Ex Parte Jibbe et al

Board of Patent Appeals and Interferences

Nov 13, 2009

10185379 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MAHMOUD KHALED JIBBE, HENG PO CHAN, KENNETH
FUGATE, MIRIAM SAVAGE, and CHRISTINA STOUT
__________

Appeal 2009-001421
Application 10/185,379
Technology Center 2400
__________

Decided: November 13, 2009
__________

Before JEAN R. HOMERE, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-39. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention is directed to an apparatus and method for
identifying faults in a complex storage network configuration by capturing
storage area network (SAN) configuration information and comparing it to
certified configuration information. (Spec. 2, ll. 8-11).

Claim 1 is illustrative:
1. A method of verifying network component
configurations, comprising:

obtaining configuration information for at least one
component of a network;

obtaining at least one certified configuration parameter
for the at least one component;

comparing the configuration information to the at least
one certified configuration parameter;

identifying a fault resulting from a variance between the
configuration information for the at least one component and
the at least one certified configuration parameter; [argued
Feature 2] and

determining whether the fault can be corrected by
correcting the configuration information. [argued Feature 1]

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PRIOR ART
The Examiner relies upon the following references as evidence:
Hamilton US 6,834,299 Dec. 21, 2004
Carlson US 2003/0135609 Jul. 17, 2003

THE REJECTION
The Examiner rejected claims 1-39 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hamilton and Carlson.

APPELLANTS’ CONTENTIONS
Appellants contend that the presently claimed invention was
conceived before the effective date of Carlson and that Appellants were
diligent from a date before the effective date of Carlson until the date of
constructive reduction to practice of the present invention. (App. Br. 10-11).
Regarding both Features 1 and 2 (claim 1), Appellants contend that
Carlson is only concerned with determining values for service level
parameters and whether the service level parameter values satisfy
predetermined service level thresholds and thus cannot be concerned with or
equivalent to the configuration information of claim 1. (App. Br. 17-21).
Appellants also contend that the cited references fail to teach or
suggest the limitations of claim 2, i.e., “determining whether the fault can
be corrected by overwriting the configuration information with the at least
one certified configuration parameter.” (Dependent claim 2; see also App.
Br. 23-24).
Appellants further contend there is no basis in the prior art references
for combining the references. (App. Br. 21-22)
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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown the Examiner erred in finding that Appellants
have not established a showing of facts of sufficient character and weight to
establish conception of the invention prior to the effective date of Carlson
(January 16, 2002) coupled with due diligence until a constructive reduction
to practice, i.e., the filing of the instant application on June 28, 2002?
2. Have Appellants shown the Examiner erred in combining Hamilton
and Carlson?
3. Have Appellants shown the Examiner erred in finding that the cited
references teach or suggest the limitation of “determining whether the fault
can be corrected by correcting the configuration information?” (See claim 1,
Feature 1).
4. Have Appellants shown the Examiner erred in finding that the cited
references teach or suggest the limitation of “identifying a fault resulting
from a variance between the configuration information for the at least one
component and the at least one certified configuration parameter?” (See
claim 1, Feature 2).
5. Have Appellants shown the Examiner erred in determining that the
cited references teach or suggest the limitation of “determining whether the
fault can be corrected by overwriting the configuration information with the
at least one certified configuration parameter?” (See claim 2)
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PRINCIPLES OF LAW
Declaration under 37 C.F.R § 1.131
§ 1.131 Affidavit or declaration of prior invention:
(a) When any claim of an application … is rejected, the
inventor of the subject matter of the rejected claim … may
submit an appropriate … declaration to establish invention of
the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is
based….
(b) The showing of facts shall be such, in character and weight,
as to establish [1] reduction to practice prior to the effective
date of the reference, or [2] conception of the invention prior to
the effective date of the reference coupled with due diligence
from prior to said date to a subsequent [actual] reduction to
practice or to the filing of the application [i.e., a constructive
reduction to practice]. Original exhibits of drawings or records,
or photocopies thereof, must accompany and form part of the
… declaration or their absence must be satisfactorily explained.

