Ex Parte Gimpl et al

Patent Trial and Appeal Board

Feb 23, 2017

13739141 (P.T.A.B. Feb. 23, 2017)

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.
13/739,141 01/11/2013 David Joseph Gimpl TUC920120139US1 9505
78650 7590
Nelson and Nelson
775 High Ridge Drive
Alpine, UT 84004
EXAMINER
HACKENBERG, RACHEL J
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dan @ nnpatentlaw .com
alexis @nnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JOSEPH GIMPL and
NEDZAD TALJANOVIC
Appeal 2016-006362
Application 13/739,1411
Technology Center 2400
Before JASON V. MORGAN, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “configuring zoning within a switch of a
storage network.” Spec. Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal 2016-006362
Application 13/739,141
1. A method for configuring zoning within a switch of a storage
network, the method comprising:
providing, by at least one processor, a list of devices to a
user, wherein the devices include at least one of server computers
and storage devices;
enabling the user to select devices from the list and assign
the devices to a zone of a storage network,
searching a device inventory database to determine which
ports of a switch the devices are connected to;
determining port-to-port mappings needed to enable
communication between the selected devices through the switch;
and
sending a request to the switch to establish the zone with
the determined port-to-port mappings.
Rejections
Claims 1—21 stand rejected under 35U.S.C. § 101 as being directed to
a non-patentable abstract idea. Final Act. 2.
Claims 1—21 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Graves (US 2006/0171384 Al; Aug. 3, 2006) and
Bealkowski (US 2008/0028045 Al; Jan. 31, 2008). Final Act. 3.
ISSUES
1. Did the Examiner err in concluding claim 1 was directed to
ineligible subject matter under § 101?
2. Did the Examiner err in finding the combination of Graves and
Bealkowski teaches or suggests “enabling the user to . . . assign the devices
to a zone of a storage network,” as recited in claim 1?
3. Did the Examiner err in finding Bealkowski teaches or suggests
“searching a device inventory database to determine which ports of a switch
the devices are connected to,” as recited in claim 1?
2
Appeal 2016-006362
Application 13/739,141
ANALYSIS
§101
The Examiner concludes the claims are not directed to patentable
subject matter because they are “directed to an abstract idea” and “can be
carried out on a generic computer.” Ans. 28—29.
To determine whether subject matter is patentable under 35 U.S.C.
§ 101, the Supreme Court has set forth a two part test. “First, we determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” i.e., “laws of nature, natural phenomena, and abstract ideas.”
Alice Corp. Pty. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). For
computer-related technologies, “the first step in the Alice inquiry . . . asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities” (which would be eligible subject matter) or instead
“on a process that qualifies as an ‘abstract idea’ for which computers are
invoked merely as a tool” (which would be ineligible subject matter).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36, 1338 (Fed. Cir.
2016) (emphasis added). For example, “adding conventional computer
components to well-known business practices” would be ineligible subject
matter. Id. However, one must keep in mind that “all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas,” Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012), and “describing the claims at... a high
level of abstraction and untethered from the language of the claims all but
ensures that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at
1337. Instead, “the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter.”
3
Appeal 2016-006362
Application 13/739,141
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015). “If the claims are not directed to an abstract idea [or other
patent-ineligible concept], the inquiry ends. If the claims are ‘directed to’ an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016).
In the second step, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The
Supreme Court describes step two of this analysis as “a search for an
inventive concept—i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.” Id. (quotation omitted).
“Distinguishing between claims that recite a patent-eligible invention
and claims that add too little to a patent-ineligible abstract concept can be
difficult, as the line separating the two is not always clear.” DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). Moreover,
recent cases suggest “there is considerable overlap between step one and
step two.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). Nevertheless, regardless of which step is being
examined, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen.” Id.
Here, the Examiner analogized the claims to Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014). Ans. 29. However, the Examiner’s reliance is misplaced
4
Appeal 2016-006362
Application 13/739,141
because the claims in that case “merely recite the use of this existing
scanning and processing technology to recognize and store data from
specific data fields such as amounts, addresses, and dates,” which was
ineligible subject matter because “humans have always performed these
functions” and “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Content
Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S. Ct. at 2358).
The claims here are different. The Federal Circuit has said a claim
may pass the second step if “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR Holdings, 773 F.3d at 1257. Two
examples of such eligible subject matter occur in Amdocs and BASCOM.
In Amdocs, the Federal Circuit held the claim was eligible subject
matter because the claim
entails an unconventional technological solution (enhancing data
in a distributed fashion) to a technological problem (massive
record flows which previously required massive databases). The
solution requires arguably generic components, including
network devices and “gatherers” which “gather” information.
However, the claim’s enhancing limitation necessarily requires
that these generic components operate in an unconventional
manner to achieve an improvement in computer functionality.
Amdocs, 841 F.3d at 1300-01.
The Federal Circuit reached a similar result with the abstract idea of
“filtering content on the Internet” in BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). “[T]he
limitations of the claims, taken individually, recite generic computer,
