Seagate Technology LLCDownload PDFPatent Trials and Appeals BoardOct 4, 20212020002600 (P.T.A.B. Oct. 4, 2021) Copy Citation 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. 15/439,024 02/22/2017 Odie Banks Killen JR. 0430.072693US01 2084 98068 7590 10/04/2021 MRG/HD - Seagate Technology LLC c/o Mueting Raasch Group 111 Washington Ave. S., Suite 700 Minneapolis, MN 55401 EXAMINER BORROMEO, JUANITO C ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): ptodocketing@mrgs.com randi.j.walz@seagate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ODIE BANKS KILLEN JR., DAVID DICK ANDERSON JR., and JOHN DAVIS SCHNABEL Appeal 2020-002600 Application 15/439,024 Technology Center 2100 Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use “Appellant” to reference the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Seagate Technology LLC.” Appeal Br. 1. Appeal 2020-002600 Application 15/439,024 2 STATEMENT OF THE CASE Appellant’s Invention The present invention relates to “a hot-swappable protocol expander module [(PEM)] for a storage array.” Spec. ¶ 1. Claims 1 and 10, reproduced below, are illustrative of argued subject matter. 1. A data storage array, comprising: an enclosure; a backplane at the base of the enclosure, the backplane comprising a plurality of drive connectors on a top surface of the backplane and at least one protocol module connector on the top surface; a plurality of data storage drives coupled to the drive connectors of the backplane, a major surface of the data storage drives normal to the backplane; and a [PEM] coupled to the at least one protocol module connector of the backplane such that the [PEM] is positioned in a gap between at least one of the data storage drives and the top surface of the backplane, the [PEM] hot-swappable from the backplane through a top of the enclosure. 10. A data storage array, comprising: an enclosure; a backplane at the base of the enclosure; a plurality of connectors on a top surface of the backplane, the connectors configured to couple to an array of data storage drives; and a [PEM] slidably removable via an opening in a side of the enclosure, the side of the enclosure being covered by a corresponding side of a rack in a rack-mounted configuration of the enclosure, the [PEM] interfacing via a connector to a lower surface of the backplane that is opposed to the top surface. Appeal Br. 12–13. Appeal 2020-002600 Application 15/439,024 3 Rejections Claims 1–8, 10–15, and 17–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Jahne (US 6,535,381 B2; Mar. 18, 2003) and Hyatt (US 5,485,590; Jan. 16, 1996). Final Act. 2–6. Claims 9 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Jahne, Hyatt, and Bakthavathsalam (US 7,917,682 B2; Mar. 29, 2011). Final Act. 7. OPINION Claims 10–162 Claims 10–16 are argued collectively. Appeal Br. 9–10. We are unpersuaded of error and therefore sustain the Examiner’s decision to reject claims 10–16. We address the issues with reference to claim 10. 1. First Issue: Is the Examiner’s determination of design choice in error? Appellant contends:3 [T]he Examiner does not appear to argue that the combination of Jahne . . . and Hyatt . . . teaches or suggests a [PEM] that is mounted relative to a backplane as set forth in the claims. Instead, the Examiner alleges that any location of such a protocol module is an obvious design choice[.] . . . [However, t]he location of the protocol modules can affect space efficiency of the storage array, as well as maintainability and cost. . . . Therefore, the location of a [PEM] is not merely an obvious design choice, as some locations may or may not 2 We begin with claims 10–16 only because doing so simplifies the explanation of our analysis. 3 Though presented in arguments for claim 1, we will consider these contentions for both claims 1 and 10. See Final Act. 5 (“Claim[] 10 . . . recite[s] the corresponding limitations [of] claim 1 . . . [and is] rejected accordingly.”). Appeal 2020-002600 Application 15/439,024 4 meet these goals of space efficiency and/or ease of hot-swapping. Choice of location can also affect other aspects of a data storage array besides hot-swap-ability, such as cost, susceptibility to electrical noise, ease of manufacture, etc. . . . Appeal Br. 5–6 (paragraphing altered). We are unpersuaded because the Examiner sufficiently supports the proposed combination of the applied prior art by presenting the following four reasonable determinations. First, Hyatt’s data storage array has a hot-swappable protocol cartridge. Final Act. 3 (citing Hyatt’s “removable communication protocol cartridges 20a and 20b”). Second, Jahne’s data storage array has an enclosure, backplane, and hot-swappable storage drives. Id. at 2 (citing Jahne’s enclosure 664, backplane 603, and drives 620)). Third, it would have been obvious to modify Jahne’s data storage array by adding Hyatt’s cartridge in view of its disclosed function and being hot-swappable. Id. at 3. Fourth, it would have been an obvious “design choice” to place the cartridge within available voids of Jahne’s data storage array—including at the claimed location “interfacing . . . a lower surface of the backplane” (i.e., within the void under the backplane 603). Final Act. 3; Ans. 4 (“[T]he [cartridge] of Hyatt[] would be located in the void space near 609 shown in Fig[ure] 6 of Jahne.”). Appeal 2020-002600 Application 15/439,024 5 Given the above and Jahne’s cited Figure 6, the contested design-choice determination is well-supported. Jahne’s Figure 6, reproduced below, illustrates a perspective view of the cited storage array. Jahne, col. 1, ll. 46–47. As can be seen, and as the Examiner determines (supra 4 (determinations)), the storage array has voids under the backplane 603 and between the drives 620 and enclosure 664. Because Hyatt’s cartridge is a discrete device, and as the Examiner further determines (id.), an ordinarily skilled artisan would consider placing the cartridge within the storage array’s voids. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is . . . a person of ordinary creativity[.]”). Jahne’s Figure 6, above, illustrates a perspective view of Jahne’s cited storage array. Appeal 2020-002600 Application 15/439,024 6 Appellant does not dispute the above determinations. Nor does Appellant dispute that the proposed location of the added cartridge—within the storage array’s void under the backplane 603—achieves the claimed location of the PEM (“interfacing . . . a lower surface of the backplane”). Appellant rather contends that all possible locations of the cartridge may not be equally desirable (e.g., can differently affect the maintainability and cost of the storage array) and, therefore, the proposed location would not be an obvious design choice. See supra 3–4 (contentions). We disagree because locating a discrete add-on component within a void is obvious. KSR, 550 U.S. at 421. Further, when choosing a void of Jahne’s storage array, the artisan need only choose from two voids—under the backplane 603 and between the drives 620 and enclosure 664. Such a choice is not only a design choice, but even furthermore a simple design choice. See, e.g., Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (“[The artisan] would therefore have two predictable choices . . . , providing them with a simple design choice as to whether to plot server side or terminal side.”). 2. Second Issue: Does Hyatt teach away from the Examiner’s proposed combination of Jahne and Hyatt? Appellant also contends: . . . Hyatt expressly teaches protocol cartridges being mounted on an exposed front panel[—]such that “the protocol cartridges may be replaced without disassembly of the module or its removal from the rack[]” (Hyatt, col. 4, lines 10–13 . . . ). Thus[,] Hyatt teaches the front panel is an optimum location for hot swappable protocol cartridges, which teaches away from placing the modules as set forth in the claims. . . . Appeal 2020-002600 Application 15/439,024 7 Appeal Br. 6.4 We are unpersuaded because, even assuming (arguendo) Appellant is correct in contending Hyatt teaches a “front panel” as an optimum location for the cartridge, Appellant has not shown an artisan would be discouraged from pursuing other locations. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference . . . but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). 3. Third Issue: Is there support for making the added cartridge “slidably removable via an opening in a side of the enclosure”? Appellant also contends there is no presented reason for the added cartridge to be, as claimed, “slidably removable via an opening in a side of the enclosure” of Jahne’s storage array. Appeal Br. 9–10. We disagree for each of two reasons. First, cartridges have long and ubiquitously been slid through a side-opening of a paired device’s enclosure (i.e., ‘plugged’ in). Second, and as the Examiner finds, the references suggest such access for the added cartridge of the Jahne-Hyatt combination because Jahne teaches such access for hot-swappable components (e.g., drives 421, 422) and Hyatt teaches that the cartridge (e.g., cartridges 20a, 20b) can be a hot-swappable component. Ans. 6; see also Jahne Fig. 4 (access to the drives 421, 422); Hyatt, col. 4, ll. 4–6 (“removable . . . cartridges 20a and 20b plugged into sockets through the front panel”). Claims 1, 3, 8, 9, and 17–20 Claims 1, 3, 8, 9, and 17–20 are argued collectively. Appeal Br. 5–6. We are unpersuaded of