A declaration submitted pursuant to Rule 131 is evaluated on its
merits by considering the evidence relied upon in light of the arguments
made explaining why the evidence is sufficient. The Board has broad
discretion as to the weight to be given the evidence. In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co., 265
F.3d 1354, 1366 (Fed. Cir. 2001).
In particular, “[t]he affidavit or declaration and exhibits must clearly
explain which facts or data applicant is relying on to show completion of his
or her invention prior to the particular date.” MPEP 715.07 (I). Vague and
general statements in broad terms about what the exhibits describe along
with a general assertion that the exhibits describe a reduction to practice
“amounts essentially to mere pleading, unsupported by proof or a showing
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of facts” and, thus, does not satisfy the requirements of 37 C.F.R. 1.131(b).
In re Borkowski, 505 F.2d 713, 718 (CCPA 1974). Applicant must give a
clear explanation of the exhibits pointing out exactly what facts are
established and relied on by applicant. Id. 505 F.2d at 718-19. See also In
re Harry, 333 F.2d 920, 922 (CCPA 1964) (Affidavit “asserts that facts exist
but does not tell what they are or when they occurred.”).
“Under 37 C.F.R. § 1.131, the critical period in which diligence must
be shown begins just prior to the effective date of the reference or activity
and ends with the date of a reduction to practice, either actual or constructive
(i.e., filing a United States patent application).” MPEP § 715.07(a) (8th ed.
2008).

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
“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.

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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).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the Examiner’s proffered prima facie case.

GROUPING OF CLAIMS
Based upon Appellants’ arguments in the Briefs, we will decide this
appeal based upon representative claims 1 and 2. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

Appellants’ Declarations under 37 C.F.R. § 1.131
1. Appellants submit separate Declarations from inventors, Chan,
Fugate, Jibbe, Savage, and Stout (Inventor’s Declarations). The
aforementioned Declarations state that “the invention of the above-identified
application was conceived on a date prior to January 16, 2002.” More
particularly, the invention of the above-identified application was conceived
on a date during 2001, as shown at Item 6, Page 1, of Attachment A filed
herewith.” (See Decl. of Heng Po Chen)

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2. Appellants submit a Declaration from Peter Scott (Scott Declaration),
who is employed by the LSI Logic Corp. Intellectual Property Department.
The Scott Declaration recognizes Attachment A as an Invention Disclosure
which was submitted on March 6, 2002. (See Decl. of Peter Scott)

3. Appellants submit a Declaration of Dell Whitten (Whitten
Declaration), who is an employee of the law firm that filed the present
application. The Whitten Declaration states that the present application is
“closely related to the Invention Disclosure of Attachment A.” (See Whitten
Decl. item 5).
Hamilton
4. Hamilton discloses comparing operating system data for the server to
operating system data of the storage area network (SAN). (Col. 8, ll. 55-62)

5. Hamilton discloses maintaining configuration information
(configuration files) in a storage area network (See Abst. ll. 1-5).

6. Hamilton teaches that after a determination of the particular type of
operating system, a configuration/reconfiguration of the server is performed.
(Col. 6, ll. 58-60).
Carlson
7. Carlson discloses making a determination of values for the service
level parameters and whether the service level parameter values satisfy
predetermined service level thresholds. A determination is made of a
modification to one or more resource deployments or configurations if the
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value for the service level parameter for the resource does not satisfy the
predetermined service level thresholds. (Para. [0018]).

8. Carlson discloses determining the modification of the at least one
resource deployment to determine at least one resource that contributes to
the failure of the service level parameter values to satisfy the threshold.
Carlson further discloses that a determination is made whether any
additional instances of the determined resource are available (“determining
whether the fault can be corrected”) and that the additional instance is
allocated to the system. (Para. [0021]).

