Ex Parte Minagawa

Board of Patent Appeals and Interferences

Jul 17, 2006

10098417 (B.P.A.I. Jul. 17, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte KUNIO MINAGAWA

Appeal No. 2006-1359
Application No. 10/098,417
_______________

ON BRIEF
_______________

Before KRASS, JERRY SMITH and MACDONALD, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s rejection of
claims 1, 2, 4, and 7-11.
The disclosed invention pertains to a data management mechanism for converting and
distributing data.
Representative claim 1 is reproduced as follows:
1. A data management mechanism for managing and converting/distributing data, where
said data management mechanism is incorporated into a network-attached storage system for
implementing centered storage management through a network between the data
management mechanism and at least one system running application programs, and said data
management mechanism is mounted in a file system layer of the network-attached storage
system, said data management mechanism comprising:

• an attribute management unit managing data attributes, including a data conversion
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policy;

• a trigger detection unit detecting timing for data conversion and/or distribution as a
trigger; and

• a data conversion/distribution unit converting and/or distributing data depending on a
data attribute managed by the attribute management unit when the trigger is detected,
which is managed by an operating system for managing the file system and operates
independently from an application program executed by the at least one system
connected via the network to the network-attached storage system in which said data
management mechanism is incorporated.

The examiner relies on the following references:
Pothapragada et al. (Pothapragada) U.S. Pat. 6,389,432 May 14, 2002
Filed: April, 5, 1999

Inohara et al. (Inohara) U.S. Pat. 6,567,828 May 20, 2003
Effective Filing Date: Oct. 27, 1998

The following rejection is on appeal before us:
Claims 1, 2, 4, and 7-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Pothapragada in view of Inohara. Claims 3, 5, and 6 have
been cancelled.
Rather than repeat the arguments of appellant or the examiner, we make reference to
the briefs and the answer for the respective details thereof.
OPINION

We have carefully considered the subject matter on appeal, the rejection advanced by
the examiner and the evidence of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into consideration, in reaching our
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decision, the appellant’s arguments set forth in the briefs along with the examiner’s rationale
in support of the rejection and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon by the examiner does support the examiner’s rejection of claims 1, 2, 4, and 7-11.
Accordingly, we affirm.
We consider the obviousness of the following logical groups of claims, as presented
under separate subheadings and separately argued by the appellant [brief, pages 2-4]:
• Group I: Independent claim 1.
• Group II: Dependent claims 2, 4, and 7 stand or fall together.
• Group III: Independent claims 8-11 stand or fall together. Since appellant’s
arguments with respect to this rejection have treated these claims as a single group
which stand or fall together, we will select claim 10 as the representative claim for
this rejection because claim 10 is the broadest independent claim in this group. See
37 C.F.R. §41.37(c)(1)(vii)(2004).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the factual determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966). The examiner must articulate reasons for the examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In
particular, the examiner must show that there is a teaching, motivation, or suggestion of a
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motivation to combine references relied on as evidence of obviousness. Id. at 1343. The
examiner cannot simply reach conclusions based on the examiner’s own understanding or
experience - or on his or her assessment of what would be basic knowledge or common
sense. Rather, the examiner must point to some concrete evidence in the record in support of
these findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001).
Thus the examiner must not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which the findings are deemed to
support the examiner’s conclusion. However, a suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be found explicitly in the prior art,
as the teaching, motivation, or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill in the art.
In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift, 298 F. 3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the examiner are
an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
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Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made by appellant have
been considered in this decision. 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).
At the outset, we note that the primary Pothapragada reference is directed to a system
and method of intelligent virtual volume access that manages storage space in one or more
data storage devices using tables containing attributes associated with the data storage
devices [col. 1, lines 60-67]. When a request specifying criteria for storage space is received
from a requester, the Pothapragada invention selects one of the data storage devices whose
attributes best match the one or more criteria [id.]. An identification associated with a
portion of the selected data storage is returned to the requester, and a communication path is
created between the requester and the selected data storage device [col. 1, line 67, cont’d col.
2, lines 1-4]. The preferred embodiment of the Pothapragada invention implements Storage
Area Network (SAN) storage devices; however, Pothapragada discloses intelligent Network
Attached Storage (NAS) devices that function as servers in the background of the invention
section [col. 1, lines 15-48].

