10672390 (B.P.A.I. Mar. 28, 2012)

Ex Parte Voorhees et al

Board of Patent Appeals and InterferencesMar 28, 2012

10672390 (B.P.A.I. Mar. 28, 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. 10/672,390 09/26/2003 William Voorhees 03-0961 8526 84300 7590 03/29/2012 Duft Bornsen & Fishman LLP 1526 Spruce Street Suite 302 Boulder County, CO 80302 EXAMINER NAJJAR, SALEH ART UNIT PAPER NUMBER 2492 MAIL DATE DELIVERY MODE 03/29/2012 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 WILLIAM VOORHEES, TIMOTHY HOGLUND, and STEPHEN JOHNSON ____________ Appeal 2009-013361 Application 10/672,390 Technology Center 2400 ____________ Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and ANDREW CALDWELL, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013361 Application 10/672,390 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-12, 14, and 16-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to configuring ports within a Serial Attached Small Computer Systems Interface (SAS) domain. See Spec. 1. Claim 1 is reproduced below with the key disputed limitations emphasized: 1. An automated method of configuring routing attributes of ports within a SAS network domain, comprising: automatically discovering devices of the SAS network domain; automatically discovering the ports of the discovered devices; automatically determining the routing attribute to be associated with each discovered port of the discovered devices; automatically configuring the routing attributes of the discovered ports; and automatically configuring routing table information used by the devices of the domain derived from the configured routing attributes. The Examiner relies on the following as evidence of unpatentability: Aguilar US 6,199,137 B1 Mar. 6, 2001 Appellants’ Admitted Prior Art found on page 3, paragraphs 1 and 2, of the Specification (hereinafter “AAPA”). THE REJECTION Claims 1-12, 14, and 16-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA in view of Aguilar. Ans. 3-7.1 1 Throughout this opinion, we refer to (1) the Appeal Brief filed November 13, 2008, and (2) the Examiner’s Answer mailed January 26, 2009. Appeal 2009-013361 Application 10/672,390 3 THE CONTENTIONS Appellants argue that: (1) neither AAPA nor Aguilar teaches or suggests determining “routing attributes,” as understood by an ordinarily skilled artisan, that are automated (Br. 9-11); (2) Aguilar is not related to discovering ports of a SAS domain or determining/configuring the devices’ routing attributes (Br. 9-10); (3) Aguilar only discusses automating configuration of parameters in a general sense and provides no details about routing attributes as specific to SAS domains (Br. 10-11); (4) neither AAPA nor Aguilar teaches or suggests automatically sharing or distributing automatically-configured routing tables such that other devices of the SAS domain share the same routing table information (Br. 11-12); and (5) there is no reasonable expectation of success in modifying AAPA with Aguilar’s teaching because Aguilar’s automatic configuration are inapplicable to routing attributes in relation to SAS standards (Br. 12). ISSUES Under § 103, has the Examiner erred in rejecting claim 1 by finding that AAPA and Aguilar collectively would have taught or suggested (1) automatically configuring the routing attributes of the discovered ports and (2) automatically configuring routing table information used by the devices of the domain, given its broadest reasonable construction? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of representative claim 1, which calls for, in pertinent part, automatically configuring the routing attributes of the discovered ports. We Appeal 2009-013361 Application 10/672,390 4 first note that the rejection relies on both AAPA and Aguilar. The Examiner relies on AAPA to teach the step of configuring the routing attributes of the discovered ports when describing how an administrator must set a routing attribute associated with each port of an SAS device (Spec. 3:18-21), but also finds that AAPA does not teach the step is automated. See Ans. 3. The Examiner turns to Aguilar to cure this deficiency. Ans. 3-4. Thus, attacking Aguilar individually (Br. 9-11) does not show nonobviousness. