Ex Parte Bergsten

Board of Patent Appeals and Interferences

Oct 20, 2008

10135246 (B.P.A.I. Oct. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES R. BERGSTEN

Appeal 2008-0694
Application 10/135,2461
Technology Center 2100
____________________

Decided: October 20, 2008
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and JAY P.
LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 through 30. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Filed on Apr. 30, 2002. The real party in interest is LSI Logic Corp.
Appeal 2008-0694
Application 10/135,246

2
As depicted in Figure 1, Appellant invented a method and system that
uses two communication links (120), each forming a distinct path for
providing redundant data storage among a plurality of disparate nodes (104,
106, 108, 110) located in geographically different regions. (Spec. 2, 5-7.)
The invention is intended to facilitate data storage, to minimize data loss,
and to maximize data recovery in the event of a disaster. (Id.)
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A system for redundant geographically disparate data storage,
comprising:

a plurality of nodes for storing data, an individual node of the plurality
of nodes is capable of redundantly backing-up at least one geographically
disparate node of the plurality of nodes the at least one geographically
disparate node being located in a different geographical region than a first
node, included in the plurality of nodes, such that a disaster effecting the
first node does not effect the at least one geographically disparate node;

at least two communication links connecting the individual node of
the plurality of nodes to at least two geographically disparate nodes of the
plurality of nodes; and

at least one host device suitable for interfacing with stored data,
communicatively coupled to the individual node of the plurality of nodes;

wherein the at least two communication links includes an alternate
communication path between the individual node and the at least to
geographically disparate nodes in the event of communication link failure.

Appeal 2008-0694
Application 10/135,246

3
The Examiner relies on the following prior art as evidence of
unpatentability:

Ofek US 6,092,066 Jul. 18, 2000
Miller US 6,049,838 Apr. 11, 2000
Wolff US 6,185,601 B1 Feb. 6, 2001
Chase-Salerno US 6,253,209 B1 Jun. 26, 2001
Black US 6,912,548 B1 Jun. 28, 2005
Gagne US 6,687,718 B2 Feb. 3, 2004
The Examiner rejects the claims on appeal as follows:
A. Claims 1, 3 through 6, 9, 18 through 22, and 24 through 28
stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the
combination of Ofek, Wolff, and Gagne.
B. Claims 2 and 23 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Ofek, Gagne, Wolff, and
Chase-Salerno.
C. Claims 7 and 29 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Ofek, Wolff, Gagne, and Miller.
D. Claims 8 and 30 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Ofek, Gagne, Wolff, and Black.
E. Claims 11 through 13 stand rejected under 35 U.S.C. § 103 (a)
as being unpatentable over the combination of Ofek, Gagne, and Wolff.
Appeal 2008-0694
Application 10/135,246

4

F. Claims 10, 14, 15, and 17 stand rejected under 35 U.S.C. § 103
(a) as being unpatentable over the combination of Ofek, Gagne, and Black.2
G. Claims 16 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the combination of Ofek, Gagne, and Miller.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Ofek
1. Ofek discloses a data processing network system for providing
redundant data storage, and continuous data availability in geographically
remote mirrored systems. (Col. 3, ll. 11-25.)
2. As depicted in Figure 1, the network includes a high-speed
communications link (12) that interconnects a local system (10) to a remote
system (11) to thereby facilitate the transfer of data between the two
remotely located systems. (Col. 4, ll. 37-41.)
3. The networked system is highly reliable even in the event of a
natural disaster. During normal operation, the host (13) in the local system

2 While the Black patent appears in the statement of the rejection, it is not
relied upon in the body of the rejection. ((Ans. 15-18.) At page 29 of the
Answer, the Examiner notes that the Black patent was inadvertently inserted
the statement of the rejection, but yet not relied upon to reject claims 10, 14,
15, and 17. This opinion will therefore treat these claims as being rejected
over the combination of Ofek and Gagne.
Appeal 2008-0694
Application 10/135,246