The secondary Inohara reference is directed to an information processing and electronic
commerce system that features a file format conversion method that enables a plurality of
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computers to exchange information having a plurality of file formats over the World Wide
Web (WWW) without requiring the user to manually perform the file conversions [col. 1,
lines 1-22, col. 4, lines 38-43].
We consider first the examiner’s rejection of independent claim 1 that stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Pothapragada in view
of Inohara.
I. Appellant notes that the examiner has relied upon the secondary Inohara reference as
allegedly providing a suggestion to modify the primary Pothapragada reference to include all
of the features recited in the body of the claims [brief, page 3, ¶2]. Appellant argues that
Inohara merely teaches a file format conversion method, and not a file format conversion in a
Network Attached Storage (NAS) system as recited in claim 1 [id.]. Appellant further argues
that neither the term “network-attached storage” nor its abbreviation “NAS” appears in
Inohara nor has anything been cited by the examiner in either Pothapragada or Inohara
suggesting file format conversion of any type in an NAS device [id.]
The examiner responds that appellant is attacking the references individually where the
rejections are based upon the combination of Pothapragada, as modified by Inohara [answer,
page 8, ¶1]. As correctly noted by the examiner [id.], the Court of Appeals for the Federal
Circuit has determined that one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references. In re Merck &
Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). We note that in the instant case
the examiner’s rejection is based upon the combination of the Pothapragada and Inohara
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references [emphasis added].
We further note that appellant appears to be arguing that because the Inohara reference
is silent with respect to Network Attached Storage (NAS) that the Pothapragada and Inohara
references cannot be combined. We disagree. In particular, we note that appellant has made
an implicit admission in the brief that the Pothapragada and Inohara references are analogous
references by acknowledging that both references are “in the same technological art” [brief,
page 3, ¶4]. The Court of Appeals for the Federal Circuit has set forth two criteria for
determining whether prior art is analogous: (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 Kahn, 441 F.3d 977, 987, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006), citing In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443,
1445-6 (Fed. Cir. 1992). Accordingly, because both the Pothapragada and Inohara
references are directed to data storage and retrieval on a network, we find that they are
analogous references by virtue of being from the same field of endeavor.
We note that to establish a prima facie case of obviousness, the examiner, as finder of
fact, must meet three basic criteria: Firstly, there must be some suggestion or motivation,
either in the references themselves or in the knowledge generally available to one of ordinary
skill in the art, to modify the reference or to combine reference teachings. In re Rouffet, 149
F.2d 1350, 1357-59, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Secondly, there must be a
reasonable expectation of success. See Medchem S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
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77 USPQ2d 1865, 1870 (Fed. Cir. 2006); In re Merck & Co., Inc., 800 F.2d 1091, 231
USPQ 375 (Fed. Cir. 1986). Finally, the prior art references when combined must teach or
suggest all the claim limitations. See In re Gulack, 703 F.2d 1381, 1385 n. 9, 217 USPQ
401, 403 n. 9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974).
(obviousness requires a suggestion of all limitations in a claim).
Significantly, we note that appellant has failed to point out in the briefs a single
limitation allegedly not taught by the examiner’s proffered combination of Pothapragada and
Inohara. We further note that appellant has failed to argue that one of ordinary skill in the art
would not have a reasonable expectation of success when attempting to combine the
Pothapragada and Inohara references in the manner suggested by the examiner. Accordingly,
we find that the examiner has clearly established the second and third elements of a prima
facie case of obviousness, as set forth supra. We note that the examiner relies upon
Pothapragada for its teaching of Network Attached Storage, in combination with Inohara, for
its teaching of file format conversion enhancements to a file system connected to a network
[answer, pages 4 and 5]. We now analyze the examiner’s proffered motivation for
combining the Pothapragada and Inohara references infra.
II. Appellant notes that the examiner indicated in the final office action that the Inohara
reference identified certain problems: e.g., [that] “not all applications can access all file
formats” (column 2, line 10), and “since the utilization of the Internet and WWW [is] rapidly
increasing, there is a high need of processing a variety [sic] kind of formats as simply as
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possible” (column 2, lines 27-30) [brief, page 3, ¶4]. Appellant argues that nothing in these
statements alone suggests that these problems can be overcome by making modifications to a
NAS device of the type taught by Pothapragada [brief, page 3, ¶4]. Appellant further asserts
that the required evidence for a finding of obviousness has not been provided by the
examiner in the final office action [brief, page 4, ¶2]. Appellant again asserts in the reply
brief that the teachings found in Inohara and Pothapragada are insufficient to suggest a
modification of a NAS device as taught by Pothapragada to add the file enhancements taught
by Inohara [reply brief, page 2, ¶3].
In response, the examiner argues that an artisan would have been motivated to
incorporate the file conversion enhancements taught by Inohara into the NAS device
disclosed by Pothapragada because such a modification to Pothapragada would provide
various applications requiring specific file formats the enhanced capability of accessing NAS
files without requiring a user to perform file conversions manually (see Inohara, col. 2, lines
10-30) [answer, page 10]. The examiner further notes that the mechanisms for retrieving
files from an NAS device are identical to that of retrieving files from a conventional storage
device on a network server [id.]. The examiner notes that Pothapragada discloses the NAS
device functions as a server that appears to a client on the network as a large hard disk
[answer, page 10; see also Pothapragada, col. 1, lines 28-30].
We note that the Court of Appeals for the Federal Circuit has determined that the
motivation to combine under §103 must come from a teaching or suggestion within the prior
art, within the nature of the problem to be solved, or within the general knowledge of a
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person of ordinary skill in the field of the invention, to look to particular sources, to select
particular elements, and to combine them as combined by the inventor [emphasis added].
Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57 USPQ2d 1161, 1167 (Fed. Cir. 2000).
In the instant case, we note that the reasons for motivation proffered by the examiner
are taken directly from the Inohara reference [answer, page 5]:
It would have been obvious to one of ordinary skill in the art at the time of the
invention to incorporate the file format conversion mechanism taught by
Inohara et al. into the data management mechanism taught by Pothapragada et
al., since (1) it is taught that NAS is an intelligent storage device, including its
own operating system and file system, that is dedicated to file serving and the
file format conversion mechanism taught by Inohara et al. is disclosed as
being an enhancement to a file system, and furthermore (2) because the file
format conversion mechanism taught by Inohara et al. solves the problem that
not all applications can access all file formats (see col. 2, lines 10-14), and
since the utilization of the Internet and WWW are rapidly increasing there is a
high need of processing a variety kind of formats as simply as possible (see
col. 2, lines 27-30).

