Ex Parte Hubis

Board of Patent Appeals and Interferences

Mar 16, 2011

10714031 (B.P.A.I. Mar. 16, 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.
10/714,031 11/14/2003 Walter Hubis 03-1651 2851
84300 7590 03/17/2011
Duft Bornsen & Fishman LLP
1526 Spruce Street
Suite 302
Boulder County, CO 80302
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
03/17/2011 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 WALTER HUBIS
____________

Appeal 2009-006787
Application 10/714,0311
Technology Center 2400
____________

Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and
DEBRA K. STEPHENS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed November 14, 2003. The real party in interest is LSI
Corporation.
2 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 2009-006787
Application 10/714,031

2

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7, 10, 11, 13, 15, 17, 18, 21, and 22, which
are all the claims remaining in the application, as claims 8, 9, 12, 14, 16, 19,
and 20 are cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
The present invention “relates to a network router with caching
capabilities for local processing of iSCSI block level requests to improve
storage subsystem performance in storage networks.” (Spec., 1, ll. 10-12.)
Claim 1 is illustrative:
1. A storage network appliance comprising:
a TCP/IP router for routing block level storage requests
through a TCP/IP network communication medium from a first device
coupled to the router to a second device coupled to the router; and
a cache memory coupled to the router for caching storage
data blocks accessed by the block level storage requests,
wherein the cache memory is used by the router to store
data blocks exchanged between the first and second devices through
the router, and
wherein the cache memory is used to return data blocks
from the cache memory to the first device in response to a received
block level storage request directed from the first device to read data
blocks from the second device without forwarding the storage request
to the second device.

Appellant appeals the following rejections:
1. Claims 1-6, 11, 15, and 18 under 35 U.S.C. § 103(a) as unpatentable
Appeal 2009-006787
Application 10/714,031

3
over Mullendore (US Patent Pub. 2003/0185154 A1, Oct. 2, 2003) in view
of what was well known in the art; and
2. Claims 7, 10, 13, 17, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Mullendore in view of Liu (US Patent Pub. 2004/0117441
A1, Jun. 17, 2004).

FACTUAL FINDINGS
1. Mullendore discloses a Fast Write feature with Fast Write enabled
wherein:
[A]s shown in FIG. 7, the near-end switch 250 responds to the
SCSI Write command received from initiator 235 with a Ready-
To-Transfer message on behalf of the target 245. Instead of
requesting 1KB block of data, switch 250 requests that the
entire 1 MB be transferred. Since there is not necessarily 1 MB
of available buffer on the far-end target 245, the far-end switch
240 stores or caches the 1 MB of data. The Write command is
forwarded to the target 245 where the target requests data, in
this example 1 KB of data, be sent by issuing a Ready-To-
Transfer message for 1KB. The far-end switch 240, now
storing the 1 MB of data, responds with 1 KB of data.
(¶ [0072].)
2. In Mullendore, “the Congestion Manager, rate limiter and Fast
Write Module of the present invention are implemented in network switch
devices. However, it should be understood that Congestion Manager and
Fast Modules as described herein can be implemented in any of a variety of
other network devices, such as routers.” (¶ [0077].)

Appeal 2009-006787
Application 10/714,031

4

ANALYSIS
Claims 1-7, 10, 11, 13, 15, 17, 18, 21, and 22

Appellant argues claims 1-7, 10, 11, 13, 15, 17, 18, 21, and 22 as a
group (App. Br. 8-10). For claims 2-7, 10, 11, 13, 15, 17, 18, 21, and 22,
Appellant repeats the same argument made for claim 1. We will, therefore,
treat claims 2-7, 10, 11, 13, 15, 17, 18, 21, and 22 as standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991).

Issue: Did the Examiner err in finding that Mullendore discloses a
cache memory coupled to the router whereby the cache memory is used to
return data blocks from the cache memory to the first device . . . without
forwarding the storage request to the second device, as set forth in claim 1?

Appellant contends that “such caching is not known in the art of
network appliances and in particular iSCSI routers. Rather, a router’s
intended purpose is to pass an exchange from a source device to a
destination device.” (App. Br. 8.) Appellant further contends that “there is
no art provided by the Examiner or any suggestion in the art to apply cache
memory management techniques and structures within a network appliance
router (a TCP/IP storage router).” (App. Br. 10.)

In response, the Examiner found that Mullendore’s paragraph [0072]
and Fig. 7 discloses a cache memory as set forth in the claimed invention.
Appeal 2009-006787
Application 10/714,031

5
The Examiner further found that “it would have been well-known in the
networking art that if a request for data is satisfied by a cache then there
would be no need to forward said request for data.” (see Ans. 4-5) We
agree with the Examiner.
We further add that although Appellant argues that Mullendore fails to
disclose a router that performs cache memory management techniques,
representative claim 1 is written much broader in that it does not require that
the router itself includes the cache memory. Instead, claim 1 merely
requires that a cache memory is coupled to the TCP/IP router. The claims
measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d
1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution before the
USPTO, claims are to be given their broadest reasonable interpretation, and
the scope of a claim cannot be narrowed by reading disclosed limitations
into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969).
Here, the claims merely require a router being coupled to a cache
memory wherein the cache memory is used by the router. The Examiner
found that Mullendore discloses a Fast Write feature where a “far-end
switch” is used to cache 1 MB of data. In Mullendore, the “target” requests
1 KB of data by issuing a Ready-To-Transfer message. In response to this
request, the far-end switch responds with 1 KB of data. (FF 1.)
In other words, Mullendore’s cache memory (i.e., far-end switch 240)
deliverers the data block from the cache memory to the target without
forwarding the request, i.e., Ready-To-Transfer message, to the second
device (i.e., the initiator). Furthermore, Mullendore discloses that the Fast
Appeal 2009-006787
Application 10/714,031

6
Modules, i.e., far-end switch, could be implemented as routers (FF 2). Thus,
we find that not only was it well-known that cache memory eliminates the
need to forward a request, but also that Mullendore discloses a switch and/or
router that can perform the same functions as the cache memory set forth in
the claimed invention.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Mullendore, and that Liu does not cure the deficiencies of Mullendore, the
Examiner’s 35 U.S.C. § 103(a) rejection of representative independent claim
1, as well as claims 2-7, 10, 11, 13, 15, 17, 18, 21, and 22 not separately
argued by Appellant, is sustained.

DECISION
We affirm the Examiner’s § 103 rejections.
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) (2010).

AFFIRMED

ke

Appeal 2009-006787
Application 10/714,031

7
Duft Bornsen & Fishman LLP
1526 Spruce Street
Suite 302
Boulder County, CO 80302