Ex Parte Walther et al

Patent Trial and Appeal Board

Jan 4, 2017

12105049 (P.T.A.B. Jan. 4, 2017)

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.
12/105,049 04/17/2008 Clayton H. Walther 016295.3267 4988
31625 7590 01/06/2017
BAKER BOTTS L.L.P.
PATENT DEPARTMENT
98 SAN JACINTO BLVD., SUITE 1500
AUSTIN, TX 78701-4039
EXAMINER
SIMONETTI, NICHOLAS J
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
01/06/2017 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):
tracy .perez @ bakerbotts. com
juli.luong@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAYTON H. WALTHER
and VADIM VSEVOLODOVICH IVANOV1
Appeal 2016-001943
Application 12/105,049
Technology Center 2100
Before JASON V. MORGAN, JON J. JURGOVAN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 5—10, 12—15, and 17—20, all pending claims of the
application.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Dell Products L.P. See
Appeal Brief 3.
2 Claims 3,4, 11, and 16 are cancelled.
Appeal 2016-001943
Application 12/105,049
STATEMENT OF THE CASE
According to Appellants, the application relates to distributing hot
spare disks in a storage array. Spec. I.3 In the event a failure is detected in
an active storage drive in a first storage resource, one or more hot spare
drives in a second storage resource are selected to rebuild the failed active
storage drive, based on a mapping of the location and speed of the hot spare
drives. Spec. 16—17. Claims 1, 10, and 15 are independent. Claim 1 is
representative and is reproduced below:
1. A system, comprising:
a storage array including a plurality of storage resources
including a plurality of active storage drives and a plurality of
hot spare drives; and
a controller coupled to the storage array, the controller
configured to:
determine one or more operational parameters associated
with each hot spare drive;
determine one or more operational parameters associated
with each storage resource;
based on the determination of the one or more operational
parameters of each hot spare drive, generate a mapping of the
location and speed of hot spare drives in the plurality of storage
resources;
detect a failure in an active storage drive in a first storage
resource of the plurality of storage resources;
using at least the map and the one or more operational
parameters associated with a second storage resource, determine
a particular hot spare drive in the second storage resource
3 Throughout this Opinion, we refer to: (1) Appellants’ Specification filed
Apr. 17, 2008 (Spec.); (2) the Final Office Action (Final Act.) mailed Sept.
11, 2014; (3) the Appeal Brief (Appeal Br.) filed Mar. 19, 2015; and (4) the
Examiner’s Answer (Ans.) mailed Oct. 7, 2015.
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Application 12/105,049
configured to rebuild the failed active storage drive in a faster
time than each of the other hot spare drives;
select the particular hot spare drive in the second storage
resource for rebuilding the failed active storage drive in the first
storage resource; and
provide the particular hot spare drive in the second storage
resource to rebuild the failed active storage drive in the first
storage resource.
App. Br. 19 (Claims App’x).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Nelson et al. (“Nelson”)
Horn
Rowe et al. (“Rowe”)
Ishikawa et al.
(“Ishikawa”)
Schmitz
US 5,666,512
US 2005/0102552 Al
US 7,146,522 B1
US 2007/0067666 Al
US 2007/0088990 Al
Sept. 9, 1997
May 12, 2005
Dec. 5, 2006
Mar. 22, 2007
Apr. 19, 2007
REJECTIONS
Claims 1, 2, 6, 10, 13, 15, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Horn, Ishikawa, and Schmitz. Final
Act. 2-17.
Claims 8, 9, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horn, Ishikawa, Schmitz, and Rowe. Final Act. 17—
22.
Claims 5, 7, 12, 14, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horn, Ishikawa, Schmitz, and Nelson. Final
Act. 23-27.
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Application 12/105,049
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUE
Whether the Examiner erred in concluding it would have been
obvious to combine the teachings and suggestions of Schmitz, Horn, and
Ishikawa in the manner recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ arguments that the Examiner has erred. We disagree with
Appellants’ conclusions and we adopt as our own: (1) the findings and
reasons set forth by the Examiner in the Office Action from which this
appeal is taken (Final Act. 2—17) and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(Ans. 2—7). We concur with the conclusions reached by the Examiner, and
we highlight the following for emphasis.
