Ex Parte Liu

Patent Trial and Appeal Board

Jan 27, 2015

12354743 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LEI LIU
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Appeal 2012-010731
Application 12/354,743
Technology Center 2100
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Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
MELISSA A. HAAPALA, Administrative Patent Judges.

HAALAPA, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20.
We affirm-in-part.

Appeal 2012-010731
Application 12/354,743

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CLAIMED INVENTION
Appellant’s invention is directed to mechanisms for facilitating power
instability in a data storage computing environment in advance of a potential
power failure. Spec. ¶ 18.
Claims 1 and 3 are illustrative of the subject matter on appeal:
1. A method for facilitating power instability in a central electronics
complex (CEC) of data storage computing environment in advance of
a potential power failure, comprising:
upon receipt of a first early power off warning (EPOW) signal
indicating power instability, decreasing a first priority of execution of
a first data storage task to be performed pursuant to a new data storage
request, while increasing a second priority of execution of a second
data storage task to destage data in nonvolatile storage (NVS) to disk;
and
upon receipt of a second EPOW signal indicating power failure,
executing a system shutdown procedure.

3. The method of claim 1, further including sending the first EPOW
signal to the CEC in response to a detection of a power instability.

REJECTIONS ON APPEAL
Claims 3 and 16 stand rejected under 35 U.S.C. § 112, fourth
paragraph, for failing to further limit the parent claim. Ans. 10–11.
Claims 1, 3–8, 10–14, and 16–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kitamorn (US
6,345,369 B1; issued Feb. 5, 2002), Kemeny (US 7,062,675 B1; issued Jun.
13, 2006), and Varma, Anujan et al., Destage Algorithms for Disk Arrays
with Nonvolatile Caches, Vol. 47, No. 2 IEEE Transactions on Computers
(Feb. 1998) (hereinafter “Varma”). Ans. 5–9.
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Application 12/354,743

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Claims 2, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kitamorn, Kemeny, Varma, and Amano (US
2006/0133181 A1; published Jun. 22, 2006).

ISSUES
Appellant’s contentions present us with the following issues:
a) Did the Examiner err in rejecting claims 3 and 16 under 35 U.S.C.
§ 112, fourth paragraph, for failing to further limit the parent claim?
b) Did the Examiner err in finding the combined teachings of
Kitamorn and Kemeny teach or suggest upon receipt of an early
power off warning signal (EPOW) indicating power instability, a first
priority of execution of a data storage task is decreased and a second
priority of execution of a second data storage task is increased
(hereinafter the “EPOW power instability” limitation), as recited in
claim 1?
c) Did the Examiner err in finding the combined teachings of
Kitamorn, Kemeny, and Varma teach or suggest a system shutdown
procedure is executed upon receipt of a second EPOW signal
(hereinafter the EPOW shutdown limitation) as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellant’s contentions.
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Application 12/354,743

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35 U.S.C. § 112 Rejection
The Examiner finds claims 3 and 16 do not further limit the parent
claim. Ans. 10. The Examiner states all of the limitations of claims 3 and
16 are necessarily present in their independent claims. Ans. 10–11.
Appellant contends claims 3 and 16 further limit their respective
parent claims. Appeal Br. 16–17. In particular, Appellant argues that claim
1 simply states “upon receiving,” but nothing is indicated as to where the
signal is being received (App. Br. 16). Thus, we agree with Appellant, that
claims 3 and 16 limit claim 1 by indicating that the receiving occurs in the
CEC by sending the first EPOW signal to the CEC (App. Br. 16). Simply
stating that a signal must be sent and then received does not inherently imply
that a particular structure, module, or component performs the sending or the
receiving (App. Br. 16-17). We agree.
We note the Examiner correctly states a signal must be sent for it to be
received. However, the Examiner errs by concluding the sending of the
signal must then be an inherent limitation of the parent claim. A method or
computer program that has all of the limitations of parent claims 1 or 14
would fall outside the direct scope of dependent claims 3 or 16 if the
method/program relies on a third-party system to send the signal. Thus,
sending the EPOW signal changes the claim scope and adds an additional
limitation that is not present in the parent claim.
Because claims 3 and 16 further limit their respective parent claims,
Appellant has persuaded us of error in the Examiner’s rejection of these
claims under 35 U.S.C. § 112, fourth paragraph. Accordingly, we reverse
this rejection.
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Application 12/354,743

