Ex Parte re et al

Patent Trial and Appeal Board

Jan 30, 2014

10851621 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VINCENT RE and DANIEL MOONEY
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Appeal 2011-008072
Application 10/851,621
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008072
Application 10/851,621
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STATEMENT OF THE CASE
The Examiner finally rejected claims 2-12 and 16-25. Claims 1 and
13-15 were canceled. (App. Br. 19). Appellants appeal therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to "integration of mainframe and non-
mainframe tape technologies." (Spec. 1). Claim 3, reproduced below, is
representative of the claimed subject matter:
3. An apparatus for facilitating tape access from non-mainframe
platform software applications to mainframe tape hardware,
comprising:
[a] an emulation layer adapted to [a1] provide an interface for a
non-mainframe application, and [a2] map a tape access request
in a non-mainframe format received through the interface to a
neutral format request; and
[b] a tape request processing component adapted [b1] to receive
the neutral format request from the emulation layer, and [b2]
convert the neutral format request to an equivalent mainframe
format command for accessing mainframe tape device;
[a3] wherein the emulation layer is a client deployed on a
personal computer comprising an end user system that operates
with a non-mainframe platform, and
[b3] the tape request processing component is provided as a
service from a server when the neutral format request is
transmitted to the server.
(Disputed limitations emphasized, elements lettered; paragraphs returns
added).
Appeal 2011-008072
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REJECTION
Claims 2-12 and 16-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of U.S. Patent
No. 6,785,744 B2 ("Fairclough") and of "Storage area network
applications," 2002, by DeCusatis ("DeCusatis").

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the
obviousness rejection of claims 3-5, 7-12, 16, 18- 20, and 22-24 on the basis
of representative claim 3. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1
We address the rejection of claims 2 and 17, 6 and 21, and 25
separately, infra.

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
obviousness rejection of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants' Appeal Brief. (Ans. 11-25). We
highlight and address specific findings and arguments below.

1 Appellants filed a Notice of Appeal on Sept. 29, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.

Appeal 2011-008072
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CLAIM 3
Regarding the claim 3 limitations, [a] "an emulation layer adapted
to . . . [a2] map a tape access request in a non-mainframe format received
through the interface to a neutral format request" and [a3] "wherein the
emulation layer is a client deployed on a personal computer comprising an
end user system . . . ," Appellants contend "DeCusatis discloses that 'iSCSI
(SCSI over IP) uses a software agent on the server . . . " (Reply Br. 4).
Appellants' contentions are not persuasive. First, the Examiner finds,
and we agree, DeCusatis' server would have taught or suggested the broadest
reasonable interpretation of the claimed "personal computer" [(non-
mainframe computer / server)] and "comprising an end user system" [(end
users use the server)]. (Ans. 20-21). Appellants fail to cite a more narrow
definition of "personal computer" and "end user system" in the
Specification.2
Second, the Examiner combines Fairclough's interface on host
computer 2 (any computer acting as a SCSI imitator; col. 3, ll. 18-20; col. 1,
l. 37) ("personal computer comprising an end user system") with DeCusatis'
software agent which maps "a tape access request in a non-mainframe
format . . . to a neutral format request" to teach or suggest the limitations at

2 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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issue. (Ans. 12-15). We find the Examiner's articulated reasoning to
combine Fairclough and DeCusatis (i.e., to increase access to the vast
amount of data in storage that cannot be held by one machine and offloading
storage traffic; Ans. 15) possesses the requisite rational underpinning to
support the legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claim 3, and of claims 4-5, 7-
12, 16, 18- 20, and 22-24, which fall therewith.
CLAIMS 2 AND 17
Regarding the claim 17 limitation "the emulation layer comprises a
plug-in component for the non-mainframe application . . . ," Appellants
contend:
DeCusatis discloses that "iSCSI (SCSI over IP) uses a software
agent on the server to encapsulate SCSI data into an IP packet,
and tunnel that encapsulated packet through the TCP/IP stack"
and, thus, also does not disclose, teach, or suggest Appellants'
recited claim language. (DeCusatis, Page 444, paragraph 2,
emphasis added). Accordingly, DeCusatis is specifically
limited to a server-to-server information transport scenario.
DeCusatis does not disclose, teach, or suggest an "emulation
layer [that] is a plug-in component of the non-mainframe
application . . . ."
(Reply Br. 7).
Appellants' contentions are not persuasive. The Examiner finds and
we agree, DeCusatis' software agent running on Fairclough's non-mainframe
would have taught or suggested the broadest reasonable interpretation "a
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plug-in component of the non-mainframe application . . . ."3 (Ans. 22-23).
Because Appellants fail to cite a more narrow definition of "plug in
component" in the Specification, we are not persuaded the Examiner’s
broader interpretation is overly broad or unreasonable. (See footnote 2).
Regarding claim 2, Appellants argue a limitation ("plug-in
component") not recited in claim 2. (Reply Br. 6; App. Br. 33).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claims 2 and 17.
CLAIM 25
Regarding the claim 25 limitations:
wherein the tape request processing component is
operable to:
dynamically attach a tape drive for the client on an as-
needed basis; and
automatically free the tape drive for reallocation to one of
a plurality of clients,
wherein there is no assignment of the tape drive to a
particular client.
Appellants contend:
[T]he description in Fairclough makes clear that the SCSI
commands received from the host computer 2 identify specific
locations for storage. . . . Specifically, "[e]ach SCSI drive
address is associated with a distinct [VTS] logical tape drive
address." (Fairclough, Column 5, lines 8-9). . . . Thus, because

3 “[A]nalysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int'l Co. v. Teleflex Inc. 550 U.S. 398, 418 (2007).

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Fairclough indicates that the drives or other library locations
are assigned to the host computer 2 and identified based on the
received commands, Fairclough cannot be said to disclose,
teach, or suggest . . . "dynamically attach a tape drive for the
client on an as-needed basis; . . . "
(Reply Br. 8).
As an initial matter of claim construction, a question arises as to how
much patentable weight should be given the negative limitation "wherein
there is no assignment of the tape drive to a particular client," which was
added by amendment, because the cited support (App. Br. 17; Spec. 12, ll.
13-20) does not identify any "descri[ption of] a reason to exclude the
relevant limitation." Santarus, Inc. v. Par Pharmaceutical, Inc., No. 2010-
1360, 1380 (Fed. Cir. Sep. 4, 2012). ("Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation. Such written description support need not rise to the
level of disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material.").
Assuming arguendo the negative limitation might be given patentable
weight by our reviewing court, we find Appellants' contentions
unpersuasive. Contrary to Appellants' contentions, Fairclough does not
disclose the drives are assigned to the host computer 2. Instead, Fairclough
discloses the "SCSI drive address is associated with a distinct VTS [(virtual
tape server)] logical tape drive address." (Fairclough col. 5, ll. 8-9; Reply
Br. 8). Specifically, we find Fairclough's association of the SCSI drive
address with a distinct VTS logical tape drive address of a virtual tape server
would have taught or suggested "dynamically attach[ing] the tape drive" and
the aforementioned contested negative limitation (no assignment to host
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computer 2, i.e., a “particular client”). (Fairclough col. 5, ll. 8-9; also see
Ans. 24). Fairclough's "a distinct VTS logical tape drive address" reflects a
mapping from a logical address space to a physical (hardware) address
associated with a given tape drive. (Id.).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claim 25.
CLAIMS 6 AND 21
Regarding claims 6 and 21, Appellants make similar arguments to
arguments asserted in the rejection of claim 3. (Reply Br. 9). However, we
are not persuaded the Examiner erred regarding the rejection of claims 6 and
21 for the same reasons given above regarding independent claims 3 and 16.

DECISION
We affirm the Examiner's rejection of claims 2-12 and 16-25 under
§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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