Ex Parte Lerhaupt

Board of Patent Appeals and Interferences

Jun 17, 2008

10286245 (B.P.A.I. Jun. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY S. LERHAUPT
____________________

Appeal 2008-0074
Application 10/286,2451
Technology Center 2100
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Decided: June 17, 2008
____________________

Before: JAMES D. THOMAS, ALLEN R. MACDONALD and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1 to 20 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed November 1, 2002. The real party in interest is Dell
Products, L.P.

Appeal 2008-0074
Application 10/286,245

Appellant’s invention relates to a system and method for using and
controlling multiple storage devices in a network, allowing them to maintain
their identities even when the system architecture is modified by the removal
or replacement of some of the storage devices. In the words of the
Appellant:
In accordance with the present invention, a method and system
are provided which substantially reduce the disadvantages and
problems associated with previous methods and systems for deploying
networked storage devices for access by user nodes having operating
systems that use directory naming conventions for storage devices.
Symbolic links map to a selected user node’s networked storage
device directory using the storage device’s inherent unique identifiers.
A master configuration file is utilized to store symbolic link to storage
device directory mappings, which can be used to configure other user
nodes that interface with the networked storage devices. Thus, a
consistent set of symbolic links are used to access storage devices by
each user node with the consistency maintained by reference to
storage device unique identifiers.

(Spec., p. 3)

Claim 1 is exemplary:
1. A system for deploying networked storage devices, the system
comprising:

plural storage devices, each storage device having a unique identifier;

plural user nodes operable to retrieve information from the storage
devices, each user node having an operating system, each operating system
having a naming convention for the storage devices;

a network interfacing the storage devices and the user nodes; and

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a configuration engine associated with each user node, a selected user
node configuration engine operable to generate a configuration file that
maps the selected user node naming convention for the storage devices with
the storage device unique identifiers by associating a symbolic link with
each storage device, the selected user node configuration engine further
operable to deploy the configuration file to the remaining user nodes for
mapping the storage devices to each user node’s naming convention with the
symbolic links by reference to the unique identifiers.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Johnson US 2002/0161596 A1 Oct. 31, 2002
Lowe WO 95/21416 Aug. 10, 1995
Rejections:
R1: Claims 1 to 20 stand rejected under 35 U.S.C. 103(a) for being
obvious over Johnson in view of Lowe.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We affirm the rejections.

2 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting claims 1 to 20 under 35 U.S.C. § 103(a). The issue turns on
whether the references as a whole teach the claimed limitations, and whether
they can be properly combined.

PRINCIPLES OF LAW
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) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036, (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
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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 ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
127 S. Ct. 1727, 1741, 82 USPQ2d 1385 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejection of Appellant's
claims under 35 U.S.C. § 103(a). The prima facie case is presented on pages
5 to 16 of the Examiner’s Answer.
In opposition, Appellants present two main arguments, which we will
address in reverse order.
Appellant contends that the two references, Johnson and Lowe, are
not properly the basis for a rejection as the Examiner has not presented
motivation to combine them. Lowe is addressed to a file management
system for controlling a plurality of storage nodes, each containing a storage
device 26, 26’ (See Fig. 1). Files are stored on the plurality of storage
devices in the system, as organized in accordance with configuration
directory 24. Johnson teaches a system and method for controlling a
plurality of storage devices (#102-1 to 102-n) under the control of a storage
management system. We thus find that both references are addressing the
same field of endeavor. By the teaching of In re Clay (cited above) and KSR
Int’l v. Teleflex Inc. (cited above), this forms the basis for a well articulated
combination of references. Such an articulation is found, for example, in the
Examiner’s Answer, page 21, lower half. Each of these references
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contributes elements of the claimed invention, and we find the Examiner has
not erred in combining them in a rejection under 35 U.S.C. § 103(a).
With regard to the elements of the claims, Appellant contends that the
combination of Johnson and Lowe fails to teach or suggest:
• A configuration engine on each of plural nodes, as recited by Claim 1
• Mapping of symbolic links to associate a storage device directory
name and a unique identifier as recited by Claim 8; and
• The master and slave configuration engines as recited by Claim 18.
(Br., p. 4, bottom).
We have reviewed each of these contentions in the light of the
Examiner’s explanations in the Examiner’s Answer. We find that Lowe
teaches the claimed configuration engine in relation to the processing that
exists between the configuration directory 24 and the related directories in
the repository storage. (Lowe, p. 6, top). We find that Lowe also teaches the
mapping of symbolic links to associate storage device directories. (Lowe, p.
6, l. 19 to 26). The mapping of symbolic links to unique identifiers is clearly
shown in Johnson, where logical and physical storage devices are mapped
with the unique identifiers of the storage devices, such as the product ID and
serial number (¶ 37, ¶ 41). Lowe presents the teaching of the master – slave
configuration engines, with the symbolic referencing through connection
#40 performing data coupling between configuration directory 24 to
repository directory 26. (Lowe, p. 6, l. 19 to 26). We thus find in the
teachings of the prior art each of the elements claimed, in systems from the
same field of endeavor. “It is common sense that familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
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often will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1732 (2007).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 20.

DECISION
The Examiner's rejection of claims 1 to 20 under 35 U.S.C. § 103(a)
is Affirmed.

AFFIRMED

pgc

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