We further note the portions of Inohara relied upon by the examiner, see col. 2, lines
10-14:
Generally, not all applications can access all file formats. Therefore, even if a
user stores information in a file having a certain file format, the user is often
required to perform a "file conversion" for the file in order to enable another
application to access the file. A file as an input for the format conversion is
called a "conversion originating file", and a file as an output is called a
"conversion destination file".
See also Inohara at col. 2, lines 27-30:
As described above, since the utilization of the Internet and WWW are rapidly
increasing, there is a high need of processing a variety kind of formats as
simply as possible [emphasis added].

We find that the examiner has provided a proper motivation statement taken directly
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from a teaching or suggestion found within the prior art that reasonably establishes why one
of ordinary skill in the art would have been motivated to apply the enhanced file format
conversion method of Inohara to the generic Network Attached Storage (NAS) file servers
disclosed by Pothapragada [emphasis added]. We agree with the examiner that such a
combined system would clearly enable client applications to easily access a variety of file
formats stored on a NAS file server where both the client and NAS file server are connected
to the Internet and the WWW.
In summary, we find that the Pothapragada and Inohara patents are analogous references
that teach every limitation recited in the claim when combined in the manner suggested by
the examiner. We further find that the examiner has set forth a proper motivation statement,
as discussed supra, and again note that appellant has failed to argue any limitations allegedly
not taught by the combination of references relied upon by the examiner. In making our
decision, we have relied solely upon the teachings of the Pothapragada and Inohara
references of record, and have not considered any extrinsic evidence cited by the examiner in
the answer [see e.g., cited hypertext links, pages 8 and 9, answer], nor have we considered
any alleged “personal knowledge” of the examiner that is not supported by the references of
record [see reply brief, page 2, ¶3]. Therefore, we find that the examiner has fully met
his/her burden of establishing a proper prima facie case of obviousness. Accordingly, we
will sustain the examiner’s rejection of claim 1 for essentially the same reasons as argued by
the examiner.
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Group II, claims 2, 4, and 7
We next consider Group II consisting of dependent claims 2, 4, and 7. We note that
appellant presents these claims under a separate subheading, and argues that claims 2, 4, and
7 patentably distinguish over Pothapragada and Inohara for the same reasons as previously
argued with respect to independent claim 1 [emphasis added]. Accordingly, because we have
sustained the examiner’s rejection of claim 1 in Group I, we will likewise sustain the
examiner’s rejection of dependent claims 2, 4, and 7 for the same reasons discussed supra
with respect to claim 1.
Group III, claims 8-11

We next consider the examiner’s rejection of claims 8-11 that stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the teachings of Pothapragada in view of Inohara.
We note that Group III includes independent claims 8-11. Because independent claim 10 is
the broadest claim from Group III, we will select independent claim 10 as the representative
claim for this rejection. See 37 C.F.R. §41.37(c)(1)(vii) (2004). We note that appellant
argues that claims 8-11 patentably distinguish over Pothapragada and Inohara for the same
reasons as previously argued with respect to independent claim 1 [emphasis added]. We
further note that representative independent claim 10 is broader than independent claim 1.
Accordingly, because we have sustained the examiner’s rejection of independent claim 1 in
Group I, we will likewise sustain the examiner’s rejection of all independent claims 8-11 for
the same reasons discussed supra with respect to claim 1.
In summary, we have sustained the examiner’s rejection of all claims under appeal.
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Therefore, the decision of the examiner rejecting claims 1, 2, 4, and 7-11 is affirmed.
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

)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

JS/rwk

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Comment [COMMENT1]: The year
should be entered here.