Ex Parte Patterson et al

Patent Trial and Appeal Board

Aug 8, 2016

10767356 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
101767,356 01/28/2004 Brian L. Patterson
56436 7590 08/10/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82099400 4878
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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
mkraft@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 BRIAN L. PATTERSON and BRIANS. BEARDEN
Appeal2013-000499
Application 10/767,356
Technology Center 3600
Before, MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-000499
Application 10/767,356
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 48-70. Claims 1--47 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a system and method for computer-based storage
devices to implement transaction-based storage services (Specification 2,
iT 5).
Claim 48, reproduced below, is representative of the subject matter on
appeal.
48. A method comprising:
receiving, by a storage array controller that controls an
array of storage devices, a service request from a requestor over
a storage network, wherein the service request is a request to
perform a data redundancy operation with the array of storage
devices that implements RAID (Redundancy Array of
Independent Disks) storage of data;
determining an amount of credit available on a local
storage medium of the storage array controller for the requestor;
implementing the service request at the storage array
controller in response to the amount of credit being sufficient to
execute the service request;
in response to the amount of credit being insufficient to
execute the service request,
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transmitting, by the storage array controller, a token
request for a service token to a server communicatively
connected to the storage network;
receiving, by the storage array controller, a response to
the token request transmitted by the server after the server
validates the token request; and
executing the service request at the storage array
controller in response to the response to the token request
including an indication authorizing execution of the service
request.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Tohyama
Lubbers
US 2002/0091645 Al
US 2003/0079102 Al
July 11, 2002
Apr. 24, 2003
The following rejections are before us for review.
The Examiner rejected claims 48-54, 56---64, 66, 67, 69, and 70 under
35 U.S.C. § 103(a) as being obvious over Tohyama in view of Lubbers.
The Examiner rejected claims 55, 65, and 68 under 35 U.S.C. § 103(a)
as being obvious over Tohyama in view of in view of Lubbers in further
view of Official Notice.
FINDINGS OF FACTS
1. We adopt the Examiner's findings as set forth on pages 4-17 of
the Answer.
2. Tohyama discloses a server based license management system
such that a
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Application 10/767,356
iT 98.
license management program 3a in the license
management server machine 3 reads out, from the user
account database 3b, the license data that corresponds to
the received user ID "3" and to the application ID "e-1"
( s88, s90), and judges the validity of this license data
(s92). In this validity judgment, a judgment of "Valid" is
made only in the case where the license data exists and
the "remaining amount of the license" in the license
validity in FIG. 4 has a value that is greater than zero
such that the "license status" is "Valid".
3. Tohyama discloses:
iT 100.
The issuing of the pass is performed based on the
license base of the license data that was read out from the
user account database 3b at step 90. That is, the license
management program 3a performs the processing of
replacing the "remaining amount of the pass" of the "pass
validity" corresponding to the application ID "e-1" with
the "total number of times= 1 time" shown in the "pass
term/number of times (of usage)" included in the "pass
issuance regulations" of the license base, creates the pass
(FIG. 8(a), sl 16), and sends the pass to the user terminal
4(sl18).
4. Tohyama further discloses:
[T]he user terminal 4 boots the license management
program which is composed of the license controller 4a
and the license manager 4b (s30), the license controller
4a obtains the application ID "a-I" and the usage data
(U sageinfo) from the software which is installed in the
user terminal 4. The usage data is data which indicates a
term/number of times that the user terminal has actually
used the content for which usage was approved, based on
the present licensing system.
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5. The Examiner found:
One of ordinary skill in the art would recognize "data
mirroring" as a type of" data redundancy" (additionally,
Appellant offers no information in the specification to
show otherwise). Lubbers, as shown in the citations
above, also shows "data redundancy" through the
creation of "snapshots/copies" of data (Abstract). One of
ordinary skill in the art would recognize that the
"snapshots/ copies" of Lubbers is substantially equivalent
to the "data mirroring" of Tohyama. Therefore, one of
skill in the art would recognize the ability of the storage
array controller in Lubbers to perform the "data
redundancy"/"data mirroring" tasks recited in Tohyama
with neither undue experimentation or risk of unexpected
results.
Answer 14--15 (emphasis omitted).
ANALYSIS
Appellants argue claims 48-54 as a group. Appeal Br. 6. Claim 48,
the sole independent claim in this group, is the representative claim for this
group, and the remaining dependent claims standing or falling with claim 48.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue,
The current rejection that is the subject of the final Office
Action is a§ 103 rejection over Tohyama in view of Lubbers,
which was clearly not addressed by the Decision on Appeal.
