Ex Parte DeKoning et al

Patent Trial and Appeal Board

Jul 17, 2015

12481389 (P.T.A.B. Jul. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/481,389 06/09/2009 Rodney A. DeKoning 47415.253 5136
27683 7590 07/17/2015
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
PHAN, DEAN
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
07/17/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RODNEY A. DEKONING, CHARLES E. NICHOLS,
WILLIAM PATRICK DELANEY,
MOHAMAD EL-BATAL, and
KEITH HOLT
____________

Appeal 2013-001950
Application 12/481,389
Technology Center 2100
____________

Before CAROLYN D. THOMAS, CATHERINE SHIANG, and
JESSICA C. KAISER, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
In reaching the decision, we have considered only the arguments that
Appellants raised. Arguments that Appellants did not make are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2013-001950
Application 12/481,389

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STATEMENT OF THE CASE
The present invention relates to storage systems. See generally Spec.
1. Claim 1 is exemplary:
1. A storage array system, comprising:
N array controllers configured with at least two interconnect
fabric ports, where N is an integer greater than two; and
a first interconnect fabric switch and a second interconnect
fabric switch are each integrated into first and second
environmental services modules (ESM), respectively, each of
said first and second interconnect fabric switches having at least
N interconnect fabric ports, each of said N interconnect fabric
ports being connected to an interconnect fabric port on one of
said N array controllers thereby establishing redundant
connectivity between each of said N array controllers, each of
the first and second ESMs are incorporated in a Just a Bunch of
Disks (JBOD) enclosure.

References and Rejections

Marks II US 2007/0162592 A1 July 12, 2007
Davies US 2008/0005470 A1 Jan. 3, 2008
Sasagawa US 2008/0239656 A1 Oct. 2, 2008
Bandholz US 2008/0288679 A1 Nov. 20, 2008

Claims 10, 11, and 14 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Marks II.
Claims 1–6 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marks II and Sasagawa.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Marks II and Bandholz.
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Application 12/481,389

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Claims 15–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marks II and Davies.
Claims 7–9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marks II, Sasagawa, and Davies.

ANALYSIS
The Anticipation Rejection

Claims 10, 11, and 14

We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Marks II discloses “a JBOD [Just a Bunch of Disks] unit with at
least two integrated interconnect fabric switches,” as recited in independent
claim 10.
The Examiner cites Marks II’s Figure 1 for that claim limitation. See
Ans. 4–5. It is undisputed Marks II’s Figure 1 shows a JBOD unit (mapped
to Marks II’s JBOD unit) is separate from the two integrated interconnect
fabric switches (mapped to Marks II’s expander blades 30). See Ans. 4;
Reply Br. 5–6; Marks II, Fig. 1.
We agree with Appellants that the claim language requires two
interconnect fabric switches be not separate from the JBOD unit. Therefore,
Marks II’s Figure 1 is insufficient to disclose the disputed claim limitation.
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Application 12/481,389

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Accordingly, we are constrained by the record to reverse the
Examiner’s rejection of claim 10, and claims 11 and 14 for similar reasons.1

The Obviousness Rejection

Claims 12, 13, and 15–17
We also reverse the Examiner’s obviousness rejection of claims 12,
13, and 15–17.
The Examiner cites additional references for the obviousness rejection
of those claims. The Examiner relies on Marks II in the same manner
discussed above in the context of claim 10, and does not rely on the
additional references in any manner that remedies the deficiencies of the
underlying anticipation rejection.

Claims 1–9
On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments (App. Br. 11–13; Reply Br.
7), and agree with and adopt the Examiner’s findings and conclusions on
pages 5–7 of the Answer as our own. Therefore, we limit our discussion to
the following points for emphasis.
Appellants assert Marks II and Sasagawa do not collectively teach “a
first interconnect fabric switch and a second interconnect fabric switch are
each integrated into first and second environmental services modules (ESM),
. . . each of the first and second ESMs are incorporated in a Just a Bunch of
Disks (JBOD) enclosure,” as recited in claim 1. See App. Br. 11–13; Reply

1 If prosecution reopens, we recommend the Examiner consider whether to
reject claim 10 under 35 U.S.C. § 103 as being unpatentable over Marks II
and Sasagawa.
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Application 12/481,389

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Br. 7. Appellants contend Sasagawa does not teach a JBOD enclosure. See
App. Br. 12. Appellants argue Sasagawa’s enclosures 170 “are completely
separate and distinct from the hard drives 31[, which are within the chassis
100]. For this reason, in addition to failing to teach JBOD units and
enclosures, Sasagawa even fails to disclose incorporating fabric switches or
ESMs into storage unit enclosures.” App. Br. 12. Appellants contend
because Sasagawa’s enclosures 170 are separate elements from the chassis
200, the Examiner incorrectly maps the claimed “enclosure” to the chassis
200. See App. Br. 12–13.
Appellants fail to show reversible error. Because the Examiner relies
on the combination of Marks II and Sasagawa to teach the disputed claim
limitations, Appellants cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
The Examiner finds—and Appellants do not dispute—Marks II
teaches a “JBOD” configuration. See Ans. 6; Marks ¶ 20 (“JBODs 220”).
Therefore, Sasagawa does not need to teach the claimed “JBOD” element.
The Examiner also finds—and Appellants do not dispute—Sasagawa
teaches a first interconnect fabric switch and a second interconnect fabric
switch (mapped to Sasagawa’s SAS expanders) are each integrated into first
and second environmental services modules (ESM) (mapped to Sasagawa’s
SW [switch] 19s). See Ans. 5; Sasagawa ¶¶ 49–51. Appellants also concede
Sasagawa teaches the enclosures 170 comprise SW19s. See App. Br. 12;
Sasagawa, Fig. 1; Sasagawa ¶ 51.
Contrary to Appellants’ argument that “chassis 200 of Sasagawa . . . is
. . . a completely separate and distinct element [from enclosures 170]” (App.
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Br. 12), Sasagawa’s Figure 1 shows chassis 200 includes the enclosures 170.
See Sasagawa, Fig. 1. Appellants fail to provide evidence to show that one
skilled in the art would not consider Sasagawa’s chassis 200 as the claimed
“enclosure.” Therefore, Appellants fail to show error in the Examiner’s
finding that Sasagawa teaches “each of the first and second ESMs are
incorporated in a [ ] enclosure.”
Because Appellants do not contend it is improper to combine the
teachings of Marks II and Sasagawa, Appellants fail to show error in the
Examiner’s finding that the two references collectively teach “a first
interconnect fabric switch and a second interconnect fabric switch are each
integrated into first and second environmental services modules (ESM), . . .
each of the first and second ESMs are incorporated in a Just a Bunch of
Disks (JBOD) enclosure,” as recited in claim 1. See Ans. 5.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–9 for similar reasons.

DECISION
The Examiner’s decision rejecting claims 1–9 is affirmed.
The Examiner’s decision rejecting claims 10–17 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)(1)(iv).

AFFIRMED-IN-PART
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