ANALYSIS
ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that Appellants have not established a showing of
facts of sufficient character and weight to establish conception of the
invention prior to the effective date of Carlson (Jan. 16, 2002) coupled with
due diligence until a constructive reduction to practice, i.e., the filing of the
instant application on June 28, 2002.
As noted above, Appellants have submitted an Invention Disclosure
Form (IDF),1 which is purportedly “closely related” to the present
application. (FF 3). The IDF is stamped as received on March 6, 2002. The
asserted date for conception of the invention, according to the IDF is
“2001.” (See FF 1).
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More particularly, Appellants assert that the time period from a date
prior to January 16, 2002 (date of conception) until March 6, 2002 (date of
the IDF) is a typical reasonable and necessary time period for a group of co-
inventors to prepare, review, and agree upon an Invention Disclosure of the
type shown by Attachment A. (emphasis added) (See FF 2).
However, based upon our review of the record, we agree with the
Examiner’s finding that Appellants have not provided sufficient evidence to
establish due diligence from a date prior to Jan. 16, 2002 until the date of
constructive reduction to practice corresponding to the instant application
effective filing date of June 28, 2002. (See Ans. 15-17).
In particular, we find Appellants’ statement is insufficient because of
a lack of specificity in Appellants’ Declaration that merely describes the
aforementioned IDF as being “closely related” to the present application (FF
3). Appellants must provide evidence to account for the entire period during
which diligence is required for the present invention (i.e., prior to January
16, 2002 until the instant application effective filing date of June 28, 2002).
Therefore, we find the record before us supports the Examiner’s finding that
Appellants have not provided sufficient evidence to satisfy the requirements
of 37 C.F.R. 1.131(b). See In re Borkowski, 505 F.2d 713, 718 (CCPA
1974).
Accordingly, we find that Appellants have not shown the Examiner
erred in determining that Appellants have not established a showing of facts
of sufficient character and weight to establish conception prior to Jan. 16,
2002 coupled with due diligence until the date of constructive reduction to

1 See Attachment A to the principal Brief.
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practice corresponding to the instant application effective filing date of June
28, 2002.
ISSUE 2
We decide the threshold question as to whether Appellants have
shown the Examiner erred in combining Hamilton and Carlson. Appellants
contend that there is no basis or motivation in the prior art for making the
combination. (App. Br. 23-25). The Examiner’s motivation for combining
the references is set forth on page 7 of the Answer:
It would thus be obvious to one of ordinary skill in the art at the
time of the invention to combine and/or modify the invention
disclosed by Hamilton with the features of identifying a fault
resulting from a variance between the configuration
information for the at least one component and the at least one
certified configuration parameter and determining whether the
fault can be corrected by correcting the configuration
information, as disclosed by Carlson, for the motivation of
automatically configuring components or elements of a storage
area network and to reduce or eliminate manual (administrator)
managing and configuring of resource allocation in a
network such as a SAN [0005]- [0017].
(Ans. 7)
While Appellants contend that they “must have a citation to a prior art
reference that teaches the reason for the combination” (App. Br. 24), the
Supreme Court has determined that the conclusion of obviousness can be
based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art, and an obviousness “analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
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ordinary skill in the art would employ.” KSR, 550 U.S. at 418. See also
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results,” KSR 550
U.S. at 401.
This reasoning is applicable here. Thus, it is our view that the
Examiner’s proffered motivation includes knowledge which was within the
level of ordinary skill in the art at the time the invention was made and was
not gleaned from Appellants’ disclosure.
Moreover, we find the Examiner’s proffered modification of Hamilton
by the teachings of Carlson would have been in accordance with what the
Supreme Court describes as “common sense.”
Common sense teaches, however that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.

(KSR. 550 U.S. at 420).

