Ex Parte Furuhjelm

Patent Trial and Appeal Board

Mar 21, 2017

13773337 (P.T.A.B. Mar. 21, 2017)

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.
13/773,337 02/21/2013 Martin R. Furuhjelm 1000-STL17330 6590
12675 7590 03/23/2017
Cesari & Reed, LLP - Seagate Technology LLC
1114 Lost Creek Boulevard
Suite 430
Austin, TX 78746
EXAMINER
DAO, TUAN C.
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN R. FURUHJELM
Appeal 2016-007507
Application 13/773,337
Technology Center 2100
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-007507
Application 13/773,337
CLAIMED INVENTION
Claim 1 recites the following:
1. A device comprising:
a removable data storage drive, including:
a communication interface responsive to a host and
configured to receive a command associated with user
data, the command indicating code to be executed by a
virtual machine;
a virtual machine including a platform-independent
programming interface of the data storage drive that is not
dependent on the architecture of the data storage drive;
a processor configured to:
process the command via the virtual machine
to produce a computed result comprising newly
produced data that is not a write command response
and is not previously stored data;
provide the computed result of the command
to the host via the communication interface; and
a housing including the communication interface,
the processor, and a physical connector configured to
allow the data storage device to be physically connected
and physically disconnected from the host.
App. Br. 27.
2
Appeal 2016-007507
Application 13/773,337
REFERENCES AND REJECTIONS
The Examiner rejected claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Arakawa1 and one or more of Frost,2 Kaneda,3
Batterywala,4 Varanasi,5 Chandra,6 and Traversat7. See Final Act. 2—17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments and the evidence of record, and regarding claims 11, 12, and 15—
17, we disagree with Appellant that the Examiner erred. For the rejections
of these claims, to the extent consistent with the analysis below, we adopt
the Examiner’s findings and reasoning set forth in the appealed action and
the Examiner’s Answer. We address Appellant’s arguments in turn.
Appellant has waived arguments Appellant failed to raise or properly
develop in Appellant’s briefing. See 37 C.F.R. §§ 41.37(c)(l)(iv),
41.41(b)(2).
Claims 1—10 and 18—20
Appellant contends the combination of Arakawa, Frost, and Kaneda,
as set forth in the Final Rejection fails to teach or suggest a data storage
drive that uses a virtual machine to produce “a computed result comprising
1 Arakawa et al. (US 2012/0054739 Al; published Mar. 1, 2012).
2 Frost (US 2010/0199268 Al; published Aug. 5, 2010).
3 Kaneda (US 2011/0202743 Al; published Aug. 18, 2011).
4 Batterywala (US 2008/0162817 Al; published July 3, 2008).
5 Varanasi et al. (US 2012/0260144 Al; published Oct. 11, 2012).
6 Chandra et al. (US 2007/0239876 Al; published Oct. 11, 2007).
7 Traversat et al. (US 2004/0168030 Al; published Aug. 26, 2004)
3
Appeal 2016-007507
Application 13/773,337
newly produced data that is not a write command response and is not
previously stored data” as recited in claim 1. See App. Br. 12—13; Reply Br.
5—6. Appellant argues Kaneda’s “declare chunk size command” identifies
an existing data chunk size, which is not a computed result or newly
produced information, but rather “already-existing information about
already-existing data.” Reply Br. 6; see also App. Br. 12 (arguing “[t]he
cited data of Kaneda is . . . not even a computed result or newly produced
data”).
We agree with Appellant. The Examiner found Kaneda teaches or
suggests the recited “computed result” because Kaneda discloses issuing a
“declare chunk size command” that a storage controller uses to update a
chunk size table, the declare chunk size command including a desired chunk
size and a pool identifier.8 See Final Act. 4 (citing Kaneda Fig. 12,178);
Ans. 10—12. The Examiner found the declare chunk size command results in
“newly produced data that is not a write command response and is not
previously stored data.” See Final Act. 4; Ans. 11.
