Ex Parte Allen et al

Patent Trial and Appeal Board

May 12, 2014

11011244 (P.T.A.B. May. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JAMES P. ALLEN, DANIEL G. EISENHAUER,
GILES ROGER FRAZIER, ROBERT GEORGE KOVACS,
and SATYA PRAKESH SHARMA
____________________

Appeal 2011-012458
Application 11/011,244
Technology Center 2400
____________________

Before: JOHN C. KERINS, ANNETTE R. REIMERS, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/011,244

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STATEMENT OF THE CASE
James P. Allen et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 43-72. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claims 43, 48, 53, 58, 63, and 68 are independent. Claim 43,
reproduced below, is illustrative of the claimed subject matter, with disputed
limitations emphasized.
43. A method for migrating an operating system from a
source computer to a destination computer, the method
comprising:
identifying a destination adapter of the destination
computer that is coupled for data communications to a storage
area network that is also coupled for data communications to a
source adapter of the source computer;
identifying a zone of the storage area network for the
source adapter;
removing the source adapter from the zone;
adding the destination adapter to the zone;
after adding the destination adapter to the zone, logging
off the source adapter from a login manager of the storage area
network;
after logging off the source adapter from the login
manager and after the operating system has been transferred
from the source computer to the destination computer,
logging on the destination adapter to the login manager.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Husain US 2008/0034249 A1 Feb. 7, 2008
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Nahum US 7,437,753 B2 Oct. 14, 2008
Rejection
Claims 53-57 and 68-72 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 3.
Claims 43-72 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Husain and Nahum. Ans. 3.

