Ex Parte Grasso et al

Patent Trial and Appeal Board

Jun 7, 2013

11762201 (P.T.A.B. Jun. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LAWRENCE JOSEPH GRASSO, BARNEY LOUIS
HALLMAN, and BRUCE JAMES WILKIE
____________________

Appeal 2010-009955
Application 11/762,201
Technology Center 2100
____________________

Before: DEBRA K. STEPHENS, DAVID M. KOHUT, and JOHNNY A.
KUMAR, Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-13, 15-26, 28, 29, and 31. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2, 14, 27, 30, and 32 have been canceled.
We REVERSE and enter a New Grounds of Rejection.

Introduction
According to Appellants, the invention is directed to a data processing
assembly that includes one or more hosts connected to one or more I/O
Expansion Drawers (Abstract).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An expansion apparatus suitable for use with a first host
system and a second host system, comprising:

a chassis;

a first expansion bus port for receiving an expansion bus
connection from the first host;

a first expansion card within the chassis, wherein the first
expansion card includes multiple adapter slots;

a second expansion bus port for receiving an expansion
bus connection from the second host;

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a first bridge device providing an interface between the
first expansion bus and the adapter slots of the first
expansion card;

a second bridge device providing an interface between
the second expansion bus and the adapter slots of the
second expansion card;

a storage resource within the chassis; and

a controller configured to monitor environmental settings
and conditions within the chassis, the controller
configured to store an assignment state of the first
expansion card in the storage resource and provide the
assignment state to the first host, the assignment state
indicating whether the first host may configure the first
expansion card.

REFERENCES
Behrbaum
Ellison
Bouchier
US 6,462,745
US 6,557,087
US 6,725,317
Oct. 8, 2002
Apr. 29, 2003
Apr. 20, 2004

Hewlett-Packard, “AlphaServer GS80, GS160, and GS320 Systems
Technical Summary,” 2002 (hereinafter, “HP1A”).
Hewlett-Packard, DA- 11507-US Version, March 4, 2003
(hereinafter, “HP1B”).
Hewlett-Packard, “TruCluster Software Products, Technical Update
for TruCluster Software Products Version 1.6 with Tru64 UNIX Version
4.0G and AlphaServer GS160 Hard Partitions,” June 2000 (hereinafter,
“HP2”).
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Hewlett-Packard, “AlphaServer Management Station, Adding a GS80,
GS160, or GS320 to an AMS Environment,” June 2004 (hereinafter,
“HP3”).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1 and 3-10 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over HP1, Behrbaum, Ellison, and Bouchier (Ans. 4).1,2
(2) Claims 11-13, 15-26, 28, 29, and 31 stand rejected under 35
U.S.C §103(a) as being unpatentable over HP1, Behrbaum, Ellison,
Bouchier, and HP2 (Ans. 9).

ISSUE 1
35 U.S.C. § 103(a): claims 1 and 3-10
Appellants assert their invention is not obvious over HP1, Behrbaum,
Ellison, and Bouchier because the combination does not teach “a controller
configured to monitor environmental settings and conditions within the
chassis, the controller configured to store an assignment state of the first
expansion card in the storage resource and provide the assignment state to
the first host, the assignment state indicating whether the first host may

1 We note Appellants’ refer to claims 1-10 as being rejected in various parts
of the Appeal Brief and claims 1 and 3-10 in others (see e.g., App. Br. 2,
STATUS OF CLAIMS; App. Br. 6, GROUNDS OF REJECTION; and App.
Br. 7, ARGUMENT). We consider the inclusion of cancelled claim 2 to be
an inadvertent error and thus, do not consider claim 2.
2 Since we are unclear as to whether HP1A or HP1B is used in rejecting the
claims, we refer to “HP1” to address either reference.

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configure the first expansion card” (App. Br. 8-12). Specifically, Appellants
contend Bouchier teaches a service processor that communicates with
components within a complex of components and manages a complex
profile (App. Br. 9). Further, Appellants argue Bouchier teaches an interface
to component firmware that allows the firmware to retrieve and modify the
complex profile (App. Br. 9-10). According to Appellants, Bouchier defines
“complex profile,” and Bouchier’s service processor is configured to
manage a complex profile; however, Bouchier’s complex profile does not
include an assignment state, i.e., an indication as to whether a first host may
configure a first expansion card (App. Br. 10). Therefore, Appellants assert,
Bouchier does not teach the disputed limitation and the other references do
not cure the deficiencies of Bouchier (App. Br. 10-12).

Issue 1: Has the Examiner erred in finding the combination of HP1,
Behrbaum, Ellison, and Bouchier teaches or suggests “a controller
configured to monitor environmental settings and conditions within the
chassis, the controller configured to store an assignment state of the first
expansion card in the storage resource and provide the assignment state to
the first host, the assignment state indicating whether the first host may
configure the first expansion card” as recited in claim 1?