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35 U.S.C. § 103(a) Rejection - Claim 1
Appellant argues Kitamorn does not disclose an EPOW signal
indicating power instability. Appeal Br. 13–14. Appellant additionally
argues the reprioritization of tasks in Kemeney is not done in response to
receipt of an EPOW signal indicating power instability, but only occurs
upon a power failure. Appeal Br. 14–15. Thus, Appellant concludes the
references do not teach or suggest the EPOW power instability limitation1.
Appeal Br. 13–15.
We find Appellant’s contentions unpersuasive. The Examiner finds
the combination of Kitamorn and Kemeny teaches the EPOW power
instability limitation of claim 1. In particular, the Examiner finds Kitamorn
discloses an EPOW signal indicting power instability. Ans. 5, 11–12. The
portions of Kitamorn cited by the Examiner disclose an action code (2) is
generated for a “non-critical power problem” and an action code (5) is
generated for the situation in which “the system may lose power”
Kitamorn, Fig. 5. We agree with the Examiner this clearly teaches an
EPOW signal indicating power instability.
We further agree with the Examiner’s findings and conclusions that
Kemeney teaches reprioritization actions that occur when power is unstable.
The Examiner finds Kemeny discloses upon detection of a power instability,
the priority of execution of a data storage task is decreased and the priority
of execution of a second data storage task is increased. Ans. 13–14. Thus,

1 In support of its contentions, Appellant presents several arguments related
to the purpose of the invention and argues elements that do not appear in the
claims. See Appeal Br. 10–13. We do not consider these arguments, but
limit our analysis to the limitations in the claims.

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the actions taught by Kemeny are performed in response to an indication of
an impending failure. See Kemeny col. 1, ll. 52–55, col. 2, ll. 31–36, col. 4,
ll. 45–54. As noted by the Examiner, Kemeny discloses impending failures
often fail to materialize, for example if line power fails momentarily and
then recovers. Ans. 13 (citing Kemeny col. 6, ll. 6–9; col. 2, ll. 37–45). We
adopt the Examiner’s position that this is a situation in which the power is
unstable and agree that Kemeny teaches reprioritization of tasks performed
upon receipt of a signal indicating power instability. Accordingly, we
determine the combination of Kemeny and Kitamorn teaches the disputed
EPOW power instability limitation.
Appellant presents additional contentions that the combined teachings
of Kimamorn, Kemeny, and Varma fail to teach or suggest the EPOW
shutdown limitation of claim 1. Appeal Br. 13–14. Appellant argues
Kitamorn requires conditions and thresholds to be present prior to execution
of the EPOW. Appeal Br. 14. Appellant states Kitamorn does not send a
second EPOW signal indicating power failure without previous environment
conditions and/or thresholds as claimed in the present invention. Id.
The Examiner finds the EPOW shutdown limitation is taught by
Kitamorn. Ans. 5 (citing Kitamorn col. 5, ll. 61–63; Fig. 5). The Examiner
notes the features upon which Appellant relies are not recited in the rejected
claim. Ans. 5. We agree with the Examiner’s findings and conclusions. In
particular, Fig. 5 discloses an action code (7) is generated for the situation in
which “the system will lose power.” Kitamorn, Fig. 5. We further agree
Appellant’s arguments rely upon features not recited in the claim. Claim 1
does not contain any limitations that require the second EPOW signal be
sent without previous environmental conditions and/or thresholds.
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Additionally, although Kitamorn does teach the second EPOW signal can be
sent after a first EPOW signal, the claim language of claim 1 does not
require the second EPOW signal to be sent after the first EPOW signal.
Thus, we agree with the Examiner’s findings that Kitamorn teaches receipt
of an EPOW signal indicating power failure, and we conclude the
combination of Kitamorn, Kemeny, and Varma teaches or suggests the
EPOW shutdown limitation of claim 1. We accordingly sustain the
Examiner’s rejection of claim 1.
35 U.S.C. § 103(a) Rejections - Claims 2-20
Appellant’s contentions that the rejection of independent claims 8 and
14 is improper rely on the same arguments made for claim 1. Appeal Br. 9,
15. Accordingly, we sustain the rejection of claims 8 and 14.
Claims 2–7, 9–13, and 15–20 depend directly or indirectly from one
of claims 1, 8, and 14. Appellant did not present any additional arguments
regarding the limitations of these claims. Accordingly, we sustain the
Examiner’s rejections of these claims under 35 U.S.C. § 103(a).

CONCLUSIONS
a) The Examiner erred in rejecting claims 3 and 16 under 35 U.S.C.
§ 112, fourth paragraph, for failing to further limit the parent claim.
b) The Examiner did not err in finding that the combined teachings of
Kitamorn and Kemeny teach or suggest the EPOW power instability
limitation as recited in claim 1.
c) The Examiner did not err in finding that the combined teachings of
Kitamorn, Kemeny, and Varma teach or suggest the EPOW shutdown
limitation as recited in claim 1.
Appeal 2012-010731
Application 12/354,743

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DECISION
The Examiner’s rejection of claims 3 and 16 under 35 U.S.C. § 112,
fourth paragraph, is reversed.
The Examiner’s rejections of claims 1–20 under 35 U.S.C. 103(a) are
affirmed.

AFFIRMED-IN-PART

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