The Examiner has not provided sufficient evidence to support this
finding. Kaneda discloses that a “declare chunk size command” includes
three components: a “command type,” a “desired chunk size,” and a “pool
identifier.” Kaneda | 54. The Examiner has not identified any teaching in
Kaneda that indicates these components have not been previously stored,
and Kaneda suggests these components have been previously stored. For
8 The Examiner referenced a “desired chunk size command” instead of a
“declare chunk size command” in the Examiner’s response to Appellant’s
arguments. Ans. 11. Kaneda makes no mention of a “desired chunk size
command.” We therefore assume the Examiner meant “declare chunk size
command.”
4
Appeal 2016-007507
Application 13/773,337
example, Kaneda describes the “command type” as one of six command
types that apparently are “previously stored” and not “newly produced”
when Kaneda’s system issues and executes the “declare chunk size
command.” See Kaneda 145 (explaining the “commands are defined and
used from the pool to the storage apparatus”), 1 77 (explaining that each
pool management program issues a declare chunk size command with the
desired chunk size and pool identifier). The “pool identifier” also appears to
be “previously stored” and not “newly produced” when Kaneda’s system
issues and executes the “declare chunk size command.” See id. 1 62
(explaining that “[e]ach pool management program has a unique pool
identifier” (reference number omitted)), 177 (explaining that each pool
management program issues a declare chunk size command with the desired
chunk size and pool identifier). With respect to “desired chunk size,”
Kaneda discloses “[t]he desired chunk size must be the segment size in the
pool management program.” Id. 178 (emphasis added). This indicates the
“desired chunk size” is also “previously stored” and not “newly produced.”
In light of these disclosures and the Examiner’s failure to any evidence or
reasoning to support the Examiner’s findings concerning the “declare chunk
size command,” we agree with Appellant that the Examiner has not
established Kaneda teaches or suggests the disputed limitation.
For the reasons stated above, Appellant has persuaded us the
Examiner erred in the rejection of claim 1. Accordingly, we reverse the
Examiner’s rejection of claim 1 and the rejections of independent claim 18
and dependent claims 2—10, 19, and 20, each of which recite a similar
limitation. See App. Br. 27—29, 31, 32.
5
Appeal 2016-007507
Application 13/773,337
Claim 11
Appellant contends the combination of Arakawa and Frost does not
teach or suggest the data storage drive recited in claim 11. Specifically,
Appellant argues the Examiner erred in finding Arakawa’s “storage
computer” teaches or suggests “a data storage drive . . . including: ... a
processor configured to: . . . process the command using a virtual machine of
the data storage drive . . . and a housing . . . such that the data storage drive
is removable from the host” as recited in claim 11. See App. Br. 21; Reply
Br. 11; see also App. Br. 9-11, 13 (raising similar arguments in the context
of claim 1); Reply Br. 1—5 (same). Appellant asserts that to interpret the
term “drive” consistent with its plain meaning and the written description, a
“drive” is a distinct type of device that is different from a computer. See
Reply Br. 2—3 (citing Spec. 19 (“[t]he DSD [data storage device] 104 may
be a disc drive, a solid-state drive, a hybrid drive, a USB flash drive, or any
other kind of storage device”)); App. Br. 10—11 (citing dictionary definitions
of the term “drive” to interpret a “drive” as a device that includes circuitry
for reading data from and/or writing data to a storage medium).
In contrast with Appellant’s interpretation of the term, Appellant
argues the Examiner’s interpretation of “drive”—as including a
device/computer having memory storage and a processor (see Final Act. 18;
Ans. 5—6)—is overly broad and therefore erroneous. See App. Br. 11; Reply
Br. 2-4. Applying that interpretation, Appellant argues Arakawa’s storage
computer, which includes virtual machines running in memory, does not
teach or suggest a “data storage drive” as recited in the disputed claim
language. See Reply Br. 2—3; App. Br. 9.