The Examiner relies on the combination of Horn, Ishikawa, and
Schmitz to teach or suggest all of the limitations recited in claim 1. Final
Act. 2. More specifically, the Examiner states
Horn in view of Ishikawa does not teach that the disk speed
selection criteria will yield the faster rebuild time as described in
claim 1. Schmitz teaches how to determine the particular hot
spare drive which will: rebuild the failed active storage drive in
a faster time than each of the other hot spare drives.
Final Act. 6.
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Application 12/105,049
Appellants argue that the combination of Horn, Ishikawa, and Schmitz
is improper because Schmitz teaches away from the present invention.
A reference that properly teaches away can preclude a determination
that the reference renders a claim obvious. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326—27 (Fed.Cir.2009).
Whether or not a reference teaches away from a claimed invention is a
question of fact. See In re Napier, 55 F.3d 610, 613 (Fed.Cir.1995).
To this end, Appellants argue “Schmitz explicitly discounts and
expressly excludes determining ‘a particular hot spare drive in the second
storage resource configured to rebuild the failed active storage drive in a
faster time than each of the other hot spare drives,’” as claimed, by stating
current hot spare drive solutions “implementing a hot spare drive with
greater write speed . . . are typically not cost-effective and still produce less
than desirable resultsAppeal Br. 11.
We find Appellants arguments unpersuasive. In In re Gurley, our
reviewing court emphasized that “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). Thus, the “mere disclosure of
alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201
(Fed.Cir.2004). Our reviewing court has further explained that just because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes. Gurley, 27 F.3d at 553.
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Here, a system implementing a known technique such as determining
a particular hot spare drive “does not become patentable simply because it
has been described as somewhat inferior to some other product for the same
use,” such as a system that is described as less cost-effective or as producing
less than desirable results. Gurley, 27 F.3d at 553.
Moreover, Schmitz’ statement that current hot spare drives are
typically not cost-effective or produce less than desirable results suggests
(1) that hot spare drives may be developed to the point of usability, (2) that
there are circumstances in which hot spare drives are cost-effective, and (3)
that use of hot spare drives is governed by what one of ordinary skill would
have considered desirable for a particular application. Accordingly,
Appellants have not established that the reference unequivocally criticizes,
discredits or otherwise discourages use of hot spare drives. See Fulton at
1201.
Appellants further argue Schmitz teaches away because it criticizes
rebuilding a failed RAID disk drive with a single hot spare disk drive
because the speed of the rebuild can be somewhat slow. Appeal Br. 11.
Here also, Appellants fail to demonstrate Schmitz’s alleged inferior
combination is inapt for obviousness purposes. Gurley, 27 F.3d at 553.
Furthermore, “a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Id. Appellants concede
that Schmitz is likely to be productive of the result sought; rebuilding a
failed RAID disk drive. AppealBr.il. Appellants merely argue the
rebuilding process may be somewhat slow. Appeal Br. 11.
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Accordingly, we do not find any of the teachings from Schmitz
asserted by Appellants “criticize, discredit, or otherwise discourage” the
claimed system (Fulton, 391 F.3d at 1201) or suggest that the line of
development flowing from Schmitz’s disclosure is unlikely to be productive
of the result sought by Appellants. Gurley, 27 F.3d at 553.
Appellants argue the the proposed combination of Horn, Ishikawa,
and Schmitz is improper because it renders Horn unsatisfactory for its
intended purposes and because the combination changes the principle of
operation of Horn. Appeal Br. 13. Specifically, Appellants state “[sjtriping
the rebuild data across multiple hot spare disk drives as in Schmitz, would
change the principle of operation of Horn, which seeks to allow ‘the rebuilt
drive to be used during the rebuilding process as data is restored.’” Appeal
Br. 13 (citing Horn | 8).