5
(10) transfers data from the local storage media to the storage media in the
remote system (11) via the communication link (12). This causes the storage
media in the remote system to mirror the storage media in the local system.
If a catastrophic disaster prevents the local system from operating, the
remote system host (40) takes over, and continues to have access to the data.
(Col. 5, l. 59- col. 6, l. 11.)
Gagne
4. Gagne indicates that in most redundancy/backup systems,
writing data to a geographically remote data storage site requires a transfer
of data across high-bandwidth communications link. (Col. 1, ll. 46-50.)
5. Gagne further indicates that in redundant/backup systems
having more than one remote system, high speed communication links are
used to transfer data among these remote systems. (Col. 2, ll. 19-22.)
6. As shown in Figure 1, Gagne discloses a system wherein
storage data (R1) in a local site (21) is copied and transferred over to a
storage medium (32) at a first remote site (22) via a high speed
communication medium (31). Similarly, data (R2) in the first remote site is
copied and transferred over to the storage medium (40) of a second remote
site via a remote adapter (37). (Col. 4, ll. 19-33, ll. 49-60.)

Appeal 2008-0694
Application 10/135,246

6
Wolff
7. As shown in Figure 1A, Wolff discloses a client server system
wherein clients (100, 102) use an alternate communications path to access
data at a server upon determining an existing path is overloaded. (Col. 5, ll.
25-60.)

PRINCIPLES OF LAW
OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
Appeal 2008-0694
Application 10/135,246

7
of skill in the art, and (4) wherein evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).

Appeal 2008-0694
Application 10/135,246

8
In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966) (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Appeal 2008-0694
Application 10/135,246

9
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The motivation for combining reference teachings is not limited to the
problems addressed by Appellants. “[A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” In re
ICON Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(quoting KSR, 127 S. Ct. at 1742).

ANALYSIS
Claims 1, 3-6, 9, 18-22, and 24-28
Independent claim 1 recites in relevant part two communication links
connecting an individual node to two geographically disparate nodes.
(Claims Appendix.)
Appellant argues that the disclosures of Ofek, Gagne, and Wolff
cannot be properly combined to arrive to these limitations. (App. Br. 7-9.)
Particularly, Appellant argues that Ofek discloses transferring data between
a local site and a remote site using a high speed communications link,
whereas Gagne and Wolff uses a low-speed communication link to facilitate
that transfer. Appellant thus concludes that the there is insufficient rationale
to combine the cited references. (Id.)
Appeal 2008-0694
Application 10/135,246

10
In response, the Examiner avers that Ofek, Gagne and Wolff are
properly combined to arrive to the claimed limitations. Particularly, the
Examiner finds that Gagne’s disclosure of two communication links in
conjunction Wolff’s disclosure of an alternate communication path would
reinforce Ofek’s redundant/backup network system. (Ans. 20-22.)
Therefore, the Examiner concludes that the combination of Ofek, Gagne and
Wolff renders independent claim 1 unpatentable. (Id.)
Thus, the pivotal issue before us is whether one of ordinary skill in the
art would have found sufficient rationale to combine the teachings Ofek,
Gagne, and Wolff to yield two communication links connecting an
individual node to two geographically disparate nodes, as recited in
independent claim 1. We answer this inquiry in the affirmative.
As set forth in the Findings of Fact section, Ofek discloses a high-
speed communications link for transferring data between the storage device
of a local system and the storage device of a remote system. (FF. 2.)
Further, Gagne discloses that high-peed communication links are ordinarily
used to transfer data between multiple geographically located sites within a
redundant/backup system. (FF. 4-6.) Additionally, Wolff discloses an
alternate path for a client site to access data at a server site when an existing
path is already congested. (FF. 7.) One of ordinary skill in the art would
readily recognize that the combined disclosures of Ofek, Gagne and Wolff
are prior art elements that perform their ordinary functions to predictably
result in a backup system that uses two high-speed communication links
Appeal 2008-0694
Application 10/135,246

