Ex Parte De Groote

Board of Patent Appeals and Interferences

May 27, 2010

10280161 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN P. DE GROOTE
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Appeal 2009-007212
Application 10/280,161
Technology Center 2400
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Decided: May 28, 2010
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Before HOWARD B. BLANKENSHIP, THU A. DANG, and CAROLYN
D. THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-007212
Application 10/280,161

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the present invention relates to “selecting a
command table based on the logical unit data structure and a host that issued
the command” (Spec. 21, ll. 4-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method for performing commands at a device
connected to a plurality of hosts, wherein the device includes a
plurality of logical units, wherein each logical unit is designated
by a logical unit number (LUN), comprising:

providing a plurality of command tables, wherein the
command tables include a reserved command table and a
normal command table, wherein the reserved command table is
separate from the normal command table;

assigning logical units of the device to each host, wherein
assigning includes establishing a separate host/logical unit data
structure associated with each host/logical unit pair, wherein the
host/logical unit data structure defines when a corresponding
logical unit of the device is reserved;

receiving, at the device, a command from one of the
plurality of hosts;

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selecting a command table to be used to perform the
command, wherein selecting is a function of the host/logical
unit data structure associated with the host that issued the
command, wherein selecting includes choosing the reserved
command table if the host/logical unit data structure indicates
that the logical unit is reserved by another host and, otherwise,
choosing the normal command table; and

performing the command using the selected command
table, wherein performing includes executing a routine
indicated by the selected command table.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Skazinski US 6,247,099 B1 Jun. 12, 2001
Shiraishi US 2001/0052030 A1 Dec. 13, 2001
Acharya US 6,934,799 B2 Aug. 23, 2005

Claims 1-3, 5-9, 11-15, 17-21, 23, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combined teachings of
Skazinski and Shiraishi.
Claims 4, 10, 16, and 22 stand rejected under 35 U.S .C. § 103(a) as
being unpatentable over the combined teachings of Skazinski, Shiraishi, and
Acharya.

II. ISSUE
Has the Examiner erred in concluding that the combined teachings of
Skazinski and Shiraishi would have suggested “choosing the reserved
command table if the host/logical unit data structure indicates that the logical
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unit is reserved by another host and, otherwise, choosing the normal
command table” (claim 1), as Appellant contends?

III. FINDINGS OF FACT
Skazinski
1. Skazinski discloses storage controllers that control access to storage
devices (col. 4, ll. 30-41).
2. Each of the controllers maintains a storage volume reservation table
(“SVRT”) that indicates the access rights of the controllers to storage
volumes of the storage devices (id.).
3. An SRVT is specific to its controller and indicates whether: (1) any of
the controllers, i.e., the controller in which the SVRT resides and
other controllers, has reserved an entire storage volume; and (2) the
controller in which the SVRT resides has a lock on data sector/s of a
storage volume (col. 9, ll. 58-66).
4. A controller cannot satisfy a Host Write Request, i.e., issue a
corresponding Host Write Command, unless the controller has an
“enclosing lock” for the portion of the storage volume to be written
(Abstract; col. 17, ll. 24-67).
5. If the controller has an enclosing lock, the controller issues the Host
Write Command (col. 17, ll. 34-38 and 44-56; Fig. 9, steps 234, 235,
238, and 239).
6. If another controller has reserved the storage volume to be written, the
controller rejects the Host Write Request (col. 17, ll. 38-43; Fig. 9,
steps 236 and 237).
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7. If the controller does not have an enclosing lock and another
controller has not reserved the storage volume to be written, the
controller requests an enclosing lock from the other controllers (col.
17, ll. 56-67; Fig. 9, steps 242, 243, and 245).
Shiraishi
8. Shiraishi discloses a “command correspondence table” that stores
commands, command explanations, and the positions of the
commands’ respective “execution functions” (p. 5, ¶ [0070]).
9. Different “command correspondence tables” can be provided for
different user authorizations (p. 4, ¶ [0061]).

IV. PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “[T]he PTO gives
claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). “Moreover, limitations are not to be read into the claims from
the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Nonfunctional descriptive material is given no patentable weight and
treated as analogous to printed matter cases where what is printed on a
substrate bears no functional relationship to the substrate. See In re Ngai,
367 F.3d 1336, 1338-39 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally related
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to the substrate, the printed matter will not distinguish the invention from the
prior art in terms of patentability.”).
35 U.S.C. § 103(a)
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
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.
The operative question is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 417.
One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981) .