6
Appeal 2016-007507
Application 13/773,337
We find Appellant’s arguments unpersuasive. Generally, unless an
applicant has clearly set forth a special definition of a disputed claim term in
the written description, we give the term its broadest reasonable
interpretation in light of the written description. See Phillips v. A WII Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (enbanc). Here, contrary to
Appellant’s arguments, the written description does not clearly define the
term “drive,” but rather merely discloses that a data storage device (“DSD”)
may be a type of drive. See Spec. Tflf 9 (“The DSD 104 may be a disc drive,
a solid-state drive, a hybrid drive, a USB flash drive, or any other kind of
storage device.”), 16. Similarly, the written description does not limit a
“drive” to a device other than a computer, but rather merely discloses that a
host can be a computer and that a DSD can be a drive. See id. Further,
although the written description discloses a “data storage device,” and a
“disk drive data storage device,” we find no explicit disclosure of the
claimed “data storage drive.” See id. Because these portions of the written
description merely offer examples of and do not clearly define a “drive,”
they are non-limiting and cannot be imported into the claims. See General
Elec. Co. v. Nintendo Co., Ltd., 179 F.3d 1350, 1358 (Fed. Cir. 1999)
(“[W]hat is patented is not restricted to the examples, but is defined by the
words in the claims”) (citation omitted).
Accordingly, we refer to claim 11 ’s recitation of the term “drive” to
inform us of its broadest reasonable interpretation. Claim 11 recites a “data
storage drive configured to store user data thereto, including ... a
communication interface . . . ; a processor configured to . . . process the
command using a virtual machine . . . ; and a housing . . . such that the data
storage drive is removable from the host” (App. Br. 29). In other words, as
7
Appeal 2016-007507
Application 13/773,337
recited in claim 11, a “drive” is configured to store data and includes a
communications interface, a processor for running a virtual machine, and a
housing. See id. Appellant’s extrinsic evidence does not overcome this
plain, unambiguous description of the “data storage drive” in the claims. Cf.
Phillips v. AWHCorp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)
(stating that “while extrinsic evidence can shed useful light on the relevant
art, we have explained that it is less significant than the intrinsic record in
determining the legally operative meaning of claim language.” (quotation
marks omitted)).
Therefore, in contrast with Appellant’s interpretation, the claimed
“drive” can be more than merely a device having circuitry for reading and
writing data to a storage medium. Indeed, the claimed “drive” includes
additional elements, such as a processor for running a virtual machine.
Here, we note that one of ordinary skill in the art would understand the
circuitry required for a processor to run a virtual machine is substantively
different from the circuitry required to perform basic read and write
functions. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the
relevant prior art includes basic principles unlikely to be restated in the cited
references). In view of the foregoing, we decline to adopt Appellant’s
interpretation of “drive” and instead, find the broadest reasonable
interpretation of the claimed “drive” encompasses a device configured to
store data and includes a communication interface, a processor for running a
virtual machine, and a housing, as recited in claim 11.
Applying the broadest reasonable interpretation of claim 11, the
Examiner found Arakawa’s storage computer 110 teaches the claimed “data
8
Appeal 2016-007507
Application 13/773,337
storage drive.” See Final Act. 12—13 (citing Arakawa Figs. 1, 3—5; ]Hf 31,
34—36, 38, 39); Ans. 31—34. We agree. Arakawa’s storage computer 110
includes each of the elements claim 11 requires of the “data storage drive,”
such as “a communication interface” (SAN I/F controller 113), “a virtual
machine” (virtual machines 27), and “aprocessor” (processor 111). With
respect to the recited “housing,” one of ordinary skill in the art, given the
cited disclosures of Arakawa, would understand that a computer, such as
storage computer 110, has a physical enclosure, or “housing,” that
encompasses the computer’s elements. See DyStar, 464 F.3d at 1368
(explaining that the relevant prior art includes basic principles unlikely to be
restated in the cited references); see also Spec. 19 (“The DSD 104 may be
separately removable from the host 102 and may include a casing, housing,
or other physical enclosure encompassing the components of the DSD
104.”). Arakawa teaches this “housing” is configured “such that the data
storage drive is removable from the host” because Arakawa discloses that
(1) the storage computer 110 is a physical computer (see, e.g., Arakawa 13);
and (2) that servers 500 and management computer 520 can connect and
disconnect from storage computer 110 via Fibre Channel over Ethernet,
which requires a physical connection. See id. ]Hf 34, 36—38; Ans. 34
(“[SJtorage computer 110 (storage drive as claimed) connecting with the
server (host as claimed) through Fiber channel over Ethemet[,] which is a
physical connection, therefore [one] skilled in the art would understand the
storage computer to be physical connected and physically disconnected from
the server.”).
