Ex Parte Knight

Board of Patent Appeals and Interferences

Jul 23, 2009

10305651 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARGARET E. KNIGHT

____________________

Appeal 2009-000154
Application 10/305,651
Technology Center 2100
____________________

Decided: July 23, 20091
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1-30
under 35 U.S.C. § 134(a) (2002). We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
We affirm-in-part and enter a new ground of rejection against claims
1, 21, and 29.

A. INVENTION
According to Appellant, the invention relates to configuring a new
server by automatically detecting a presence of the new server on a network
and determining if existing server configurations are usable for configuring
the new server (Spec. 24).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 29 are exemplary and reproduced below:

1. A computer-implemented method for configuring a new
server with a server configuration, the method comprising:

automatically detecting a presence of the new server
coupled to a network;

automatically determining one or more attributes of the
new server;

automatically determining one or more server
configurations for the new server, wherein said automatically
determining comprises examining one or more existing server
configurations to determine if one or more of the existing server
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configurations are usable for configuring the new server,
wherein said examining is based at least in part on the
determined one or more attributes of the new server;

wherein the determined one or more server
configurations are usable in configuring the new server.

* * *

29. A computer-implemented method for configuring a
storage configuration, the method comprising:

automatically detecting a presence of new storage
coupled to a network;

automatically determining one or more attributes of the
new storage, wherein said one or more attributes include
available storage of the new storage;

automatically determining one or more storage
configurations for the new storage, wherein said automatically
determining comprises examining one or more existing storage
configurations to determine if one or more of the existing
storage configurations are usable for configuring the storage,
wherein said examining is based at least in part on the available
storage of the new storage;

wherein the determined one or more storage
configurations are usable in configuring the new storage.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Behren US 2003/0208581 A1 Nov. 6, 2003
Jibbe US 2004/0006612 A1 Jan. 8, 2004
Baldwin US 2004/0010600 A1 Jan. 15, 2004

Claims 1, 5, 6, 8-17, 19, 21, and 24-30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Behren and Jibbe.
Claims 2-4, 7, 18, 20, 22, and 23 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Behren, Jibbe, and Baldwin.

II. ISSUES
1) Has Appellant shown the Examiner erred in finding that
Behren, in view of Jibbe, teaches or would have suggested “automatically
detecting a presence of the new server coupled to a network,” as recited in
independent claim 1?
2) Has Appellant shown the Examiner erred in finding that
Behren, in view of Jibbe, teaches or would have suggested “examining one
or more existing storage configurations to determine if one or more of the
existing storage configurations are usable for configuring the storage,” as
recited in independent claim 29?

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Behren
1) A Storage Area Network (SAN) includes “devices (e.g., optical
libraries, disks, and tape libraries) and hosts (e.g., servers, workstations, or
personal computers)” interconnected by switches (¶ [0005]).
2) Behren’s system builds a detailed inventory of SAN devices by
combining topology information from switches with device information
from hosts (¶ [0013]).
3) A storage management application communicates with switches
to obtain a list of nodes attached to each such switch (¶ [0013]).
4) The storage management application communicates with
“cooperating hosts” to obtain a list of I/O adapters, known as Host Bus
Adapters (HBAs), attached to each such host (¶¶ [0013] and [0024]).
5) Using the obtained information, the storage management
application recognizes which nodes are switches and HBAs, and thereby
further recognizes, by elimination, the remaining nodes as storage devices (¶
[0013]).
Jibbe
6) Jibbe’s system compares collected configuration information of
a newly-identified SAN storage device against certified configuration
parameters known to be valid for the device (¶ [0048-49]).
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7) Jibbe’s system determines whether variances between the
collected configuration information and certified configuration parameters
are correctable and, if so, corrects the variances to reflect the certified
configuration parameters (¶ [0050-51]).

IV. PRINCIPLES OF LAW
Claim Interpretation
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). The claims must be given the broadest
reasonable interpretation consistent with the specification. In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). However, “limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
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art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.

