Ex Parte Gallagher et al

Board of Patent Appeals and Interferences

Nov 19, 2009

10616848 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES R. GALLAGHER, BINH K. HUA,
and SIVARAMA K. KODUKULA
____________________

Appeal 2008-004595
Application 10/616,848
Technology Center 2100
____________________

Decided: November 19, 2009
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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STATEMENT OF THE CASE
Introduction
According to Appellants, the invention is a method, apparatus, and
computer instructions for handling failure of a primary adapter in a data
processing system (Abstract). When the primary adapter fails, a device
driver switches a standby adapter in for the primary adapter (Id.).

Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A method in a device driver for handling a failure of a primary
adapter in a data processing system, the method comprising:

queuing data in a data queue used by the primary adapter;

monitoring the primary adapter for the failure; and

responsive to detecting the failure, switching to a standby adapter
handled by the device driver, wherein the standby adapter uses the data in
the data queue.

Prior Art
Mahalingham US 6,314,525 B1 Nov. 6, 2001
Kurapati US 7,007,190 B1 Feb. 28, 2006
(filed Sep. 6, 2001)

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Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mahalingham and Kurapati.

GROUPING OF CLAIMS

Appellants argue claims 1-7 based on independent claim 1 (App. Br.
9-16, §A.1). We will, therefore, treat claims 2-7 as standing or falling with
representative claim 1.
Appellants argue claims 8-14 based on independent claim 8; however,
these are the same arguments set forth for independent claim 1 (App. Br. 16-
17, §A.2). We will, therefore, treat claims 9-14 as standing or falling with
representative claim 1.
Appellants argue claims 15-21 based on independent claim 15;
however, these are the same arguments set forth for independent claim 1
(App. Br. 18-19, §A.3). We will, therefore, treat claims 16-21 as standing or
falling with representative claim 1.
Appellants argue claim 22 based on the same arguments set forth for
independent claim 1 (App. Br. 19-21, §A.4).
We accept Appellants’ grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).
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ISSUE 1
35 U.S.C. § 103(a): claims 1-22
Appellants assert Kurapati does not teach “queuing data in a data
queue used by the primary adapter” or “the standby adapter uses the data in
the data queue” as recited in claim1 (App. Br. 10 and 12, §A.1.i). Instead,
Appellants argue, Kurapati teaches a system for routing voice calls that has
redundant software components exchange replicated information so calls are
not dropped (Id.). Appellants then contend that since software components
are not hardware components which adapters are, Kurapati does not teach
the recited limitation (App. Br. 11, §A.1.i).
The Examiner asserts that Mahalingham discloses a queue used by a
primary and a secondary adapter, albeit a different type of queue than that
recited in claim 1 (Ans. 13, §(10)1.). However, the Examiner finds the
processing of queuing data recited in claim 1 is taught by the shared memory
queue of Kurapati (Id.). The Examiner then concludes that combining the
method of data replication for redundant network components taught by
Kurapati into the system of Mahalingham would have been obvious to an
ordinary person skilled in the art because it would have provided a reliable
data replication (Ans. 4, §(9)1.).
Issue 1: Have Appellants met the burden of showing the Examiner
erred in concluding the combination of Mahalingham and Kurapati teaches
“queuing data in a data queue used by the primary adapter” and “the standby
adapter uses the data in the data queue?”
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FINDINGS OF FACT (FF)
We find as follows:
Mahalingham Reference
(1) Mahalingham teaches a method and system for detecting failure
of network adapters coupled to a server and including a primary adapter and
secondary adapters (col. 2, ll. 55-58).
(2) The Examiner finds Mahalingham discloses “the primary and
secondary adapter comprising a queue used by each of the primary and
secondary adapter (fig. 11, 1356b, 1358b)” (Ans. 13, §10(1))
(3) We find Mahalingham discloses a primary and a secondary
adapter, each of which has a queue (col. 21, ll. 1-22 and Fig. 11, elements
1356A-B and 1358A-B)).

Kurapati Reference
(4) Kurapati teaches a method and system for replicating data for
redundant network components (Abstract).
(5) The Examiner finds Kurapati discloses the process of queuing
data by a shared memory queue and specifically, a data replicator using the
replicate data stored in a shared memory database from a network
component to a mate network component (Ans. 13, §10(1)).

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PRINCIPLES OF LAW
Obviousness
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient … In such situations, the
proper question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art
references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis in original).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 550 U.S. 398
(2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. at 417. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
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ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 418.