In sum, Appellant’s arguments are not commensurate with the scope
of claim 11. The plain language of claim 11 defines the “data storage drive”
9
Appeal 2016-007507
Application 13/773,337
to include a communication interface, a processor, and a virtual machine.
Appellant’s arguments have not persuaded us the Examiner erroneously
found Arakawa’s storage computer teaches or suggests such a “data storage
drive.” Accordingly, we sustain the Examiner’s rejection of independent
claim 11.
Claim 12
Regarding claim 12, Appellant relies on the arguments advanced for
independent claim 11, which we find unpersuasive for the same reasons
discussed above. See discussion regarding claim 11, supra. Appellant
additionally argues the combination of Arakawa and Frost does not teach or
suggest the further limitations of claim 12 for the reasons discussed
regarding claim 10. See App. Br. 21—22; Reply Br. 11. For claim 10,
however, Appellant merely recites the claim language and asserts without
any specificity or particularity that the cited prior art does not teach or
suggest various claim elements, which is insufficient to establish the
Examiner erred. Cf. 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). The Examiner provided sufficient
findings and reasoning to support the Examiner’s rejection of claim 12, see
Final Act. 14, and Appellant’s unsupported assertions have not persuaded us
the Examiner erred.
10
Appeal 2016-007507
Application 13/773,337
Accordingly, we sustain the Examiner’s rejection of claim 12.
Claims 13 and 14
Appellant contends the combination of Arakawa, Frost, and
Batterywala as set forth in the Final Rejection fails to teach or suggest “a
processor configured to: determine if the command is an application
command or a data storage command, an application command includes a
command designating an operation to be performed by the virtual machine,
and a data storage command includes a read command or a write command”
as recited in claim 13. See App. Br. 17—18, 22—23, 30; Reply Br. 9-10, 11—
12. Appellant argues Batterywala does not teach or suggest determining the
command type upon receiving a command, but rather teaches determining
which server maintains data for a virtual storage unit. See App. Br. 17—18;
Reply Br. 9—10.
We agree with Appellant. The Examiner found Batterywala teaches
or suggests the disputed limitation by disclosing a storage management
client application that converts a data access request into a storage server
specific command or an Application Programming Interface (API) call. See
Final Act. 14—15 (citing Batterywala Fig. 2B, 128); Ans. 23—24, 36.
Although the cited disclosures of Batterywala teach or suggest the existence
of a storage server specific command and an API call, they do not teach or
suggest determining if an existing command is a storage server specific
command or an API call, let alone an API call that includes a command
designating an operation to be performed by a virtual machine. The
Examiner has not shown that another prior art reference remedies this
deficiency of Batterywala. See Final Act. 12—15; Ans. 22—24, 36.
11
Appeal 2016-007507
Application 13/773,337
For the reasons stated above, Appellant has persuaded us the
Examiner erred in the rejection of claim 13. Accordingly, we reverse the
Examiner’s rejection of claim 13 and the rejection of dependent claim 14,
which recites a similar limitation. See App. Br. 30.
Claim 15
Regarding claim 15, Appellant relies on the arguments advanced for
independent claim 11, which we find unpersuasive for the same reasons
discussed above. See discussion regarding claim 11, supra. Appellant
additionally argues the combination of Arakawa and Frost does not teach or
suggest the further limitations of claim 15 for the reasons discussed
regarding claim 5. See App. Br. 22; Reply Br. 11. Regarding claim 5,
Appellant argues that Frost does not teach “the command” as claimed but
rather merely addresses inserting “native code” segments into virtual
machine libraries for virtual machines running on computers. See App. Br.
14; Reply Br. 6—7.
