeal 2011-002065 Application 11/145,403 3 relationship therewith, the storage mediums defining a storage space that is accessed by a remote device communicating an access command via the network; and a virtualization processor executing computer readable virtualization instructions to map and manage virtual storage volumes to the storage space in response to receiving the access command without any of the virtualization instructions being communicated via the network. Prior Art Relied Upon Honda US Patent Pub. No.: 2004/0103261 A1 May 27, 2004 DeKoning US 6,757,753 B1 Jun. 29, 2004 Suzuki US 6,877,110 B2 Apr. 5, 2005 Abe US Patent Pub. No.: 2005/0188247 A1 Aug. 25, 2005 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 1, 7, 8, and 13 stand rejected under 35 U.S.C. § 102 (b) as being anticipated by Honda. 2. Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Honda and Suzuki. 3. Claims 2, 6, and 9 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Honda and Abe. 4. Claims 5 and 12 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Honda and DeKoning. Appeal 2011-002065 Application 11/145,403 4 ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the principal Brief, pages 5-11. Representative Claim 1 Dispositive Issue: Have Appellants shown that the Examiner erred in finding that Honda describes a virtualization processor that maps virtual storage volumes to storage space in storage mediums without communicating virtualization instructions via the network from which an access command was received from a remote device, as recited in independent claim 1? Appellants argue that Honda does not describe the disputed limitations emphasized above. In particular, Appellants argue that Honda discloses sending communication instructions from a controller to a storage device via the same network from which the controller receives the access command from the remote host computer. (App. Br. 6-8.) Further, Appellants agree with the Examiner that the disputed claimed limitations can be reasonably construed as connecting the virtualization processor to the remote host via a first network, and connecting the virtualization processor to the storage mediums via a second network to prevent the virtualizing instructions from being communicated via the first network through which the remote host sent the access command. However, Appellants disagree that the invention as characterized by the Examiner is described by Honda, which discloses communicating virtualization instructions to storage mediums via the same network from which it received the access command. Appeal 2011-002065 Application 11/145,403 5 Additionally, Appellants argue that the Examiner improperly construes Honda’s disclosure of using two different protocols in a same network as somehow defining two different networks. (Reply Br. 2-8.) In response, the Examiner finds that Honda’s disclosure of using two different network protocols in two different network paths to implement communication between a controller and a host and communication between the controller and a storage device describes the disputed limitations. (Ans. 12.) We agree with Appellants. In particular, we find that Honda at best discloses a first network path using a first protocol for establishing communication between the host and the virtualization controller, and a second communication path using a second protocol for linking the controller with the storage devices. However, both such communications occur within the same network. (¶ [0044].) Thus, we agree with Appellants that Honda’s disclosed network configuration describes using different protocols and paths within a single network. Accordingly, Honda does not describe that the communication between the virtualization processor and the storage devices is achieved through a means other than the network from which the host sent the access command to the processor. Because Appellants have shown at least one error in the Examiner’s rejection, we need not address Appellants’ other arguments. It follows that Appellants have not shown error in the Examiner’s rejection of claim 1. Because claims 2-12 also recite the disputed limitations, we also find error in the Examiner’s rejection of those claims. Appeal 2011-002065 Application 11/145,403 6 NEW GROUNDS OF REJECTION We enter the following new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b): 35 U.S.C. § 112 Second Paragraph Independent claim 13 recites in relevant part a means for virtualizing a self-contained storage capacity independent of the host. (Claims Appendix.) Appellants indicate that “[t]he disclosed structure for performing the function associated with the means for virtualizing includes the self-contained data storage subsystem having the controller 112, the storage devices 109, and the intelligent storage processor (“ISP”) 150 therein that function autonomously.” (App. Br. 4.) Further, Appellants’ Specification provides an exemplary list of devices that can be used to characterize the means for virtualizing as well as what the cited means is intended to exclude therefrom. (Spec. 10, ll. 5-2.) However, we have not found, nor have Appellants directed us to any portions in the referenced sections of Appellants’ Specification that identifies a specific structure corresponding to the means for virtualizing.2 Therefore, the Specification 2 For a computer-implemented means-plus-function claim limitation that invokes 35 U.S.C. § 112, sixth paragraph, the corresponding structure is required to be more than simply a general purpose computer or microprocessor. See Aristocrat Technologies, Inc. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). The corresponding structure for a computer-implemented function is the algorithm. See WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999). The written description of the Specification must at least disclose the Appeal 2011-002065 Application 11/145,403 7 does not sufficiently disclose the required structure to enable a person of ordinary skill in the art to ascertain the scope of the claimed means for virtualizing. Thus, the means-plus-function limitation of claim 13 lacks sufficient disclosure of a structure under 35 U.S.C. § 112 ¶ 6 and are, therefore, indefinite under 35 U.S.C. § 112 ¶ 2. Accordingly, claim 13 is indefinite for failing to distinctively claim the subject matter, which Appellants regard as their invention. As a consequence of the new ground of rejection above, we pro forma reverse the outstanding prior art rejection of claim 13 as being anticipated by Honda. The subject matter encompassed by the claim on appeal must be reasonably understood without resort to speculation. Presently, speculation and conjecture must be utilized by us and by the artisan inasmuch as the claims on appeal do not adequately reflect what the disclosed invention is. Note In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); Note also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). algorithm that transforms the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm that performs the claimed function. See Aristocrat, 521 F.3d at 1338. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. See Finisar Corp. v. The DIRECTV Group Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Appeal 2011-002065 Application 11/145,403 8 35 U.S.C. § 112 First Paragraph The independent claims 1 and 7 recite “. . . without any of the virtualization instructions being communicated via the network.” However, Appellants’ originally-filed disclosure does not expressly support this negative limitation. Silence in the Specification does not meet the written description requirement3 for a negative limitation. The Court of Appeals for the Federal Circuit has determined that an express intent to confer on the claim language the novel meaning imparted by the negative limitation is required, such as an express disclaimer or independent lexicography in the written description that provides support for the negative limitation. Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (citations omitted). We note that the cited language was added by amendment in papers filed on July16, 2009. As a result, Appellants’ originally-filed disclosure does not describe the claimed invention in sufficient detail that one skilled in 3 To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 1563. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Much of the written description case law addresses whether the specification as originally filed supports claims not originally in the application. Appeal 2011-002065 Application 11/145,403 9 the art would have reasonably concluded that the Appellants had possession of the claimed invention. Accordingly, we reject independent claims 1, and 7 as well as dependent claims 2-6, and 8-12 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b) 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record . . . Appeal 2011-002065 Application 11/145,403 10 DECISION We reverse the Examiner’s decision rejecting claims 1-13 and enter a new ground of rejection against these claims. REVERSED 37 C.F.R. § 41.50 (b) Vsh