Ex Parte Dejong et al

Board of Patent Appeals and Interferences

Mar 15, 2006

09275727 (B.P.A.I. Mar. 15, 2006)

1

The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ANKE T. DEJONG, LARRY L. CORNETT, DAVID A. HOLZER,
JOHN G. DEBRIERE, PETER J. NICKLIN, R. MICHAEL REESE,
VALERIE E. FIFE, JOHNNY C. NICHOLS,
CHOOI P. LOW and KIT FITZPATRICK
_____________

Appeal No. 2006-0693
Application No. 09/275,727
______________

ON BRIEF
_______________

Before LEVY, SAADAT and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1 through 17. For the reasons stated infra we reverse the examiner’s
rejection of these claims.

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Invention

The invention relates to a storage area network management
configuration system. The system allows drives in enclosures to be configured
into a particular Redundant Array of Inexpensive Disks (RAID). See page 5 of
appellants’ specification.
Claim 1 is representative of the invention and is reproduced below:
1. A storage area network management and configuration system,
comprising:
an enterprise network including a plurality of computer systems, the
plurality of computer systems including server computer systems and client
computer systems, wherein the server computer systems include a server
component and the client computer systems include a client component;
a storage enclosure connected to a server computer system having the
server component, the storage enclosure having a RAID array of disks; and
a graphical user interface provided by the client component at a client
computer system, the graphical user interface being defined to enable a user to
physically build and modify the RAID array of disks of the storage enclosure
connected to the server computer system from the client computer system
without requiring the user to locally interact with the server computer system.

References

The references relied upon by the examiner are:
Axberg et al. (Axberg) 6,009,466 Dec. 28, 1999
(filed Oct. 31, 1997)

Ofer et al. (Ofer) 5,890,204 Mar. 30, 1999
(filed Jun. 03, 1996)

Rejection at Issue

Claims 1 through 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Axberg in view of Ofer.

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Opinion
We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellants’ arguments set forth in the
briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellants and the examiner, and for
the reasons stated infra we do not sustain the examiner’s rejections of claims 1
through 17 under 35 U.S.C. § 103.
Rejection of claims 1 through 17
under 35 U.S.C. § 103

Appellants argue, on pages 7 of the reply brief, that the motivation
asserted by the examiner is not derived from the references themselves.
Further, appellants argue, “there is no suggestion or motivation, either explicitly
or implicitly, in either Axberg or Ofer to have combined the teachings of Axberg
and Ofer to arrive at the present invention.”
The examiner identifies on pages 4 and 5 of the answer that:
Ofer et al. strongly shows the storage enclosure being connected to a
server computer system having the server component, the storage
enclosure having a RAID array of disk (column 2, lines 25-35 and lines
55-63); and the graphical user interface and a functional tool (provided by
a graphical user interface) being defined to enable a user to physically
build and modify the RAID array of disks of the storage enclosure (column
1, lines 55-68 and column 4, lines 53-67). It would have been obvious to

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one of ordinary skill in the art, at the time the invention was made, to
combine Ofer’s teaching of graphical user interface with the storage
enclosure of Axberg. Motivation of [sic, for] the combination would have
been to produce [a] cost-effective, highly available, high performance disk
system by using the RAID that is a collection of multiple disk drives being
organized into a disk array managed by a common array controller.

We disagree with the examiner’s rationale. In rejecting claims under
35 U.S.C. § 103, the Examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by
showing that some objective teaching in the prior art or knowledge generally
available to one of ordinary skill in the art suggests the claimed subject matter.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if
this initial burden is met does the burden of coming forward with evidence or
argument shift to the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. An
obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on
appeal, the Board must necessarily weigh all of the evidence and arguments.”
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434

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(Fed. Cir. 2002). In this case the examiner has presented no objective evidence
that would have suggested modifying Axberg with the teachings of Ofer. Claim 1
includes the limitation
a graphical user interface provided by the client component at a
client computer system, the graphical user interface being defined
to enable a user to physically build and modify the RAID array of
disks of the storage enclosure connected to the server computer
system from the client computer system without requiring the user
to locally interact with the server computer system.

Independent claim 3 contains a similar limitation. We find that both Axberg and
Ofer teach a Graphical User Interface (GUI). See abstract of both patents. The
examiner has not shown how or why one of ordinary skill in the art would modify
Axberg such that the GUI would allow a user to build and modify the RAID
without interacting locally with the RAID server. On pages 9 and 10 of the
answer, the examiner identifies that Ofer’s host computer (item 20) or Personal
Computer PC (item 24) are considered to meet the claimed client component.
While we recognize that Ofer also teaches that the PC can be accessed remotely
to access the storage controller (see column 2, lines 63 through 67), the
examiner has provided no objective evidence to suggest the modification
proposed. Accordingly, we will not sustain the examiner’s rejection under
35 U.S.C. § 103.

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In summary, we do not sustain the examiner’s rejections of claims 1
through 17 under 35 U.S.C. § 103. The decision of the examiner is reversed.
REVERSED

STUART S. LEVY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

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