Ex Parte Chang et al

Board of Patent Appeals and Interferences

May 17, 2011

10244686 (B.P.A.I. May. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID FU-TIEN CHANG and ASHUTOSH ASHUTOSH
____________

Appeal 2010-003994
Application 10/244,686
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003994
Application 10/244,686

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-6, 18-24, and 36-
40. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The claimed invention is generally directed to methods and systems
for managing software application domains and storage domains (Spec. 1:3).
Claim 1, reproduced below, is further illustrative of the claimed subject
matter.
1. A method for analyzing management risk of
a computer network compris[ing]:
selecting a portion of a storage system;
determining a first cost associated with a
component becoming unavailable included in the
portion of the storage system;
associating the first cost to the component;
and
disseminating the cost to a user in order to
assess the cost of the system becoming
unavailable.

Claims 1-4 and 19-22 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Huang (US Pat. 6,735,548, B1, iss. May 11, 2004); claims 5,
6, 23, and 241 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Huang in view of Quallen (US Pub. 2002/0128953 A1, pub. Sep. 12, 2002);
claims 18 and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Huang in view of House (US Pat. 6,785,805 B1, iss. Aug. 31, 2004);
and claims 37-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Huang in view of Fisk (US Pat. 5,274,643, iss. Dec. 28, 1993).

1 Some documents reference claims 5, 6, 23, and 26 as being rejected,
however, claim 26 is currently cancelled while claims 24 is pending (App.
Br. 11, 16; Exam’r’s Ans. 6, 8-9).
Appeal 2010-003994
Application 10/244,686

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We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that the availability versus costs
analysis for network components of Huang anticipates the subject matter of
claims 1-4 and 19-22?
Did the Examiner err in asserting that a combination of Huang,
Quallen, House, and Fisk renders obvious the subject matter of dependent
claims 5, 6, 18, 23, 24, and 36-40?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 9-11
of the Examiner’s Answer.

ANALYSIS
Claims 1-4 and 19-22
We are partially persuaded the Examiner erred in asserting that the
availability versus costs analysis for network components of Huang
anticipates the subject matter of claims 1-4 and 19-22 (App. Br. 7-8; Reply
Br. 3-5). Appellants assert that the Examiner incorrectly equates
“‘availability’” with “‘cost’” in Huang to anticipate independent claims 1
and 19 (App. Br. 7-8). However, Huang discloses availability versus cost,
where the “cost is typically a summation of the costs of each of the
components of the network.” Accordingly, Huang discloses that each
network component has an associated incremental cost, and thus an
unavailability cost, as recited in independent claims 1 and 19.
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Application 10/244,686

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Appellants assert that Huang does not disclose a cost associated with a
network component becoming unavailable, as recited in independent claims
1 and 19 (Reply Br. 3-5). However, we believe an associated incremental
cost for an additional network component in Huang corresponds to the
recited network component becoming unavailable under a broadest
reasonable construction of “unavailable.” See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“[d]uring examination [of a
patent application, a pending claim is] given [the] broadest reasonable
[construction] consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art”) (internal citation and quotations omitted). If the
additional network component is not purchased, it is “unavailable” and has
an associated cost.
The Examiner asserts that the summation of the costs each of the
components into a total network cost in Huang anticipates “aggregating the
first cost and the second cost” of the component, as recited in dependent
claims 2 and 20 (Exam’r’s Ans. 10). However, dependent claims 2 and 20
recite both “the first cost” and “the first cost and the second cost” are for the
component, , which is distinct from the computer network recited in
independent claims 1 and 19. See Texas Instr. Inc. v. United States Int'l
Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (claim language
cannot be mere surplusage. An express limitation cannot be read out of the
claim); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir.
1991) (two distinct claim elements should each be given full effect). The
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Examiner’s interpretation of Huang has “the first cost and the second cost”
being for entire network, and not the component. Accordingly, we do not
sustain the rejections of dependent claims 2 and 20.
The Examiner asserts that (1) the server side components and (2) the
client side interface module 22 disclosed in Figure 2 and column 3, lines 13-
23 of Huang, which includes an API, respectively anticipate (1) the server
recited in dependent claims 3 and 21, and (2) “the component is an
application and the first cost is associated with the application becoming
unavailable,” as recited in dependent claims 4 and 22 (Exam’r’s Ans. 10-
11). However, these server side and client side components are for the
“network availability analysis system” for evaluating other networks
systems, and thus do not calculate their own associated costs or
unavailability, as would be required by independent claims 1 and 19.
Accordingly, we do not sustain the rejections of dependent claims 3, 4, 21,
and 22.

Claims 5, 6, 18, 23, 24, and 36-40
We are partially persuaded the Examiner erred in asserting that a
combination of Huang, Quallen, House, and Fisk renders obvious the subject
matter of dependent claims 5, 6, 18, 23, 24, and 36-40 (App. Br. 11-13).
Appellants assert that Quallen and House do not remedy the deficiencies of
Huang concerning independent claims 1 and 19, from one of which claims 5,
6, 18, 23, 24, and 36 depend (App. Br. 11-12). However, as Appellants have
not adequately shown how Huang is deficient with respect to independent
claims 1 and 19, we also sustain the rejections of dependent claims 5, 6, 18,
23, 24, and 36.
Appeal 2010-003994
Application 10/244,686

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Dependent claims 37-40 depend from one of dependent claims 2 and
20. As we do not sustain the rejections of dependent claims 2 and 20 for the
reasons set forth above, we also do not sustain the rejections of dependent
claims 37-40.
The decision of the Examiner to reject claims 1, 5, 6, 18, 19, 23, 24,
and 36 is AFFIRMED.
The decision of the Examiner to reject claims 2-4, 20-22, and 37-40 is
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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