We find Appellant’s argument unpersuasive because it does not
persuasively address or rebut the Examiner’s specific findings with respect
to Arakawa, which the Examiner relies on to teach or suggest the further
limitations of claim 15. The Examiner found, and Appellant has not
persuasively rebutted, that Arakawa teaches or suggests that “the command
includes computer-executable code and identifies data for processing; and
the processor configured to execute the computer-executable code to process
the data using the virtual machine” (App. Br. 30) as recited in claim 15. See
Final Act. 14 (citing Arakawa Tflf 34, 35, 47—49).
12
Appeal 2016-007507
Application 13/773,337
In view of the foregoing, Appellant has not persuaded us of error in
the Examiner’s rejection of claim 15. Accordingly, we sustain the rejection
of claim 15.
Claim 16
Appellant contends the combination of Arakawa, Frost, and Traversat
set forth in the Final Rejection fails to teach or suggest “the host configured
to: execute, at the host, a process including a plurality of sub-processes; and
issue the command to the data storage drive, the command including
instructions to execute one of the plurality of sub-processes on the virtual
machine” as recited in claim 16. See App. Br. 24, 31; Reply Br. 12.
Appellant argues Traversat does not teach or suggest the disputed
limitations, but rather “merely teaches that a virtual machine running on a
computer system may be used by ‘processes,’ which ‘may refer to, but is not
necessarily limited to: applications, applets, programs, tasks, subprocesses,
threads, and drivers.’” App. Br. 24 (citing Traversat | 67).
We find Appellant’s arguments unpersuasive. As an initial matter,
Appellant’s arguments attack Traversat individually and fail to address
substantively what a person of ordinary skill would have understood from
the combined teachings of the Arakawa, Frost, and Traversat references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non­
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”). Moreover, the cited
disclosures of Arakawa teach or at least suggest the disputed limitations,
except for the process including a plurality of sub-processes, by disclosing
server 500 or management computer 520 (“the host”) that executes a process
13
Appeal 2016-007507
Application 13/773,337
and issues commands to storage computer 110 (“data storage drive”), which
includes virtual machine 217 (“virtual machine”) that executes an operating
system and other software processes (e.g., application software). See Final
Act. 12—13 (citing Arakawa Figs. 1, 3—5, H 31, 34—36, 38, 39); see also
Arakawa 137 (disclosing that storage computer 110 processes read/write
commands from server 500). Further, the Examiner found, and we agree,
that Traversat teaches the concept of a process having a plurality of sub­
processes, and performing those sub-processes on a virtual machine. See
Final Act. 16 (citing Traversat | 67). In addition, the Examiner provided a
rationale to combine the teachings of Traversat with those of Arakawa,
drawn directly from the Traversat reference, which Appellant has not
rebutted. See id. (citing Traversat | 68). As Appellant’s arguments have not
persuasively addressed or rebutted what the combination of Arakawa and
Traversat teaches or suggests with respect to the disputed limitation, we find
Appellant’s arguments unpersuasive.
In view of the foregoing, Appellant has not persuaded us of error in
the Examiner’s rejection of claim 16. Accordingly, we sustain the rejection
of claim 16.
Claim 17
Regarding claim 17, Appellant relies on the arguments advanced for
intervening dependent claim 16, which we find unpersuasive for the same
reasons discussed above. See discussion regarding claim 16, supra.
Appellant additionally argues the combination of Arakawa, Frost, and
Traversat does not teach or suggest the further limitations of claim 17. See
App. Br. 25; Reply Br. 12. But Appellant merely paraphrases the claim
14
Appeal 2016-007507
Application 13/773,337
language and asserts without any specificity or particularity that the cited
prior art does not teach or suggest various claim elements (see App. Br. 25),
which is insufficient to establish the Examiner erred. Cf 37 C.F.R. §
41.37(c)(l)(iv); Lovin, 652 F.3d at 1357. The Examiner provided sufficient
findings and reasoning to support the Examiner’s rejection of claim 17, see
Final Act. 17, and Appellant’s unsupported assertions have not persuaded us
the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 17.
DECISION
The decision of the Examiner to reject claims 11, 12, and 15—17 is
affirmed.
The decision of the Examiner to reject claims 1—10, 13, 14, and 18—20
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)(l)(iv).
AFFIRMED-IN-PART
15