Ex Parte Boerger et al

Patent Trial and Appeal Board

Oct 29, 2012

11625915 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL BOERGER and FRED C. THOMAS
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Appeal 2010-006684
Application 11/625,915
Technology Center 2100
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Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and HUNG H. BUI,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006684
Application 11/625,915

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 2, 7, 13, 21, and 22.
We affirm.

INVENTION
The invention is directed to a server attached to a home network
which operates as a network attached storage device. The server caches data
from attached peripheral devices. See Spec. ¶¶0010- 0024.
Claim 7 is representative of the invention and reproduced below:
7. A server system comprising:
a processor;
a non-volatile storage device coupled to the processor;
a peripheral port coupled to the processor, the peripheral
port configured to couple the processor to a memory device
external to the server system; and
a network interface coupled to the processor;
wherein the server system does not support a directly
coupled display device, and does not support a directly coupled
keyboard; and
wherein, during periods of time when the memory device
is coupled to the peripheral port, the server system caches data
from the memory device to the non-volatile memory, and
supplies the data of the memory device from the non-volatile
memory to requesting devices coupled to the network interface.

REFERENCES
Stephens US 5,787,461 Jul. 28, 1998
Noren US 6,446,091 B1 Sep. 3, 2002
Jones US 6,832,281 B2 Dec. 14, 2004
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Marshall Brain, How USB Ports Work, Feb. 2, 2004.
wiseGEEK, What is flash memory? Jun. 16, 2005

REJECTIONS AT ISSUE
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Noren in view of Stephens. Answer 3-5.
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The Examiner has rejected claims 2 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Noren in view of Stephens and Marshall. Answer 5-6.
The Examiner has rejected claim 21under 35 U.S.C. § 103(a) as
unpatentable over Noren in view of Stephens and wiseGEEK. Answer 6.
The Examiner has rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Noren in view of Stephens and Jones. Answer 6-7.

ISSUES
Rejection of claim 7
Appellants argue on pages 10 through 14 of the Brief
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that the
Examiner’s rejection of this claim is in error. These arguments present us
with three issues:
1. Did the Examiner err in finding the combination of the references
teaches a peripheral port that couples a system controller to
external devices?

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
November 23, 2009.
2
Throughout this opinion we refer to Appellants’ Appeal Brief dated
August 12, 2009 and Reply Brief dated December 30, 2009.
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2. Did the Examiner err in finding the combination of the references
teaches a server system which does not support a directly coupled
display and keyboard?
3. Did the Examiner err in finding the combination of the references
teaches during a period of time when a memory device is coupled
to the peripheral port, the server system caches data from the
memory device to a non-volatile memory?

Claims 2 and 21
Appellants’ arguments directed to these claims present the same
issues as discussed above with respect to claim 7. Answer 15, 17.

Claim13
Appellants argue on pages 15 and 16 of the Brief that the Examiner’s
rejection of this claim is in error. These arguments present us with three
issues:
4. Did the Examiner err in finding the combination of the references
teaches a server system which does not support a directly coupled
display?
5. Did the Examiner err in finding the combination of the references
teaches caching data from the peripheral device coupled to the
server system?
6. Did the Examiner err in finding the combination of the references
teaches ceasing caching data by the server system when the
peripheral device is de-coupled from the server system?

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Claim 22
Appellants’ arguments directed to this claim present the same issues
as discussed above with respect to claim 13. Answer 21.

ANALYSIS
Rejections of claim 2, 7, and 21
First Issue:
Appellants’ arguments directed to the first issue have not persuaded us
the Examiner erred in finding the combination of the references teaches a
peripheral port that couples the system controller to external devices.
Appellants argue Noren teaches the expansion storage device 72 resides
within the server system 14, shown in FIG. 3, and therefore is not an
external device coupled to a peripheral port. Brief 10-11, Reply Brief 2-2.
We are not persuaded of error by the Appellants’ arguments. The
Examiner finds Noren’s expansion storage device 72 is external to the server
system 14 and that the port used to connect the external storage device 72
meets the claimed peripheral port. Answer 8-9. We concur as these findings
are supported by evidence of record. While the expansion storage device 72
is depicted in a server system 14, FIG. 3 is merely a block diagram showing
functional connections and not a diagram depicting the physical layout of the
device. Further, the disclosure of Noren identifies that the expansion storage
device 72 can take many forms including a “removable” hard disk drive.
Col. 6, ll. 18-23. We consider the Examiner’s interpretation of a device that
is removable from the server system 14, as being a device that is external to
server system 14, to be reasonable (e.g. when the device is removed it is not
part of the server system, so referring to it as an external device, even when
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coupled to the server system, is reasonable). Accordingly, Appellants’
arguments directed to the first issue have not persuaded us of error in the
Examiner’s rejection.

