Ex Parte Bolesta et alDownload PDFPatent Trial and Appeal BoardMay 27, 201613186958 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/186,958 07/20/2011 105727 7590 06/14/2016 Pillsbury Winthrop Shaw Pittman LLP (CA, Inc,) PO Box 10500 McLean, VA 22102 Richard Joseph Bolesta 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 072962-0393117 5298 EXAMINER LY,CHEYNED ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 06/14/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Docket_IP@pillsbury law. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte RICHARD JOSEPH BOLESTA, MICHAEL RALPH CHIARAMONTE, SHIV A MIRZADEH, and KEVIN CHARLES KOCHER Appeal2015-001413 Application 13/186,958 Technology Center 2100 Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and LINZY T. McCARTNEY, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. STATEMENT OF THE CASE Invention The invention on appeal relates to a system, method, and computer- readable medium for "provisioning storage among heterogeneous storage resources using a storage device type-agnostic application." (Spec. i-f 1) Appeal2015-001413 Application 13/186,958 Representative Claims j--4 1. A unified-interface storage provisioning system comprising a processor, and a memory with instructions which when executed by the processor causes the processor to perform a plurality of operations comprising: [Ll] receiving a storage provisioning request from a user interface, wherein the storage provisioning request is nonspecific to a particular one of a plurality of storage resources; [L2] processing the storage provisioning request to identifY one or more of the plurality of storage resources utilized to complete the storage provisioning request, wherein each of the plurality of storage resources comprises an interface configuration, and wherein at least two interface configurations are different from one another; [L3] generating an instruction to provzszon a data storage space among the one or more of the plurality of storage resources; and prov1s10mng the data storage space based on the instruction, wherein the processor is configured to operate with each of the plurality of storage resources in accordance with the interface configuration thereof. 2. The system of claim 1, wherein the processing operation comprises determining a nature of the storage provisioning request, and/or an application associated with the storage provisioning request. 3. The system of claim 1, wherein the user interface comprises a web services interface. 4. The system of claim 1, wherein the operations further comprise generating a status report related to a result of the provisioning operation. 2 Appeal2015-001413 Application 13/186,958 (Emphasis and bracketed letters added with respect to the contested limitations). Rejections A. Claims 1-3, 6-9, 12-15, and 18 are rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions ofUmbehocker (US 6,826,661 B2; iss. Nov. 30, 2004), in view of Lavallee (US 7,003,527 Bl; iss. Feb. 21, 2006). (Ans. 2-5). B. Claims 4, 5, 10, 11, 16, and 17 are rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of Umbehocker, in view of Lavallee, and further in view of Frandsen (US 2003/0225966 Al; pub. Dec. 4, 2003). (Ans. 5-6). Grouping of Claims Based on Appellants' arguments: We decide the appeal of Rejection A of claims 6, 7, 12, 13, and 18 on the basis of representative claim 1; We decide the appeal of Rejection A of claims 8 and 14 on the basis of representative claim 2; We decide the appeal of Rejection A of claims 9 and 15 on the basis of representative claim 3; and We decide the appeal of Rejection B of claims 5, 10, 11, 16, and 17 on the basis of representative claim 4. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the Action 3 Appeal2015-001413 Application 13/186,958 from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in response to Appellants' arguments, to the extent consistent with the analysis below. However, we highlight and address specific findings and arguments for emphasis in our analysis below. At the outset, we observe Appellants' principal arguments urging reversal of the Examiner's rejections adopt a pattern of attacking the references in isolation, instead of considering the respective teachings and suggestions of the cited combination of references. (See e.g., App. Br. 7-8 and 10). In reviewing these arguments, we remain mindful of the Supreme Court's guidance concerning "the need for caution in granting a patent based on the combination of elements found in the prior art." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. When a rejection under § 103 (a) is based on a combination of familiar elements, one cannot show nonobviousness by attacking references individually. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed Cir. 1986). Rejection A of Claims 1, 6, 7, 12, 13, and 18under§103(a) Issue: Under§ 103(a), did the Examiner err in finding the combination ofUmbehocker and Lavallee would have taught or suggested contested limitations Ll-L3, within the meaning of representative claim 1? Claim 1 - Contested Limitation LI Limitation L 1 requires a "storage provisioning request [that] is nonspecific to a particular one of a plurality of storage resources," which Appellants contend is not taught in Umbehocker. (App. Br. 6-7). 4 Appeal2015-001413 Application 13/186,958 However, the Examiner did not rely upon Umbehocker for teaching this limitation. Instead, the Examiner found Lavallee' s description of "generic management commands [that] can be sent to the management application regardless of actual equipment vendor (nonspecific) and type of elements installed within the storage area network (column 3, lines 31-3 7)" (Ans. 7), would have taught or suggested contested limitation L 1. Appellants do not contest the correctness of the Examiner's mapping of limitation L 1 to the cited portion of Lavallee. Because Appellants have not addressed the Examiner's specific findings regarding this contested limitation, we find Appellants' arguments unpersuasive. Claim 1 - Contested Limitation L2 Turning to contested limitation L2, the Examiner found the step of "processing the storage provisioning request to identify one or more of the plurality of storage resources utilized to complete the storage provisioning request" (emphasis added), was taught, or at least suggested, by the description in column 2, lines 34--41 ofUmbehocker. (Ans. 2). The cited portion of Umbehocker describes a "storage management application" that "accesses [a] data store when receiving a request to access a selected storage resource from the host application in order to be assigned to one of the storage resource provider modules by the data store." (Umbehocker col. 2, 11. 34--39) (emphasis added). Appellants contend the foregoing portion ofUmbehocker fails to teach limitation L2 because "it appears that the storage resource related to the request is pre-selected or pre-identified." (App. Br. 7). In other words, since the Examiner found the request in Umbehocker is specific to a particular one of the claimed storage resources (see Ans. 3 i-f 3), Appellants 5 Appeal2015-001413 Application 13/186,958 contend the identity of the storage resource is already resolved in the request to access that storage resource. We find Appellants' argument unpersuasive regarding limitation L2 for at least two reasons. First, Appellants attack Umbehocker in isolation without fully considering the Examiner's proffered combination with Lavallee. The Examiner relies on the combined teachings ofUmbehocker and Lavallee, where an artisan of ordinary skill having knowledge of Lavallee's teachings would have modified the request in Umbehocker to be nonspecific to a particular storage resource. (Ans. 3--4). Responsive to the nonspecific storage request, Umbehocker accesses the data store "in order to be assigned to one of the storage resource provider modules." (Umbehocker col. 2, 11. 35-39) (emphasis added). Second, even if the request in the Umbehocker-Lavallee combination were to arrive at the storage management application with the storage resource "pre-selected," Appellants fail to persuasively explain why the storage management application's inspection of a request for a pre-selected storage resource "in order to be assigned to one of the storage resource provider modules" (Umbehocker col. 2, 11. 37-38 (emphasis added)) is outside the scope of limitation L2. That is, nothing in claim 1 precludes the storage resource from being identified twice-first by the host application, and then by the storage management application, when the storage management application processes the host application's request. Appellants also contend Lavallee fails to teach limitation L2. (App. Br. 8). However, there is no need for Lavallee to teach limitation L2 under § 103, because, as we explained supra, Umbehocker was found to teach, or at least suggest, this limitation. 6 Appeal2015-001413 Application 13/186,958 For at least the aforementioned reasons, we are not persuaded the Examiner erred regarding contested limitation L2. Claim 1 - Contested Limitation L3 Limitation L3 recites: "generating an instruction to provision a data storage space among the one or more of the plurality of storage resources." Apart from summarily asserting (App. Br. 7) that "a mere description of an interface of a storage array used to perform storage operations, e.g., acquire or alter configuration settings" fails to teach the contested limitation, Appellants do not particularly show the error in the Examiner's rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (noting that "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."). 