network and Internet components, none of which is inventive by itself,” but
“an inventive concept can be found in the non-conventional and non-generic
5
Appeal 2016-006362
Application 13/739,141
arrangement of known, conventional pieces.” Id. at 1349—50. Put another
way, “the ordered combination of these limitations provided the requisite
inventive concept” to overcome the second step in Alice!Mayo. Amdocs,
841 F.3d at 1298—99 (summarizing BASCOM, 827 F.3d at 1347—51).
Here, we find the claims most analogous to Amdocs and BASCOM.
Although the individual limitations recite generic components, such as “a
switch,” “server computers,” and “storage devices,” the ordered combination
of these limitations is directed to a specific technological solution to a
specific technological problem, namely zoning devices in a storage network.
This is “a challenge particular to” storage networks and sufficient to
overcome the second step in the Alice!Mayo framework under § 101. DDR
Holdings, 773 F.3d at 1257.
We note that we do not agree with the reasoning set forth in the
Appeal Brief. The Supreme Court expressly rejected Appellants’ argument
that merely adding “at least one processor” is sufficient to overcome § 101.
Alice, 134 S. Ct. at 2358 (“the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”);
App. Br. 5. And contrary to Appellants’ assertion (App. Br. 6), the
Examiner need not prove anticipation under § 102 or obviousness under
§ 103 in order to demonstrate ineligible subject matter under § 101, as those
statutes are separate inquiries despite some potential overlap. See Mayo, 566
U.S. at 90. Nevertheless, in the interest of furthering prosecution, we apply
§ 101 as set forth in the intervening cases of Amdocs and BASCOM.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
21 under § 101.
6
Appeal 2016-006362
Application 13/739,141
§103
A) “assign the devices to a zone ”
Claim 1 recites “enabling the user to select devices from the list and
assign the devices to a zone of a storage network.”
Appellants argue “[n]either Graves nor Bealkowski enable a user to
directly assign server and/or storage system devices to a zone.” App. Br. 8.
“Graves addresses verifying a zone configuration but does not appear to
address how a zone is initially set up by a user,” and “Bealkowski does not
appear to address network ‘zoning’ at all.” Id. at 8—9 (citation omitted).
However, we agree with the Examiner that “one cannot show non­
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981); Ans. 30. Appellants have not sufficiently addressed
the Examiner’s proposed combination. Ans. 29. Graves teaches “a properly
bound disk LUN [logical unit] should always have a zone associated with
it.” Graves | 55; Ans. 31. Bealkowski teaches to “enable user to select. . .
from list” a chassis, a computing device installed within the chassis, a switch
connected to the computing device, and a storage device connected to the
switch. Bealkowski Fig. 4A, || 37, 40, 42, 44-46; Ans. 31. “It would be
obvious in Graves, that a user/admin selects the devices for an initial setup
of a VPN/group/zone” and “Bealkowski is brought in to teach the detail of
the user being able to select devices.” Ans. 30. Regardless of whether
Bealkowski’s “groups” are the same as the claimed “zones,” the Examiner’s
findings show that it would have been obvious to apply (A) Bealkowski’s
teaching of a user selecting devices to (B) the initial setup of Graves’ zones.
The Examiner’s conclusion is further strengthened by Graves teaching that
7
Appeal 2016-006362
Application 13/739,141
“[generally, data centers include technicians” (i.e., users) who “issue
commands to control the deployment of servers and to control the supporting
infrastructures, such as disk logical units (LUNs) in a disk array, network
switches in the LAN, and switches in the SAN” (e.g., perform initial setup of
devices). Graves 13; Ans. 30-31.
Thus, Appellants have not persuaded us the Examiner erred in finding
Graves and Bealkowski teach or suggest “enabling the user to select devices
from the list and assign the devices to a zone of a storage network.”
B) “ports ”
Claim 1 further recites “searching a device inventory database to
determine which ports of a switch the devices are connected to.”
Appellants contend the text of Bealkowski “doesn’t use the term
‘port’ anywhere,” and “[t]he only reference to a ‘port’ is in Figures 5E and
5J” which do “not describe what this ‘port’ refers to (i.e., whether it’s the
port of the ‘storage device,’ [or] the port of a switch that the storage device
is connected to, etc.).” App. Br. 10 (emphasis added); see also Ans. 33.
Bealkowski teaches “FIG. 5E shows a GUI 536 by which a user is
able to select the SAN storage device 112 from all the SAN storage devices
connected to the SAN to which the switch 118 is connected.” Bealkowski
145 (emphasis added). “A drop-down box 538 lists the network addresses
of all the SAN storage devices connected to the SAN to which the switch
118 is connected.” Id. (emphasis added). “By selecting a given network
address, information regarding the SAN storage device having this network
address is displayed in the boxes 540 and 542.” Id. (emphasis added). As
seen in Figure 5E, box 540 includes an entry for “Port.” Thus, the “Port” in
Figure 5E is the port of the storage device selected by the user, not a switch.
8
Appeal 2016-006362
Application 13/739,141
Yet the Examiner’s rejection was based on obviousness rather than
anticipation. For obviousness, a factfinder “need not seek out precise
teachings directed to the specific subject matter of the challenged claim” and
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). As discussed above, Bealkowski’s storage device is
connected to switch 118 (145), and Bealkowski teaches the list of storage
devices available for selection is limited to those devices connected to the
switch selected by the user. Bealkowski Fig. 4A, 144. Given Bealkowski
teaches (A) selecting the storage device based on the user’s selection of the
switch and (B) tracking the port of the storage device, Appellants have not
persuaded us that a person of ordinary skill in the art would not have found it
obvious for Bealkowski to know and use the port of the switch connected to
the storage device.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 1,
and claims 2—21, which Appellants argue are patentable for similar reasons.
See App. Br. 11; 37 C.F.R. § 41.37(c)(l)(iv) (2015).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—21 under § 103. We reverse the Examiner’s decision rejecting
claims 1—21 under § 101.
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.
§ 41.50(f).
AFFIRMED
9