Second issue:
Appellants’ arguments directed to the second issue have not
persuaded us the Examiner erred in finding the combination of the
references teaches a server system which does not support a directly coupled
display and keyboard. Appellants argue Noren teaches a “headless” server
system which is merely a lack of being connected to a display and not lack
of ability to connect a display and keyboard as claimed. Brief 11, Reply
Brief 4-5.
We are not persuaded of error by the Appellants’ arguments. The
Examiner finds Noren teaches the “headless” server system is without
connection to a keyboard, monitor, and mouse and therefore teaches the
limitation directed to the server system not supporting a directly coupled
keyboard or display device. Answer 9-10. We concur with the Examiner’s
findings. Contrary to Appellants’ arguments we find no evidence to support
a finding that Noren’s server system could support these devices if
connected, and that Noren discusses the “headless” server system as having
less capability and less overhead than a full function server (clearly
suggesting that un-needed functionality such as keyboard, mouse and
monitor, the functionality are omitted as they are provided by other devices
on the network). Accordingly, Appellants’ arguments directed to the second
issue have not persuaded us of error in the Examiner’s rejection.
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Third issue:
Appellants’ arguments directed to the third issue have not persuaded
us the Examiner erred in finding the combination of the references teaches
during a period of time when the memory device is coupled to the peripheral
port the server system caches data from the memory device to non-volatile
memory. Appellants argue that Stephens teaches caching data from an
optical disk to a storage device which is not on the server, and as such, the
storage device cached is not a non-volatile memory of the server system.
Brief 14, Reply Brief 5-6. Further, Appellants argue that modifying
Stephens to cache the data to the non-volatile storage of Noren would
change the principle operation of Stephens. Brief 14, Reply Brief 5-6.
We are not persuaded of error by the Appellants’ arguments. The
Examiner finds it is well known to improve performance of a slow speed
storage by copying data to a high speed storage in advance (known as
caching) and Stephens discloses such a system. Answer 11-12. We concur;
Stephens provides ample evidence that it was known to cache data from a
slow speed memory to a higher speed memory. Further, we do not see that
combining this teaching with Noren changes the principle operation of
Stephens. Accordingly, Appellants’ arguments directed to the third issue
have not persuaded us of error in the Examiner’s rejection.
The first three issues discussed above are the only issues presented by
Appellants’ arguments directed to the rejections of claims 2, 7, and 21.
Accordingly, we sustain the Examiner’s rejections of these claims.

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Rejection of claims 13 and 22:
Fourth issue:
Appellants’ arguments directed to the fourth issue have not persuaded
us the Examiner erred in finding the combination of the references teaches a
server system which does not support a directly coupled display.
Appellants’ arguments directed to this issue are similar to those
discussed supra with respect to the second issue. As discussed supra, we
find ample evidence to support the Examiner’s finding that Noren teaches
the server system does not support a directly coupled display.

Fifth issue:
Appellants’ arguments directed to the fifth issue have not persuaded
us the Examiner erred in finding the combination of the references teaches
caching data from a peripheral memory device coupled to the server system.
Appellants’ arguments directed to this issue are similar to those
discussed supra with respect to the third issue. As discussed supra, we find
ample evidence to support the Examiner’s finding that the combination of
Noren and Stephens teaches caching data from external memory (peripheral
device) to memory of the server system.

Sixth issue:
Appellants’ arguments directed to the sixth issue have not persuaded
us the Examiner erred in finding the combination of the references teaches
caching data from a peripheral memory device coupled to the server system.
Appellants argue that the claims call for ceasing caching the data
when the peripheral device is de-coupled which is not taught by Stephens
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which expressly teaches retaining the information after the device is
removed. Brief 16, Reply Brief 6-7. The Examiner responds to Appellants’
arguments by finding that removing or deleting cached data is not “ceasing
caching” as claimed. Answer 13. Rather, the Examiner interprets the
limitation of ceasing caching of data as ceasing the process of caching
(copying data). Answer 13. We concur with the Examiner. Appellants’
argument is not commensurate with the scope of claim 13.Claim 13 simply
recites ceasing caching and does not recite that the cache memory is deleted
when the device is removed. While Appellants’ Specification discusses the
server system maintaining a cached copy of the data as long as the peripheral
device is connected, we decline to import such limitation into the claim.
Accordingly, Appellants’ argument directed to the sixth issue has not
persuaded us of error in the Examiner’s rejection.
Issues four through six, discussed above are the only issues presented
by Appellants’ arguments directed to the rejections of claims 13 and 22.
Accordingly, we sustain the Examiner’s rejections of these claims.

ORDER
The decision of the Examiner to reject claims 2, 7, 13, 21, and 22 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD