Ex Parte Chamdani et al

Patent Trial and Appeal Board

Oct 6, 2014

11239954 (P.T.A.B. Oct. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH I. CHAMDANI, GURUMURTHY D. RAMKUMAR,
BRUCE L. YOUNGLOVE, and COREY R. HILL
____________________

Appeal 2012-0032141
Application 11/239,9542
Technology Center 2400
____________________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–17, 19–36, 38–47, and 49–57. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 3, 2011) and Reply Brief (“Reply Br.,” filed December 10, 2011),
and the Examiner’s Answer (“Ans.,” mailed October 26, 2011).
2 Appellants identify the real party in interest as Brocade Communications
Systems, Inc., 130 Holger Way, San Jose, California 95134. App. Br. 3.
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CLAIMED INVENTION
Appellants’ claimed invention “relates generally to storage area
networks, and more particularly to federated management of intelligent
service modules in a storage area network” (Spec. ¶ 1).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
receiving an intelligent service module management
request at a switch, the intelligent service module management
request being associated with an intelligent service module; and
forwarding the intelligent service module management
request to the intelligent service module via at least one
communication connection;
wherein the intelligent service module is configured to
provide fabric-based intelligent services.

REJECTIONS
Claims 1, 2, 11–14, 16, 17, 19, 25, 54, and 57 are rejected under
35 U.S.C. 102(b) as anticipated by Judd (US 2005/0094568 A1, pub. May 5,
2005).
Claims 3–10, 20–24, 27–32, 38-47, 49–53, 55, and 56 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Judd and Latif
(US 6,400,730 B1, iss. June 4, 2002).
Claims 15 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Judd and Osbourne (US 2002/0107992 A1, pub. Aug. 8,
2002).
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Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Judd, Latif, and Rosenhauer (US 5,838,911, iss. Nov. 17,
1998).
Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Judd, Latif, and Fichtner (US 6,360,362 B1, iss. Mar. 19,
2002).

ANALYSIS
Anticipation
Independent claim 1 and dependent claims 2, 11–14, 16, and 17
Appellants maintain that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) because Judd does not disclose “receiving an intelligent
service module management request at a switch, the intelligent service
module management request being associated with an intelligent service
module . . . wherein the intelligent service module is configured to provide
fabric-based intelligent services,” as recited in claim 1 (App. Br. 8-10). In
this regard, Appellants first argue that the fabric manager 38 disclosed in
Figure 2A of Judd does not provide fabric-based intelligent services;
therefore, it cannot constitute an intelligent service module, as recited in
claim 1 (id.; see also Reply Br. 3–9). Appellants’ argument is not
persuasive.
Claim 1 merely recites that the intelligent service module is
“configured to” provide fabric-based intelligent services; it does not
positively recite a step of “providing fabric-based intelligent services” as
part of the claimed method. In the context of claim 1, the phrase “wherein
the intelligent service module is configured to provide fabric-based
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intelligent services” connotes an intended use of the intelligent service
module that does not limit the scope of the claim, and which may not be
relied on to distinguish over the prior art for purposes of patentability.
See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003).
Appellants argue in the Appeal Brief that Judd does not disclose “the
intelligent service module management request being associated with an
intelligent service module,” as recited in claim 1, because “the tracer frame
[request] of Judd [which the Examiner equates to the claimed intelligent
service module management request] is not associated with the fabric
manager 38 [which the Examiner equates to the claimed intelligent service
module]” (App. Br. 10). But Appellants concede in the Reply Brief that “the
tracer frames . . . may be considered to be associated with the fabric
manager of Judd, as argued in the Examiner’s Answer” (Reply Br. 10).
Nonetheless, Appellants maintain that this association is not relevant
because “the fabric manager of Judd is not an intelligent service module,”
i.e., it does not provide fabric-based intelligent services (Reply Br. 10).
As explained above, the phrase “wherein the intelligent service
module is configured to provide fabric-based intelligent services” (claim 1)
merely connotes an intended use of the intelligent service module. As such,
it does not limit the scope of the claim, and may not be relied on to
distinguish over the prior art for purposes of patentability. See Boehringer,
320 F.3d at 1345.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b). For the same reasons, we also sustain the
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Examiner’s rejection of dependent claims 2, 11–14, 16, and 17, which were
not argued separately.
Independent claims 19, 54, and 57 and dependent claim 25
Appellants argue that independent claims 19, 54, and 57 (and claim
25, which depends from claim 19) are allowable with reference to
Appellants’ arguments with respect to claim 1 (App. Br. 10). We find
Appellants’ arguments unpersuasive with respect to claim 1, and we find
them equally unpersuasive with respect to claims 19, 25, 54, and 57.
Therefore, we sustain the Examiner’s rejection of claims 19, 25, 54, and 57
under 35 U.S.C. § 102(b) for the same reasons as set forth above with
respect to claim 1.
Obviousness
Dependent claims 3–10 and 20–24
Claims 3–10 and 20–24 depend from claims 1 and 19, respectively.
Appellants do not present any arguments for the patentability of these
dependent claims. Therefore, we summarily sustain the Examiner’s
rejection of claims 3–10 and 20–24 under 35 U.S.C. § 103(a).
Independent claim 27 and dependent claims 28–32
Claim 27 recites a method comprising, inter alia, “assigning an
address to the intelligent service module . . . ; associating the address with a
physical address of the switch; and communicating the address and
associated physical address to a management client coupled to the switch.”
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 27 under 35 U.S.C. § 103(a) because neither Judd nor Latif
discloses or suggests “communicating the address and associated physical
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address to a management client coupled to the switch,” as recited in claim 27
(App. Br. 11–12 and Reply Br. 10–11).
The Examiner relies on the combination of Figure 1 and paragraphs
24 and 25 of Judd and column 10, lines 1–17 of Latif as disclosing and/or
suggesting this feature (Ans. 43). The Examiner explains that:
Judd teaches communicating a management client coupled to
the switch (figure 1, [0024-0025], the computer
system 250/management client couples to the switch 221,
and the switch 221 receives tracer frame request/intelligent
service module management request from the computer
system 250/management client).