ANALYSIS
We pro forma reverse the Examiner and enter a new ground of
rejection as set forth below. We reverse the Examiner because the Examiner
has not set forth a prima facie case for the rejection. Specifically, the
Examiner seems to indicate the HP1A reference is referred to as “HP” in the
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Answer (Ans. 3, §Evidence Relied Upon). However, in the Grounds of
Rejection to be reviewed on Appeal, the Examiner rejects claims 1 and 3-10
using HP, Behrbaum, Ellison and Bouchier (Final Rej. 2, §3; Ans. 4,
§Grounds of Rejection to be Reviewed on Appeal). The Examiner refers to
“HP” as the HP1B reference (Ans. 4, §Grounds of Rejection to be Reviewed
on Appeal). Moreover, the Examiner’s specific findings regarding HP seem
to refer to HP2 (id.). Thus, the basis for the rejection is unclear as brought
forth by Appellants in their Appeal Brief (App. Br. 10-11). The Examiner
did not respond to the Appellants’ assertion.
Accordingly, we pro forma reverse the Examiner’s rejection of claims
1 and 3-10.

ISSUE 2
35 U.S.C. § 103(a): claims 11-13, 15-26, 28, 29, and 31
We pro forma reverse the Examiner and enter a new ground of
rejection as set forth below. Again, the Examiner’s stated grounds of
rejection is unclear with respect to independent claims 11 and 21 (Final Rej.
7-8 and 11-12; Ans. 9-10 and 12-13). Moreover, the Examiner seems to
reject the claims using references, for example, not articulated as being
relied upon to teach specific limitations in the claims (see e.g. Final Rej. 7-
8).
Therefore, we reverse the rejection of claims 11-13, 15-26, 28, 29, and
31 under 35 U.S.C. § 103(a) for obviousness over HP1, Behrbaum, Ellison,
Bouchier, and HP2.

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REJECTIONS OF CLAIMS 1, 3-13, 15-26, 28, 29, AND 31 UNDER
37 C.F.R. § 41.50(b)

We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
REJECTIONS
(1) Claim 1 is rejected under 35 U.S.C §103(a) as being
unpatentable over HP2, Behrbaum, Ellison, and Bouchier.
(2) Claim 11 is rejected under 35 U.S.C §103(a) as being
unpatentable over HP2, Ellison, and Bouchier.

Claim Rejections under 103(a): Claims 1 and 3-10
We restate the Examiner’s basis for rejection, using the Hewlett-
Packard prior art to which the Examiner’s specific rejection referred.
As to claim 1, HP2 discloses an expansion apparatus
suitable for use with a first host system, comprising:
a first expansion bus port for receiving an expansion bus
connection from the first host( Figure 2-1 illustrates said port,
page 2-2);
a first expansion card within the chassis, wherein the first
expansion card includes multiple adapter slots (Figure 2-3
illustrates said card, page 2-6).
HP2 does not explicitly disclose a bridge device
providing an interface between each adapter slot and the
expansion bus.
However, Behrbaum teaches a bridge device providing
an interface between each adapter slot and the expansion bus as
illustrated in Figure 2. Said figure illustrates bridge device, PCI
controller 166 between host bus 103 and expansion bus 109.
It would have been obvious to one of ordinary skill in the
art at the time of the invention to use the bridge of Behrbaum in
the system of HP to provide access to the system's PCI slots,
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COL. 9, lines 6 - 19. One of ordinary skill in the art would have
been motivated to use the bridge of Behrbaum in the system of
HP2 to provide access to the system's PCI slots, COL. 9, lines 6
- 19. HP2 as modified by Behrbaum does not explicitly disclose
a second host system. However, Ellison teaches of a second
host system as illustrated in Figure 1. Said figure shows a
plurality of hosts such as element 4.
It would have been obvious to one of ordinary skill in the
art at the time of the invention to incorporate the systems of
HP2/Behrbaum with the configuration of Ellison to afford an
efficient network server, COL. 1, lines 37 - 43.
One of ordinary skill in the art would have been
motivated to incorporate the systems of HP2/Behrbaum with
the configuration of Ellison to afford an efficient network
server, COL. 1, lines 37 - 43.
Ellison teaches a second expansion bus port for receiving
an expansion bus connection from the second host (Figure 1
with channel adapter 45); A first bridge device providing an
interface between the first expansion bus and the adapter slots
of the first expansion card (Figure 1, bridge 18); A second
bridge device providing an interface between the second
expansion bus and the adapter slots of the first expansion card
(Figure 1, bridge 20). HP2 as modified by Behrbaum and
Ellison does not explicitly disclose a means for monitoring
settings and conditions within the chassis. However, Bouchier
teaches a means for monitoring settings and conditions within
the chassis as illustrated in Figure 1. Said figure shows a
partitioned computer system comprising into a plurality of cells,
such as cell 0, cell 1, cell 2. Each cell comprises a core I/O
controller, and other elements as illustrated in Figure 2 shows a
service processor that afford monitoring within said chassis,
COL. 6, lines 6 - 24.
It would have been obvious to one of ordinary skill in the
art to use the monitoring system of Bouchier in the system of
HP2/Behrbaum/Ellison to manage its computing system, COL.
2, lines 60 - 67.
One of ordinary skill in the art would have been
motivated to use the monitoring system of Bouchier in the
system of HP2/Behrbaum/Ellison to manage its computing
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system, COL. 2, lines 60 - 67. Bouchier teaches a chassis and a
storage resource within the chassis (Figure 1 illustrates a
chassis; Figure 2 illustrate the service processor 101 comprising
Hub 102 that is electrically coupled to expansion units such as
I/O BP 0, I/O BP 2, etc, COL. 6, lines 6 - 21); and a controller
configured to monitor environmental settings and conditions
within the chassis, the controller configured to store an
assignment state of the first expansion card in the storage,
resource and provide the assignment state to the first host, the
assignment state indicating whether the first host may configure
the first expansion card (Figure 2 illustrates the coupling of
service processor whose functionality is as described as
managing the expansion cells, COL. 6, lines 6 - 52).

