Ex Parte Driscoll et al

Board of Patent Appeals and Interferences

Sep 13, 2011

10993916 (B.P.A.I. Sep. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN R. DRISCOLL, BRENDAN HALL,
and PHILIP J. ZUMSTEG
____________________

Appeal 2009-014215
Application 10/993,916
Technology Center 2100
____________________

Before ALLEN R. MACDONALD, ERIC S. FRAHM, and BRUCE R.
WINSOR, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014215
Application 10/993,916

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 9-17, and 19-33.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
1. A method for verifying operation of a first component
of a plurality of components in a single fault tolerant system,
the method comprising:
monitoring for an expected action of at least one other
component of the plurality of components in the system that
indirectly identifies the operating condition of the first
component to a second component of the system;
when the monitored expected action indicates a faulty
operating condition, isolating the first component's errant
behavior; and
when the monitored expected action indicates a proper
operating condition, proceeding with normal operation of the
system.

1 Claims 16, 17, and 19 have been canceled by Appellants’ amendment filed
October 6, 2008, filed two months after the Final Rejection which was
mailed on August 6, 2008. Claim 18 has been indicated by the Examiner as
containing allowable subject matter (Final Rej. 2). Claims 8 and 34 have
been objected to as being dependent upon a rejected base claim, but
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims (id.).
Appeal 2009-014215
Application 10/993,916

3
Examiner’s Rejections2
1. The Examiner rejected claims 1-7, 9-12, 14, 15, 20-23, and 25-
33 under 35 U.S.C. § 102(b) as being anticipated by Findlay (US 6,163,853).
2. The Examiner rejected claims 13 and 24 as being unpatentable
under 35 U.S.C. § 103(a) over Findlay and Official Notice.3
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting
claims 1-7, 9-12, 14, 20-23, and 25-33 under 35 U.S.C. § 102(b) as being
anticipated by Findlay for numerous reasons, including:
(i) Findlay fails to teach “monitoring for an expected action of at least
one other component of the plurality of components in the system that
indirectly identifies the operating condition of the first component to a
second component of the system” (hereinafter, the “monitoring …” step) as
recited in claim 1 (App. Br. 4-7; Reply Br. 1-3);
(ii) paragraph [0027] of the Specification defines the phrase “‘indirect
detection’” as meaning that “the component that detects a fault or operating
condition of a system component does so based on other components’

2 In presenting the arguments in the briefs, Appellants have incorrectly
grouped claims 13 and 24 with the arguments presented regarding the
anticipation rejection of claims 1-7, 9-12, 14, 15, 20-23, and 25-33 (see App.
Br. 4-7; Reply Br. 4). Separate patentability has not been argued for claims
13 and 24 (see App. Br. 7; Reply Br. 4).
3 Appellants have not presented any arguments in the briefs with regard to
the obviousness rejection of claims 13 and 24 over Findlay and Official
Notice (see App. Br. 4-7; Reply Br. 1-4). As such, Appellants have not
shown the Examiner erred in rejecting these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appeal 2009-014215
Application 10/993,916

4
responses or expected actions to a faulty or good signal” (App. Br. 6 (citing
Spec. ¶ [0027]));
(iii) Findlay fails to teach or suggest that the SCSI device indirectly
identifies the state of the first server (App. Br. 7);
(iv) “the communication of the heartbeat from the first server to the
second server in Findlay is direct communication” and not an indirect
identification of the operating condition as set forth in claim 1 (Reply Br. 2-
3); and
(v) Findlay’s monitoring of the SCSI device does not teach or suggest
the “monitoring . . .” step set forth in claim 1, because Findlay’s SCSI
device is under the direct control of, and not distinct from, the first server
(Reply Br. 3-4).
2. Appellants contend that the Examiner erred in rejecting claim
15 under 35 U.S.C. § 102(b) as being anticipated by Findlay for numerous
reasons, including:
(i) Findlay fails to teach or suggest monitoring for a subsequent action
“‘wherein monitoring for the subsequent action indirectly identifies the
condition of the first’” as set forth in claim 15 (App. Br. 8);
(ii) Findlay’s monitoring of the status of the SCSI device directly
monitors the pulse waveform from the first server, and therefore does not
indirectly identify the condition of the first server, as recited in claim 15
(App. Br. 8-9); and
(iii) the Examiner has made contradictory statements by asserting that
sampling the pulse waveform by monitoring the SCSI device teaches both
observing a message from a first node and “‘monitoring for a subsequent
action by at least one other node’” (App. Br. 8-9).
Appeal 2009-014215
Application 10/993,916

