Ex Parte Sankruthi

Board of Patent Appeals and Interferences

Jul 27, 2010

10760348 (B.P.A.I. Jul. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANAND D. SANKRUTHI
____________

Appeal 2008-005640
Application 10/760,348
Technology Center 2100
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Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-16. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s invention relates to methods, apparatus and systems for
the management of storage devices. In this sense, storage devices can
be abstracted to the concept of Logical Units (LUNs) examples of which
include individual Hard Disks (HDDs) and arrays of HDDs.
More particularly, the invention on appeal is directed to methods and
apparatus for determining the volume type for volumes on
computer LUNs where the computer is running the Windows operating
system or a variant thereof. (Spec. 1).

ILLUSTRATIVE CLAIM

Claim 1 is illustrative:
1. A method of determining volume types present on
a storage device, the method including the steps of
determining superficial specifying characteristics of a
volume on the storage device and correlating the
superficial specifying characteristics against one or more
previously determined volume characteristics thereby
inferring a method used for writing data onto the volume.

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PRIOR ART
Kim US 2003/0023811 A1 Jan. 30, 2003
Cabrera US 6,553,387 B1 Apr. 22, 2003
Mason US 6,611,896 B1 Aug. 26, 2003

REJECTIONS
Appellant appeals the following rejections:
1. The Examiner rejected claims 1-8, 13, 15, and 16 under 35 U.S.C.
§ 102(e) as anticipated by Kim.
2. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kim and Mason.
3. The Examiner rejected claims 10-12 and 14 under 35 U.S.C. §
103(a) as unpatentable over the combination of Kim and Cabrera.

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Did the Examiner err in finding under § 102 that Kim
discloses “correlating the superficial specifying
characteristics against one or more previously determined
volume characteristics thereby inferring a method used for
writing data onto the volume,” as recited in claim 1?

2. Did the Examiner err in finding under § 103 that the
combination of Kim and Cabrera would have taught or
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suggested identifying the volume type as either raid or
striped, within the meaning of independent claim 12? (See
Appellant’s argument p. 7 of the principal Brief).

FACTUAL FINDINGS
1. Kim discloses the RAID-0 type of RAID (Redundant Array of
Independent Disks) where striping is used. (para. [0010]).
2. Kim discloses the RAID-1 type of RAID (i.e., disk mirroring) where
no striping is used. (para. [0011]).
3. Kim’s Figure 3 depicts a metadata table that is stored in each disk
partition constructing one logical volume. (para. [0083]). The
metadata table of Figure 3 includes a Logical Volume Map 72.
4. Kim’s Figure 5 depicts Logical Volume Map 72 that further includes
a stripe size 97 for representing the size of stripe in case a
corresponding volume has striping type, and a raid level 98 for
representing the constructing type of the corresponding volume. (para.
[0102]).
5. Kim discloses that Stripe Size 97 represents the size of stripe in case
the corresponding volume has a striping type. (para. [0102]; Fig. 5).

Grouping of Claims
Appellant argues claims 1-8, 13, and 15-16 as a group (App. Br. 4-6).
We select representative claim 1 to decide the appeal for this group. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant argues independent claim 12 separately. (App. Br. 6-7).
We address claim 12 separately infra.
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ANALYSIS
Issue 1
We decide the question of whether the Examiner erred in finding
under § 102 that Kim discloses “correlating the superficial specifying
characteristics against one or more previously determined volume
characteristics thereby inferring a method used for writing data onto the
volume,” as recited in claim 1.
Appellant particularly contends that the aforementioned limitations
are not disclosed by Kim because “[n]o correlation or inference is made by
the method taught in Kim.” (App. Br. 5). Instead, Appellant contends that
“Kim teaches that the raid level is obtained by accessing the volume created
by [the] Logical Volume Manager.” (Id.). In the Reply Brief (filed July 20,
2007) Appellant essentially restates the same argument: “[A]s illustrated in
[Kim’s] FIGS. 10 and 11, in order to determine the raid level 98 of a logical
volume, the logical volume map, stored in a disk partition, is read directly.
(See ¶[0125].)” (Reply Br. 2).
The Examiner contends that the claims do not preclude using a
Logical Volume Manager (as disclosed by Kim, FF 4) to (directly) access
the RAID level (i.e., correlating the “superficial specifying characteristics”
which infers the method used for writing data onto the volume). (Ans. 11).
The Examiner finds that when Kim’s “RAID level is read directly, the
method of writing to the logical volume is inferred based on the RAID
level.” (Id.).
We begin our analysis by observing that Appellant has not argued a
particular interpretation or definition for the claimed “superficial specifying
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characteristics” in the Briefs. Therefore, we broadly but reasonably construe
the claimed “superficial specifying characteristics” as reading on any
characteristics of a volume on a storage device.2 We also particularly note
that Appellant’s imputed negative limitation of no direct reading is not
recited in the language of representative claim 1. (See Reply Br. filed July
20, 2007, ¶2, pg. 2). Therefore, we find Appellant’s arguments are not
commensurate with the broad scope of representative claim 1.3 On this
record, we find that Kim’s logical volume map metadata (FF 3-4) such as
the volume name 94 or volume ID 92 (Fig. 5) (i.e., “superficial specifying
characteristics”) is correlated with a previously determined volume
characteristic (i.e., RAID LEVEL 98, FF 4) to infer (from the particular
RAID type, see FF 1-2) the method used for writing data onto the volume, as
claimed. Therefore, we sustain the Examiner’s anticipation rejection of

2 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
3 “Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citation omitted). Thus, “each claim does not necessarily cover every
feature disclosed in the specification. When the claim addresses only some
of the features disclosed in the specification, it is improper to limit the claim
to other, unclaimed features.” Ventana Med. Sys., Inc. v. Biogenex Labs.,
Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (citation omitted).

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representative claim 1, and claims 2-8, 13, 15, and 16 which fall therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 9-11 and 14
Appellant contends that claims 9-11 and 14 depend from one of
independent claims 1 or 13 and are allowable for the same reasons
previously argued for claims 1 and 13. (App. Br. 6). Appellant further
contends that neither Mason nor Cabrera cures the deficiencies of Kim. (Id.).
In response, we find no deficiencies with Kim for the same reasons
discussed supra regarding claim 1. Therefore, we sustain the Examiner’s
§ 103 rejection of dependent claims 10, 11, and 14 over Kim and Cabrera.
For the same reason, we also sustain the Examiner § 103 rejection of
dependent claim 9 over Kim and Mason.

Issue 2
Independent claim 12
We decide the question of whether the Examiner erred in finding
under § 103 that the combination of Kim and Cabrera would have taught or
suggested identifying the volume type as either raid or striped, within the
meaning of independent claim 12.
We begin our analysis by noting that Appellant acknowledges that
Kim’s Figure 5 depicts a logical volume map containing a stripe size and a
raid level. (App. Br. 7, l. 3). We agree, as we find these features are clearly
shown in Kim’s Figure 5. (FF 4). Therefore, we find no support for
Appellant’s subsequent assertion that “Kim, does not disclose, teach or
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suggest ‘identifying the volume type as either ‘raid’ or ‘striped’ as claimed
in claim 12.” (App. Br. 7, ¶1).
We find at least Kim’s RAID LEVEL 98 (Fig. 5) indicates whether a
volume type is RAID, i.e., any RAID level including non striped RAID-1
(mirrored) or striped RAID-0. (See FF 1-2). Thus, we find Kim’s RAID
level alone teaches or suggests identifying the volume type as either “raid”
or “striped.” (Id.). Moreover, Kim expressly discloses that Stripe Size 97
represents the size of stripe in case the corresponding volume has a striping
type. (FF 5). For these reasons, we sustain the Examiner’s § 103 rejection of
independent claim 12 over Kim and Cabrera.

DECISION

We affirm the Examiner’s § 102 rejection of claims 1-8, 13, 15, and
16.
We affirm the Examiner’s § 103 rejections of claims 9-12 and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

Erc

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