Ex Parte Gallagher et al

Patent Trial and Appeal BoardMar 31, 2015

12481663 (P.T.A.B. Mar. 31, 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. 12/481,663 06/10/2009 James R. Gallagher AUS920080736US1 5642 50170 7590 04/01/2015 IBM CORP. (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 EXAMINER MADAMBA, GLENFORD J ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 04/01/2015 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 JAMES R. GALLAGHER, BINH HUA, HONG L. HUA, and WEN XIONG ____________________ Appeal 2012-006259 Application 12/481,663 Technology Center 2400 ____________________ Before JAMES T. MOORE, BRETT C. MARTIN, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006259 Application 12/481,663 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, and 4–21. We have jurisdiction under 35 U.S.C. § 6(b). Claim 3 is cancelled. We affirm. Illustrative Claim Appellants’ claimed subject matter relates to expediting adapter failover in communication networks. See generally Abstract. Claim 1, reproduced below with the disputed limitation italicized, is illustrative of the claimed subject matter: 1. An apparatus comprising: Setup Logic coupled with a primary adapter memory of a primary adapter to interconnect a computer to a network; the Setup Logic being configured to store a network address in a memory location of the primary adapter memory and in a memory location of a standby adapter memory of a standby adapter; Copy Logic coupled with the primary adapter memory, the Copy Logic being configured to copy, during failover, a content of the primary adapter memory to the standby adapter memory at the network address stored in the memory location, wherein the content comprises a portion of the primary adapter memory with connection information for establishing connections in the standby adapter memory; and Assess Logic coupled with the Copy Logic, the Assess Logic being configured to select a method of copying the content of the primary adapter memory to the standby adapter memory based on a status of a direct memory access (DMA) connection between the primary adapter memory and the standby adapter memory, wherein the method of copying is a DMA operation between the primary adapter memory and the standby adapter memory in response to the Assess Logic determining that Appeal 2012-006259 Application 12/481,663 3 the status of the DMA connection is that the DMA connection is operative, and wherein the method of copying is through packetized sending of the content of the primary adapter memory through the network to the standby adapter memory in response to the Assess Logic determining that the status of the DMA connection is that the DMA connection is inoperative. Rejections Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gole (US 2005/0015460 A1; Jan. 20, 2005), Chen (US 2002/0133746 A1; published Sept. 19, 2002), and Bermingham (US 7,552,282 B2; June 23, 2009). Ans. 4–13. Claims 5, 8, 9, 12, and 161 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gole, Chen, Bermingham, and Subramanian (US 2008/0126509 A1; published May 29, 2008). Ans. 13–16. CONTENTIONS Appellants contend that the Examiner’s rejection of the independent claims is erroneous because the references fail to teach or suggest the claimed Assess Logic. App. Br. 7–12; Reply Br. 2–10. More specifically, Appellants contend that the combination of references does not teach or 1 The Examiner initially rejected claim 16 as unpatentable over Gole, Chen, and Bermingham. Ans. 4. In response to Appellants’ arguments, the Examiner added Subramanian to the rejection of claim 16 (id. at 32–34), thereby entering a new ground of rejection. Because Appellants elected to continue the appeal rather than petition to reopen prosecution in view of the new ground (see MPEP § 1207.03 IV), we review the rejection of claim 16 as unpatentable over the combination of Gole, Chen, Bermingham, and Subramanian. Appeal 2012-006259 Application 12/481,663 4 suggest the selection feature of the Assess Logic. App. Br. 11–12; Reply Br. 9–10. Appellants’ contentions raise the issue of whether the Examiner erred in finding that Gole, Chen, and Bermingham collectively would have taught or suggested the Assess Logic limitation of the independent claims. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (“App. Br.” filed Oct. 11, 2011) and Reply Brief (“Reply Br.” Feb. 28, 2012). We refer to the Briefs and the Answer (“Ans.” mailed Jan. 3, 2012) for the respective positions of Appellants and the Examiner. The Rejection of Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17–21 Over Gole, Chen, and Bermingham The Independent Claims The Examiner cites Gole and Chen for the claimed Setup Logic and Copy Logic. Ans. 4–7. The Examiner also cites Gole and Chen for aspects of the Assess Logic limitation. Id. at 7. The Examiner additionally cites Bermingham for the Assess Logic, concluding that the Assess Logic is an obvious combination of the combined teachings of the references. Id. at 8– 10. We are unpersuaded of error. We disagree with Appellants that “since none of the cited references teach or render the Assess Logic of the present independent claims obvious, any alleged combination of the references still would not result in these features being taught or rendered obvious.” Reply Br. 10. Appellants’ arguments against the references individually (see, e.g., App. Br. 8–11; Appeal 2012-006259 Application 12/481,663 5 Reply Br. 4–10) are unpersuasive because the rejections is based on what the combination of references would have taught or suggested to one skilled in the art. See In re Keller 642 F.2d 413 (CCPA 1981). Appellants, however, also offer two supporting arguments: 1) “the alleged combination of Gole, Chen, and Bermingham would result in a system primarily as taught by Gole;” and 2) “[t]here still would be no teaching or technical rationale for implementing the Assess Logic of claim 1.” App. Br. 8–11. We are unpersuaded by Appellants’ first point because whether the combination of Gole, Chen, and Bermingham also would result in the Gole system does not necessarily negate the Examiner’s finding that the combination would result in the claimed invention. Ans. 7–10. Appellants have not persuaded us that the Gole system is the only possible result of the combination. Hence, Appellants have not persuasively rebutted the Examiner’s findings and conclusion in this regard. We are unpersuaded by Appellants’ second point because it is belied by the evidence of record underlying the Examiner’s findings and conclusion. Specifically, with respect to the Assess Logic limitation, the Examiner finds that Gole discloses the packetized method of sending content if DMA is inoperative. Id. at 23 (“Gole: expressly discloses that communication between adapter interconnect devices may be through ‘network exchange of discrete frames or packets of data’ according to pre- defined protocols, such as TCP/IP” (citing Gole ¶¶ 4 and 53 and claims 13 and 14)). The Examiner further finds that Chen discloses copying primary adapter connection information to a standby adapter in the event of a failure. Id. at 25–26 (citing Chen ¶¶ 28 and 31–32). The Examiner finds that Bermingham discloses logic that selects copying via regular DMA Appeal 2012-006259 Application 12/481,663 6 read/write operations when a storage system is in an operational state and selects a background copy process for error recovery when an adapter is in a failed state. Id. at 26–29 (citing, inter alia Bermingham col. 19, l. 14–col. 20, l. 18). The Examiner reasons that Bermingham’s background copying may be accomplished in accordance with Gole’s packetized copying. Id. at 29–30. In other words, our review of the evidence of record cited supports the Examiner’s finding that Gole and Chen teach or suggest logic that copies information from primary adapter memory to secondary adapter memory in the event of a failure, and Bermingham’s selection feature could be used to select (i.e., continue using) DMA if DMA is operational or to select Gole’s packetized copying if DMA is not operational. In view of the foregoing, we see no error in the Examiner’s findings and conclusion that the combination of Gole, Chen, and Bermingham teaches or suggests the claimed Assess Logic. We are persuaded that Appellants’ apparatus as recited in claim 1 is an obvious combination of known elements. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–418 (2007). For at least the reasons stated by the Examiner, we sustain the Examiner’s decision to reject claim 1 and also claims 10, 17, and 18, which Appellants do not argue separately with particularity. Claims 15 and 21 Dependent claims 15 and 21 amplify the operation of the selection mechanism of the Assess Logic by specifying that the selection is made by first attempting copying by DMA, then resorting to packetized copying in the event of a failure. Appellants rely on arguments presented with respect to claim 1 (Reply Br. 11), adding that: 1) in Bermingham, “a failed memory board is detected in response to a DMA operation failing” (App. Br 13); and Appeal 2012-006259 Application 12/481,663 7 2) “Gole does not teach to specifically use the packetize data transfers as part of a background copy process” (Reply Br. 11). Appellants’ reliance on arguments presented with respect to claim 1 is unavailing for the reasons stated above. Regarding Bermingham, we see no distinction between Appellants’ claimed selection method and Bermingham’s selection method, which copies using DMA initially, then selects background copying if DMA copying fails. See, e.g., Bermingham col. 19, l. 14–col. 20, l. 18. We are unpersuaded of error in the Examiner’s reasoning that one skilled in the art would have found it obvious that Gole’s packetized method of copying could be used as Bermingham’s failover background copying when DMA copying fails. We therefore sustain the Examiner’s decision to reject claims 15 and 21, adopting the Examiner’s findings and conclusion (Ans. 31–32). We also sustain the Examiner’s decision to reject dependent claims 2, 4, 6, 7, 11, 13, 14, 19, and 20, which Appellants do not argue separately with particularity. The Rejection of Claims 5, 8, 9, 12, and 16 Over Gole, Chen, Bermingham, and Subramanian Claims 5, 8, 9, 12, and 16 are dependent claims. Appellants first argue that Subramanian does not cure the errors in the Examiner’s rejection of the independent claims. App. Br. 15 and 17–18. We are unpersuaded by this argument for the reasons stated above. Claims 5 and 12 Claim 5 depends from claim 1 and amplifies the Copy Logic of claim 1. Specifically, claim 5 adds that the