If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellants’ arguments (including that Kurapati does not disclose an
adapter), focus on the individual differences between the limitations of claim
1 and the Kurapati and Mahalingham references each considered in
isolation. It is apparent, however, from the Examiner’s line of reasoning,
that the basis for the obviousness rejection is the combination of Kurapati
and Mahalingham.1 One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F. 2d 413, 425 (CCPA 1981); In re Merck &
Co., Inc., 800 F. 2d 1091, 1096 (Fed. Cir. 1986).
In other words, while Appellants contend that Kurapati lacks a
teaching of primary and secondary adapters, we find such feature is taught
by Mahalingham for the reasons set forth by the Examiner (FF 2). Similarly,

1 The test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 414,
425 (CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
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while Appellants contend that Mahalingham lacks a teaching of a shared
queue, we agree with the Examiner that this teaching is clearly taught by
Kurapati (FF 5).
Therefore, after considering the totality of the record before us, it is
our view Appellants have not met the burden of showing the Examiner erred
in finding that the combination of Mahalingham and Kurapati teaches the
argued limitations of “queuing data in a data queue used by the primary
adapter” and “the standby adapter uses the data in the data queue” (See
independent claim 1 and the commensurate language recited in each of
independent claims 8, 15, and 22). Accordingly, Appellants have not shown
that the Examiner has erred.

ISSUE 2
35 U.S.C. § 103(a): claims 1-22
Appellants next argue the Examiner failed to state a proper teaching,
suggestion, or motivation to combine the references and that no teaching,
suggestion, or motivation exists to combine the Mahalingham and Kurapati
references because each reference represents a complete solution to the
problem that each solves (App. Br. 13, §A.1.ii. and App. Br. 14, §A.1.iii.).
Appellants continue that Kurapati teaches a system for routing voice calls
while Mahalingham provides that packet information is rerouted to a
secondary adapter upon failure of receipt by a primary adapter (App. Br. 15,
§A.1.iii.). Therefore, according to Appellants, one of ordinary skill would
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have no reason to combine or otherwise modify the references as no
teaching, suggestion, or motivation exists to combine the references (App.
Br. 15-16, §A.1.iii.).

The Examiner finds Mahalingham is drawn to a system providing
seamless redundant failover should a primary card fail (Ans. 14, §10(2.)).
The Examiner further finds Kurapati is drawn to replicate redundant data
failover seamlessly should a fault occur to a primary component (id.). The
Examiner finds although Mahalingham has no need for replicated
information and uses two separate queues for each network component, one
of ordinary skill in the art would not be prohibited from combining the
queuing of Kurapati into the system of Mahalingham (Ans. 15, §10.(3)).
Thus, the Examiner finds the two references operate in the same field of
endeavor to provide failover in a redundant system and the advantage of
replicating redundant data loss (id.). The Examiner finds a motivation to
combine these technologies exists (id.).
Issue 2: Have Appellants met the burden of showing the Examiner
erred by improperly combining the Mahalingham and Kurapati references?

ANALYSIS
The Examiner has set forth a motivation for combining the
technologies of Mahalingham and Kurapati (Ans. 4, §9(1.) and Ans. 14,
§10(2.)). Based upon our review of the record, we find the Examiner has
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articulated a reason with a rational underpinning to support the legal
conclusion of obviousness.2 “As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992). We find Appellants have not persuasively argued or provided
evidence that the Examiner’s stated reasoning did not have a rational
underpinning.
As stated above, the Examiner has set forth a rationale reason for
combining the Mahalingham and Kurapati references. Whether each
reference provides a complete solution to a problem does not impact whether
one of ordinary skill in the art would have been motivated to combine
features of each reference. We find one of ordinary skill in the art would
have been motivated to combine the technology of Kurapati into the system
of Mahalingham to improve a seamless redundant failover should a primary
component fail. Indeed, we find a person of ordinary skill in the art would
have recognized the advantages of using the shared queue of Kurapati in the
system of Mahalingham and that such a combination would not have been
beyond the skill of that person. Appellants have not persuasively argued or
presented evidence to rebut the Examiner’s finding that a motivation existed.

2 There must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Therefore, based on the record before us, we find that one of ordinary skill
in the art would have been motivated to modify the system of Mahalingham
with the technique of Kurapati, and we conclude that such combination
would have been obvious to one skilled in the art.

CONCLUSION
Based on the findings of facts and analysis above:
Appellants have not met the burden of showing the Examiner erred in
finding “queuing data in a data queue used by the primary adapter” and “the
standby adapter uses the data in the data queue.”
Appellants have not met the burden of showing the Examiner erred by
improperly combining the Mahalingham and Kurapati references.
Accordingly, Appellants have not met the burden of showing the
Examiner erred in rejecting claims 1-22 under 35 U.S.C. § 103(a) for
obviousness over Mahalingham and Kurapati.

DECISION
The Examiner’s rejection of claims 1-22 under 35 U.S.C. § 103(a) as
being obvious over Mahalingham and Kurapati is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

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