Ex Parte Bolesta et al

Patent Trial and Appeal Board

May 27, 2016

13186958 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/186,958 07/20/2011
105727 7590 06/14/2016
Pillsbury Winthrop Shaw Pittman LLP (CA, Inc,)
PO Box 10500
McLean, VA 22102
Richard Joseph Bolesta
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.
072962-0393117 5298
EXAMINER
LY,CHEYNED
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
Docket_IP@pillsbury law. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RICHARD JOSEPH BOLESTA,
MICHAEL RALPH CHIARAMONTE, SHIV A MIRZADEH, and
KEVIN CHARLES KOCHER
Appeal2015-001413
Application 13/186,958
Technology Center 2100
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
LINZY T. McCARTNEY, Administrative Patent Judges.
COURTENAY, 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 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
Invention
The invention on appeal relates to a system, method, and computer-
readable medium for "provisioning storage among heterogeneous storage
resources using a storage device type-agnostic application." (Spec. i-f 1)
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Application 13/186,958
Representative Claims j--4
1. A unified-interface storage provisioning system
comprising a processor, and a memory with instructions which
when executed by the processor causes the processor to perform
a plurality of operations comprising:
[Ll] receiving a storage provisioning request from a user
interface, wherein the storage provisioning request is nonspecific
to a particular one of a plurality of storage resources;
[L2] processing the storage provisioning request to
identifY one or more of the plurality of storage resources utilized
to complete the storage provisioning request, wherein each of the
plurality of storage resources comprises an interface
configuration, and wherein at least two interface configurations
are different from one another;
[L3] generating an instruction to provzszon a data
storage space among the one or more of the plurality of storage
resources; and
prov1s10mng the data storage space based on the
instruction,
wherein the processor is configured to operate with each
of the plurality of storage resources in accordance with the
interface configuration thereof.
2. The system of claim 1, wherein the processing operation
comprises determining a nature of the storage provisioning
request, and/or an application associated with the storage
provisioning request.
3. The system of claim 1, wherein the user interface
comprises a web services interface.
4. The system of claim 1, wherein the operations further
comprise generating a status report related to a result of the
provisioning operation.
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(Emphasis and bracketed letters added with respect to the contested
limitations).
Rejections
A. Claims 1-3, 6-9, 12-15, and 18 are rejected under 35 U.S.C. § 103(a)
over the combined teachings and suggestions ofUmbehocker (US 6,826,661
B2; iss. Nov. 30, 2004), in view of Lavallee (US 7,003,527 Bl; iss. Feb. 21,
2006). (Ans. 2-5).
B. Claims 4, 5, 10, 11, 16, and 17 are rejected under 35 U.S.C. § 103(a)
over the combined teachings and suggestions of Umbehocker, in view of
Lavallee, and further in view of Frandsen (US 2003/0225966 Al; pub. Dec.
4, 2003). (Ans. 5-6).
Grouping of Claims
Based on Appellants' arguments:
We decide the appeal of Rejection A of claims 6, 7, 12, 13, and 18 on
the basis of representative claim 1;
We decide the appeal of Rejection A of claims 8 and 14 on the basis
of representative claim 2;
We decide the appeal of Rejection A of claims 9 and 15 on the basis
of representative claim 3; and
We decide the appeal of Rejection B of claims 5, 10, 11, 16, and 17
on the basis of representative claim 4. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the Action
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from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments, to the extent consistent
with the analysis below. However, we highlight and address specific
findings and arguments for emphasis in our analysis below.
At the outset, we observe Appellants' principal arguments urging
reversal of the Examiner's rejections adopt a pattern of attacking the
references in isolation, instead of considering the respective teachings and
suggestions of the cited combination of references. (See e.g., App. Br. 7-8
and 10). In reviewing these arguments, we remain mindful of the Supreme
Court's guidance concerning "the need for caution in granting a patent based
on the combination of elements found in the prior art." KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 415 (2007). "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." Id. at 416. When a rejection under
§ 103 (a) is based on a combination of familiar elements, one cannot show
nonobviousness by attacking references individually. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed Cir. 1986).