1 Moreover, we find the cited portion ofUmbehocker teaches or suggests contested limitation L3. Regarding the concept of "provision[ ing] a data storage space," we look to the Specification for context: Generally, storage provisioning may be defined as a process of allocating, configuring and exporting storage from one or more storage resources (e.g., storage devices 106a-106n) to satisfy storage requirements of specific applications executing on user devices (e.g., devices 108a-108n) and/or servers (e.g., servers 110a-110n). For example, storage provisioning may include provisioning or providing additional new storage space from storage devices 106a-106n to a requesting user device 108 or server 110. Additionally, or alternatively, storage provisioning may include resizing or reconfiguring the amount of storage already allocated to a user device 108 or server 110, or 1 To the extent Appellants expand upon this argument in the Reply Brief ( 4), we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer are untimely, unless good cause is shown. See 37 C.F.R. § 41.41(b)(2). 7 Appeal2015-001413 Application 13/186,958 reconfiguring the existing mapping between one or more user devices 108a-108n/server 11 Oa-11 On and one or more storage devices 106a-106n. (Spec. i-f 15) (emphasis added). Inter alia, the commands taught in Umbehocker's storage interface permit client applications "to perform storage operations on each of the storage arrays," or "to alter the configurations of storage, thus, altering the storage management data within the storage arrays." (Umbehocker, col. 5, 11. 30-40). Although Umbehocker does not explicitly use the word "provision" to describe the storage operations, we find the concept of a "storage operation" at least suggests to one of ordinary skill in the art that a storage operation reconfigures storage and/ or provides new or existing storage space to the application calling the storage operation.2 For example, Umbehocker explains that "a snapshot operation, a mirror operation, and the like" are renresentative of nossible stora!.!e mana!.!ement onerations. (Umbehocker _._ _._ '-' '-' _._ ' col. 7, 11. 22-23). Such backup operations necessarily involve a provisioning of additional storage space in order to store the snapshot or mirror data. For at least these reasons, and on this record, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding contested limitations L 1- L3 of independent claim 1. Because Appellants have not persuaded us the Examiner erred, we sustain Rejection A of representative claim 1. Grouped 2 The question we consider under§ 103(a) "is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made." Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). 8 Appeal2015-001413 Application 13/186,958 claims 6, 7, 12, 13, and 18, also rejected under Rejection A, fall with claim 1. See Grouping of Claims, supra. Re} ection A of Claims 2, 8, and 14 under § 103 (a) Issue: Under§ 103(a), did the Examiner err in finding the combination ofUmbehocker and Lavallee would have taught or suggested "determining a nature of the storage provisioning request," within the meaning of representative dependent claim 2? Appellants summarily contend, "a mere description of acquiring or altering configuration settings of storage (e.g., using an interface of a storage array) in no way discloses or teaches" the additionally recited limitations in claim 2. App. Br. 9. As we explained supra, under our procedural rule: "[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv). Moreover, given that Umbehocker expressly teaches multiple types or categories of storage operations in the interface (e.g., operations that "acquire existing storage management data" and other operations that "alter the configurations of storage" (col. 5, 11. 33-36)), we find Umbehocker at least suggests determining the "nature" of an issued storage command. Accordingly, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding dependent claim 2. Because Appellants have not persuaded us the Examiner erred, we sustain Rejection A of representative claim 2. Grouped claims 8 and 14, also rejected under Rejection A, fall with claim 2. See Grouping of Claims, supra. 9 Appeal2015-001413 Application 13/186,958 Rejection A of Claims 3, 9, and j5 under§ j03(a) Issue: Under§ 103(a), did the Examiner err in finding the combination ofUmbehocker and Lavallee would have taught or suggested "the user interface comprises a web services interface," within the meaning of representative dependent claim 3? Originally, the Examiner rejected claim 3 over Umbehocker's disclosure of an "Internet Small Computer System Interface (iSCSI)." (Ans. 4, i-f 6). As Appellants correctly note, iSCSI "is a particular Internet Protocol (IP)-based storage networking standard," which "does not appear to have anything to do with a user interface." (App. Br. 10). In response to this argument, the Examiner shifts to Lavallee' s "management client" which "provides a management interface such as [a] graphical user interface (e.g.[,] web based or windows interface)." (Ans. 11) (quoting Lavallee col. 10, 11. 5-16). 