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Aguilar teaches a software-operated technique for discovering changes in topology when a new device is removed or inserted into a port (e.g., automating). See col. 4, ll. 31-39. Aguilar also teaches using software to compute a new topology for routing the ports to controllers (e.g., automating discovering ports and configuring the port’s routing information). See col. 4, ll. 40-48. As the Examiner states (Ans. 3-4, 7), Aguilar’s automation technique is desirable and intended to avoid errors, expense, and time. See Ans. 3-4 (citing col. 1, ll. 39-50). Thus, to the extent Appellants assert that Aguilar is non-analogous art (see Br. 9), we disagree. Aguilar is reasonably pertinent to the problem Appellants were concerned with, including how to discover device ports and configure routing information for these ports in an automated fashion that is less time consuming and less prone to errors. See Spec. 4:7-12. Additionally, the Examiner relies on AAPA – not Aguilar– to teach discovering ports within an SAS domain and configuring the port’s routing attributes. See Ans. 3. Thus, contrary to Appellants’ arguments (Br. 9-11), Aguilar need not teach “routing attributes” within the context of an SAS domain or provide details about routing attributes as specific to SAS Appeal 2009-013361 Application 10/672,390 5 domains. That is, Aguilar is cited for the limited purpose that automating routing information for ports is known by an ordinarily skilled artisan. See Ans. 3-4, 7-8. Thus, while either AAPA or Aguilar alone may not teach or suggest “automatically discovering the ports” within an SAS domain and “automatically configuring the routing attributes of the discovered ports,” the collective teachings do. Also, Appellants fully admit that such manual configuring steps are well known. Br. 11 (stating “AAPA certainly suggests that manual steps for such configuration are well known . . . ”). The Examiner further indicates that automating known techniques are likely to be obvious. See Ans. 7-8 (citing In re Venner, 262 F.2d 91, 95 (CCPA 1958)). That is, applying modern electronics to older mechanically-operated methods or using automation for manually-operated methods are commonplace and use the common sense of an ordinarily skilled artisan. See id.; see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). Furthermore, applying Aguilar’s automation teaching to AAPA’s discovering and configuring steps does no more than automate a known manual method accomplishing the same result and is no more than combining elements familiar to an ordinary skilled artisan according to known methods yielding a predictable result. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). While Appellants assert that there is no reasonable expectation of success of combining Aguilar with AAPA due to the complexities associated with automating the steps of determining and configuring of routing attributes in relation to SAS standards, Appellants provide no evidence to support this position. See Br. 12. Also, as stated Appeal 2009-013361 Application 10/672,390 6 above, we find such combination yields a predictable result, and, thus, an expectation of success is reasonable. Lastly, we agree with the Examiner (Ans. 8) that Appellants’ argument concerning the references failing to share or distribute routing tables to all devices, such that all devices share the same routing table information, is not commensurate in scope with claim 1. See Br. 11-12. Rather, claim 1 recites automatically configuring routing table information “used by the devices of the domain” and does not require sharing the same information. Appellants map element 202 to the component that performs this step of automatically configuring of the routing tables. Br. 6. However, step 202 is described and shown as “operable to automatically configure routing tables in all devices.” See Spec. 12:11-13 (emphasis added); Fig. 2. A discussion that the routing table information is used by all devices is not found in the disclosure. See generally Specification. Moreover, this limitation was not part of the original claims. Thus, giving the phrase, “automatically configuring routing table information used by the devices,” its broadest reasonable construction read in light of the disclosure, the above-quoted clause includes automatically configuring routing table information in the devices. AAPA discusses a known step of configuring routing tables for or in the expander devices (see Spec. 3:7-9) and, when combined with Aguilar’s teaching of automating, as explained above, teaches automating this step in the devices. Thus, AAPA and Aguilar collectively teach or suggest the “automatically configuring routing table information used by the devices” as recited in claim 1. Appeal 2009-013361 Application 10/672,390 7 For the foregoing reasons, Appellants have not persuaded us of error in the rejection of: independent claim 1 and claims 2-12, 14, and 16-20 not separately argued with particularity (Br. 12). CONCLUSION The Examiner did not err in rejecting claims 1-12, 14, and 16-20 under § 103. DECISION The Examiner’s decision rejecting claims 1-12, 14, and 16-20 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 babc