Ex Parte Burkey

Patent Trial and Appeal Board

Mar 26, 2014

10629415 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD R. BURKEY
____________________

Appeal 2011-008809
Application 10/629,415
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008809
Application 10/629,415

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
5, 7, 9, 10, 13, and 16-24. Claims 6, 8, 11, 12, 14, and 15 were canceled.
Claims 1-3, 9, and 16-24 are being appealed. (App. Br. 5). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to method, apparatus and program storage
device for dynamically resizing mirrored virtual disks in a RAID storage
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A program storage device readable by a computer
embodying in a tangible medium one or more programs of
instructions executable by the computer to perform a method
for dynamically expanding mirrored virtual disks in a virtual
disk storage system, the method comprising:

receiving by a source virtual disk a request to
dynamically expand the mirrored virtual disks, which include
the source virtual disk and at least one destination virtual disk;

associating additional storage with the mirrored virtual
disks;

increasing respective sizes of each of the at least one
destination virtual disk before reporting a new storage size of
the source virtual disk; and

reporting the new size of the source virtual disk.

Appeal 2011-008809
Application 10/629,415

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
DeKoning US 6,275,898 B1 Aug. 14, 2001
Bridge US 6,530,035 B1 Mar. 4, 2003
Cabrera US 6,629,202 B1 Sep. 30, 2003
Lubbers US 6,880,052 B2 Apr. 12, 2005

REJECTIONS
The Examiner made the following rejections:
Claim 1, 2, 9, and 19-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lubbers in view of Bridge.
Claims 3, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lubbers in view of Bridge as applied to claim 1 above,
and further in view of Cabrera.
Claims 4, 7, 10, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lubbers in view of Bridge and DeKoning.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lubbers in view of Bridge and DeKoning, further in view
of Cabrera.

Appellant seeks our review of the rejections of claims 1-3, 9, and
16-24. (App. Br. 5). Appellant does not address the rejection of claims 4, 5,
7, 10, and 13. Therefore, we summarily affirm the rejection of claims 4, 5,
7, 10, and 13. We summarily affirm the rejection since Appellants have not
shown error therein. Manual of Patent Examining Procedure (MPEP)
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Application 10/629,415

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§ 205.02 (8th ed., Oct. 2005) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”).

ANALYSIS
The Examiner further details and clarifies the grounds of the rejection
in the responsive arguments. (Ans. 22-37). We agree with the Examiner’s
analysis and adopt it as our own.
Appellant has elected to not file a responsive Reply Brief to further
address the Examiner’s clarifications. We find the Examiner’s line of
reasoning as detailed in the responsive arguments to be persuasive with
regards to the combination and to the ultimate conclusion of obviousness of
independent claim 1.
Appellant contends that the Lubbers and Bridge references do not
teach the correct ordering of operations when expanding a mirrored set of
virtual disks and “resizing the destination virtual disks before reporting a
new size of the source virtual disk.” (App. Br. 16). Appellant further
contends “ordering of reporting relative to resizing of the destination virtual
disk(s) allows the expansion to truly be done dynamically. Information on
the destination disk(s) can remain synchronized with the source without
quiescing any of the disks.” (App. Br. 17). Appellant also contends, “It is
not necessary to include in a claim the expected advantages of the
combination of elements and limitations presented there” and provides an
extrinsic evidence example of punching holes in paper. (App. Br. 17).
The Examiner maintains that the expected advantages of the
combination of elements is not recited in the language of independent claim
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1 and is therefore not commensurate in scope with the claim language and
unpersuasive of error in the Examiner’s conclusion of obviousness. (Ans.
23). We agree with the Examiner’s line of reasoning and conclusion
regarding the expected advantages. We find the Examiner’s responsive
arguments to fully address the above arguments and Appellant’s arguments
do not show error in the Examiner’s reasoned conclusion of obviousness of
representative independent claim 1. With respect to dependent claims 2, 19,
and 20-22, Appellant relies upon the arguments advanced with respect to
independent claim 1. Therefore, we group these claims as falling with
representative independent claim 1.
With respect to independent claim 23, the Examiner relies upon the
same rationale applied with independent claim 1. While Appellant and the
Examiner discuss “intended use” and claim interpretation, Appellant has not
set forth any additional/specific arguments for patentability as to why the
combination does not teach or suggest independent claim 23 which is
different from independent claim 1. (App. Br. 18). Therefore, we group
claim 23 as falling with independent claim 1.
With respect to dependent claims 9 and 24, Appellant relies upon the
arguments advanced with respect to claim 17. (App. Br. 20). We note that
claims 9 and 24 depend from independent claim 23 which relies upon the
arguments advanced with respect to representative independent claim 1.
Therefore, we group these claims as falling with representative claim 1.
With respect to claims 3, 17, and 18, Appellant contends claim 17
recites the step of “providing by the source virtual disk continuous
availability for normal disk access operations between the step of receiving a
request and the step of reporting the new storage size of the source virtual
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disk.” (App. Br. 20). Appellant further contends that the Cabrera reference
does not teach “relative timing or resizing and reporting in a mirrored pair
required by claim l.” (App. Br. 21). The Examiner further details the
combination of the Lubbers, Bridge, and Cabrera references. (Ans. 31-33).
We found no error in the base combination for independent claim 1.
Therefore, Appellant’s argument does not show error in the Examiner’s
conclusion of obviousness of independent claim 17, and we sustain the
rejection of claims 3, 17, and 18.
With respect to dependent claims 16, Appellant contends “DeKoning
was cited in reference to aspects of claim 16 dealing with RAID storage
systems, and is irrelevant to our argument. Otherwise, the grounds for
rejection parallel those of claim 1, but in this case, as pertaining to shrinking
mirrored virtual disks.” (App. Br. 22). Again, Appellant relies upon the
argument that the Lubbers reference does not specify the order of reporting
and that claim 16 pertains to mirrored virtual disks. (App. Br. 22). The
Examiner further details the combination in the responsive arguments (Ans.
33-37). The Examiner’s rationale parallels the position advanced with
respect to independent claim 1 and further addresses the DeKoning reference
in the combination. We agree with the Examiner’s position and find
Appellant’s general arguments unavailing. Therefore, we sustain the
rejection of independent claim 16. Only those arguments actually made by
the Appellant have been considered in this decision. Arguments which the
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 9, and 16-24 based
upon obviousness.
We summarily affirm the obviousness rejection of claims 4, 5, 7, 10,
and 13 which were not appealed.

DECISION
For the above reasons, the Examiner’s obviousness rejections of
claims 1-5, 7, 9, 10, 13, and 16-24 are 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

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