3 Addressing the Examiner's shift in position (Ans. 11 ), Appellants contend in the Reply Brief ( 6), "the cited portion of Lavallee generally mentions that the management client provides a management interface. But the cited portions ofUmbehocker and Lavallee do not appear to teach a web services interface." 3 To the extent the Examiner's new citation to Lavallee in the "Response To Argument" could be construed as an undesignated new ground of rejection, Appellants' failure to petition the Director "constitute[ s] a waiver of any arguments that [the] rejection must be designated as a new ground of rejection." 37 C.F.R. § 41.40(a). Moreover, "the user interface" of claim 3 draws antecedent basis from "a user interface" recited in limitation L 1 in claim 1, for which the Examiner originally cited column 3, lines 28-37 of Lavallee. There, Lavallee teaches its function calls are provided from "management clients (e.g., [a] graphical user interfaces driven management program)." (Id. at col. 3, 11. 33-34). 10 Appeal2015-001413 Application 13/186,958 We are not persuaded by Appellants' contention (id.), which mischaracterizes the cited description in Lavallee. Lavallee teaches more than a general management interface; the reference explicitly teaches the management interface may be a "web based" graphical user interface. Under a broad but reasonable interpretation, the plain meaning of "web services interface" includes Lavallee' s web based interface for managing a storage service. 4 Furthermore, Appellants' Specification is silent regarding any definition for the claimed "web services interface" that would preclude the Examiner's broader reading. 5 For at least these reasons, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding dependent claim 3. Because Appellants have not persuaded us the Examiner erred, we sustain Rejection A of representative claim 3. Grouped claims 9 and 15, also rejected under Rejection A, fall with claim 3. RejectionB of Claims 4, 5, 10, 11, 16, and 17under § 103(a) Issue: Under§ 103(a), did the Examiner err in finding the combination ofUmbehocker, Lavallee, and Frandsen would have taught or suggested "generating a status report related to a result of the provisioning operation," within the meaning of representative dependent claim 4? 4 See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference need not satisfy an ipsissimis verbis test to disclose a claimed element). 5 Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 11 Appeal2015-001413 Application 13/186,958 The Examiner rejected claim 4 by mapping the contested limitation to Frandsen's teaching of a controller that "can provide a status report of the results of [a] backup operation." (Ans. 5) (citing Frandsen i-fi-178 and 82). Appellants argue "the cited portions of Frandsen are silent regarding a storage provisioning operation (i.e., to provision data storage space, e.g., in a specifically identified storage space), let alone generating a status report related to a result of the provisioning operation." (App. Br. 10) (emphasis omitted). We find Appellants' arguments unpersuasive regarding the contested limitation, because we find Appellants are attacking Frandsen in isolation without fully considering the Examiner's proffered combination with Umbehocker and Lavallee. The Examiner relies on the combined teachings of Frandsen (i.e., generating a status report of the results of an operation (i-f 78)), and Umbehocker, which teaches the storage provisioning operations. (col. 5, 11. 30-40). When combined, we find the cited references teach generating a status report of the results of a storage provisioning operation. Therefore, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding dependent claim 4. Because Appellants have not persuaded us the Examiner erred, we sustain Rejection B of representative claim 4. Grouped claims 5, 10, 11, 16, and 17, also rejected under Rejection B, fall with claim 4. Reply Brief In the Reply Brief (2-3), Appellants address a teaching in Umbehocker the Examiner cited for the first time in the Answer. (See Ans. 8) (citing Umbehocker col. 4, 11. 20-43). Since we decide limitation L2 on 12 Appeal2015-001413 Application 13/186,958 the basis of the Examiner's original findings (rather than the shift in the Examiner's Answer), we do not reach the merits of Appellants' reply to the newly cited portion of the reference. Likewise, to the extent Appellants may advance other new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer (e.g., the argument directed to limitation L3 which expands on the same argument first presented the principal Brief (see Reply Br. 4)), we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). Conclusion For at least the aforementioned reasons, on this record, Appellants have not persuaded us the Examiner erred. We find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for all claims on appeal. DECISION We affirm the Examiner's decision rejecting claims 1-18 under 35 U.S.C. § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED 13 Copy with citationCopy as parenthetical citation