Ex Parte Fair

Board of Patent Appeals and Interferences

Aug 17, 2009

10614630 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT LAWRENCE FAIR
____________________

Appeal 2009-001743
Application 10/614,6301
Technology Center 2100
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Decided: August 17, 2009
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Before JOHN C. MARTIN, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 7, 2003. Application 10/614,630 is a divisional of
09/580,187, which issued as Patent No. 6,718,481 on 5/26/2000. The real
party in interest is EMC Corporation.
Appeal 2009-001743
Application 10/614,630

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 and 2 (all of the
claims in this application) under authority of 35 U.S.C. § 134(a). The Board
of Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b).

Appellant’s invention relates to a shared system resource, such as a
file server, communications server, or print server, shared among a number
of users in a networked system, whereby the resource includes a plurality of
hierarchically related and peer-related domains. (See Spec. 7, bottom and
claim 1.) In the words of the Appellant:
The shared system resource . . . comprises a
plurality of domains . . . that are structured as an
integrated cooperative cluster of domains
including hierarchically related domains . . . and
peer related domains . . . wherein each domain
performs one or more functions supporting the
services provided by the system resource.
(Brief 5, top to middle.)

Claim 1 is exemplary:
1. A shared system resource for use in a
networked system to provide services to a plurality
of clients communicating with the system resource
through a network, comprising:

a plurality of domains structured as an
integrated, cooperative cluster of domains
including hierarchically related domains and peer
related domains, each domain performing one or
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more functions supporting the services provided by
the system resource, wherein

hierarchically related domains include a
higher level domain and a lower level domain
respectively performing higher and lower level
operations of one or more related functions
supporting the services provided by the system
resource,

peer related domains include parallel
domains performing related operations in mutual
support of one or more related functions
supporting the services provided by the system
resource, and

a domain having a peer related domain
monitors the peer related domain and assumes the
operations performed by the peer domain upon
detecting a failure in the peer related domain.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lewis US 5,768,501 Jun. 16, 1998

REJECTION
The Examiner rejects the claims as follows:

Claims 1 and 2 under 35 U.S.C. § 102(b) for being anticipated by
Lewis.

Appellant contends that the claimed subject matter is not anticipated
by Lewis because Appellant’s claimed “peer related domains” and
“hierarchically related domains” are not taught. (See Brief 17, bottom.) The
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Application 10/614,630

Examiner contends that both claims 1 and 2 are properly rejected. (See Ans.
11, middle.)
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.

We reverse.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(b). The issue turns on whether
Lewis teaches the claimed “peer related domains” and “hierarchically related
domains.”

