Ex Parte DeKoning et al

Patent Trial and Appeal BoardJul 17, 2015

12481389 (P.T.A.B. Jul. 17, 2015)

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. 12/481,389 06/09/2009 Rodney A. DeKoning 47415.253 5136 27683 7590 07/17/2015 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER PHAN, DEAN ART UNIT PAPER NUMBER 2184 MAIL DATE DELIVERY MODE 07/17/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RODNEY A. DEKONING, CHARLES E. NICHOLS, WILLIAM PATRICK DELANEY, MOHAMAD EL-BATAL, and KEITH HOLT ____________ Appeal 2013-001950 Application 12/481,389 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, CATHERINE SHIANG, and JESSICA C. KAISER, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. In reaching the decision, we have considered only the arguments that Appellants raised. Arguments that Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2013-001950 Application 12/481,389 2 STATEMENT OF THE CASE The present invention relates to storage systems. See generally Spec. 1. Claim 1 is exemplary: 1. A storage array system, comprising: N array controllers configured with at least two interconnect fabric ports, where N is an integer greater than two; and a first interconnect fabric switch and a second interconnect fabric switch are each integrated into first and second environmental services modules (ESM), respectively, each of said first and second interconnect fabric switches having at least N interconnect fabric ports, each of said N interconnect fabric ports being connected to an interconnect fabric port on one of said N array controllers thereby establishing redundant connectivity between each of said N array controllers, each of the first and second ESMs are incorporated in a Just a Bunch of Disks (JBOD) enclosure. References and Rejections Marks II US 2007/0162592 A1 July 12, 2007 Davies US 2008/0005470 A1 Jan. 3, 2008 Sasagawa US 2008/0239656 A1 Oct. 2, 2008 Bandholz US 2008/0288679 A1 Nov. 20, 2008 Claims 10, 11, and 14 are rejected under 35 U.S.C. § 102(b) as being anticipated by Marks II. Claims 1–6 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marks II and Sasagawa. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Marks II and Bandholz. Appeal 2013-001950 Application 12/481,389 3 Claims 15–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marks II and Davies. Claims 7–9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marks II, Sasagawa, and Davies. ANALYSIS The Anticipation Rejection Claims 10, 11, and 14 We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding Marks II discloses “a JBOD [Just a Bunch of Disks] unit with at least two integrated interconnect fabric switches,” as recited in independent claim 10. The Examiner cites Marks II’s Figure 1 for that claim limitation. See Ans. 4–5. It is undisputed Marks II’s Figure 1 shows a JBOD unit (mapped to Marks II’s JBOD unit) is separate from the two integrated interconnect fabric switches (mapped to Marks II’s expander blades 30). See Ans. 4; Reply Br. 5–6; Marks II, Fig. 1. We agree with Appellants that the claim language requires two interconnect fabric switches be not separate from the JBOD unit. Therefore, Marks II’s Figure 1 is insufficient to disclose the disputed claim limitation. Appeal 2013-001950 Application 12/481,389 4 Accordingly, we are constrained by the record to reverse the Examiner’s rejection of claim 10, and claims 11 and 14 for similar reasons.1 The Obviousness Rejection Claims 12, 13, and 15–17 We also reverse the Examiner’s obviousness rejection of claims 12, 13, and 15–17. The Examiner cites additional references for the obviousness rejection of those claims. The Examiner relies on Marks II in the same manner discussed above in the context of claim 10, and does not rely on the additional references in any manner that remedies the deficiencies of the underlying anticipation rejection. Claims 1–9 On this record, we find the Examiner did not err in rejecting claim 1. We disagree with Appellants’ arguments (App. Br. 11–13; Reply Br. 7), and agree with and adopt the Examiner’s findings and conclusions on pages 5–7 of the Answer as our own. Therefore, we limit our discussion to the following points for emphasis. Appellants assert Marks II and Sasagawa do not collectively teach “a first interconnect fabric switch and a second interconnect fabric switch are each integrated into first and second environmental services modules (ESM), . . . each of the first and second ESMs are incorporated in a Just a Bunch of Disks (JBOD) enclosure,” as recited in claim 1. See App. Br. 11–13; Reply 1 If prosecution reopens, we recommend the Examiner consider whether to reject claim 10 under 35 U.S.C. § 103 as being unpatentable over Marks II and Sasagawa. Appeal 2013-001950 Application 12/481,389 5 Br. 7. Appellants contend Sasagawa does not teach a JBOD enclosure. See App. Br. 12. Appellants argue Sasagawa’s enclosures 170 “are completely separate and distinct from the hard drives 31[, which are within the chassis 100]. For this reason, in addition to failing to teach JBOD units and enclosures, Sasagawa even fails to disclose incorporating fabric switches or ESMs into storage unit enclosures.” App. Br. 12. Appellants contend because Sasagawa’s enclosures 170 are separate elements from the chassis 200, the Examiner incorrectly maps the claimed “enclosure” to the chassis 200. See App. Br. 12–13. Appellants fail to show reversible error. Because the Examiner relies on the combination of Marks II and Sasagawa to teach the disputed claim limitations, Appellants cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds—and Appellants do not dispute—Marks II teaches a “JBOD” configuration. See Ans. 6; Marks ¶ 20 (“JBODs 220”). Therefore, Sasagawa does not need to teach the claimed “JBOD” element. The Examiner also finds—and Appellants do not dispute—Sasagawa teaches a first interconnect fabric switch and a second interconnect fabric switch (mapped to Sasagawa’s SAS expanders) are each integrated into first and second environmental services modules (ESM) (mapped to Sasagawa’s SW [switch] 19s). See Ans. 5; Sasagawa ¶¶ 49–51. Appellants also concede Sasagawa teaches the enclosures 170 comprise SW19s. See App. Br. 12; Sasagawa, Fig. 1; Sasagawa ¶ 51. Contrary to Appellants’ argument that “chassis 200 of Sasagawa . . . is . . . a completely separate and distinct element [from enclosures 170]” (App. Appeal 2013-001950 Application 12/481,389 6 Br. 12), Sasagawa’s Figure 1 shows chassis 200 includes the enclosures 170. See Sasagawa, Fig. 1. Appellants fail to provide evidence to show that one skilled in the art would not consider Sasagawa’s chassis 200 as the claimed “enclosure.” Therefore, Appellants fail to show error in the Examiner’s finding that Sasagawa teaches “each of the first and second ESMs are incorporated in a [ ] enclosure.” Because Appellants do not contend it is improper to combine the teachings of Marks II and Sasagawa, Appellants fail to show error in the Examiner’s finding that the two references collectively teach “a first interconnect fabric switch and a second interconnect fabric switch are each integrated into first and second environmental services modules (ESM), . . . each of the first and second ESMs are incorporated in a Just a Bunch of Disks (JBOD) enclosure,” as recited in claim 1. See Ans. 5. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 2–9 for similar reasons. DECISION The Examiner’s decision rejecting claims 1–9 is affirmed. The Examiner’s decision rejecting claims 10–17 is reversed. 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-IN-PART tj