Ex parte Gordon

Board of Patent Appeals and Interferences

Mar 19, 2001

08579552 (B.P.A.I. Mar. 19, 2001)

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

Paper
No.21

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID W. GORDON
_____________

Appeal No. 1999-0151
Application No. 08/579,552
_____________

ON BRIEF
_____________

Before URYNOWICZ, JERRY SMITH, and BARRETT,
Administrative Patent Judges.

URYNOWICZ, Administrative Patent Judge.

Decision on Appeal
This appeal is from the final rejection of claims
15-26 and 28-80, all of the claims pending in the
application.
The invention pertains to a fault-tolerant storage
device. Claims 15, 37 and 67 are illustrative and read as
follows:
15. A fault tolerant storage subsystem comprising:

a first tier of failure independent data storage
units coupled to a storage controller; and

a second tier of at least one failure independent
data storage units coupled to at least one of said
failure independent data storage units in said first tier
for providing further fault tolerance thereto.

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Application No. 08/579,552

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37. A storage subsystem comprising:

a storage controller coupling a central processing
unit to a plurality of data storage units in a redundant
array, at least one of said data storage units having an
access time that is different from at least another of
said storage units, said storage controller operative for
placing primarily accessed data on a fastest one of said
failure independent data storage units.

67. A fault tolerant storage subsystem comprising:

a plurality of failure independent data storage units
coupled to a storage controller in a redundant array,
said plurality of failure independent data storage units
comprising at least first and second data storage units
having substantially differing Read and Write cycle
times.

The references relied upon by the examiner are:
Brant et al. (Brant) 5,274,799 Dec. 28,
1993
(filed Jan. 4,
1991)
Brownstein, Subsystem Offers PCs Fault Tolerance,
Infoworld, v. 9, n. 28, p. 21, July 13, 1987.

Claims 15-26 and 28-80 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Brant in view of
Brownstein.
The respective positions of the examiner and the
appellant with regard to the propriety of this rejection
are set forth in the examiner’s answer (Paper No. 15) and
the appellant’s brief (Paper No. 14) and reply brief
(Paper No. 16).
Appellant’s Invention
Appellant’s invention is adequately described at
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Application No. 08/579,552

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pages 2-4 of the brief.
Grouping of Claims
Appellant provides the following grouping of claims:
Group I, whose independent claims are primarily
limited
to providing further fault tolerance to a fault tolerant
storage array, comprising claims 15-36 [sic: 15-26 and
28-36],
Group II, whose independent claims are primarily
limited to providing different access times, comprising
claims 37-47 and 59-73, and
Group III, whose independent claim is primarily
limited to different access times and to the manipulation
of most frequently accessed data blocks and redundancy
blocks, comprising claims 48-58 and 74-80.
Opinion
After consideration of the positions and arguments
presented by both the examiner and the appellant, we have
concluded that the rejection should not be sustained.
Obviousness cannot be established by combining the
teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting
the combination. Under section 103, teachings of
references can be combined only if there is some
suggestion or incentive to do so. In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783, 1784 (Fed. Cir. 1992).
We agree with appellant’s argument to the effect
Appeal No. 1999-0151
Application No. 08/579,552

4
that there is no motivation for combining the teachings
of Brant and Brownstein. The abstract comprising the
Brownstein reference teaches a caching hard disc
subsystem bundled with “Fault Freedom software, which
offers 2 levels of fault tolerance.” This software
“gives fault tolerance capabilities to users of IBM PCs,
XTs, ATs and compatibles.” Accordingly, in Brownstein,
this software is applied to computer systems, and there
is simply no suggestion to combine such software with
significantly different apparatus such as a basic storage
system comprising the failure independent storage units
S1-S5 taught by Brant.
Furthermore, even if there were a suggestion or
motivation to combine the teachings of the references, it
is not established that combining Brownstein’s teaching
with Brant would have resulted in the claimed subject
matter. With respect to independent claims 15 and 26 of
aforementioned Group I, it has not been established that
the combination would result in a second tier of at least
one failure independent data storage unit for providing
further fault tolerance. Brownstein merely refers to a
caching hard disc subsystem which provides two levels of
fault tolerance. The subsystem might be a single hard
disc, which would form but one tier of the claimed two
tier subsystem. As to the independent claims 37, 59 and
67 of Group II, it has not been shown that the
combination would result in failure independent storage
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Application No. 08/579,552

5
units in a redundant array, with one of the units having
substantially differing read and write cycle times.
Lastly, as to the independent claims 48 and 74 of Group
III, it has not been established that the combination
teaches providing different access times in

combination with manipulating most frequently accessed
data blocks and redundancy blocks.

REVERSED

STANLEY M. URYNOWICZ JR. )
Administrative Patent Judge )
)
)
)BOARD OF
PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )

Appeal No. 1999-0151
Application No. 08/579,552

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SU/RWK

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