Rejection A of Claims 1, 6, 7, 12, 13, and 18under§103(a)
Issue: Under§ 103(a), did the Examiner err in finding the
combination ofUmbehocker and Lavallee would have taught or suggested
contested limitations Ll-L3, within the meaning of representative claim 1?
Claim 1 - Contested Limitation LI
Limitation L 1 requires a "storage provisioning request [that] is
nonspecific to a particular one of a plurality of storage resources," which
Appellants contend is not taught in Umbehocker. (App. Br. 6-7).
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However, the Examiner did not rely upon Umbehocker for teaching
this limitation. Instead, the Examiner found Lavallee' s description of
"generic management commands [that] can be sent to the management
application regardless of actual equipment vendor (nonspecific) and type of
elements installed within the storage area network (column 3, lines 31-3 7)"
(Ans. 7), would have taught or suggested contested limitation L 1.
Appellants do not contest the correctness of the Examiner's mapping
of limitation L 1 to the cited portion of Lavallee. Because Appellants have
not addressed the Examiner's specific findings regarding this contested
limitation, we find Appellants' arguments unpersuasive.
Claim 1 - Contested Limitation L2
Turning to contested limitation L2, the Examiner found the step of
"processing the storage provisioning request to identify one or more of the
plurality of storage resources utilized to complete the storage provisioning
request" (emphasis added), was taught, or at least suggested, by the
description in column 2, lines 34--41 ofUmbehocker. (Ans. 2). The cited
portion of Umbehocker describes a "storage management application" that
"accesses [a] data store when receiving a request to access a selected storage
resource from the host application in order to be assigned to one of the
storage resource provider modules by the data store." (Umbehocker col. 2,
11. 34--39) (emphasis added).
Appellants contend the foregoing portion ofUmbehocker fails to
teach limitation L2 because "it appears that the storage resource related to
the request is pre-selected or pre-identified." (App. Br. 7). In other words,
since the Examiner found the request in Umbehocker is specific to a
particular one of the claimed storage resources (see Ans. 3 i-f 3), Appellants
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contend the identity of the storage resource is already resolved in the request
to access that storage resource.
We find Appellants' argument unpersuasive regarding limitation L2
for at least two reasons. First, Appellants attack Umbehocker in isolation
without fully considering the Examiner's proffered combination with
Lavallee. The Examiner relies on the combined teachings ofUmbehocker
and Lavallee, where an artisan of ordinary skill having knowledge of
Lavallee's teachings would have modified the request in Umbehocker to be
nonspecific to a particular storage resource. (Ans. 3--4). Responsive to the
nonspecific storage request, Umbehocker accesses the data store "in order to
be assigned to one of the storage resource provider modules." (Umbehocker
col. 2, 11. 35-39) (emphasis added).
Second, even if the request in the Umbehocker-Lavallee combination
were to arrive at the storage management application with the storage
resource "pre-selected," Appellants fail to persuasively explain why the
storage management application's inspection of a request for a pre-selected
storage resource "in order to be assigned to one of the storage resource
provider modules" (Umbehocker col. 2, 11. 37-38 (emphasis added)) is
outside the scope of limitation L2. That is, nothing in claim 1 precludes the
storage resource from being identified twice-first by the host application,
and then by the storage management application, when the storage
management application processes the host application's request.
Appellants also contend Lavallee fails to teach limitation L2. (App.
Br. 8). However, there is no need for Lavallee to teach limitation L2 under
§ 103, because, as we explained supra, Umbehocker was found to teach, or
at least suggest, this limitation.
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For at least the aforementioned reasons, we are not persuaded the
Examiner erred regarding contested limitation L2.
Claim 1 - Contested Limitation L3
Limitation L3 recites: "generating an instruction to provision a data
storage space among the one or more of the plurality of storage resources."
Apart from summarily asserting (App. Br. 7) that "a mere description of an
interface of a storage array used to perform storage operations, e.g., acquire
or alter configuration settings" fails to teach the contested limitation,
Appellants do not particularly show the error in the Examiner's rejection.