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a shared system resource that includes peer
related and hierarchically related domains. (See Abstract.) “[E]ach
domain performs or provides one or more related or functions integral to
the functions or services supported by the resource.” (Spec. ¶ [0034].)
2. Lewis teaches a plurality of equivalent network domains categorized by
geographical location, the structure of the corporation (e.g., accounting,
finance, human resources departments), or functional characteristics of
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network resources. (See Fig. 3, Domains A, B, and C; col. 1, ll. 27-28,
34-35, and 48-49.)
PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Our reviewing court further states that “the words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted).
ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented the rejection of Appellant’s claims under
35 U.S.C. § 102(b) on pages 3 to 4 of the Examiner’s Answer. In
opposition, Appellant presents the two arguments addressed below.
Appellant argues that the claimed peer related domains are not taught
by the Lewis reference. (Brief 18, middle.) More specifically, Appellant
contends: “Lewis ’501 therefore does not teach or suggest peer domains
wherein peer domains are parallel domains performing related operations in
mutual support of one or more related functions supporting the services
provided by the system resource and having a functional and operational
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relationship such that a peer domain can monitor the functions and operation
of a related peer domain.” (Brief 17, top.)
The Examiner proposes that the Lewis reference teaches peer-related
domains. (Ans. 3, middle.) According to the Examiner, the broadest
reasonable interpretation of the claimed “peer related domains” includes
Lewis’s domains since each domain has equal standing with any other
domain regardless of how the domain is categorized or characterized (e.g.,
by geographical location, corporate function, or functional characteristics of
network resources). (See Ans. 3, bottom and FF#2.) Since Lewis’s domains
are peers of one another, we find unconvincing Appellant’s argument for the
claimed “peer related domains.” (See Fig. 3; col. 1, ll. 27-28, 34-35, and 48-
49.)
Appellant also argues that the claimed “hierarchically related
domains” are not taught by Lewis. (Brief 17, middle.) More specifically,
Appellant argues: “Lewis ’501 does not teach or suggest the existence of
use of hierarchical domains because the only form of domains in the Lewis
’501 system, that is, the network domains, are all at the same structural and
functional level and thereby cannot be hierarchical to one another.” (Id.)
We find that Lewis does have a teaching for hierarchical relationships,
but only between network devices. (Col. 5, ll. 53-57.) Lewis teaches using
a graphical interface that offers a “landscape view” of a network model for
purposes of “monitoring the health and performance characteristics of”
network components, such as cables, networks, and local area networks.
(Col. 6, ll. 10-14.) The Examiner proposes in the Answer that a reasonable
interpretation of a hierarchically related domain is “anything within the
shared resource that has hierarchical components.” (Ans. 5, bottom.) The
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Examiner finds that Appellant made an admission that “a domain refers to
different elements in the system.” (Ans. 7, middle.) Accordingly, the
Examiner finds that “servers, clients, routers, communication links are all
domains” and that these components of Lewis have hierarchical
relationships between them. (Id.)
We closely reviewed the arguments in the Brief and the Answer, as
well as the portions of Lewis the Examiner cited as teaching hierarchically
related domains, and indeed the entire Lewis reference. We disagree with
the Examiner’s argument that “servers, clients, routers, communication links
are all domains.” (Ans. 7, middle.) We give the claimed term
“hierarchical” its ordinary and customary meaning2 (See Phillips, cited
above,) and find that Lewis’s domains are in no sense graded or ranked in
accordance with the ordinary and customary meaning of hierarchical. We
find that Lewis’s domains (A, B, and C) as shown in Figure 3 and described
in the reference are the only domains in Lewis and, in fact, are peer related
domains, in that the domains are counterparts within a network (i.e.,
Appellant’s claimed shared resource system). (See FF#2.) Though the
Examiner finds that Lewis’s network components are arranged in a
hierarchical manner within those domains (see Ans. 7, middle), the
Examiner’s finding does not address the issue of a hierarchy of domains
themselves. Because the salient question is whether the domains
themselves are organized in a graded or ranked fashion, the Examiner’s
finding of Lewis’s teachings for higher level and lower levels of correlations

2 See dictionary entries for “hierarchy” and “hierarchical,” Webster’s New
Collegiate Dictionary 539 (1976).
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of alarms within a domain (i.e., intra-domain) or across domains (i.e., inter-
domain) is thus irrelevant.
We find that Lewis’s domains are not even organized in a graded or
ranked fashion. (See FF#2.) Moreover, Lewis’s teachings for network
structure do not meet Appellant’s claim limitation for “hierarchically related
domains” because network components, such as cables and routers, would
not have been understood by a person of ordinary skill in the art to be the
same as Appellant’s claimed “hierarchically related domains.” We find that
Lewis teaches a network having a plurality of domains in which each
domain exists at an equal level, such that no domain is a sub-domain of
another domain. (See FF#2.) Appellant’s claimed “hierarchically related
domains” do not read on Lewis’s teachings for the organization of
components within a network structure or higher and lower levels of alarm
correlations.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1 and 2.

DECISION
The Examiner’s rejection of claims 1 and 2 is Reversed.

REVERSED

PEB

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Appeal 2009-001743
Application 10/614,630

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