Ex Parte Hahn et al

Patent Trials and Appeals Board

Mar 27, 2019

12607551 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/607,551
67813 7590
BGL/
P.O. BOX 10395
CHICAGO, IL 60610
10/28/2009
03/28/2019
FIRST NAMED INVENTOR
Judah Gamliel Hahn
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.
10519-1422
(MSA-1332H-US)
CONFIRMATION NO.
4767
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
03/28/2019 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 JUDAH GAMLIEL HAHN,
ALAIN NOCHIMOWSKI, and MICHA RA VE 1
Appeal2017-004021 2
Application 12/607 ,551
Technology Center 2100
Before MICHAEL J. STRAUSS, SHARON PENICK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3 and 5-7, which constitute all the claims pending in
this application. App. Br. 3. Claims 4 and 8 are canceled. Id. at 8-9
1 Appellants indicate the real party in interest is SanDisk IL, LTD.
Appeal Br. 2.
2 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
June 20, 2016) and Reply Brief ("Reply Br.," filed Jan. 1, 2017), and the
Examiner's Answer ("Answer," mailed Nov. 7, 2016) and Final Office
Action ("Final Action," mailed July 16, 2015).
Appeal2017-004021
Application 12/607 ,551
(Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b)(l). We
REVERSE.
Invention
Appellants' Specification relates storage devices, including memory
and a memory controller that manages the memory. Spec. 1. A storage
device makes changes to the information stored in the memory in response
to storage commands received from host devices with which they operate.
Id. A storage device may also change what is stored in the memory, for
example to perform internal activities, or store secure content that is
received through an "out-of-band" connection between the storage device
and a network server. Id. Appellants describe that, in such cases, according
to the prior art, the host device may not recognize these changes and may
inadvertently overwrite them. Id. at 1-2. Appellants' claimed invention
involves a process by which, "[ w ]hen the host device sends a command to
the storage device, the storage device responds to it by commencing a
synchronization process during which the two parties coordinate the update
of the file system with the stored change." Id. at 16 (Abstract).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (with italics added
for emphasis):
1. A method for updating a file system of a storage
device, the method comprising:
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Application 12/607 ,551
in a host device comprising a host driver that is
configured to manage a connection between the host device and
a storage device connected to the host device and that is
configured to manage a storage device file system of the storage
device, the host driver:
receiving a notification from the storage device in
response to sending a storage command to the storage
device, the notification regarding a requested change in
one or more values within the storage device file system
that a controller of the storage device has initiated and
logged in a synchronization log; and
sending a command to the storage device in
response to receiving the notification that directs the
storage device to make the requested change in one or
more values within the storage device file system that the
controller of the storage device initiated and logged in the
synchronization log.
Rejections
The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C. § I03(a)
as obvious over Herman et al. (US 2010/0082711 Al; published Apr. 1,
2010; hereinafter "Herman"), Venkiteswaran (US 7,089,549 B2; issued Aug.
8, 2006), and Liskov (US 7,158,985 Bl; issued Jan. 2, 2007). Final Action
7-17.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
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Application 12/607 ,551
Examiner's Findings
Claim 1 claims a method including the step, for a host driver in a host
device, of "receiving a notification from the storage device in response to
sending a storage command to the storage device, the notification regarding
a requested change in one or more values within the storage device file
system that a controller of the storage device has initiated and logged in a
synchronization log."
The Examiner finds that Herman discloses, for a host driver in a host
device " ... sending a storage command to the storage device ... regarding a
requested change in one or more values within the storage device file
system." Final Action 7-8. We note that the elisions indicated by ellipses
change the meaning of the quoted claim language. In the claim, the
"requested change in one or more values within the storage device file
system" is not the subject of the storage command sent by the host driver,
but rather the subject of the notification from the storage device: "the
notification regarding a requested change in one or more values within the
storage device file system that a controller of the storage device has initiated
and logged in a synchronization log." Appeal Br. 8 (Claims Appendix).
The Examiner acknowledges that Herman does not teach the host
driver receiving a notification from the storage device as claimed in claim 1.
Final Action 9. The Examiner finds that Venkiteswaran teaches "receiving a
notification from the storage device in response to sending a command to the
storage device." Id. The Examiner cites Venkiteswaran as teaching a
storage device determining when to initiate an update of file
system data based on signals or indications provided by the host