We also do not agree with Appellants’ argument that the teachings of
Carlson “direct away” (i.e., “teach away”) from claim 1 (See Reply Br. 5,
¶2). We agree with the Examiner’s arguments on pages 26 and 27 of the
Answer. Regarding Appellants’ point that Carlson emphasizes repeatedly
that every error or fault will be corrected (Reply Br. 4), we conclude that the
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broad language of claim 1 does not preclude a teaching that all of the faults
are corrected.
For at least the aforementioned reasons, we find Appellants’
arguments directed to the combinability of Hamilton and Carlson to be
unavailing.
ISSUE 3
We decide the question of whether Appellants have shown the
Examiner erred in finding that the cited references teach or suggest the
limitation of “determining whether the fault can be corrected by correcting
the configuration information.” (Feature 1).
The Examiner relies on Carlson as disclosing “identifying a fault
resulting from a variance between the configuration information and at least
one certified configuration parameter; and determining whether the fault can
be corrected by correcting the configuration information.” (Claim 1; see also
Ans. 5-6). However, Appellants aver that Carlson is only concerned with
determining values for service level parameters and whether the service
level parameter values satisfy predetermined service level thresholds, and
thus, cannot be concerned with or equivalent to the configuration
information of claim 1. (See Appellants’ Contentions).
We note that the Examiner relied on Hamilton to disclose a teaching
of configuration information. (FF 5 and Ans. 6). We find that Carlson
suggests “identifying a fault” in that a resource deployment is analyzed to
determine at least one resource that contributes to the failure (fault) of the
service level parameter. (FF 8) Further, Carlson states that a determination
is made whether any additional instances of the determined resource are
available (“determining whether the fault can be corrected”) and that the
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additional instance is allocated to the system. (FF 8). Therefore, it is our
view that the “fault” is identified and corrected by correcting the service
level parameter.
Accordingly, Appellants have not shown the Examiner erred in
finding that the cited references teach or suggest the limitation of
“determining whether the fault can be corrected by correcting the
configuration information.” (Feature 1).

ISSUE 4
We decide the question as to whether Appellants have shown the
Examiner erred in finding that the cited references teach or suggest the
limitation of “identifying a fault resulting from a variance between the
configuration information for the at least one component and the at least one
certified configuration parameter.” (Feature 2). In particular, Appellants
contend that Carlson is directed to service level parameters and not
configuration information. (App. Br. 23).
Based upon our review of the record, we agree with and adopt the
Examiner’s findings with respect to this limitation. (See Ans. 19-20).
Furthermore, we also find that Carlson teaches or suggests a “fault” when
the value for the service level parameter for the resource does not satisfy the
predetermined service level thresholds. (See Abst. ll. 5-10). Therefore, we
do not find Appellants’ arguments that attack the Carlson reference in
isolation to be persuasive.
For at least the aforementioned reasons (ISSUES 1-4), we find
Appellants have not shown the Examiner erred in rejecting representative
claim 1.
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ISSUE 5
We decide the question as to whether the Examiner erred in
determining that the cited references teach the limitation of “determining
whether the fault can be corrected by overwriting the configuration
information with the at least one certified configuration parameter.”
(Dependent claim 2).
We find Hamilton teaches that a configuration/reconfiguration of the
server is performed after determining the particular type of operating system.
(FF 6). Thus, we find that Hamilton’s “reconfiguration” at least suggests the
claimed “overwriting.” Because we find the weight of the evidence supports
the Examiner’s position, we find Appellants’ arguments unavailing
regarding the limitations of claim 2.

CONCLUSION
Based on the findings of facts and analysis above:
Appellants’ have not shown the Examiner erred in finding that
Appellants’ Declarations under 37 C.F.R. § 1.131(b) are insufficient to
antedate and remove the Carlson reference.
Appellants have not shown the Examiner erred in combining
Hamilton and Carlson.
Appellants have not shown the Examiner erred in finding that the
cited references teach or suggest the limitation of “determining whether the
fault can be corrected by correcting the configuration information.”
Appellants have not shown the Examiner erred in finding that the
cited references teach or suggest the limitation of “identifying a fault
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resulting from a variance between the configuration information for the at
least one component and the at least one certified configuration parameter.”
Appellants have not shown the Examiner erred in determining that the
cited references teach or suggest the limitation of “determining whether the
fault can be corrected by overwriting the configuration information with the
at least one certified configuration parameter.”

DECISION
We affirm the Examiner’s decision rejecting claims 1-39 under 35
U.S.C. § 103(a).
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).

AFFIRMED

peb

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DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS, TX 75380