35 U.S.C. § 101
Whether a claim is drawn to patent-eligible subject matter under §101
is a threshold inquiry, and any claim of an application failing the
requirements of §101 must be rejected even if it meets all of the other legal
requirements of patentability. In re Bilski, 545 F.3d 943, 950 (Fed. Cir.
2008). In Bilski, the Federal Circuit stated that if the effect of allowing of a
claim would be to allow the patentee to pre-empt substantially all uses of a
fundamental principle, the claim is not drawn to patent eligible subject
matter. Id. at 953. The Federal Circuit concluded that “the machine-or-
transformation test, properly applied, is the governing test for determining
patent eligibility of a process under §101,” id. at 956, and explained the test
as follows: “The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies §101 either by showing
that his claim is tied to a particular machine, or by showing that his claim
transforms an article.” Id. at 961.
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V. ANALYSIS
35 U.S.C. § 103(a)
Claims 1-28
With respect to independent claim 1, Appellant argues, “Behren
discloses that the discovered items are storage device nodes, I/O adapter
nodes, or switch nodes in a SAN fabric (see, e.g., paragraph 0043), not
servers. (App. Br. 8; Appellant’s emphasis). Appellant further argues,
“Behrens [sic] does disclose the use of servers 130 (e.g., Fig. 1) in
contradistinction to SAN devices but does not teach or suggest any method
for detecting those servers” (App. Br. 8). However, the Examiner finds that
Behren’s “I/O adapters 135 is [sic] nothing more than a server because
server system 130 may also be communicatively coupled through I/O
adapters 135 [see paragraph 0026 and fig. 1]” (Ex. Ans. 12-13; Board’s
emphasis). Therefore, the first issue we address in this appeal is whether the
combination of Behren and Jibbe teaches or would have suggested
“automatically detecting a presence of the new server coupled to a network”
(claim 1).
Behren’s system builds a detailed inventory of Storage Area Network
(SAN) devices (e.g., optical libraries, disks, and tape libraries) by combining
topology information from switches with device information from hosts
(e.g., servers, workstations, or personal computers) (FF 1-2). More
particularly, Behren’s system obtains a list of nodes from switches (FF 3)
and a list of I/O adapters, known as Host Bus Adapters (HBAs), from
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“cooperating hosts” (FF 4). Using the obtained information, the system
recognizes which nodes are switches and HBAs. Then, it recognizes, by the
process of elimination, that the remaining nodes are storage devices (FF 5).
Contrary to the Examiner’s findings, we find Behren’s system does
not detect the presence of new servers by virtue of recognizing HBAs.
Rather, as noted above, Behren’s system obtains a list of HBAs from
“cooperating hosts,” i.e., the hosts are queried and thus known before the
HBAs are recognized. Since a host is known before an associated HBA is
recognized, an artisan would not have understood Behren’s recognition of an
HBA to be “automatically detecting a presence of the new server coupled to
a network” (claim 1).
Jibbe does not cure the deficiencies of Behren. In particular, Jibbe’s
system merely compares collected configuration information of a newly-
identified SAN storage device against certified configuration parameters
known to be valid for the device (FF 6). If variances between the collected
configuration information and certified configuration parameters are
correctable, the system corrects the variances to reflect the certified
configuration parameters (FF 7).
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting independent claim 1 and claims 5, 6, and 8-15 depending
therefrom under 35 U.S.C. § 103(a) over the combined teachings of Behren
and Jibbe. Independent claims 16, 17, 19, and 21 recite limitations similar to
those of claim 1 discussed above, and are rejected over the same teachings
of Behren and Jibbe (Ex. Ans. 4). Accordingly, for the same reasons
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detailed above in our discussion of claim 1, we conclude that Appellant ahs
shown that the Examiner also erred in rejecting independent claims 16, 17,
19, and 21 and their respective dependent claims 18 and 24-28 under 35
U.S.C. § 103(a) as unpatentable over Behren and Jibbe.
For similar reasons, we conclude that the Examiner erred in rejecting
claims 2-4, 7, 18, 20, 22, and 23 depending directly or indirectly from
independent claim 1, 17, 19, or 21 under 35 U.S.C. § 103(a) as unpatentable
over Behren, Jibbe, and further in view of Baldwin.

Claims 29 and 30
With respect to independent claims 29 and 30, Appellant argues:

Behren discloses the detection of a change in a SAN configuration
such as the addition of a new device (a storage device, 110 adapter, or
switch) or a new path to an existing device. However, Behren does
not teach or suggest examining one or more existing storage
configurations to determine if one or more of the existing storage
configurations are usable for configuring the storage. Jibbe likewise
fails to teach or suggest this feature.

(App. Br. 14; Board’s emphasis).
However, the Examiner finds that “Behren teaches or suggests all the
limitations recited in claim 29 and 30 [sic] under the same rationale set forth
above to claims 1, 5, 6, 8-17, and 19” (Ex. Ans. 14).
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Therefore, the second issue we address in this appeal is whether
Behren and Jibbe teach or would have suggested “examining one or more
existing storage configurations to determine if one or more of the existing
storage configurations are usable for configuring the storage” (claim 29).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Claim 29 simply does not place any limitation on what the term
“storage configurations” is to be, is to represent, or is to mean, except to
recite that “the existing storage configurations are usable for configuring the
storage” (Board’s emphasis). We interpret the emphasized “configuring the
storage” as referring to configuration of the recited “new storage” and,
further, interpret the term “storage configurations” as reading on any
configuration information of a storage device.
Jibbe’s system compares collected configuration information of a
newly-identified storage device against certified configuration parameters
known to be valid for the storage device (FF 6). The system determines
whether variances between the collected configuration information and
certified configuration parameters are correctable and, if so, corrects the
variances to reflect the certified configuration parameters (FF 7).
An ordinarily skilled artisan would have understood Jibbe’s collected
configuration information as teaching or suggesting “storage configurations”
(claim 29) of a newly-identified storage device and understood Jibbe’s
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certified configuration parameters as teaching or suggesting “existing
storage configurations” (claim 29) of the storage device. Since Jibbe’s
system reviews the certified configuration parameters to determine whether
the collected configuration information can be corrected to reflect the
certified configuration parameters, the ordinarily skilled artisan would have
understood Jibbe to teach or at the least suggest “examining one or more
existing storage configurations to determine if one or more of the existing
storage configurations are usable for configuring the storage” (claim 29).
Accordingly, Appellant fails to show that the Examiner erred in
rejecting claim 29 under 35 U.S.C. § 103(a) as unpatentable over Behren and
Jibbe. Appellant does not provide separate arguments for claim 30.
Therefore, Appellant also fails to show that the Examiner erred in rejecting
claim 30 under 35 U.S.C. § 103(a) as unpatentable over Behren and Jibbe.
See 37 C.F.R. 41.37(c)(1)(vii).