device, generating an update start request by a storage device
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Application 12/607 ,551
which is sent to a host device, which is a notification regarding
an update or change in the storage device file system requested
and initiated by the storage device, the host device sending an
acknowledgement that the update start request has been
received, which is a command sent from the host device.
Id. (citing Venkiteswaran, Abstract, 1:51---60, 2:45-55, 3:30-57, 7:25--46,
9:26--41, Fig. 2, Claim 1).
The Examiner combines Liskov with Herman and Venkiteswaran to
provide a teaching of the initiation of "notification regarding a requested
change ... that a controller of the storage device has initiated and logged in
a synchronization log." Id. at 10-11.
Appellants' Arguments and Our Analysis
Appellants argue that the combination of cited art fails to teach or
suggest a host driver of a host device "receiving a notification from the
storage device in response to sending a storage command to the storage
device, the notification regarding a requested change in one or more values
within the storage device file system that a controller of the storage device
has initiated." Appeal Br. 3-6, Reply Br. 3-5.
As Appellants assert (Appeal Br. 4), the Examiner acknowledges that
Herman does not teach or suggest a notification received by the host driver.
The Examiner finds that Herman discloses the host driver sending a storage
command to a storage device regarding a requested change within the
storage device file system. Final Action 7-9, Answer 3--4. As discussed
above, the claim requires that the requested change is the subject of the
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notification received from the storage device, not the command sent to the
storage device.
Appellants argue that V enkiteswaran does not teach a storage device
sending a notification to a host device requesting a change, or sending such a
notification in response to a host device sending a storage command to the
storage device. Appeal Br. 4. Venkiteswaran describes updating of flash
memory via a command-driven update mechanism. Venkiteswaran, [57].
Venkiteswaran teaches that "[u]pdate logic resident in the flash memory
responds to instructions from a program executing on an external host." Id.
1:51-52. Venkiteswaran teaches an initial handshake between flash memory
and the host, in which the update logic sends a signal to the host device "that
it is ready to start the update." Id. at 3:33--40. When the host receives the
command it sends a signal to acknowledge receipt and complete the initial
handshake before a memory update. Id. at 3:42--45.
We agree with Appellants (Appeal Br. 4) that the cited portions of
Venkiteswaran do not teach or suggest a "notification regarding a requested
change in one or more values within the storage device file system that a
controller of the storage device has initiated." While Venkiteswaran may
teach that the flash memory sends the first signal in an update process, this
does not teach or suggest the claimed notification regarding a "requested
change in one or more values within the storage device file system" initiated
by a controller of the storage device. If the initial signal from the update
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logic of the memory device could be considered a notification, it is, in any
case, not sent in response to a command from the storage device.
Appellants additionally argue that Liskov does not teach
communications between a host device and a storage device connected to the
host device, but rather between a master node and a requestor node. Appeal
Br. 5. We agree with the Examiner that this argument is an attack on an
individual reference where the rejections are based on a combination of
references. Answer 3 ( citing In re Keller, 542 F .2d 413 (CCP A 1981 ).
Appellants further argue that the cited portions of Liskov do not teach
that a storage device in a server sends a notification to a master server
regarding a requested change that a controller of the storage device has
initiated. Appeal Br. 5. We agree, and we additionally observe regarding
the disputed limitation, the Examiner does not find that a notification of a
requested change in Liskov from is received by the master node ( sent by the
requestor) in response to the master node sending a storage command to the
requestor. Final Action 11 ( describing that in Liskov the requestor
periodically requests dataset updates from the master node by sending an
update request); Answer 8-9.
We are persuaded of error in the Examiner's finding that the asserted
combination of prior art teaches or suggests claim 1 's limitation of a "host
driver ... receiving a notification from the storage device in response to
sending a storage command to the storage device, the notification regarding
a requested change in one or more values within the storage device file
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system that a controller of the storage device has initiated and logged in a
synchronization log."
Thus, we do not sustain the obviousness rejection of claim 1 or of
independent claim 5, rejected on substantially the same basis, or claims 2, 3,
6, and 7, which depend, directly or indirectly, from these independent
claims.
DECISION
We reverse the Examiner's decision rejecting claims 1-3 and 5-7
under 35 U.S.C. § 103(a) as obvious over Herman, Venkiteswaran, and
Liskov.
REVERSED
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