OPINION
101 Rejection
Appellants argue that independent claims 53 and 68 recite a computer-
readable recording medium, and the Specification provides examples of
recording media as a magnetic medium and an optical medium, which are
not signal media, such that “recording medium” should not be construed to
encompass transitory signals. App. Br. 7 (citing Spec., p. 6, ll. 12-13). We
are not persuaded by Appellants’ arguments because the definition of
recording medium is open ended and not limited to such non-transitory
media as magnetic and optical media. We sustain the rejection under 35
U.S.C. § 101.
Appellants state that claims 53 and 68 were amended in an
Amendment filed on February 21, 2011 to recite a non-transitory medium,
and that if those amendments were entered, the rejections under §101 should
be withdrawn since the amended claims recite “non-transitory” as requested
by the Office. Id. According to Appellants, 37 C.F.R. § 41.33(a) requires
that “submissions after the date of filing an appeal pursuant to § 41.31 (a)(1)
through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may
be admitted as provided in § 1.116.” Appellants argue that, because the
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Amendment was filed prior to Appellants’ brief and either complies “‘with
any requirement of form expressly set forth in a previous Office action’” or
presents “‘rejected claims in better form for consideration on appeal,’” the
Amendment can and should be entered to overcome the Examiner’s
rejection. Reply Br. 2 (citing 37 C.F.R. § 1.116(b)(1) and 1.116(b)(2)).
Entry or non-entry of amendments is not an appealable matter, but
rather is a petitionable matter, and thus is not within the jurisdiction of the
Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); and In re
Mindick, 371 F.2d 892, 894 (CCPA 1967) (refusal of examiner to enter an
amendment of claims is reviewable by petition under 37 C.F.R. § 1.181, and
not by appeal to the Board).
103 Rejection
The Examiner finds that Husain teaches removing a source adapter
from a SAN zone and adding a destination adapter to the SAN zone, because
“the devices may be switched for one another” within the blade system
shown in Figure 2. Ans. 3-4 (citing Husain, para. [0148]). Paragraph [0148]
of Husain teaches switching computers in a one-to-one move “by copying at
least a portion of the information from the first computer to the second
computer and switching the first peripheral device over to the second
computer using the peripheral switch.” The Examiner considers the claimed
adapters to be met by Husain’s “peripheral device,” and finds that Husain
teaches that its blade system can be used with a SAN. Id. (citing Husain,
para. [0134]).
The Examiner also finds that Nahum teaches, within a SAN network,
removing a source adapter from a zone and adding a destination adapter to
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the zone. Ans. 4 (citing Nahum, col. 16, ll. 59-65, and col. 13, l. 64 to col.
14, l. 6).
Regarding claims 43-57, Appellants argue that Husain and Nahum,
alone or in any reasonable combination, fail to teach or suggest “removing
the source adapter from the zone” or “adding the destination adapter to the
zone.” Reply Br. 2. According to Appellants, column 16, lines 59-65 of
Nahum teaches a host booting implementation and a SAN switch 2 being
burnt-in to always reside in a default zoning on start-up. Reply Br. 4. A
port from which a host 1 is uncoupled immediately returns to a default zone.
Id. Appellants argue that Nahum therefore references host
coupling/uncoupling and default zoning for a SAN switch, “rather than an
adapter of a source or destination computer from or to which an operating
system is to be migrated.” Id.
Husain teaches a one-to-one move of a computer blade after copying
at least some information from an old blade computer to a new blade
computer, switching peripherals from the old blade computer to the new
blade computer, and the blades being used to augment an existing SAN.
Husain, paras. [0134] and [0146] – [0148]. Nahum teaches authenticating
hosts that can connect to a SAN, and adding storage devices to the SAN by
putting an added storage device into a status map for the SAN. The
Examiner has not explained how the references, alone or in combination,
teach replacement of a computer having an adapter that is mapped to a SAN
zone, wherein the zone of the adapter is identified, the source adapter is
removed from the zone, and the destination adapter is added to the zone.
While the references teach adding and subtracting devices from a system
that include a SAN, none of the references teach how zone migration from a
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source computer to a destination computer is handled (besides “default”
zone taught in Nahum), much less handling the migration using source and
destination adapters. The combination of Husain and Nahum therefore fails
to establish prima facie obviousness and we do not sustain the rejection of
claims 43-57 under 35 U.S.C. § 103(a).
Regarding claims 58-72, Appellants argue that the Examiner fails to
address certain language recited in these claims. App. Br. 13. Claims 58,
63, and 68 recite logging off a virtual port name of a source adapter from a
login manager of a SAN, deregistering the virtual port name from the source
adapter, registering the virtual port name with the destination adapter after
transferring an operating system from a source computer to a destination
computer, and logging on the destination adapter to the login manager with
the virtual port name. Id. The Examiner finds that Nahum teaches these
logging on, logging off, registering, and deregistering steps. Ans. 8 (citing
Nahum, col. 7, ll. 1-4; col. 13, ll. 33-35; col. 13, ll. 64 – col. 14, l. 6; col. 16,
ll. 59-65).
The Examiner considers Nahum’s teaching of adding a WWN, LUN,
and port number of a storage device 4 to a SAN status map, when the
storage device 4 is detected to be a SAN work zone member, to teach the
logging on, logging off, registering, and deregistering steps of claims 58, 63,
and 68. The Examiner further explains that Nahum teaches associating and
disassociating port names in teaching that “a port identity may be used in
conjunction with a WWN name for each device in the array,” such that “a
name may be used with the port identifier, and associated with the port and
port manager.” Ans. 13. The Examiner finds that Nahum teaches “a port
uncoupling from a host (removing), and returning (adding).” Id.
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The Examiner has not explained, however, how adding device
information to a SAN status map upon storage device detection teaches
logging on a virtual port name, logging off a virtual port name, registering a
virtual port name, and deregistering a virtual port name, and we are therefore
not persuaded that Nahum teaches or suggests these limitations. We do not
sustain the rejection of claims 58-72 under 35 U.S.C. § 103(a).

DECISION
We AFFIRM the rejection of claims 53-57 and 68-72 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
We REVERSE the rejection of claims 43-72 under 35 U.S.C. § 103(a)
as unpatentable over Husain and Nahum.

AFFIRMED-IN-PART

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