Therefore, since the rejection has in fact changed due to the
amendment of the claims made in the Amendment dated July
25, 2011, it is respectfully submitted that the Decision on
Appeal has been rendered moot, and the Examiner's citation of
the Decision on Appeal is clearly erroneous (emphasis omitted).
Appeal Br. 8.
While we agree with Appellants that the rejection before us has
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changed, the rejection still uses Tohyama as the primary reference in the
rejection. Final Act. 2. We find nothing of significance has changed by way
of facts derived by the Examiner from Tohyama, and thus the argument is of
no consequence.
Appellants argue that the claims were amended on July 25, 2011,
which is after the Board Decision of May 25, 2011, 1 and thus, the "Decision
on Appeal has been rendered moot." Appeal Br. 8.
We find no error with the Examiner's referring to those portions of
Tohyama which he used in the rejection previously before us, which apply to
the corresponding claim components in this appeal. In fact, despite such
references to the earlier Decision, the Examiner throughout the rejection
properly cites to paragraph and line of Tohyama for each claim element. See
Answer 2-11.
Appellants next argue,
T ohyama provides no hint that its tasks are performed by a
storage array controller that controls an array of storage
devices, or that its tasks are performed in the context of a
service request that is a request to perform a data redundancy
operation with the array of storage devices that implements
RAID storage of data.
Appeal Br. 9.
That argument is not well taken because the Appellants are attacking
the Tohyama reference individually when the rejection is based on a
combination of references, and the Examiner found that Lubbers, not
Tohyama, discloses the storage array and storage array controller. Final Act.
3--4. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403
1 Appeal 2009-014253.
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F.2d 754, 757-58 (CCP A 1968). Further, Appellants do not advance
reasons why this distinction is of consequence other that stating that the
difference exists. The alleged mere existence of differences between the
prior art and the claim does not establish nonobviousness. See Dann v.
Johnston, 425 U.S. 219, 230 (1976).
Appellants next argue,
In response to Appellant's arguments, the Response to
arguments section of the Office Action argued that the
"Lubbers controller is 'capable of performing both tasks'." Id.
at 11. That statement is made without any objective evidence
of record. It is clear that Lubbers merely refers to storage
controllers that manage RAID volumes. There is no hint
whatsoever that Lubbers provides any teaching or hint of
performing the following tasks of claim 48: ....
Appeal Br. 9.
We disagree with Appellants because the Examiner finds that the data
redundancies, via snap shot copies, evidence the capability of the Lubbers to
perform the functions of claim 48 (FF. 5). Appellants do not argue this
finding.
Appellants further argue, "Moreover, in view of the significant
differences between the claimed subject matter and the teachings of
Tohyama and Lubbers, a person of ordinary skill in the art would not have
been prompted to combine the teachings of the references to achieve the
subject matter of claim 48." Appeal Br. 10.
We disagree with Appellants because as found supra (FF. 5), the
Examiner found commonality between Lubbers and Tohyama in the data
redundancy feature shared by both references.
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Concerning claims 59---66, Appellants rely on the same arguments
advanced for independent claim 48 (Appeal Br. 11 ), and thus we sustain the
rejection of these claims for the same reasons set forth above.
Appellants argue concerning claims 56 and 66:
In the rejection of dependent claim 56, the Examiner
referred to i-f [0124] ofTohyama. 02/28/2012 Office Action at
8. This passage refers to a license management server machine
3, which is the licensing terminal mentioned in i-f [0009] of
Tohyama. Any update of the amount of credit available
performed by the license management server machine 3 would
be akin to performing this update at the server of claim 56. In
contrast, claim 56 specifically calls for an update of the amount
of credit available in the local storage medium of the storage
array controller based on information in response to the token
request. There is no teaching or hint in Tohyama of this feature
of claim 56.
Appeal Br. 12 (emphasis omitted).
Appellants' arguments "fail from the outset because ... they are not
based on limitations appearing in the claims" and are not commensurate with
the broader scope of claim 56 which does not specify where the updating
occurs for the amount of credit available. In re Self, 671 F.2d 1344, 1348
(CCP A 1982).
Concerning claims 57-69, representative claim 57 requires the
response to the token request comprise a software module, executable by the
storage array controller, for executing the service request.
