Ex Parte Burkey

Patent Trial and Appeal Board

Jul 31, 2017

10629415 (P.T.A.B. Jul. 31, 2017)

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.
10/629,415 07/29/2003 Todd R. Burkey OKC03043 5964
71222 7590 08/02/2017
Hall F.still AfTnrne.vs at T aw ('MKM'l
EXAMINER
100 North Broadway, Suite 2900
Oklahoma City, OK 73102
RIGOL, YAIMA
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
mmccarthy @hallestill.com
okcipdocketing @ hallestill. com
US PTO @ dockettrak. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD R. BURKEY
Appeal 2016-002644
Application 10/629,415
Technology Center 2100
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
NABEEL U. KHAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002644
Application 10/629,415
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claim 23. This appeal is related to prior appeal 2011-008809, in which the
decision was mailed on March 28, 2014, and we affirmed the rejection of
claims 1—5, 7, 9, 10, 13, and 16—24 based upon obviousness. An oral
hearing was held on July 11, 2017. A transcript of the hearing will be made
of record in due course. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Claim 23 is directed to a storage device for dynamically resizing
mirrored virtual disks in a RAID storage system. Claim 23 is reproduced
below:1
23. An apparatus comprising:
a source virtual disk and a same-size destination virtual
disk that is configured to mirror the source virtual disk;
a host interface configured to receive a host request to
expand the source virtual disk; and
logic configured to allocate more memory to the source
virtual disk in response to the host request, to subsequently
allocate more memory to the destination virtual disk in response
to the mirrored relationship of the virtual disks, and to
subsequently report the new sizes of the virtual disks to the host
at the same time.
1 As an initial matter, we find that Appellant identifies in the Summary of
the Claimed Subject Matter (App. Br. 2) corresponding support for the
claimed “at the same time” in the Specification, but we do not find express
support for the specific claim limitation. We note the Specification merely
states “the reported size of all the VDisks can be changed at this point”
without a requirement that they be done at the same time period (Spec. 16).
We leave it to the Examiner to further evaluate the claim language in any
continuing prosecution.
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Appeal 2016-002644
Application 10/629,415
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fukuda US 2002/0152416 A1 Oct. 17,2002
Bridge US 6,530,035 B1 Mar. 4,2003
Lubbers et al. US 6,880,052 B2 Apr. 12, 2005
REJECTION
The Examiner made the following rejection:
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lubbers in view of Bridge and Fukuda.
ANALYSIS
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the
relevant issue is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”).
We are also not persuaded by Appellant’s argument regarding “the
suggested combination does not teach at least the report. . . new sizes of the
virtual disks ... at the same time feature'1'’ (App. Br. 3 (underline and
boldface omitted)). Appellant relies solely on attorney argument. However,
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it is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
Additionally, non-obviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. Keller, 642
F.2d at 425.
Because Appellant’s arguments are directed to the individual
teachings of the references and not the combined teachings of the references
as applied by the Examiner, we are not persuaded by Appellant’s arguments
the Examiner erred.
We determine that the Examiner’s findings provide a “rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, the Examiner made
sufficient findings to combine the teachings of the various references.
With respect to independent claim 23, Appellant argues that the
Lubbers reference is the only reference that teaches or suggests plural virtual
disks and that the Bridge reference simply resizes a single logical volume
and reports the new size (App. Br. 4). Appellant contends “Lubbers teaches
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Application 10/629,415
reporting the new sizes of two virtual disks individually, or in other words at
different times, contrary to the claimed invention. The Office relies on
Bridge and Fukuda for the “report. . . new sizes of the virtual disks ... at
the same time” feature of claim 23 {id. at 3). Appellant does not identify any
specific teachings to support the contention that Lubbers teaches reporting
the new sizes of two virtual disks individually, or in other words at different
times.
We note the Lubbers reference discloses:
Virtualized storage allows the DRM system in accordance with
the present invention to ensure that when changes are made to a
dependent attribute of one member of a copy set, the change is
made automatically to each other member of the copy set. At the
same time, virtualized storage allows the DRM system in
accordance with the present invention to implement changes to
independent attributes at any time without affecting the other
members of the copy set.
Lubbers col. 6,11. 29-37. As a result, we find that the Lubbers reference
teaches and fairly suggests that changes in virtualized storage be reported for
both related virtual drives in a data replication management (DRM) system.