V. ANALYSIS
In this Decision, we have considered only those arguments actually
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made by Appellant. Arguments which Appellant could have made but did
not make in the Appeal Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 1, 5-9, 11-15, 17-21, 23, and 24
As to independent claim 1, Appellant contends that neither Skazinski
nor Shiraishi teaches “choosing the reserved command table if the
host/logical unit data structure indicates that the logical unit is reserved by
another host and, otherwise, choosing the normal command table” (App. Br.
17). In support of this contention, Appellant states that Skazinski teaches a
controller that “checks the Volume State field of the Storage Volume
Reservations Table for the Storage Volume associated with the LUN” (id.);
and that Shiraishi teaches “the use of different command correspondence
tables to interpret commands received from general users and privileged
users” (id.).
The Examiner responds that Appellant has failed to address the
proposed combination of Skazinski’s and Shiraishi’s teachings (App. Br. 8-
9). Explaining the proposed combination, the Examiner states that
“Skazinski teaches, through flow charts in figures 8-12, the execution of
various commands that depend on the reservation status of the host/LUN”
(Ans. 9); and that Shiraishi “was introduced to show that the use of multiple
command tables to select various command [sic] based on the state of a
system was obvious at the time of [A]ppellant’s invention” (id.). The
Examiner also states that “[t]he technique of using multiple command tables
was well known in the art at the time of [A]ppellant’s invention” (id.).
By contending that neither Skazinski nor Shiraishi teaches “choosing
the reserved command table if the host/logical unit data structure indicates
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that the logical unit is reserved by another host and, otherwise, choosing the
normal command table” (App. Br. 17), Appellant is arguing that
individually, neither Skazinski nor Shiraishi teaches the features of claim 1.
However, the Examiner rejects claim 1 over the combined teachings of
Skazinski and Shiraishi, and what the combined teachings would have
suggested to one of ordinary skill in the art. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See Merck, 800 F.2d at 1097.
Thus, the issue we address on appeal is whether the Examiner erred in
concluding that the combined teachings of Skazinski and Shiraishi would
have suggested “choosing the reserved command table if the host/logical
unit data structure indicates that the logical unit is reserved by another host
and, otherwise, choosing the normal command table” (claim 1), as Appellant
contends.
We now begin our analysis by giving the claims their broadest
reasonable interpretation. See In re Bigio, 381 F.3d at 1324. Our analysis
will not read limitations into the claims from Appellant’s Specification. See
In re Van Geuns, 988 F.2d at 1184.
Claim 1 does not place any limitation on what the terms “reserved
command table” and “normal command table” mean or represent. Claim 1
merely recites that the “reserved command table is separate from the normal
command table.” The terms “reserved” and “normal” are nonfunctional
descriptive materials that are not functionally related to the step of
“providing a plurality of command tables.” That is, the terms “reserved”
and “normal” do not change the functionality of or provide an additional
function to the “providing” step of claim 1, i.e., do not limit how the
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respective “command tables” are provided. Rather, the terms “reserved” and
“normal” are merely descriptions of their respective “command tables.”
When descriptive material is not functionally related to the claimed
embodiment, the descriptive material will not distinguish the invention from
the prior art in terms of patentability. See Ngai, 367 F.3d at 1339 and
Gulack, 703 F.2d at 1385. We therefore interpret the terms “reserved” and
“normal” as merely labels describing the two command tables as separate
and distinct tables, and thus, clarifying that the recited “choosing” between
the “reserved command table” and “normal command table” is a selection
between the separate and distinct command tables.
Claim 1 also does not place any limitation on what the terms “host,”
“logical unit,” and “host/logical unit data structure” mean or represent.
Claim 1 merely recites that each of a “plurality of hosts” is assigned a
“logical unit” of a “device” and that a “host/logical unit data structure” is
“associated with each host/logical unit pair.” We give “host” its ordinary
meaning as any processing device that services connected devices, e.g., a
controller
Given the above claim interpretation, we construe “choosing the
reserved command table if the host/logical unit data structure indicates that
the logical unit is reserved by another host and, otherwise, choosing the
normal command table” (claim 1) as requiring a selection between two
different command tables based on a data structure, which is associated with
a processing device and a device unit assigned to the processing device. The
selection is particularly based on whether the data structure indicates that
another processing device has reserved the device unit.
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Skazinski discloses storage controllers that provide access to storage
devices and maintain storage volume reservation tables (“SVRT’s”)
indicating access rights to the devices (FF 1-2). Each SVRT is specific to its
controller and indicates whether other controllers have reserved any storage
volumes of the devices (FF 3). A controller cannot process a write request
without determining, from its respective SVRT, whether it or another
controller has exclusive access rights to the data sector/s to be written (FF 4-