We find Appellants arguments unpersuasive. Appellants respectively
rely on In re Ratti, 270 F.2d 810 (CCPA 1959) and In re Gordon, 733 F.2d
900 (Fed. Cir. 1984) as legal authority for this contention. Appeal Br. 13.
Initially, we note Appellants provide no explanation as to why Horn’s device
would be rendered unsuitable for its purpose of “volume rebuilding in a
RAID system for a networked storage system.” Horn 17. Appellants’
arguments in view of In re Gordon do not sufficiently support Appellants
contention.
In response to Appellants’ assertion that the combination changes the
principle of operation of Horn, the Examiner states the rejection “relies only
on teachings disclosed in the ‘Background’ section of the Schmitz
reference.” Ans. 5. Because the cited Background section discusses
selection of a single hot spare drive rather than “[sjtriping the rebuild data
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across multiple hot spare disk drives,” as alleged by Appellants, we agree
with the Examiner’s finding that the cited teachings from Schmitz have not
been improperly combined with the teachings of Horn and Ishikawa and do
not change the principle of operation of Horn. Ans. 5.
Moreover, even if the Examiner had relied upon the non-Background
portion of Schmitz, Appellants fail to establish why Horn could not continue
to use rebuilt drives during the rebuilding process merely because striping is
utilized. To the contrary, we find that Horn contemplates being used with
striped data in view of Horn’s discussion of striped data found throughout
Horn’s disclosure. See, e.g., Horn || 18, 20, and 22—24.
Accordingly, we agree with the Examiner that the In re Ratti and In re
Gordon decisions do not support Appellants’ contentions regarding Horn.
Appellants, again relying on In re Gordon and In re Ratti, argue the
the proposed combination of Horn, Ishikawa, and Schmitz is improper
because it renders Ishikawa unsatisfactory for its intended purpose and
because the combination changes the principle of operation of Ishikawa.
Appeal Br. 14.
Initially, we note Appellants provide insufficient explanation as to
why Ishikawa’s system would be rendered unsuitable for its purpose of
“provid[ing] a disk array system that makes it possible to reduce data
recovery time.” Ishikawa | 6. Appellants’ arguments in view of In re
Gordon, therefore, do not sufficiently support Appellants’ contention.
Next, Appellants argue Schmitz would change the principle of
operation of Ishikawa by “implementing a hot spare drive with greater write
speed” because in Ishikawa “it is necessary to properly select a spare disk
having physical specifications identical or close to those of the data recovery
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Application 12/105,049
target disk from among the plurality of spare disks.” Appeal Br. 15—17
(citing Schmitz 12, Ishikawa 146, emphasis omitted).
In response, the Examiner states
the procedure in Schmitz would not change the principle of
operation of Ishikawa . . . since, as cited by the Appellant,
Ishikawa has noted that ‘performance deterioration or a problem
in system operation may arise’, emphasis added, and as such the
procedure of Schmitz wherein a spare disk is used which has the
greatest write speed does not change the principle of operation
of Ishikawa . . . since it is well-known to those of common
knowledge in the art that the use of replacement spare disk
having greatest write speed, possibly greater than the failed drive
it is replacing, will not cause performance deterioration and is
not likely to cause a problem in system operation.
Ans. 6.
We agree with the Examiner’s finding that Ishikawa’s statement that
performance deterioration may arise when selecting a spare disk having
physical specifications insufficiently close to those of the data recovery
target disk is not persuasive to show the cited combination change the
principle of operation of Ishikawa; particularly in light of the Examiner’s
finding that one skilled in the art would have recognized the use of a
replacement spare disk having a greater write speed will not cause
performance deterioration, to which Appellants fail to specifically respond.
Accordingly, Appellants fails to show error in the Examiner’s finding of
obviousness.
For these reasons, we sustain the rejection of claim 1, as well as the
rejections of claims 2, 5—10, 12—15, and 17—20, for which no additional
arguments are offered. See Appeal Br. 17.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 5—10, 12—15,
and 17—20 under 35 U.S.C. § 103(a).
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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