With respect to the Fukuda reference, Appellant contends:
[L]ike Bridge, Fukuda discloses the new size of the HDD array
only expands the one logical volume to which the array is
allocated; such as the RAID configuration the Office points to in
Fukuda’s para. [0059]. Like Bridge, of course Fukuda resizes
the HDD array and then reports the resizing. Fukuda does not
teach resizing two logical units, and what timing might be
applied to reporting the respective resizing of each logical unit.
Fukuda does not teach at least the report . . . new sizes of the
virtual disks ... at the same time . . ./eature of claim 23.
App. Br. 6.
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We disagree with Appellant’s argument because it is not
commensurate in scope with the express language of independent claim 23,
which we conclude does not set forth specific timing for reporting, but rather
a general timing relationship. The language of independent claim 23 merely
recites “to subsequently report the new sizes of the virtual disks to the host
at the same time.” We further find that the proffered process distinction
does not differentiate the claimed “apparatus” as recited in the language of
independent claim 23.
Appellant further contends:
The Office’s rationale for the rejection is that Bridge and Fukuda
allegedly cure the deficiency of Lubbers for that feature.
However, Bridge and Fukuda both resize only one logical
volume. Neither Bridge nor Fukuda, alone or combined, teach
what order the new sizes of two logical volumes would be
reported. The Office’s rationale fails because it requires
modifying Lubbers’ teaching of reporting the resizing of two
logical volumes with one or more references that do not report
the resizing of two logical volumes.
App. Br. 7. Appellant additionally argues:
Lubbers teaches away from the claimed subject matter by only
teaching reporting the new sizes of two logical volumes at
different times. Neither Bridge nor Fukuda teach what timing
would be employed on resizing two logical volumes, because
both only resize one logical volume. Accordingly, the Office’s
rationale is merely a conclusory opinion lacking the rationale
underpinning to support the legal conclusion of obviousness.
Id..
A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
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because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”). We find Appellant’s argument unavailing because
Appellant has not identified any disclosure that criticizes, discredits, or
otherwise discourages the solution claimed. Appellant has not identified any
express teaching which requires an immediate reporting of modification of
drive size.
The Examiner maintains that both the Bridge and Fukuda references
teach various reporting of the allocation and expansion processes (Ans. 5).
Additionally, the Examiner maintains Fukuda discloses:
[Ajfter the control information of the OS for the RAID in
question is modified, the computer system is rebooted to
complete the capacity expansion... after the control information
of the OS for the On (and thus the size is synchronously changed
in report to OS) . . . RAID 5 is described ... the storage capacity
can be expanded in the other RAID configurations 1 to 4[] (par.
0061-0062) (figs. 10a-10c and related text) where in RAID 1,
disks are configured in a mirroring configuration.
Final Act. 5 (boldface omitted). We further find the Fukuda reference
discloses “[ajfter the configuration information of the HDDs lb to 3b is
updated, the newly expanded storage capacity is registered and modified in a
control table. The system is rebooted so that the expansion is recognized in
the OS (S311)” (Fukuda 173).
Therefore, we agree with the Examiner that the Fukuda reference
teaches and suggests a logical drive configured over multiple drives in a
RAID and reporting the multiple configurations at the same time. We find
Appellant to be attacking the references individually and differentiating the
discrete differences rather than addressing the combination as set forth by
the Examiner in the grounds of rejection.
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The Examiner further explains the teachings of each of the prior art
references and how the combination would have taught and fairly suggested
the claimed invention (Ans. 5—11). We agree with the Examiner’s findings,
line of reasoning, and ultimate conclusion of obviousness.
We find the language of independent claim 23 sets forth no limitations
on the types or the configuration of the drives. Consequently, we find that
the teachings of the Fukuda reference regarding a logical striped drive across
multiple RAID drives would have taught or suggested to one of ordinary
skill in the art at the time of the invention that, rather than immediate
reporting of each portion for each physical drive, the reporting should take
place at the conclusion of the process involving multiple physical drives.
For these reasons, we find Appellant’s argument does not show error
in the Examiner’s factual findings or conclusion of obviousness of
independent claim 23.
CONCLUSION
The Examiner did not err in in rejecting independent claim 23 based
upon obviousness.
DECISION
For the above reasons, we sustain the Examiner’s obviousness
rejection of claim 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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