7). Based on that determination, the controller engages in one of several
different procedures, e.g., issuing a write command, rejecting the write
request, and requesting access rights from other controllers (id.).
We conclude that a skilled artisan would have understood Skazinski’s
controllers as being “hosts,” i.e., processing devices that service connected
devices. Further, the artisan would have understood that each of Skazinski’s
controllers selects one of several different procedures (issues a write
command, etc.) and does so, as required by claim 1, based on whether an
associated data structure (the controller’s SVRT) indicates that another
controller has reserved an assigned device unit (has reserved a storage
volume that the controller accesses for connected client devices).
Shiraishi discloses a “command correspondence table” that stores
commands and the positions of their respective “execution functions” (FF 8).
Because different tables can be provided for different user authorizations
(FF 9), we agree with the Examiner’s uncontested findings that Shiraishi
teaches the use of multiple command tables to select various commands
based on the state of a system (Ans. 9); and that the technique of using
multiple command tables was well known in the art at the time of
Appellant’s invention (id.).
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In view of these findings, we conclude that a skilled artisan would
have found it obvious to execute conditional procedures via different
command tables. That is, the artisan would have found it obvious to create
different command tables for different conditional processes and found it
obvious to select one of the command tables based on whether the
condition/s for that table’s respective process have been satisfied. Thus, a
controller’s selection between two different command tables to perform
respective write request procedures (e.g., to issue a write command or reject
the request), where the selection of a table/procedure is based on whether a
storage volume is reserved by another controller (as in Skazinski), would
have been no more than a predicable use of prior art elements according to
their established functions. See KSR, 550 U.S. at 417.
Accordingly, for the above reasons, we affirm the rejection of claim 1,
and its dependent claims 5 and 6, under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Skazinski and Shiraishi.
As Appellant argues that independent claims 7, 13, and 19 “are
patentable for the same reasons as discussed for claim 1” (App. Br. 18), we
also affirm the rejections of claims 7, 13, and 19, and their dependent claims
8, 9, 11, 12, 14, 15, 17, 18, 20, 21, 23, and 24, under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Skazinski and Shiraishi.
Claims 2 and 3
Appellant argues that claims 2 and 3 “are patentable since none of the
cited references teach indicating in the host/logical unit data structures
[associated with each host and LUN pair] for other hosts that a reserved (or a
normal) command table is to be used” (App. Br. 19). Appellant also restates
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these limitations of claims 2 and 3 and then asserts that “Appellant is unable
to find such teachings in any of the cited references” (id.).
The Examiner finds that the limitations of claims 2 and 3 are taught
by Skazinski because “‘updates to the reservation table are propagated to the
alternate controllers to maintain reservation table coherency” between all
controllers (Ans. 6).
Appellant merely restates the limitations of claims 2 and 3. As
Appellant does not address why the Examiner’s explicit fact finding is in
error, we conclude that Appellant has failed to meet his burden. See 37
C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).
Each of Skazinski’s controllers is a “host,” i.e., processing device, that
maintains an SVRT (FF 1-2). Thus, we conclude that the applied art would
have suggested “indicating in the host/logical unit data structures … for
other hosts” (App. Br. 19) whether a storage volume is reserved and, as
shown with respect to claim 1, selecting a particular command table based
on whether a storage volume is indicated as being reserved. We therefore
further conclude that the applied art suggests “indicating in the host/logical
unit data structures for other hosts that a reserved command table is to be
used” (claim 2) and “indicating in the host/logical unit data structures for
other hosts that a normal command table is to be used” (claim 3), where the
terms “reserved” and “normal” are nonfunctional descriptive material that
does not limit the “indicating” steps of claims 2 and 3.
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Accordingly, for each of the above reasons, we affirm the rejection of
claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over the
combined teachings of Skazinski and Shiraishi.
Claims 4, 10, 16, and 22
Appellant argues that claims 4, 10, 16, and 22 are allowable in view of
their dependencies on claims 1, 7, 13, and 19 (App. Br. 19). As Appellant
has not shown the Examiner erred in rejecting claims 1, 7, 13, and 19, we
affirm the rejection of claims 4, 10, 16, and 22 under 35 U.S .C. § 103(a) as
being unpatentable over the combined teachings of Skazinski, Shiraishi, and
Acharya.

VI. CONCLUSIONS
Appellant has not shown that the Examiner erred in concluding that
claims 1-3, 5-9, 11-15, 17-21, 23 and 24 are unpatentable over the combined
teachings of Skazinski and Shiraishi.
Appellant has not shown that the Examiner erred in concluding that
claims 4, 10, 16, and 22 are unpatentable over the combined teachings of
Skazinski, Shiraishi, and Acharya.

VII. DECISION
The Examiner’s decision rejecting claims 1-24 under 35 U.S.C. §
103(a) is 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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SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
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