VI. NEW GROUND OF REJECTION
35 U.S.C. § 101
As a new ground of rejection, we reject claims 1, 21, and 29 under 35
U.S.C. § 101 because their claimed inventions are directed to non-statutory
subject matter. The issue is whether claims 1, 21, and 29, each of which
claim a “computer-implemented method,” involve a new and useful
“process” and, thus, recite patentable subject matter under 35 U.S.C. § 101.
Giving the claim limitations their broadest reasonable interpretation, we
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conclude that claims 1, 21, and 29 are unpatentable under 35 U.S.C. § 101
because they seek to patent an abstract idea.
In view of In re Bilski, 545 F.3d at 950, we must consider the
statutory sufficiency of the recited claims under 35 U.S.C. § 101. Under
Bilski, “the machine-or-transformation test is the only applicable test and
must be applied, in light of the guidance provided by the Supreme Court and
this court, when evaluating the patent-eligibility of process claims.” Id. at
964.
Claims 1, 21, and 29 fail the first branch of the “machine-or-
transformation test.” The claims do not recite, or require, that the steps of
“detecting a presence of the new server [storage] coupled to a network,”
“determining one or more attributes of the new server,” and “determining
one or more server [storage] configurations for the new server [storage]”
necessarily be performed on or by a particular machine or apparatus. In fact,
the claims do not require that the steps be performed on any machine or
apparatus. Though the preamble of claims 1, 21, and 29 each recite a
“computer-implemented” method, the steps are not recited in terms of
hardware or tangible structural elements. Rather, the steps could be
implemented on a software system, where the steps are implemented solely
as software algorithms. In our view, such unspecified software system is not
sufficient to tie the claimed process to a “particular” machine or apparatus.
Claims 1, 21, and 29 also fail the second branch of the “machine-or-
transformation test.” None of the steps of claims 1, 21, and 29 call for any
transformation of an article to a different state or thing. Bilski at 961.
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As we have noted, instant claims 1, 21 and 29 do not require that the
steps be performed by a machine; as such, there is no electronic
transformation of data. The claims purport a step of “detecting a presence”
of a new server/storage but require no detected output. Similarly, the claims
purport a step of “determining one or more attributes” of the new
server/storage, but require no determined attribute output.
Further, the claims recite a step of “determining one or more server
[storage] configurations.” However, they do not require a determined
configuration output. The final step of the claims recites configurations “are
usable in configuring,” which represents an intended use without a resulting
output. Moreover, even if a determined configuration were output, the
output configuration would not be representative of a particular tangible and
physical article but merely a visual representation of a mathematically-
generated configuration.
For the foregoing reasons, claims 1, 21, and 29 fail to recite statutory
subject matter under 35 U.S.C. § 101. Although we decline to reject every
claim under our discretionary authority under 37 C.F.R. 41.50(b), our
decision does not mean the remaining claims are directed to statutory subject
matter. We leave that determination to the Examiner. See MPEP § 1213.02.

VI. CONCLUSIONS
(1) Appellant has shown that the Examiner erred in finding that
claims 1, 5, 6, 8-17, 19, 21, and 24-28 are unpatentable over the combination
of Behren and Jibbe.
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(2) Appellant has shown that the Examiner erred in finding that
claims 2-4, 7, 18, 20, 22, and 23 are unpatentable over the combination of
Behren, Jibbe, and Baldwin.
(3) Appellant has not shown the Examiner erred in finding that
claims 29 and 30 are unpatentable over the combination of Behren and
Jibbe.
(4) Claims 29 and 30 are not patentable over the prior art of record.
(5) Claims 1, 21, and 29 fail to recite statutory subject matter under
35 U.S.C. § 101.
(6) Claims 1, 21, 29, and 30 are not patentable.

VII. DECISION
We reverse the Examiner’s decision rejecting claims 1-28 under
35 U.S.C. § 103(a). However, we affirm the Examiner’s decision rejecting
claims 29 and 30 under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that “[a] new ground of rejection
… shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, 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
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rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. …
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. …
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-IN-PART

PEB

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