Latif teaches the address and associated physical address
(column 10, lines 1-17, the switch assigns an IP address to the
device, the assigned IP address of the device is from a block
of IP addresses assigned to the switch).

(Ans. 43) (emphasis in original). However, as the Appellants observe, the
communication in Judd, on which the Examiner relies, is a communication
from the management client, i.e., the computer system, to the switch, not a
communication from the switch to the management client, as required by
claim 27 (Reply Br. 10-11).
Judd is directed to a system and method for gathering troubleshooting
information through a network, and describes in paragraphs 24 and 25, on
which the Examiner relies, that a computer system 250 (see Fig. 1) is
coupled to a storage device 290 by a fibre channel fabric 210 having six
switches 221, 223, 225, 227, 229, and 231, coupled together via Inter-Switch
Links (ISLs). The computer system connects to switch 221 and issues a
command to send out a tracer frame. As the tracer frame traverses the
network, each switch adds information to the tracer frame’s payload, which
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is used in identifying and resolving network problems and clarifying
network variability, e.g., oversubscribed or congested ISLs, switch failures,
etc.
We agree with Appellants that the cited sections of Judd merely
disclose communicating a tracer frame between switches 221231 and
computer system 250. There is no disclosure or suggestion that the tracer
frame collects or delivers any address and/or associated physical address to
the computer system, let alone an address assigned to fabric manager 38
(which the Examiner equates to the claimed intelligent service module).
We also find no such disclosure or suggestion in the cited portion of Latif.
Therefore, we do not sustain the Examiner’s rejection of claim 27
under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the
Examiner’s rejection of claims 28–32, which depend from claim 27.
Independent claims 38, 43, 49, 55, and 56 and dependent claims 39–42, 44–
47, and 50–53
Each of independent claims 38, 43, 49, 55, and 56 includes language
substantially similar to the language of claim 27. Therefore, we do not
sustain the Examiner’s rejection of claims 38, 43, 49, 55, and 56 under
35 U.S.C. § 103(a) for the same reasons as set forth above with respect to
claim 27. For the same reasons, we also do not sustain the rejection of
claims 39–42, 44–47, and 50–53, which depend from claims 38, 43, and 49,
respectively.
Dependent claims 15 and 26
Claims 15 and 26 depend from claims 1 and 19, respectively.
Appellants do not present any arguments for the separate patentability of
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dependent claims 15 and 26 except to assert that the claims are allowable for
the same reasons as set forth with respect to claim 1. (App. Br. 12).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b). Therefore,
we sustain the Examiner’s rejection of claims 15 and 26 under 35 U.S.C.
§ 103(a).
Dependent claims 33–36
Claims 33–36 depend from claim 27. The Examiner does not
establish on this record that Rosenhauer and/or Fichtner cure the deficiencies
of Judd and Latif, as discussed above with respect to claim 27. Therefore,
we do not sustain the Examiner’s rejection of claim 33–36 under 35 U.S.C.
§ 103(a) for the same reasons as set forth above with respect to claim 27.

DECISION
The Examiner’s rejection of claims 1, 2, 11–14, 16, 17, 19, 25, 54,
and 57 under 35 U.S.C. 102(b) is affirmed.
The Examiner’s rejections of claims 3–10, 15, 20-24, and 26 under
35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 27–36, 38–47, 49–53, 55, and 56
under 35 U.S.C. § 103(a) are reversed.
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-IN-PART

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