copying of the content from the primary adapter memory to the standby adapter memory at the network address of claim 1 is “by direct memory access” to a specific address (i.e., Appeal 2012-006259 Application 12/481,663 8 “the standby adapter memory at the network address”). Appellants argue that this additional feature is not taught or suggested by Subramanian. App. Br. 16–18. We are unpersuaded of error. The Examiner finds that Subramanian discloses a “recovery approach and/or scheme to recover all Remote Direct Memory Access {RDMA} connections from RDMA Adapter failures.” Ans. 14 (citing Subramanian Abstract, Figs. 1–4, and ¶ 15). The Examiner also finds that “Subramanian discloses the transfer of session-related adapter information from a primary adapter to a secondary/backup adapter, as well as the recited adapter ‘hardware registers’ for writing the primary/secondary ‘adapter address’.” Ans. 36. The Examiner concludes that the features of claim 5 are “taught by the combination [of Gole, Chen, Bermingham, and Subramanian].” Id. at 37. We agree and are unpersuaded by Appellants’ arguments against Subramanian alone, because the rejection is based on what the combined teachings would have taught or suggested to one skilled in the art. In re Keller at 413. Appellants’ assert that “[m]erely teaching the ability to exchange information between adapters” and “[m]erely teaching the transfer of session related adapter information” does not teach or render obvious the specific features or mechanism of claims 5 and 12. Reply Br. 15. These assertions fail to consider what the combination of references would have taught or suggested to one skilled in the art. We are unpersuaded that the Examiner is “involved in rejecting a generalization of the claim with a generalization of the reference,” as Appellants argue. Id. The Examiner has again shown Appellants’ claimed invention is no more than an obvious combination of then-familiar elements, and Appellants have not persuasively rebutted the Examiner’s findings and conclusion. Appeal 2012-006259 Application 12/481,663 9 Accordingly, based on the record before us, we sustain the Examiner’s decision to reject claims 5 and 12 for at least the reasons stated by the Examiner. Ans. 13–14, 36–37. Claim 8 Claim 8 depends from claim 1 and recites two additional registers for storing the network address: “a Destination Memory Location (DML) hardware register and a Remote MAC Address (RMA) hardware register.” Appellants argue [t]here is no mention of hardware registers in any of these sections or shown in Figures 1–4, let alone a DML hardware register and RMA hardware register that store a network address that is a network address stored in a memory location of the primary adapter memory and in a memory location of a standby adapter memory of a standby adapter. App. Br. 18. See also Reply Br. 16. Appellants also argue again that the defects in the Examiner’s rejection of the independent claims flow to the dependent claims. App. Br. 18. We are unpersuaded of error for at least the reasons stated by the Examiner. Ans. 14–15, 37–38. Claim 9 Claim 9 depends from claim 8 and amplifies the Setup Logic, adding that the Setup Logic comprises “a Mapping API (application programming interface) configured to map a memory address for writing to a DML hardware register and a Querying API configured to query a MAC address for writing to an RMA hardware register.” Appellants argue error in the rejection of claim 9 based on arguments presented with respect to the independent claims, claim 5, and claim 8. Appeal 2012-006259 Application 12/481,663 10 Appellants add that Subramanian does not teach or suggest the limitations of claim 9. App. Br. 19–20. See also Reply Br. 16–18. We are unpersuaded of error for at least the reasons stated by the Examiner. Ans. 15–16, 38–41. Claim 16 The rejection of claim 16 is somewhat problematic in that the Examiner initially rejected claim 16 over the combination of Gole, Chen, and Bermingham. Ans. 4, 12. In response to Appellants’ arguments (App. Br. 13–15), the Examiner included additional findings from Subramanian. Ans. 32–35. Unfortunately, the Examiner did not re-caption the Grounds of Rejection to include claim 16 in the rejection over the combination including Subramanian. Ans. 4, 13. Appellants, nevertheless, recognized that the Examiner included additional findings from Subramanian (Reply Br. 14), but deemed those findings “irrelevant.” Id. In short, Appellants had notice of the Examiner’s new ground of rejection of claim 16 over a reference of record, but failed to argue the additional findings, thereby waiving Appellants’ right to reopen prosecution. See MPEP § 1207.03 IV. Moreover, only those arguments actually made by Appellants have been considered. Arguments that Appellants could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, for at least the reasons stated by the Examiner (Ans. 32– 35), we disagree with Appellants that the combination of Gole, Chen, Bermingham, and Subramanian would not have taught or suggested claim 16 to one skilled in the art. Appeal 2012-006259 Application 12/481,663 11 DECISION Based on the record before us, we sustain the Examiner’s decision to reject claims the Examiner’s rejection of claims 1, 2, and 4–21. 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 tc