11
including an alternate path to transfer data between a plurality of remote
sites. The ordinarily skilled artisan would appreciate that the resulting
system would allow a client to readily access desired data from the network
even when the local site is down following a natural disaster. As suggested
by Gagne, the ordinarily skilled artisan would readily know to use high-
speed communication links to transfer data between the different remote
sites of the Ofek-Gagne-Wolff system. We therefore agree with the
Examiner that the proffered combination is proper. It follows that Appellant
has not shown that the Examiner erred in concluding that the combination of
Ofek, Gagne and Wolff renders independent claim 1 unpatentable.
Appellant did not provide separate arguments with respect to the
rejection of claims 1, 3 through 6, 9, 18 through 22, and 24 through 28.
Therefore, we select independent claim 1 as being representative of the cited
claims. Consequently, claims 1, 3 through 6, 9, 18 through 22, and 24
through 28 fall together with representative claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

Claims 10, 14, 15 and 17
Appellant argues that independent claim 10 recites similar limitations
as those argued above for claim 1. Consequently, Appellant reiterates that
Ofek’s high-speed communication link cannot be combined with low-speed
communication links of Gagne in the proffered backup system. (App. Br.
10.) We do not agree. As discussed above, we have found that both Ofek
Appeal 2008-0694
Application 10/135,246

12
and Gagne teach using high-speed communication links to transfer data
between remote sites in a network. (FF. 2-4). Therefore, the combination of
Ofek and Gagne is proper. It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Ofek and Gagne
renders independent claim 10 unpatentable.
Appellant did not provide separate arguments with respect to the
rejection of claims 10, 14, 15, and 17. Therefore, we select independent
claim 10 as being representative of the cited claims. Consequently, claims
14, 15, and 17 fall together with representative claim 10. 37 C.F.R.
§ 41.37(c)(1)(vii).

Claims 2, 7, 8, 11-13, 16, 23, 29, 30
Appellant argues that these dependent claims are not unpatentable by
virtue of their dependency upon their respective base claims that are not
unpatentable. (App. Br. 11-12.) We have already addressed Appellant’s
arguments regarding independent claims 1, 10, 18, and 22. As discussed
above, we found that Ofek and Gagne, taken alone or in combination with
the various references relied upon by the Examiner, renders the cited claims
unpatentable. Therefore, Appellant’s argument regarding these dependent
claims is not persuasive. It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Ofek, Gagne and other
references relied upon renders claim 2, 7, 8, 11-13, 16, 23, 29, 30
unpatentable.
Appeal 2008-0694
Application 10/135,246

13
CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in concluding that:
1. The combination of Ofek, Gagne, and Wolff renders claims 1,
3 through 6, 9, 11 through 13, 18 through 22, and 24 through 28
unpatentable under 35 U.S.C. § 103 (a).
2. The combination of Ofek, Gagne, Wolff, and Chase -Salermo
renders claims 2 and 23 unpatentable under 35 U.S.C. § 103 (a).
3. The combination of Ofek, Gagne, Wolff, and Miller renders
claims 7 and 29 unpatentable under 35 U.S.C. § 103 (a).
4. The combination of Ofek, Gagne, Wolff, and Black renders
claims 8 and 30 unpatentable under 35 U.S.C. § 103 (a).
5. The combination of Ofek and Gagne renders claims 10, 14, 15,
and 17 unpatentable under 35 U.S.C. § 103 (a).
6. The combination of Ofek, Gagne, Wolff, and Miller renders
claim 16 unpatentable under 35 U.S.C. § 103 (a).

DECISION
We affirm the Examiner’s decision rejecting claims 1 through 30.

Appeal 2008-0694
Application 10/135,246

14
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

pgc

LSI CORPORATION
1621 BARBER LANE
MS: D-105
MILPITAS CA 95035