See 37 C.F.R. § 41.37(c)(l)(iv) (noting that "A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim."). 1
Moreover, we find the cited portion ofUmbehocker teaches or
suggests contested limitation L3. Regarding the concept of "provision[ ing] a
data storage space," we look to the Specification for context:
Generally, storage provisioning may be defined as a
process of allocating, configuring and exporting storage from
one or more storage resources (e.g., storage devices 106a-106n)
to satisfy storage requirements of specific applications executing
on user devices (e.g., devices 108a-108n) and/or servers (e.g.,
servers 110a-110n). For example, storage provisioning may
include provisioning or providing additional new storage space
from storage devices 106a-106n to a requesting user device 108
or server 110. Additionally, or alternatively, storage provisioning
may include resizing or reconfiguring the amount of storage
already allocated to a user device 108 or server 110, or
1 To the extent Appellants expand upon this argument in the Reply Brief ( 4),
we note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
are untimely, unless good cause is shown. See 37 C.F.R. § 41.41(b)(2).
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reconfiguring the existing mapping between one or more user
devices 108a-108n/server 11 Oa-11 On and one or more storage
devices 106a-106n.
(Spec. i-f 15) (emphasis added).
Inter alia, the commands taught in Umbehocker's storage interface
permit client applications "to perform storage operations on each of the
storage arrays," or "to alter the configurations of storage, thus, altering the
storage management data within the storage arrays." (Umbehocker, col. 5,
11. 30-40).
Although Umbehocker does not explicitly use the word "provision" to
describe the storage operations, we find the concept of a "storage operation"
at least suggests to one of ordinary skill in the art that a storage operation
reconfigures storage and/ or provides new or existing storage space to the
application calling the storage operation.2 For example, Umbehocker
explains that "a snapshot operation, a mirror operation, and the like" are
renresentative of nossible stora!.!e mana!.!ement onerations. (Umbehocker
_._ _._ '-' '-' _._ '
col. 7, 11. 22-23). Such backup operations necessarily involve a provisioning
of additional storage space in order to store the snapshot or mirror data.
For at least these reasons, and on this record, we find a preponderance
of the evidence supports the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness regarding contested limitations L 1-
L3 of independent claim 1. Because Appellants have not persuaded us the
Examiner erred, we sustain Rejection A of representative claim 1. Grouped
2 The question we consider under§ 103(a) "is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made." Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989) (quoting
In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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claims 6, 7, 12, 13, and 18, also rejected under Rejection A, fall with claim
1. See Grouping of Claims, supra.
Re} ection A of Claims 2, 8, and 14 under § 103 (a)
Issue: Under§ 103(a), did the Examiner err in finding the
combination ofUmbehocker and Lavallee would have taught or suggested
"determining a nature of the storage provisioning request," within the
meaning of representative dependent claim 2?
Appellants summarily contend, "a mere description of acquiring or
altering configuration settings of storage (e.g., using an interface of a storage
array) in no way discloses or teaches" the additionally recited limitations in
claim 2. App. Br. 9.
As we explained supra, under our procedural rule: "[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim." 37 C.F.R. §
41.37(c)(l)(iv).
Moreover, given that Umbehocker expressly teaches multiple types or
categories of storage operations in the interface (e.g., operations that
"acquire existing storage management data" and other operations that "alter
the configurations of storage" (col. 5, 11. 33-36)), we find Umbehocker at
least suggests determining the "nature" of an issued storage command.
Accordingly, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding dependent claim 2. Because Appellants have not
persuaded us the Examiner erred, we sustain Rejection A of representative
claim 2. Grouped claims 8 and 14, also rejected under Rejection A, fall with
claim 2. See Grouping of Claims, supra.
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Rejection A of Claims 3, 9, and j5 under§ j03(a)
Issue: Under§ 103(a), did the Examiner err in finding the
combination ofUmbehocker and Lavallee would have taught or suggested
"the user interface comprises a web services interface," within the meaning
of representative dependent claim 3?
Originally, the Examiner rejected claim 3 over Umbehocker's
disclosure of an "Internet Small Computer System Interface (iSCSI)." (Ans.
4, i-f 6). As Appellants correctly note, iSCSI "is a particular Internet Protocol
(IP)-based storage networking standard," which "does not appear to have
anything to do with a user interface." (App. Br. 10).
