Ex Parte Pan

Patent Trial and Appeal Board

Feb 8, 2018

13750896 (P.T.A.B. Feb. 8, 2018)

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.
13/750,896 01/25/2013 Weimin Pan 83141159 8954
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
PEREZ-VELEZ, ROCIO DEL MAR
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
02/12/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEIMIN PAN
Appeal 2016-002713
Application 13/750,896
Technology Center 2100
Before ALLEN R. MacDONALD, JAMES W. DEJMEK, and
ALEX S. YAP, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002713
Application 13/750,896
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claim 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Representative Claims
Representative claims 1 and 7 under appeal read as follows (emphases
added):
1. A redundant array of independent disks (RAID)
storage system comprising: a storage controller with a storage
management module to:
identify storage volumes to be rebuilt and remaining
storage volumes that are not to be rebuilt,
calculate rebuild priority information for the identified
storage volumes to be rebuilt based on storage information of
the identified storage volumes, and
generate an amount of rebuild requests to rebuild the
identified storage volumes to be rebuilt and process host
requests directed to the remaining and to be rebuilt storage
volumes based on the rebuild priority information and amount
of host requests,
wherein the amount of rebuild requests is
associated with a percentage of traffic that is not less
than a minimum rebuild traffic percentage or more than a
maximum rebuild traffic percentage.
7. The storage system of claim 1, wherein the storage
management module is further configured to assign storage
volumes the minimum rebuild traffic percentage and the
maximum rebuild traffic percentage based on the rebuild
priority information.
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Application 13/750,896
Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Williams (US 7,305,579 B2; iss. Dec.
4, 2007) andNair et al (US 2013/0205166 Al; pub. Aug. 8, 2013).1
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
Did the Examiner err in rejecting claim 7 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions.
Claim 1
A
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
First, by addressing element (iii)2... as two separate fragments,
the rejection interpreted claim 1 in improper piecemeal fashion,
thus changing the meaning of claim 1. Specifically, the rejection
1 Claims 1-6, 8-13, and 15-19 are argued as a subgroup; and claims 7, 12,
and 20 are argued as a subgroup. We select claims 1 and 7 as representative
of these subgroups. 37 C.F.R. § 41.37(c)(l)(iv)(2014). Separate
patentability is not argued for claims 2-6 and 8-20. Except for our ultimate
decision, claims 2-6 and 8-20 are not discussed further herein.
2 “generate an amount of rebuild requests to rebuild the identified storage
volumes to be rebuilt and process host requests directed to the remaining and
to be rebuilt storage volumes based on the rebuild priority information and
amount of host requests.”
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Application 13/750,896
interpreted element (iii) as separate fragments mapped to two
different references. Thus, the rejection interpreted element (iii)
such that “generate an amount of rebuild requests to rebuild the
identified storage volumes to be rebuilt” is not “based on the
rebuild priority information and amount of host requests,” as
included in claim 1. As such, the rejection failed to address the
relationships between these fragments of claim 1, and thus failed
to consider the claim as a whole.
App. Br. 7 (emphasis omitted; footnote added).
Second, Williams say nothing whatsoever regarding the “amount
of rebuild requests” being generated “based on the rebuild
priority information and amount of host requests,” as included in
claim 1.
App. Br. 7 (emphasis omitted).
Third, Nair also fails to disclose or suggest this subject matter.
Specifically, the cited portions of Nair say nothing regarding an
“amount of rebuild requests” that is generated “based on the
rebuild priority information and amount of host requests.”
App. Br. 8 (emphasis omitted).
In the Answer, the Examiner responds:
Examiner respectfully disagrees and notes that the claims
as presently presented do not establish a relationship between
“generate an amount of rebuild requests” and “based on the
rebuild priority information and amount of host requests”. As
such, the claims do not require that the generation be based on
rebuild priority information.
Examiner further notes that, under the broadest reasonable
interpretation, the “based on” may be interpreted as only related
to the process host requests directed to the remaining and to be
rebuild storage volumes.
If it were Appellant’s intention to claim that the generation
of an amount of rebuild request be based on a rebuild priority
information and an amount of host requests then it should be
expressly recited in the claims.
Ans. 4 (emphasis omitted).
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In the Reply Brief, Appellant further argues:
[I]t is noted that element (iii) is a continuous clause that is
not divided by any punctuation (e.g., a comma or semi-colon)
that would indicate that it should be interpreted as two separate
clauses. It is well established that the rules of the written English
language require some form of punctuation to provide a
separation between different clauses or phrases. However,
element (iii) does not include any punctuation that would
indicate a separation between the two asserted limitations.
Accordingly, the asserted interpretation is inconsistent with the
established rules of written English, and is therefore improper.
Further, it is submitted that the asserted interpretation is
inconsistent with the specification. . . . [T]he specification
clearly describes that rebuild requests are generated based on a
rebuild priority information.
Reply Br. 3—4 (emphasis omitted).
As to Appellant’s above contention, we disagree. The Examiner
interprets so-called element (iii) “generate an amount of rebuild requests to
rebuild the identified storage volumes to be rebuilt and process host requests
directed to the remaining and to be rebuilt storage volumes based on the
rebuild priority information and amount of host requests” as reading
(a) generate an amount of rebuild requests to rebuild the identified
storage volumes to be rebuilt and
(b) process host requests directed to the remaining and to be rebuilt
storage volumes based on the rebuild priority information and
amount of host requests.
Appellant interprets element (iii) as reading
(a) generate an amount of rebuild requests to rebuild the identified
storage volumes to be rebuilt [based on the rebuild priority
information and amount of host requests] and
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(b) process host requests directed to the remaining and to be rebuilt
storage volumes based on the rebuild priority information and
amount of host requests.
Appellant asserts the Examiner’s reading of the claim is inconsistent
with the rules of the written English language. To the contrary, in
accordance with the precepts of English grammar, the position of the words
in a sentence is the principal means of showing their relationships, and
modifiers should be placed next to the words that they modify. William
Strunk, Jr. & E.B. White, The Elements of Style 28, 30 (4th ed. 2000); In re
Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (“A claim must be read in
accordance with the precepts of English grammar.”); see, e.g., HTC Corp. v.
IPCom GmbH & Co., KG, 667 F.3d 1270, 1274-75 (Fed. Cir. 2012) (citing
Strunk & White for the proposition that, in interpreting claim language,
modifiers should be placed next to the words that they modify). Thus, a
reader may assume that the claimed action “process host requests directed to
the remaining and to be rebuilt storage volumes” is being modified by the
language “based on the rebuild priority information and amount of host
requests.” We agree with the Examiner that “[i]f it were Appellant’s
intention to claim that the generation of an amount of rebuild request be
based on a rebuild priority information and an amount of host requests then
it should be expressly recited in the claims.” Ans. 4.
We see no reason to reverse the Examiner’s rejection based on this
argument.
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B
Also, Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
It is submitted that prioritizing the order of drives to be
rebuilt, as described in Williams, clearly fails to disclose or
suggest generating an “amount of rebuild requests\.Y
App. Br. 7.
In the Answer, the Examiner responds:
[T]he rejection of Claim[ 1] is based on the modification of
Williams in light of the teachings of Nair. Appellant^ s]
arguments appear to be against the references individually. In
response to Appellant^ s] arguments against the references
individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 208
USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
231 USPQ 375 (Fed. Cir. 1986). . . . The claims merely require
generate an amount of rebuild requests to rebuild the
identified storage volumes to be rebuilt, which, as stated in the
Final Rejection, is taught by Williams (Column 7, Fines 47-50).
Williams teaches rebuilding an identified rebuild record, thus at
least one rebuild request is generated, as claimed. It is noted that,
under the broadest reasonable interpretation, the claimed
amount may be one.
Ans. 4-5.
As to Appellant’s above contention, we disagree. We agree with the
Examiner that the broader claim 1 limitation “generate an amount of rebuild
requests to rebuild the identified storage volumes to be rebuilt” is taught by
Williams for the reasons set forth by the Examiner. We also agree with the
Examiner that the Nair reference is relied upon for the narrower claim 1
limitation “wherein the amount of rebuild requests is associated with a
percentage of traffic.”
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C
Further, Appellant contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[Cjontrary to the rejection, Nair says nothing whatsoever
regarding the “rebuild rate” being a “percentage of traffic,”
much less both a “minimum rebuild traffic percentage” and a
“maximum rebuild traffic percentage,” as included in claim 1. In
fact, a review of Nair reveals that it is entirely silent regarding
the term “traffic.” Rather, as best understood, Nair describes the
“rebuild rates” as “gradations of intensity in how a user wants to
rebuild a RAID system [... ],such as 'Low', 'High', 'Max' and 'No',
respectively. . . .
Furthermore, Nair describes that the “time allotted for
rebuild (rt)” is used, along with other variables, to calculate the
“time delay DELTA,” which is “used to delay rebuild IOs issued
to the head of the individual drive queue.” See Nair, par. [0055]-
[0062], Therefore, in view of this disclosure, it is evident that
Nair does not disclose a “percentage of traffic.” Rather, at best,
it only discloses a percentage of time allotted to rebuild. A person
of ordinary skill in the art will readily appreciate that, because
the time period required for each IO could vary across different
IO types and the particular IO task, the percentage of time
allotted to rebuild does not disclose the percentage of traffic used
for the rebuild.
[ Ejeven further assuming for the sake of argument that the
“time allotted for rebuild” of Nair could somehow disclose a
percentage of traffic, the rejection is still lacking. Specifically,
Nair says nothing whatsoever about a “time allotted for rebuild”
that is not less than a minimum “time allotted for rebuild” or
more than a maximum “time allotted for rebuild.”
App. Br. 8-9 (emphasis omitted).
In the Answer, the Examiner responds:
Nair [0056] discloses that the Low, High, Max categories have a
set range of rebuild percentage rate, which goes from a minimum
to a maximum. For example, “Low” has a rebuild rate that goes
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from 33% to 65%. Examiner notes thatNair [0056] distinguishes
between a “Time Allotted For Rebuild (rt)” and “Rebuild Rate”.
As previously discussed, Nair [0019] states that the rebuild
rate indicates how fast the rebuilds will occur vis-a-vis the host
IOs. How fast rebuilds occur is an indication of an amount of
rebuilds. Thus, the amount of rebuild requests that will be
generated in the Low setting is associated with a percentage of
traffic that is not less than the minimum rebuild traffic percentage
33% or more than a maximum rebuild traffic percentage 65%.
Therefore, a number of rebuild requests will be generated, which
will correspond to a rebuild traffic percentage.
Ans. 9.
As to Appellant’s above contention, we disagree. Rather, Nair’s
paragraph 56 is explicit that the rebuild rate can have a range from a
minimum to a maximum. Further, an artisan would recognize these rates
and their “time allotted for rebuild . . . ascertained compared to the total time
for rebuild including both host IO and rebuild IO requests” (Nair ^ 56)
correspond to a percentage of traffic.
Further, Appellant’s argument that the specific terminology
“percentage of traffic” is not used in Nair is equally unpersuasive. There is
no ipsissimis verbis test within 35 U.S.C. § 103. Appellant’s assertion that
claim limitations are not expressly recited in a reference does not evidence
lack of prima facie obviousness, but, rather, “begs the substantive question
of whether there are facial differences to be bridged.” See In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011). A reference does not have to satisfy an
ipsissimis verbis test to disclose a claimed element, therefore Appellant’s
demand for such an exacting match is not persuasive of error. See In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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We agree with the Examiner that these argued claim 1 limitations are
taught for the reasons set forth by the Examiner.
D
Further, Appellant contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[T]he provided rationale for the proposed combination of
Williams and Nair is insufficient. Specifically, the rejection
asserted that this particular modification of Williams would have
been obvious “in order to prevent host IO starvation during a
rebuild process.” See Office Action, p. 5 (emphasis added).
However, Appellant notes that this rationale assumes the
existence of a specific problem in Williams, namely that, if host
IOs are too low in priority in relation to rebuild IOs, the host IOs
are not executed or “starved.” However, Williams does not
describe or even contemplate this particular problem. In fact,
Williams appears to be entirely silent regarding host IOs, much
less starvation of host IOs.
App. Br. 10 (emphasis omitted).
In the Answer, the Examiner responds:
[Ojbviousness may be established by combining or modifying
the teachings of the prior art to produce the claimed invention
where there is some teaching, suggestion, or motivation to do so
found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art. See In re
Fine, 837 F.2d 1071 . . . (Fed. Cir. 1988), In re Jones, 958 F.2d
347 .. . (Fed. Cir. 1992), andKSRInt’l Co. v. Teleflex, Inc., 550
U.S. 398 .. . (2007).
Ans. 11.
As to Appellant’s above contention, we disagree. In addition to
agreeing with the Examiner’s response, we note Appellant’s argument does
not address the actual reasoning of the Examiner’s rejection. Instead
Appellant attacks the Williams reference singly for lacking teachings that
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the Examiner relied on the Nair reference in a combination of the references
to show. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In
re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). This form of argument is
inherently unpersuasive to show Examiner error. Our reviewing court
requires that references must be read, not in isolation, but for what they
fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at
1097 (Fed. Cir. 1986).
Claim 7
Appellant contends that the Examiner erred in rejecting claim 7 under
35U.S.C. § 103(a) because:
[A] review of the cited portions of Nair reveals that they say
nothing whatsoever about a module to “assign storage volumes
the minimum rebuild traffic percentage and the maximum
rebuild traffic percentage based on the rebuild priority
information.” Rather, at best, Nair describes something
substantially different, namely a single “rebuild rate” that is
selected by a user to rebuild an entire “RAID system.”
App. Br. 11-12 (emphasis omitted; emphasis added).
As to Appellant’s above contention, we disagree that the Examiner
has erred. Claim 7 reads (with emphasis):
The storage system of claim 1, wherein the storage
management module is further configured to assign storage
volumes the minimum rebuild traffic percentage and the
maximum rebuild traffic percentage based on the rebuild
priority information.
The premise of Appellant’s contention is claim 7 cannot be interpreted as
being a single rebuild rate that is selected by a user to rebuild an entire
RAID system, but rather claim 7 requires plural rebuild rates each for one of
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plural parts of the RAID system. We find no basis for Appellant’s
argument.
Claim 1 recites “storage volumes” and the Examiner’s rejection treats
these as a singular unit of volumes for which a single range of rebuild traffic
percentages is assigned. We do not find where Appellant disputes this
interpretation of claim 1. Therefore we read the “storage volumes” of claim
7 similarly as a singular unit of volumes. Our interpretation of this as a
singular unit is reinforced by the remainder of claim 7 which recites
“a minimum rebuild traffic percentage and the maximum rebuild traffic
percentage,” that is, only a single “percentage” range.
The only part of claim 7 not previously recited in claim 1 is the new
limitation that the claim 1 “minimum rebuild traffic percentage and the
maximum rebuild traffic percentage” range is assigned “based on the rebuild
priority information.” In addition to the reasons supra in Section Claim 1,
A., this new limitation contradicts Appellant’s claim 1 argument that “based
on the rebuild priority information” in claim 1 already modifies the “amount
of rebuild requests.” To so construe claim 1 would render claim 7 redundant
to claim 1. Under the doctrine of claim differentiation, “the presence of a
dependent claim that adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the independent claim.”
Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (enbanc).
CONCFUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.
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DECISION
The Examiner’s rejections of claims 1-20 are 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)(l)(iv).
AFFIRMED
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