Ex Parte Smith

Board of Patent Appeals and Interferences

Jun 22, 2009

10176205 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GORDON JAMES SMITH
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Appeal 2008-001341
Application 10/176,205
Technology Center 2400
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Decided: June 22, 2009
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Before LEE E. BARRETT, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/176,205

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse and enter a new ground of rejection under 35 U.S.C. §
101 against claims 19 and 21.

The Invention
The disclosed invention relates generally to server-initiated predictive
failure analysis (PFA) on disk drives (Spec. 5).
Independent claim 1 is illustrative:
1. A method for performing predictive failure analysis
(PFA) on one or more disk drives in a server system, the method
comprising the steps of:
monitoring the server system at the system level for a PFA
triggering event;
issuing a PFA initiation command to the one or more disk
drives if a PFA triggering event is encountered on the server system;
performing PFA on the one or more disk drives; and
reporting a PFA error to the server system if any of the one or
more disk drives fails the PFA.

The Reference
The Examiner relies upon the following reference as evidence in
support of the rejection:
Warwick US 6,460,151 B1 Oct. 1, 2002

The Rejection
The Examiner rejects claims 1-21 under 35 U.S.C. § 103(a) as being
unpatentable over Warwick.

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ISSUE
Appellant asserts that Warwick fails to disclose or suggest
“monitoring the server system at the system level for a PFA triggering
event” (App. Br. 10).
The Examiner finds that Warwick discloses monitoring the server
system at a system-level for a PFA triggering event at “col.2, lines 50-63 &
col. 3, lines 30-40” (Ans. 3-4).
Did Appellant demonstrate that the Examiner erred in finding that
Warwick discloses or suggests monitoring the server system at the system
level for a PFA (predictive failure analysis) triggering event?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Warwick discloses “predicting and reporting storage device failures
for any type of storage device.” (col. 2, ll. 51-53.)
2. Warwick discloses that an “interface between the hardware storage
device and the device driver includes status information which is
used for the prediction of storage device failures.” (col. 2, ll. 56-59.)
3. Warwick discloses that a “management application is responsible for
reporting the storage device failures.” (col. 2, ll. 59-60.)
4. Warwick discloses that a “storage management driver receives
storage device failure status from each of the device drivers and
propagates the storage device failure status to the management
applications.” (col. 2, ll. 60-63.)
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5. Warwick discloses that a “device driver may include a failure
predictions filter driver” (col. 3, l. 31) and that the “failure prediction
filter driver can perform statistical analysis in order to determine
whether to report a storage failure and/or it may send standard and/or
proprietary commands . . . to a hardware device if the hardware
device itself can determine if failure is being predicted.” (col. 3, ll.
32-40.)
6. The term “event” includes an “occurrence” or a “happening”
(Merriam-Webster’s Collegiate Dictionary 433 (11th ed. 2008)).
7. The term “trigger” includes “to initiate, actuate, or set off by a
trigger” (Merriam-Webster’s Collegiate Dictionary 1337 (11th ed.
2008)).

PRINCIPLES OF LAW
Statutory Subject Matter
Our reviewing court has held that transitory, propagating signals, such
as carrier waves, are not within any of the four statutory categories (process,
machine, manufacture or composition of matter). Therefore, a claim
directed to computer instructions embodied in a signal is not statutory under
35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), reh’g
denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70
(2008).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
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(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
As described above, Warwick discloses a failure prediction filter
driver (FF 5) predicting failures of a corresponding storage device (FF 1-2)
and a management application (FF 3) in an interface (FF 2) reporting the
storage device failures (FF 3). While we agree with the Examiner that
Warwick discloses or suggests a filter driver of a storage device predicting
failure of a corresponding storage device, we do not find, and the Examiner
has not demonstrated, that Warwick also discloses monitoring a server
system for a PFA triggering event, much less monitoring the server system
at the system level.
The Examiner broadly cites Warwick at col. 2, ll. 50-63 and col. 3, ll.
30-40 as disclosing the disputed feature of the claimed invention but has not,
for example, explicitly identified an element disclosed in Warwick that
corresponds to the recited “PFA triggering event” or “monitoring the server
system” for the PFA triggering event. We construe the term “trigger”
broadly but reasonably to include initiating, actuating, or setting off an
activity (FF 7) and the term “event” to include any “occurrence” or
“happening” (FF 6). Hence, a “PFA triggering event” includes, for example,
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any occurrence or happening (“event”) that actuates/initiates (“triggers”) a
failure analysis.
Warwick discloses at col. 2, ll. 50-63 an interface that includes status
information used to predict device failures. Warwick appears to disclose
information to be used to predict device failures when it is desired to predict
device failures. The Examiner does not indicate any component in
Warwick, and we do not find such a component, that monitors a server
system for an occurrence or happening that “triggers” (i.e., actuates or
initiates) failure analysis. Similarly, Warwick discloses at col. 3, ll. 30-40
that a device driver has a failure prediction filter driver that performs
statistical analysis to determine whether to report a storage failure (FF 5).
While Warwick may disclose determining if a storage failure should be
reported or not (by using “statistical analysis”), the Examiner has not
demonstrated how merely determining if a storage failure should be reported
or not is equivalent to or suggestive of monitoring a server system for a PFA
triggering event.
Independent claims 7, 14, and 19 recite similar features as claim 1.
Accordingly, we conclude that Appellant has met the burden of showing that
the Examiner erred in rejecting independent claims 1, 7, 14, and 19, and
corresponding dependent claims 1-6, 8-13, 15-18, 20, and 21, which depend
therefrom.

II. New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 19 and 21 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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As set forth above, Appellant’s Specification defines signal bearing
media as including transmission type media, such as digital and analog
communication links (Spec. 9). Claims 19 and 21 encompass the use of a
computer data signal embodied in a carrier wave on a digital or analog
communication link. A computer data signal embodied in a carrier wave on
a communication link is a transitory, propagating signal, which is not within
any of the four statutory categories, and is therefore non-statutory. See
Nuijten, 500 F.3d at 1357.
We therefore find that claims 19 and 21 are not directed to statutory
subject matter under 35 U.S.C. § 101.

CONCLUSION OF LAW
Based on the Findings of Facts and analysis above, we conclude that
Appellant demonstrated that the Examiner erred in finding that Warwick
discloses or suggests monitoring the server system at the system level for a
PFA triggering event.

DECISION
We reverse the Examiner’s decision rejecting claims 1-21 under
35 U.S.C. § 103.
In a new ground of rejection, we have rejected claims 19 and 21 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
In addition to reversing the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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 § 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

erc

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