error and therefore sustain the Examiner’s decision 4 See supra n.3. Appeal 2020-002600 Application 15/439,024 8 to reject claims 1, 3, 8, 9, and 17–20. We address the issues with reference to claim 1. The Examiner and Appellant present the same design-choice determinations and contentions for claims 1 and 10. See supra fn.3. However, we must consider that claims 1 and 10 recite different locations of the PEM. Per claim 1’s location, i.e., “in a gap between . . . [a] data storage drive[] and the top surface of the backplane,” the Examiner determines it would have been an obvious design choice to place Hyatt’s cartridge between Jahne’s drives 421, 422 and backplane 603. Final Act. 3. Thus, a difference in the design-choice issues for claims 1 and 10 is that Jahne’s storage array has a void at claim 10’s location of the PEM (under backplane 603) and lacks a void at claim 1’s location of the PEM (between the drives 620 and backplane 603). See supra 5–6 (reproducing Jahne’s Fig. 6 and addressing the design choice issue for claim 10). The above difference does not change our holding (or our respective analysis) that Appellant fails to show the Examiner erred in proposing the Hyatt-Jahne combination for claim 1. We are not apprised of any meaningful difference between adding Hyatt’s cartridge to Jahne’s storage array by occupying one of several locations already having open space (i.e., the location under Jahne’s backplane 603 for claim 10, addressed above) and by occupying one of several locations where open space can be created by merely distancing two connected but separable components of the array (i.e., the location between Jahne’s drives 620 and backplane 603 for claim 1, addressed below). When viewing Jahne’s Figure 6, we see the Appeal 2020-002600 Application 15/439,024 9 latter ‘squeezing’ of the cartridge—between the drives 620 and backplane 603—as a conspicuous option.5 Appellant does not persuasively rebut the prima facie case. Appellant contends “some locations may or may not . . . affect . . . hot swap[p]ability, . . . cost, susceptibility to electrical noise, ease of manufacture, etc.” Appeal Br. 6 (block-quoted at supra 4). This contention fails to show that ‘squeezing’ a cartridge between Jahne’s drives 620 and backplane 603 would not have been obvious, e.g., would have resulted in a different functionality, unexpected advantage, or unique challenge as compared to other placements. Appellant’s further contentions are similarly unpersuasive. 5 We perceive the process as similar to placing an add-on engine component (e.g., supercharger) in a vehicle’s engine bay and, as part thereof, distancing other engine components (e.g., spacing them) to create needed space for the add-on component. Prior to KSR, proposing even such a “simple mechanical” modification required supporting citation to an express “teaching or motivation” in the prior art. Teleflex, Inc. v. KSR Int’l Co., 119 F. App’x 282, 285 (Fed. Cir. 2005), rev’d, KSR. Since KSR, the simplicity of the modification and problem—e.g., having a simple mechanical nature—can support a prima facie case of obviousness. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (“We have consistently stated that courts may find a motivation to [modify] in the nature of the problem to be solved[. T]his form of motivation . . . is particularly relevant with simpler mechanical technologies[.]”) (internal quotation marks and brackets omitted)); see also Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748 F.3d 1354, 1360 (Fed. Cir. 2014) (“[I]n the medical arts . . . solutions are less likely to be genuinely predictable . . . as compared with other arts such as the mechanical devices in KSR.”). Appeal 2020-002600 Application 15/439,024 10 Claim 3 Claim 3 is separately argued. Appeal Br. 8. We are unpersuaded of error and therefore sustain the Examiner’s decision to reject claim 3. Claim 3 depends from claim 1 and adds: “[T]he backplane comprises a void to facilitate at least part of the [PEM] that extends toward a bottom cover of the enclosure.” Appeal Br. 12 (Claims Appendix). We are unpersuaded the Examiner erred because the Hyatt-Jahne combination, proposed for base claim 1 and thus claim 3, includes distancing of Jahne’s drives 620 and backplane 603 to create a void for the added cartridge. See supra 8–9 (analysis for claim 1). This void adjoins the metal sheet forming Jahne’s backplane 603. Id. Appellant does not show this adjoining of the void and backplane 603 fails to teach or suggest the claimed “backplane comprises a void to facilitate at least part of the [PEM] that extends toward a bottom cover of the enclosure.” For example, Appellant does not show a required meaning of “backplane” that precludes