Ex Parte Ghose et al

Board of Patent Appeals and Interferences

Jan 12, 2011

10695889 (B.P.A.I. Jan. 12, 2011)

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.
10/695,889 10/28/2003 Gautam Ghose 00121-000700000 7789
7590 01/12/2011
Law Office Of Leland Wiesner
1144 Fife Ave.
Palo Alto, CA 94301
EXAMINER
CHU, GABRIEL L
ART UNIT PAPER NUMBER
2114
MAIL DATE DELIVERY MODE
01/12/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GAUTAM GHOSE, CHANDRA PRASAD, RICHARD MEYER,
and RUSH MANBERT
____________________

Appeal 2009-005289
Application 10/695,889
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005289
Application 10/695,889
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-16, 18-21, and 23-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to failure analysis method and system for
storage area networks. (Title). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for configuring a storage virtualization
controller to manage errors in a storage area network,
comprising:
initializing a primary failure analysis module for
processing error events and error actions and an alternate failure
analysis module configured as a backup to the primary failure
analysis module to facilitate high-availability and redundancy;
identifying one or more predetermined error actions and
one or more error events associated with the storage area
network;
specifying, according to one or more rules, an error
pattern based upon a combination of one or more error events in
the storage area network; and
associating an error action to perform according to the
one or more rules and in response to receiving the combination
of one or more error events of the error pattern.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lewis
Feridun
D'Souza
Harper
US 5,666,481
US 6,336,139
US 6,446,218
US 6,629,266
Sep. 9, 1997
Jan. 1, 2002
Sep. 3, 2002
Sep. 30, 2003
Reuter US 2002/0019922 A1 Feb. 14, 2002
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REJECTIONS
Claims 1-4, 6-11, 18-21, 23-26, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lewis, Reuter, and Harper. (Ans. 3).
Claims 12-16, 27-32, 34, and 36 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Lewis, Reuter, Feridun, and D'Souza.
(Ans. 7).
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lewis, Reuter, Harper, "threshold" defined by IEEE, and
"graphical user interface", by Microsoft Computer Dictionary. (Ans. 15).

ISSUES
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Lewis, Reuter, and Harper?
Did the Examiner err in rejecting claim 12 under 35 U.S.C. § 103(a)
as being unpatentable over Lewis, Reuter, Feridun, and D'Souza?
Did the Examiner err in rejecting claim 35 under 35 U.S.C. § 103(a)
as being unpatentable over Lewis, Reuter, Harper, "threshold" defined by
IEEE, and "graphical user interface", by Microsoft Computer Dictionary?

PRINCIPLES OF LAW
Obviousness under §103
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
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“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations
omitted). "The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).
Just as "[i]t is not the function of [the U.S. Court of Appeals for the
Federal Circuit] to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art," In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991), "it is not the
function of this Board to examine claims in greater detail than argued by an
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appellant, looking for nonobvious distinctions over the prior art." Ex parte
Post, No. 2005-2042, 2006 WL 1665399 at *4 (BPAI. Jan.1, 2006).

ANALYSIS
At the outset we note that Appellants have not filed a Reply Brief to
respond to the Examiner’s position set forth within the Examiner’s Answer.
Appellants argue that there is no reason to combine the teachings of
Lewis with Reuter as they deal with non-analogous art. (App. Br. 11). We
disagree with Appellants’ narrow view of analogous arts. (App. Br. 11-15).
We find the Examiner’s discussion at pages 20-22 of the Examiner’s Answer
to further buttress the Examiner’s initial presentation in the statement of
rejection. We find Appellants’ contentions do not show any error in the
Examiner’s combination of teachings.
Appellants argue that all the limitations are not taught or suggested by
the cited art. (App. Br. 15). Appellants argue that contrary to the
Examiner’s assertion, Lewis alone or in combination with the cited does not
teach each and every feature of the invention as claimed. Appellants
contend that the Examiner’s contention that “a functioning process must be
initialized at some point” (App. Br. 16; citing the Office Action dated May
10, 2007) is “conclusory” and mere “supposition.” (App. Br. 16). We
disagree with Appellants’ contentions and find that Appellants’ claimed
invention does not set forth any limitations on the step of "initializing..."
with respect to the number of times the "initializing" step is performed or
whether it is an iterative process. Therefore, it is sufficient that a single
"initializing" step would be sufficient to be taught or suggested. Therefore,
the Examiner’s line of reasoning is correct and well based. We agree with
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the Examiner that "common sense" dictates that most systems need to be
initialized at the beginning of operation to operate properly. Therefore,
Appellants' argument does not show error in the Examiner's presentation of
the showing of obviousness of independent claim 1.
Appellants argue generally that the teachings of Lewis do not identify
error events as recited in independent claim 1, but instead identify cases
using "case-based reasoning" (CBR) and the Examiner's reliance thereon
teaches away from specifying error patterns based upon one or more rules.
(App. Br. 17-18). We disagree with Appellants' contentions and find the
Examiner's discussion regarding claim interpretation and "rules" at pages 18-
20 of the Examiner's Answer to be persuasive and adopt the Examiner's
claim interpretation. We further note that only a single rule is required by
the language of independent claim 1.
Appellants further contend that Lewis teaches away from aspects of
the claimed invention and that Lewis details the operation of rule-based
reasoning (RBR) systems and then proceeds to point out all its failures (App.
Br. 19-21). We disagree with Appellants and find that while Lewis does
discuss some of the shortcomings of rule-based reasoning systems, the
claimed invention does not recite a rule-based reasoning system and only
recites "one or more rules." We disagree with Appellants' conclusion and
find that the two identified problems discussed by Lewis and the improved
flexibility of the case-based reasoning does not rise to the level of a
"teaching away" as Appellants contend. Therefore, we do not find
Appellants' argument persuasive of error in the Examiner's showing of
obviousness of independent claim 1. Appellants group claims 18 and 33,
and dependent claims 2-4, 6-11, 19-21, and 23-26 with independent claim 1.
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With respect to claims 12, 27, 34, and 36, Appellants set forth similar
arguments as set forth with independent claim 1 further addressing the
teachings of Feridun and D’Souza regarding the combination and that all the
elements are not taught. (App. Br. 21-26). Similarly, as discussed above
with respect to independent claim 1, we disagree with Appellants'
contentions.
Appellants set forth similar arguments concerning Lewis teaching
away which we found unpersuasive with respect to independent claim 1.
(App. Br. 26-28). We similarly find those arguments unpersuasive with
respect to independent claim 12. Therefore, we do not find Appellants'
argument persuasive of error in the Examiner's showing of obviousness of
independent claim 12. Appellants group claims 27, 34, and 36, and
dependent claims 13-16 and 28-32 with independent claims 12 and 27.
With respect to independent claim 35, Appellants set forth similar
arguments as addressed above (App. Br. 28-30) which we do not find
persuasive of error in the Examiner's showing of obviousness.

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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-4, 6-16, 18-21, and 22-
36 under 35 U.S.C. § 103.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-4, 6-16,
18-21, and 22-36 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) (2009).

AFFIRMED

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Law Office Of Leland Wiesner
1144 Fife Ave.
Palo Alto CA 94301