To further expedite prosecution and since Appellants referred to the
HP reference for this rejection in arguing Examiner error, we address
Appellants’ arguments regarding Bouchier set forth in the Appeal Brief. We
agree with the Examiner’s findings and adopt them as our own (Ans. 18-21).
We emphasize here, it is our view that an artisan possessing common sense
and creativity at the time of the invention would not have found the
proposed combination “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
As clarified in KSR, the skilled artisan is “a person of ordinary creativity, not
an automaton.” See KSR, 550 U.S. at 421.
Accordingly, we reject claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over HP2, Behrbaum, Ellison, and Bouchier.

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Claim Rejections under 103(a): Claims 11-13, 15-26, 28, 29, and 31
Similarly, we reject claim 11 for obviousness over HP2, Ellison, and
Bouchier on the same specifically articulated grounds as set forth by the
Examiner in the Answer on pages 9-11. However, we note the Examiner has
not used Behrbaum nor HP1A or HP1B in this rejection. Thus, we set forth
the rejection with corrected references for clarity.
HP2 teaches a computer program product comprising
computer executable instructions, stored on a computer
readable medium, for coupling a first host to at least one
expansion apparatus, comprising instructions for:
storing on the expansion apparatus the assignment state
of each of at least one expansion card of the expansion
apparatus (HP2 illustrates in Figure 2-1 modules of a system of
PCI drawers comprising software that provides said connection,
page 2-2, paragraph 3);
enabling the host to retrieve the assignment state from the
expansion apparatus (Said software through system control
manager, page 2-2, paragraph 3); and
enabling the host to determine from the retrieved
assignment state the number of expansion cards in the
expansion apparatus to configure and which of the expansion
cards not to configure (Said software through system control
manager, page 2-2, paragraph 3).
Ellison teaches wherein the assignment state is indicative
of whether the first or second host is authorized to configure the
expansion card (Figure 2, element 46 illustrates said manager,
COL. line 61 - COL. 5, line 5; Figure 2 illustrates remote bus
manager 46 that controls which host provides configuration
commands to expansion card, COL. 4, lines 43 - 60).
Bouchier discloses Computer code means for detecting a
failed expansion buss associated with a selected expansion card;
and computer code means for assigning the selected card to a
functional expansion bus (Failure of service processor or
expansion box is overcome by replacement units within the
system, that implements a failover capability to keep the system
operational, COL. 3, lines 1 - 10).
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It would have been obvious to one of ordinary skill in the
art at the time of the invention to use the software of TruCluster
Software Products in the HP2 system that is one of the
recommended software platform of said hardware as stated on
page 1-1.

To expedite prosecution, we note that we have considered Appellants’
arguments in the Appeal Brief and have determined no error in the
Examiner’s findings and reasoning set forth in the Answer regarding
Bouchier (Ans. 21-22). We agree with the Examiner that Bouchier teaches
or at least suggests detecting failures of components and switching to an
alternate if failure is detected (col. 3, ll. 1-10).
Accordingly, we reject claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over HP2, Ellison, and Bouchier.

Claims 3-10, 12, 13, 15-26, 28, 29, and 31
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. We have made the rejection regarding
independent claim 1 and 11 under 37 C.F.R. § 41.50(b). However, we have
not reviewed the remaining claims 3-10, 12, 13, 15-26, 28, 29, and 31 to the
extent necessary to determine whether these claims are unpatentable over
any of the cited prior art. We leave it to the Examiner to determine the
appropriateness of any further rejections based on these or other references.
Our decision not to enter a new ground of rejection for all claims should not
be considered as an indication regarding the appropriateness of further
rejection or allowance of the non-rejected claims.

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DECISION
The Examiner’s rejection of claims 1 and 3-10 under 35 U.S.C.
§ 103(a) as being unpatentable over HP1, Behrbaum, Ellison, and Bouchier
is reversed.
The Examiner’s rejection of claims 11-13, 15-26, 28, 29, and 31 under
35 U.S.C. § 103(a) as being unpatentable over HP1, Behrbaum, Ellison,
Bouchier and HP2 is reversed.

In a new ground of rejection, we reject claim 1 under 35 U.S.C. § 103
(a), as being unpatentable over HP2, Behrbaum, Ellison, and Bouchier.
In a new ground of rejection, we reject reject claim 11 under 35
U.S.C. § 103(a) as being unpatentable over HP2, Ellison, and Bouchier.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

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