interpreting such a metal sheet and adjoined void as the claimed “backplane compris[ing] a void.” Nor does Appellant contend such adjoining of the metal sheet and void fails to suggest recessing of the metal sheet (to seat the added cartridge) that achieves the claimed backplane “backplane compris[ing] a void.” Claims 4–7 and 19 Claims 4–7 and 19 are argued collectively. Appeal Br. 8. We are persuaded of error in the rejection of claim 4 and therefore do not sustain the Examiner’s decision to reject claims 4–7 and 19. We address the issues with reference to claim 4, which depends from claim 1 and adds: “[T]he [PEM] comprises a body portion and at least two arms extending from the body Appeal 2020-002600 Application 15/439,024 11 portion, each of the at least two arms located between a pair of adjacent connectors of the backplane.” Appeal Br. 12 (Claims Appendix). In response to the Appeal Brief arguments, the Examiner presents the following rationale for modifying the cartridge added to Jahne’s storage array: “Jahne discloses a frame 331 that includes a first arm 333 and second arm 334. [T]he combination of the frame 331[—]that includes a first arm 333 and second arm 334[—]and [Hyatt’s PEM] cartridges 20a and 20b [achieves] the limitations of claim[] 4.” Ans. 5 (citing Jahne Fig. 3). No rationale (nor a discernible modification of the added cartridge) was provided prior to the Answer. Final Act. 4 (addressing only Hyatt’s armless cartridges 20a, 20b; lacking citation, description, etc., of Jahne’s frame 331 and arms 333, 334)). Appellant replies: In Jahne, FIG. 3 . . . shows a disk drive carrier 330 used in a disk drive storage unit . . . . It is not reasonable to suggest . . . modify[ing] the communication protocol cartridge of Hyatt to conform to the physical layout of a drive carrier as taught in Jahne[.] Further, the Examiner’s Answer [does not] provide any articulated reasoning with some rational underpinning to support this combination. Reply Br. 6. We are persuaded the Examiner erred inasmuch that the rationale for modifying the cartridge of the Hyatt-Jahne combination, to include arms as claimed, does not include a reason for adding arms as entirely claimed (i.e., to the full-extent claimed). Specifically, the rationale does not include a reason for the cartridge to have “arms located between a pair of adjacent connectors of the backplane” (claim 4). Appeal 2020-002600 Application 15/439,024 12 As discussed for claim 1, the added cartridge is ‘squeezed’ between Jahne’s drives 620 and backplane 603. See supra 8–9 (analysis for claim 1). For claim 4, and in view of Jahne’s cited arms 333, 334, the Examiner proposes to modify this cartridge so as to have arms located between adjacent connectors 609 of the backplane 603. Ans. 5 (quoted above). However, the only evident similarity of Jahne’s arms 333, 334 to the proposed arms is that, like all arms, they extend somewhere. Namely, Jahne’s arms 333, 334 extend so as to form a U-shaped, drawer-type frame for a disk drive (forming a “disk drive carrier” in the shape of football goalposts) that slides into a disk drive storage unit 420. See Jahne col. 1, ll. 31–34, 47–48; col. 2, ll. 5–6, 10–12, 60–63. Because Jahne’s arms 333, 334 provide a frame for securing the disk drive to its location within the storage array (Jahne col. 3, ll. 11–14; Figs. 3–4), the arms 333, 334 suggest adding a similar frame/arms to the Hyatt-Jahne combination’s cartridge for their disclosed function—that is, to secure the cartridge to its location (namely between a drive 620 and the backplane 603). However, per claim 4, there must be a further suggestion to locate the added frame/arms between Jahne’s connectors 609 of the backplane 603 (i.e., to achieve the claimed “arms located between a pair of adjacent connectors of the backplane”). Even assuming (arguendo) this placement would have been obvious, it is not suggested by Jahne’s cited illustrations alone (i.e., by the illustrated disk drives 620, backplane 603, connectors 609, and arms 333, 334). Thus, as the illustrations are insufficient and the only presented support for the placement, the Examiner fails to adequately support the determination of obviousness for claim 4. Appeal 2020-002600 Application 15/439,024 13 OVERALL CONCLUSION For the foregoing reasons, we affirm the Examiner’s decision to reject claims 1–3, 8–18, and 20. We reverse the Examiner’s decision to reject claims 4–7 and 19. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Ba sis Affirmed Reversed 1–8, 10–15, 17–20 103 Jahne, Hyatt 1–3, 8, 10–15, 17, 18, 20 4–7, 19 9, 16 103 Jahne, Hyatt, Bakthavathsalam 9, 16 Overall Outcome 1–3, 8–18, 20 4–7, 19 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation