Ex Parte O et al

Patent Trial and Appeal Board

Jan 29, 2015

12414084 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/414,084 03/30/2009 John Timothy O'Brien SUN090195-US-NP 1347
51344 7590 01/29/2015
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
HUSSAIN, FARRUKH
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/29/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN TIMOTHY O’BRIEN, MICHAEL STEVEN MILILLO,
GEORGE FRANKLIN DETAR JR., and CARL THOMAS MADISON JR.
____________

Appeal 2012-011482
Application 12/414,084
Technology Center 2400
____________

Before ALLEN R. MACDONALD, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–5 and 7–19.1 App. Br. 1. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 The real party in interest is Oracle America, Inc. App. Br. 1.
Appeal 2012-011482
Application 12/414,084

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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to data storage systems and
methods for processing data access requests. Spec., 4, ll. 14–23. Claim 1,
which is illustrative, reads as follows:
1. A data storage system comprising:
a plurality of server devices;
a plurality of external interface providers each deployed
on one of the server devices;
a plurality of data storage controllers each deployed on
one of the server devices,
wherein each of the providers is configured to (i)
receive a data access request, (ii) identify one of the
controllers that can satisfy the request and (iii) forward
the request to the identified controller; and
a plurality of data storage units independent of the server
devices,
wherein the providers, controllers and units are in
communication with each other as peers via a peer-to-
peer interconnect fabric, and
wherein each of the controllers (i) exclusively
manages a portion of data content in at least one of the
units and (ii) satisfies data access requests received from
the providers by accessing the portion of data content in
the at least one unit.

References
The Examiner relies on the following prior art in rejecting the claims:
Carter 5,987,509 November 16, 1999
Vange US 2002/0002611 A1 January 3, 2002

Appeal 2012-011482
Application 12/414,084

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Rejections
Claims 1–4, 8–12, 14, and 17–19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Vange. App. Br. 3.
Claims 5, 7, 13, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vange and Carter. Id.

Rather than repeat the arguments here, we refer to the Appeal Brief
(“App. Br.” filed February 27, 2012) and the Reply Brief (“Reply Br.” filed
August 6, 2012) for the positions of Appellants and the Examiner’s
Supplemental Answer (“Ans.” mailed July 19, 2012) for the positions of the
Examiner.

Issue on Appeal
The issue presented by Appellants’ contentions are as follows:
Did the Examiner err in finding that Vange discloses “a plurality of
data storage units independent of the server devices,” as recited in claim 1?

ANALYSIS
CLAIM 1
The Examiner finds Vange’s web server has data storage capacity
and, therefore, discloses the claimed data storage units. Ans. 13 (citing ¶ 28
of Vange). The Examiner further finds the ordinary meaning of a web
server can include using a web server as a data storage unit. Id. at 14. As a
basis for this finding, the Examiner cites to Appellants’ Specification
disclosing “[a] data storage system includes a plurality of servers.” Ans. 14
(citing Specification 4, ll. 14–24).
Appeal 2012-011482
Application 12/414,084

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Appellants contend Vange does not disclose a plurality of data storage
units. App. Br. 3–4. Appellants argue that Vange’s web server is a server
and a server, regardless of type or internal storage capacity, is not a data
storage unit, as recited in claim 1. Id. at 4; Reply Br. 1–2.
We find Appellants’ contentions persuasive. Under 35 U.S.C. § 102,
a claim is anticipated only if each and every element, as set forth in the
claim, is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969);
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Although the PTO must give claims their broadest reasonable interpretation,
this interpretation must be consistent with the one that those skilled in the art
would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).
Vange discloses “a web server is a computer running server software
coupled to the World Wide Web (i.e., ‘the web’) that delivers or serves web
pages.” Vange ¶ 28. The relevant definition of the term “server” is
A computer, or a software package, that provides a specific
kind of service to allow client software to run on other computers.
The term can refer to a particular piece of software, such as a WWW
server, or to the machine on which the software is running.
Rudolf F. Graf, Modern Dictionary of Electronics 683 (7th ed. 1999).
The Examiner’s findings do not persuasively show that Vange’s web
server expressly or inherently discloses the claimed data storage unit.
Instead, the Examiner merely finds “Vange’s web server has data storage
capacity therefore it can be claimed as data storage units.” Ans. 13
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Application 12/414,084

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(emphasis added).2 Further, we agree with Appellants, that Appellants’
Specification listing a plurality of servers as an element of a data storage
system, is insufficient as a basis for interpreting Vange’s web server as a
data storage unit. See Reply Br. 2. As such, we find that one of ordinary
skill in the art would not interpret Vange’s web server as expressly or
inherently describing a data storage unit.

Summary
Accordingly, we are persuaded that the Examiner erred in the
rejection of claim 1. As such, we do not sustain the rejection of (1) claim 1;
(2) independent claims 11 and 14, which are argued together with claim 1
(see App. Br. 4); and (3) claims 2–5, 7–10, 12, 13, and 15–19, which depend
variously from claims 1, 11, and 14 and are not separately argued with
particularity.

2 The Examiner’s finding’s regarding the web server having data storage
capacity and, therefore, being able to be used as a data storage device (see
Ans. 13, 14) are relevant with regard to obviousness under 35 U.S.C. § 103.
However, we decline to exercise our authority under 37 C.F.R. § 41.50(b)
(2006) and enter a new ground of rejection of the appealed claims on the
above basis. We leave it to the Examiner to consider whether the claims are
obvious under 35 U.S.C. § 103 in view of the disclosure of Vange and enter
any new grounds of rejection based thereon and any other references as
deemed appropriate. While the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board does not do
so. See MPEP § 1213.02.
Appeal 2012-011482
Application 12/414,084

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DECISION
As such, we REVERSE the Examiner’s rejection of claims 1–4, 8–12,
14, and 17–19 under 35 U.S.C. § 102(b) based on Vange and claims 5, 7, 13,
15, and 16 under 35 U.S.C. § 103(a) based on Vange and Carter.

REVERSED

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