In response to this argument, the Examiner shifts to Lavallee' s
"management client" which "provides a management interface such as [a]
graphical user interface (e.g.[,] web based or windows interface)." (Ans. 11)
(quoting Lavallee col. 10, 11. 5-16). 3
Addressing the Examiner's shift in position (Ans. 11 ), Appellants
contend in the Reply Brief ( 6), "the cited portion of Lavallee generally
mentions that the management client provides a management interface. But
the cited portions ofUmbehocker and Lavallee do not appear to teach a web
services interface."
3 To the extent the Examiner's new citation to Lavallee in the "Response To
Argument" could be construed as an undesignated new ground of rejection,
Appellants' failure to petition the Director "constitute[ s] a waiver of any
arguments that [the] rejection must be designated as a new ground of
rejection." 37 C.F.R. § 41.40(a). Moreover, "the user interface" of claim 3
draws antecedent basis from "a user interface" recited in limitation L 1 in
claim 1, for which the Examiner originally cited column 3, lines 28-37 of
Lavallee. There, Lavallee teaches its function calls are provided from
"management clients (e.g., [a] graphical user interfaces driven management
program)." (Id. at col. 3, 11. 33-34).
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We are not persuaded by Appellants' contention (id.), which
mischaracterizes the cited description in Lavallee. Lavallee teaches more
than a general management interface; the reference explicitly teaches the
management interface may be a "web based" graphical user interface.
Under a broad but reasonable interpretation, the plain meaning of "web
services interface" includes Lavallee' s web based interface for managing a
storage service. 4 Furthermore, Appellants' Specification is silent regarding
any definition for the claimed "web services interface" that would preclude
the Examiner's broader reading. 5
For at least these reasons, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding dependent claim 3. Because
Appellants have not persuaded us the Examiner erred, we sustain Rejection
A of representative claim 3. Grouped claims 9 and 15, also rejected under
Rejection A, fall with claim 3.
RejectionB of Claims 4, 5, 10, 11, 16, and 17under § 103(a)
Issue: Under§ 103(a), did the Examiner err in finding the
combination ofUmbehocker, Lavallee, and Frandsen would have taught or
suggested "generating a status report related to a result of the provisioning
operation," within the meaning of representative dependent claim 4?
4 See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference
need not satisfy an ipsissimis verbis test to disclose a claimed element).
5 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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The Examiner rejected claim 4 by mapping the contested limitation to
Frandsen's teaching of a controller that "can provide a status report of the
results of [a] backup operation." (Ans. 5) (citing Frandsen i-fi-178 and 82).
Appellants argue "the cited portions of Frandsen are silent regarding a
storage provisioning operation (i.e., to provision data storage space, e.g., in a
specifically identified storage space), let alone generating a status report
related to a result of the provisioning operation." (App. Br. 10) (emphasis
omitted).
We find Appellants' arguments unpersuasive regarding the contested
limitation, because we find Appellants are attacking Frandsen in isolation
without fully considering the Examiner's proffered combination with
Umbehocker and Lavallee. The Examiner relies on the combined teachings
of Frandsen (i.e., generating a status report of the results of an operation
(i-f 78)), and Umbehocker, which teaches the storage provisioning operations.
(col. 5, 11. 30-40). When combined, we find the cited references teach
generating a status report of the results of a storage provisioning operation.
Therefore, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding dependent claim 4. Because Appellants have not
persuaded us the Examiner erred, we sustain Rejection B of representative
claim 4. Grouped claims 5, 10, 11, 16, and 17, also rejected under Rejection
B, fall with claim 4.
Reply Brief
In the Reply Brief (2-3), Appellants address a teaching in
Umbehocker the Examiner cited for the first time in the Answer. (See Ans.
8) (citing Umbehocker col. 4, 11. 20-43). Since we decide limitation L2 on
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the basis of the Examiner's original findings (rather than the shift in the
Examiner's Answer), we do not reach the merits of Appellants' reply to the
newly cited portion of the reference.
Likewise, to the extent Appellants may advance other new arguments
in the Reply Brief not in response to a shift in the Examiner's position in the
Answer (e.g., the argument directed to limitation L3 which expands on the
same argument first presented the principal Brief (see Reply Br. 4)), we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, Appellants
have not persuaded us the Examiner erred. We find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness for all claims on appeal.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 under 35
U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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