Oracle America Inc.

Patent Trials and Appeals Board

Jun 16, 2021

2020000795 (P.T.A.B. Jun. 16, 2021)

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.
15/488,113 04/14/2017 Howard Hall P9334-US-CNT-1 5451
58328 7590 06/16/2021
ORACLE AMERICA INC.
c/o SNELL & WILMER L.L.P.; Attn: IP Docket
400 East Van Buren Street
Suite 1900
Phoenix, AZ 85004-2202
EXAMINER
BELETE, BERHANU D
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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):
IPDOCKET@swlaw.com
klembke@swlaw.com
ksandoval@swlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOWARD HALL, ILIA SOKOLINSKI, and MILAN MERHAR
____________

Appeal 2020-000795
Application 15/488,113
Technology Center 2400
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Oracle
International Corporation. (Appeal Br. 1).
Appeal 2020-000795
Application 15/488,113

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to systems and methods for
managing storage in digital networks (Spec. 1, lines 15, 16). Claim 1,
reproduced below, is representative of the subject matter on appeal.

1. A digital processing system for processing data packets in at
least one data network, comprising:
a storage resource card;
wherein the storage resource card includes a first stack for
performing a first type of packet processing with a first number of
processing steps on data packets received in the at least one network
and a second stack for performing a second type of packet processing
that comprises a second number of processing steps on data packets
received in the at least one network, wherein the second number of
processing steps is less than the first number of processing steps;
wherein the storage resource card receives packets and
determines whether the received packets correspond to the first type
or second type of packet processing, wherein the storage resource card
injects packets that correspond to the first type of packet processing
into the first stack, and wherein the storage resource card processes
packets that correspond to the second type of packet processing
according to the second stack.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Mackenthun US 5,450,578 Sept. 12, 1995
Craft US 6,427,171 B1 July 30, 2002
Boucher US 6,434,620 B1 Aug. 13, 2002
Philbrick US 2005/0204058 A1 Sept. 15, 2005

Appeal 2020-000795
Application 15/488,113

3

The following rejections are before us for review:
1. Claims 1, 5, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Philbrick and Craft.
2. Claims 2, 3, and 4 are rejected under 35 U.S.C. § 103 as
unpatentable over Philbrick, Craft, and Boucher.
3. Claims 6–9 and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Craft and Boucher.
4. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Craft, Boucher, Mackenthun.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Claims 1–12
The Appellant argues that the rejection of claim 1 is improper because
the claim requires that “the storage resource card includes a first stack . . .
and a second stack” and that the prior art fails to disclose this (Appeal Br. 5–
7).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Philbrick at paragraphs 80, 81, 109, 115, and
Figures 1 and 2 (Ans. 3, 4).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-000795
Application 15/488,113

4

We agree with the Appellant. Here, the argued claim limitation
requires that “the storage resource card includes a first stack . . . and a
second stack.” Thus, the claim requires the “resource card” to include both a
“first stack” and a “second stack.” The citations to Philbrick at
paragraphs 80, 81, 109, 115, and Figures 1 and 2, fail to disclose this. For
example, in Figure 1 and paragraph 80, the INIC 50 and host 52 (which
include media access MAC 73) are two separate entities, and not shown on a
“single resource card.” In paragraph 80 it is disclosed that the “fast-path”
occurs on INIC 50, and the “slow-path” occurs on the MAC layer 73 of the
host 52 which is a separate entity and not shown on the same “storage
resource card” as claimed. Accordingly, the rejection of claim 1 and its
dependent claims is not sustained. Claim 6 contains a similar limitation and
the rejection relies on the same prior art citations and the rejection of this
claim and its dependent claims is not sustained for the same reasons given
above.
Claim 13
The Appellant argues that the rejection of claim 13 is improper
because the claim requires in part that “the data packets are transmitted from
one or both of the first stack and the second stack to one or both of a first
storage medium of a first type and a second storage medium of a second
type via mediation” and that the prior art fails to disclose this (Appeal
Br. 10–12) (emphasis omitted).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Craft at step 59 (Figure 3) and column 4, lines 1–25
(Final Act. 8). The Examiner also makes a citation to Philbrick at
Appeal 2020-000795
Application 15/488,113

5

paragraphs 76, 80, 109, and Figures 1 and 2 as disclosing mediation
(Ans. 6).
We agree with the Appellant. Although mediation may be
conventional, here the claim requires it be used in a specific manner to
transmit the data packets from one or both of the first and second stacks “to
one or both of a first storage medium of a first type and a second storage
medium of a second type via mediation.” Here, the cited prior art fails to
disclose this. For example, Craft in Figure 3, at step 59, merely shows a
“fast-path candidate” determination step, and discloses nothing related to
types of storage media. The remaining citations to the prior art fail to
disclose the argued claim limitation as well. Accordingly, the rejection of
claim 13 and its dependent claims is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 5, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Philbrick and Craft.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 2, 3, and 4 under 35 U.S.C. § 103 as unpatentable over
Philbrick, Craft, and Boucher.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 6–9 and 11 under 35 U.S.C. § 103 as unpatentable over
Craft and Boucher.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 10 under 35 U.S.C. § 103 as unpatentable over Craft,
Boucher, and Mackenthun.
Appeal 2020-000795
Application 15/488,113

6

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 12, 13 103(a) Philbrick, Craft 1, 5, 12, 13
2, 3, 4 103(a) Philbrick, Craft,
Boucher
2, 3, 4
6–9, 11 103(a) Craft, Boucher 6–9, 11
10 103(a) Craft, Boucher,
Mackenthun
10
Overall
Outcome
1–13

REVERSED