5
Issue on Appeal
Did the Examiner err in rejecting claims 1-7, 9-12, 14, 15, 20-23, and
25-33 as being anticipated because Findlay fails to teach the “monitoring ...”
limitation as set forth in claim 1, and/or the similar limitation of monitoring
for a subsequent action as set forth in claim 15?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief and the Reply Brief that the Examiner has
erred.
We disagree with Appellants’ contentions. With regard to the
anticipation rejection of claims 1-7, 9-12, 14, 15, 20-23, and 25-33 over
Findlay, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 3-12). We concur with the conclusions
reached by the Examiner with regard to Findlay. Specifically, we agree with
the Examiner that paragraph [0027] of Appellants’ Specification yields a
broader definition for “indirect detection” than Appellants have asserted in
the Appeal Brief (see Ans. 3 and 8-9). Paragraph [0027] of the Specification
is reprinted below:
[0027] As used in the specification, the phrase "indirect
detection" means that the component that detects a fault or
operating condition of a system component does so based on
other components' responses or expected actions to a faulty or
good signal, rather than observing the faulty or good signal
directly. In some embodiments, the information that is used to
indirectly detect a fault or operating condition is based on
Appeal 2009-014215
Application 10/993,916

6
control signals generated by other components that are used for
other specific purposes in the system. In other embodiments,
the information is derived from response messages from a
number of components.
We agree with the Examiner (Ans. 8-9) that Appellants’ claims 1 and
15, which perform indirect identification of a condition of a first component
or node, do not limit the indirect detection to being “based on control signals
generated by other components” (see Spec. ¶ [0027]) since such a limitation
is limited to just some of the embodiments.
Findlay’s indirect detection of an expected result (the heartbeat
expected in step 809 of Figure 8) teaches the monitoring of an expected
action as recited in claim 1, and Findlay’s second server performs the
monitoring of a subsequent action as recited in claim 15 (see Findlay at Fig.
8; col. 10, l. 45 to col. 11, l. 8).
We disagree with Appellants’ argument (App. Br. 8-9) that the
Examiner has made contradictory statements in asserting that sampling the
pulse waveform by monitoring the SCSI device teaches both observing a
message from a first node and monitoring for a subsequent action by another
node. As stated by the Examiner (Ans. 11-12), Findlay’s SCSI device does
the observing, and Findlay’s second server does the monitoring. Therefore,
we do not find Appellants’ contention that the Examiner has made
contradictory statements convincing.
Based on Appellants’ failure to address the Examiner’s prima facie
case of obviousness, Appellants have failed to show that the Examiner erred
in determining that Findlay combined with Official Notice teaches or
suggests the method and machine-readable medium as recited in claims 13
and 24. Accordingly, we will sustain the Examiner’s obviousness rejection
Appeal 2009-014215
Application 10/993,916

7
of these claims pro forma. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring a
statement in the briefs as to each ground of rejection presented by
Appellants for review); 37 C.F.R. § 41.37(c)(1)(vii) (stating that arguments
not presented in the briefs by Appellants will be refused consideration).

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-7, 9-12, 14, 15, 20-
23, and 25-33 under 35 U.S.C. § 102(b) as being anticipated by Findlay.
(2) Appellants have not presented any separate arguments with
respect to the rejections of claims 13 and 24 as being obvious under 35
U.S.C. § 103(a) over Findlay and Official Notice. As such, Appellants have
not argued that the Examiner erred in rejecting these claims, or otherwise
shown the obviousness rejection to be in error. See 37 C.F.R.
§ 41.37(c)(1)(vii).
(3) Claims 1-7, 9-12, 14, 15, 20-23, and 25-33 are not patentable.

DECISION
The Examiner’s rejection of claims 1-7, 9-12, 14, 15, 20-23, and 25-
33 under 35 U.S.C. § 102(b) as being anticipated by Findlay is affirmed.
The Examiner’s rejection of claims 13 and 24 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Findlay and Official
Notice 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
Appeal 2009-014215
Application 10/993,916

8

msc