Appellants argue:
According to claim 57, a token request is transmitted by the
storage array controller for a service token to a server, and the
response to the token request is received by the storage array
controller, where the response to the token request is
transmitted by the server after the server validates the token
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request. It is this response to the token request that comprises
the software that is executable by the storage array controller
for executing the service request for performing a data
redundancy operation with the array of storage devices that
implements RAID storage of data. It is clear that the subject
matter of claim 57 is clearly not found in Tohyama, and claim
57 (and claim 69) are therefore further allowable for the
foregoing reasons.
Appeal Br. 13.
We are not persuaded by Appellants' arguments because they are
based on a sequence of steps in a method without the claim requiring such
sequencing. Unless the steps of a method claim actually recite an order, the
steps are not ordinarily construed to require one. Altiris Inc. v. Symantec
Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003); Interactive Gift Express, Inc.
v. CompuServe Inc., 256 F.3d 1323, 1342--43 (Fed. Cir. 2001); see also
Loral Fairchild Corp. v. Sony Corp., 181F.3d1313, 1322 (Fed. Cir. 1999).
Second, Appellants do not explain how Tohyama fails to meet the claim
requirements except for a general allegation that "[i]t is clear that the subject
matter of claim 57 is clearly not found in Tohyama" (Appeal Br. 13). The
mere existence of differences between the prior art and the claim does not
establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976).
The issue is "whether the difference between the prior art and the subject
matter in question 'is a differen[ ce] sufficient to render the claimed subject
matter unobvious to one skilled in the applicable art."' Id. at 228 (citation
omitted). Against these factors, we find that the Examiner properly made
finding sufficient to establish a prima facie case of obviousness to reject
claim 57 under 35 U.S.C. § 103. (Answer 10).
Appellants' arguments to claims 67 and 70 amount to nothing more
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than a repeat of the involved claim language and hence are unpersuasive.
See id.
Claims 55, 65, and 68
Appellants argue,
[T]he Examiner has not cited any objective evidence to support
the allegation that decrypting an encrypted code contained in a
response to a token request is a well-known feature. Absent
objective evidence that would provide support for the taking of
"official notice," it is respectfully submitted that the taking of
"official notice" in the obviousness rejection of claims 55, 65,
and 68 is erroneous, and is therefore traversed by Appellant.
Appeal Br. 14--15.
The Examiner responds that the "Appellant simply stated in
Appellant's previous response ( 11/2/2011) that Appellant believed the
Official Notices to be improper. Appellant did not provide any evidence or
support for the traversal as required by the MPEP." Answer 17 (emphasis
omitted).
Our review of the record below finds the subject Official Notice is
based on "encryption and decryption are old and well known to those of
ordinary skill in the art, and official notice to that effect is hereby taken. For
example, encryption/decryption methods are commonly used for securely
transferring information." Final Act. 9. Our review of Appellants'
Response dated Nov. 2, 2011, reveals that Appellants only asserted that
the Office Action has not cited any objective evidence to
support the allegation that decrypting an encrypted code
contained in a response to a token request is a well-known
feature. Absent objective evidence that would provide support
for the taking of "official notice," it is respectfully submitted
that the taking of "official notice" in the obviousness rejection
of claims 55, 65, and 68 is erroneous ....
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Response at 11.
Although noting that the Examiner relied only on Official Notice to
support the obviousness of a particular limitation (Id.), the Appellants have
not specifically pointed out the supposed errors in the Examiner's taking of
Official Notice, "includ[ing] stating why the noticed fact is not considered to
be common knowledge or well-known in the art. See 37 CPR 1.11 l(b )."
MPEP § 2144.03(C). An adequate traverse must contain adequate
information or argument to create on its face a reasonable doubt regarding
the circumstances justifying Examiner's notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
That has not been done here. When an Appellant does not seasonably
traverse a well-known statement during examination, the object of the well-
known statement is taken to be admitted prior art. In re Chevenard, 139
F.2d 711 (CCPA 1943).
In our view, the Examiner judicially applied assertions that certain
facts are well known or common knowledge in the art by providing a
technical line of reasoning underlying the determination of obviousness that
is clear and unmistakable. MPEP § 2144.03(B) and (E). We therefore credit
the Official Notice of the Examiner with respect to the above listed facts.
Appellants have not provided any evidence to rebut these finding by the
Examiner. Hence, we find no error in the Examiner's use of Official Notice
as cited above and will not separately address those arguments with respect
to the individual claims below.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 48-70 under
35 U.S.C. § 103.
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DECISION
The decision of the Examiner to reject claims 48-70 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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