Ex Parte Krieg et al

Patent Trial and Appeal Board

Mar 25, 2013

10444817 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM R. KRIEG and JEFFREY J. SHAFER
____________________

Appeal 2010-008597
Application 10/444,8171
Technology Center 2400
____________________

Before MARC S. HOFF, ELENI MANTIS MERCADER,
and JEFFREY S. SMITH, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention is a virtual switch for use in fibre channel
applications, such as storage area networks. The virtual switch stores
control-traffic-information associated with a device in a remote autonomous
region of a fabric. The device has a domain ID associated with the

1 The real party in interest is Lucent Technologies, Inc.
Appeal 2010-008597
Application 10/444,817

2
autonomous region in which it is located. A virtual domain ID associated
with the virtual switch is assigned to the device. The virtual domain ID is
provided to other autonomous regions for sharing the device (Spec. 1-2).
Claim 1 is exemplary of the claims on appeal:
1. One or more computer-readable media comprising computer
executable instructions that, when executed, direct a computer to:
store control-traffic-information associated with a device in a remote
autonomous region of a fabric, the device having a domain ID associated
with the autonomous region;
assign a virtual domain ID to the device; and
provide the virtual domain ID to another autonomous region of the
fabric for sharing the device.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Yao US 2003/0084219 A1 May 1, 2003
Kaneda US 2003/0212781 A1 Nov. 13, 2003
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yao in view of Kaneda.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Jan. 8, 2010), the Reply Brief (“Reply Br.,” filed June 7,
2010), and the Examiner’s Answer (“Ans.,” mailed Apr. 5, 2010) for their
respective details.

ISSUES
Appellants argue that the combination of Yao and Kaneda fails to
teach or suggest a virtual domain ID, or providing a virtual domain ID to
another autonomous region of a fabric (App. Br. 3-4). Appellants contend
that Yao teaches a “domain ID” but makes no mention of a separate, virtual
domain ID (App. Br. 4).
Appeal 2010-008597
Application 10/444,817

3
Appellants’ contentions present us with the following issues:
1. Does the combination of Yao and Kaneda teach or fairly suggest
assigning a virtual domain ID to a device in a remote autonomous region?
2. Does the combination of Yao and Kaneda teach or fairly suggest
providing the virtual domain ID to another autonomous region of the fabric?

PRINCIPLES OF LAW
Section 103(a) 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). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”).
Under the doctrine of inherency, if a claimed element is not expressly
disclosed in a prior art reference, the reference nevertheless anticipates the
claim if the missing element is necessarily present in the reference, and it
would be so recognized by skilled artisans. Rosco, Inc. v. Mirror Lite Co.,
304 F.3d 1373, 1380 (Fed. Cir. 2002). To anticipate the claim, the missing
Appeal 2010-008597
Application 10/444,817

4
element must be necessarily present in the prior art—not merely probably or
possibly present. Id.

ANALYSIS
Independent claims 1, 7, and 13 all recite “assign[ing] a virtual
domain ID to the device” and provid[ing] the virtual domain ID to another
autonomous region of the fabric.”
We are persuaded by Appellants’ arguments that the Examiner erred.
The Examiner’s statement of rejection (Ans. 3, 6, 9) does not identify any
part of Yao corresponding to a “virtual domain ID.” In response to
Appellants’ arguments, the Examiner asserts that a virtual domain ID would
be inherent to Kaneda’s “virtual-FC switch,” because Appellants’
Specification discloses that a virtual domain ID is associated with a virtual
switch (Ans. 10). We do not agree that a virtual domain ID is necessarily
present in Kaneda. Further, we agree with Appellants’ argument that
Kaneda’s switch detection technique, in which IP switches are made to
appear virtually as FC switches (¶ [0059]), does not pertain to providing a
virtual domain ID to an autonomous region of a fabric for sharing a device
(App. Br. 5).
We conclude that the combination of Yao and Kaneda does not teach
or fairly suggest assigning a virtual domain ID to a device in a remote
autonomous region of a fabric, or providing that virtual domain ID to
another autonomous region of the fabric for sharing the device. We will not
sustain the Examiner’s § 103 rejection of claims 1-18.

Appeal 2010-008597
Application 10/444,817

5
CONCLUSIONS
1. The combination of Yao and Kaneda does not teach or fairly
suggest assigning a virtual domain ID to a device in a remote autonomous
region.
2. The combination of Yao and Kaneda does not teach or fairly
suggest providing the virtual domain ID to another autonomous region of the
fabric.

ORDER
The Examiner’s rejection of claims 1-18 is reversed.

REVERSED

babc