Ex Parte Batewell

Patent Trial and Appeal BoardNov 1, 2016

12555851 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/555,851 0910912009 45095 7590 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 11/03/2016 FIRST NAMED INVENTOR Edward J. Batewell 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CHA920090012US 1 1413 EXAMINER KIM, EDWARD J ART UNIT PAPER NUMBER 2455 NOTIFICATION DATE DELIVERY MODE 11/03/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD J. BATEWELL Appeal2015-006352 Application 12/555,851 Technology Center 2400 Before THU A. DANG, JOHN P. PINKERTON, and JAMES W. DEJMEK, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 files this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-3, 5-9, 11-15, and 17-19, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant identifies International Business Machines Corp. as the real party in interest. App. Br. 1. Appeal2015-006352 Application 12/555,851 STATEMENT OF THE CASE Introduction Appellant's described and claimed invention generally relates to a system, method, and program product for automatically configuring a storage device for a server. Abstract. 2 Claim 1 is representative and reads as follows (with the disputed limitations emphasized): 1. A method for automatically configuring a storage device for each host of a plurality of host within a distributed environment, comprising: preconfiguring the storage device with a set of LUNs (logical unit numbers) and a plurality of empty configuration hostgroups, each empty configuration hostgroup having access authority for at least one of the set ofLUNs; preconfiguring each host to include a storage configuration package; connecting the storage device to each host, each connection via a link including an in-band connection and a switched connection; launching the storage configuration package on each host at one location of a plurality of locations within the distributed environment to run a set of scripts to perform the actions comprised of: installing a set of drivers; 2 Our Decision refers to the Final Office Action mailed June 27, 2014 ("Final Act."), Appellant's Appeal Brief filed Nov. 21, 2014 ("App. Br.") and Reply Brief filed June 8, 2015 ("Reply Br."), the Examiner's Answer mailed Apr. 8, 2015 ("Ans."), and the original Specification filed Sept. 9, 2009 ("Spec."). 2 Appeal2015-006352 Application 12/555,851 resetting a UUID (universally unique identifier) and modifying a kernel; installing a storage management system on each host; discovering WWIDs (world wide identifiers), a hostname and the storage device; adding each host to at least one of the empty configuration hostgroups, wherein the empty configuration hostgroup is empty until the addition of a host; creating and adding the hostname to the empty configuration hostgroup; passing the WWIDs to the storage device, and associating the WWIDs with each host; mapping a set of disks; and rebooting each host. Rejection on Appeal Claims 1-3, 5-9, 11-15, and 17-19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over AAPA (Applicant's Admitted Prior Art Batewell (US 2011/0060815 Al, published Mar. 10, 2011) ), Anderson et al. (US 2005/014474 Al, published May 26, 2005) ("Anderson"), Jewett et al. (US 2002/0049825 Al, published Apr. 25, 2002) ("Jewett"), Baldwin et al. (US 2007 /0094378 Al, published Apr. 26, 2007) ("Baldwin"), and Ferreira et al. (US 200710162968 Al, published July 12, 2007) ("Ferreira"). ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments in the Briefs (see App. Br. 6-8; Reply Br. 2--4) and are not persuaded that the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office 3 Appeal2015-006352 Application 12/555,851 Action from which this appeal is taken (Final Act. 4--19) and in the Examiner's Answer (Ans. 2--4), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claim 13 underÂ§ 103(a) Appellant argues the combination of references cited by the Examiner fails to teach the steps of "configuring the storage device," "adding each host," and "creating" of claim 1 because the Examiner's reliance on Ferreira "as allegedly teaching that the empty configuration hostgroup is empty until the addition of a host" is faulty as Ferriera requires an administrator. App. Br. 6-7. According to Appellant, the invention is directed to eliminating the necessity for an administrator to be involved and, because the Examiner has cited references which allegedly automatically fulfill their steps, "there would be no reason to combine them with Ferriera, which explicitly requires the intervention of an administrator." Id. at 7; Reply Br. 2-3. We are not persuaded by Appellant's arguments that the Examiner has erred. The Examiner finds, and we agree, Ferreira teaches initially-empty hostgroups "wherein the process of adding a host to a preconfigured empty hostgroup (preconfiguration of hostgroups) is done by an administrator." Final Act. 7 (citing Ferreira i-fi-153, 70, 83); Ans. 3. The Examiner also finds, and we agree, it would have been obvious to combine and automate the teaching of Ferreira with the other cited art "since the other prior art[] of record disclose[s] automated processes of configuring a storage device." 3 We decide the rejection of claims 1-3, 5-9, 11-15, and 17-19, which are argued together as a group, on the basis of representative claim 1. See 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 Appeal2015-006352 Application 12/555,851 Ans. 3; see also Final Act. 7. Appellant's argument that there would be no reason or motivation to combine the references, which allegedly automatically fulfill their steps, with Ferriera, which requires an administrator "and provides a backwards step to the advancement of the art" (App. Br. 7; Reply Br. 2) is unpersuasive because, as the Examiner finds, the proposed combination would incorporate and automate the known, manual step taught by Ferriera with the automated steps of the other prior art. Ans. 3. Appellant also argues that Ferriera would not combine with the automated processes of the other cited art and "it would be entirely unclear how to automate the disclosure of Ferreira," which Appellant further argues "would require undue experimentation." Reply Br. 3. We are not persuaded by these arguments. "[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. Here, for the reasons stated, we conclude the preponderance of the evidence supports the Examiner's findings that the combined teachings of the references teach the disputed limitations of claim 1. 4 4 Appellant also argues the Examiner cites In re Venner, 262 F.2d 91, 95 (CCPA 1958) in an attempt to remedy the fact that Ferriera requires an administrator and Venner fails to remedy this as "Appellant has automated 5 Appeal2015-006352 Application 12/555,851 Thus, we are not persuaded the Examiner erred in ( 1) finding the combined teachings of the cited prior art teaches or suggests the disputed limitations of claim 1 and (2) concluding that the combined teachings of the cited prior art render the subject matter of claim 1 obvious under 35 U.S.C. Â§ 103(a). Accordingly, we sustain the Examiner's rejection of claims 1, 7, 13, and 19, as well as dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, and 18, which are not argued separately. See App. Br. 8; Reply Br. 4. DECISION We affirm the Examiner's decision rejecting claims 1-3, 5-9, 11-15, and 17-19 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED the entire process, not just a step." App. Br. 7; Reply Br. 2-3. Although we do not agree with Appellant's characterization of the Examiner's reason for citing Venner (see Ans. 3), it is not necessary for us to decide the applicability of Venner here because Appellant's have not persuaded us of error in the Examiner's findings or conclusions regarding the obviousness rejection of claim 1. 6