Ex Parte Krieg et al

Patent Trial and Appeal BoardMar 25, 2013

10444817 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM R. KRIEG and JEFFREY J. SHAFER ____________________ Appeal 2010-008597 Application 10/444,8171 Technology Center 2400 ____________________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and JEFFREY S. SMITH, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ invention is a virtual switch for use in fibre channel applications, such as storage area networks. The virtual switch stores control-traffic-information associated with a device in a remote autonomous region of a fabric. The device has a domain ID associated with the 1 The real party in interest is Lucent Technologies, Inc. Appeal 2010-008597 Application 10/444,817 2 autonomous region in which it is located. A virtual domain ID associated with the virtual switch is assigned to the device. The virtual domain ID is provided to other autonomous regions for sharing the device (Spec. 1-2). Claim 1 is exemplary of the claims on appeal: 1. One or more computer-readable media comprising computer executable instructions that, when executed, direct a computer to: store control-traffic-information associated with a device in a remote autonomous region of a fabric, the device having a domain ID associated with the autonomous region; assign a virtual domain ID to the device; and provide the virtual domain ID to another autonomous region of the fabric for sharing the device. The Examiner relies upon the following prior art in rejecting the claims on appeal: Yao US 2003/0084219 A1 May 1, 2003 Kaneda US 2003/0212781 A1 Nov. 13, 2003 Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yao in view of Kaneda. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Jan. 8, 2010), the Reply Brief (“Reply Br.,” filed June 7, 2010), and the Examiner’s Answer (“Ans.,” mailed Apr. 5, 2010) for their respective details. ISSUES Appellants argue that the combination of Yao and Kaneda fails to teach or suggest a virtual domain ID, or providing a virtual domain ID to another autonomous region of a fabric (App. Br. 3-4). Appellants contend that Yao teaches a “domain ID” but makes no mention of a separate, virtual domain ID (App. Br. 4). Appeal 2010-008597 Application 10/444,817 3 Appellants’ contentions present us with the following issues: 1. Does the combination of Yao and Kaneda teach or fairly suggest assigning a virtual domain ID to a device in a remote autonomous region? 2. Does the combination of Yao and Kaneda teach or fairly suggest providing the virtual domain ID to another autonomous region of the fabric? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). Under the doctrine of inherency, if a claimed element is not expressly disclosed in a prior art reference, the reference nevertheless anticipates the claim if the missing element is necessarily present in the reference, and it would be so recognized by skilled artisans. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002). To anticipate the claim, the missing Appeal 2010-008597 Application 10/444,817 4 element must be necessarily present in the prior art—not merely probably or possibly present. Id. ANALYSIS Independent claims 1, 7, and 13 all recite “assign[ing] a virtual domain ID to the device” and provid[ing] the virtual domain ID to another autonomous region of the fabric.” We are persuaded by Appellants’ arguments that the Examiner erred. The Examiner’s statement of rejection (Ans. 3, 6, 9) does not identify any part of Yao corresponding to a “virtual domain ID.” In response to Appellants’ arguments, the Examiner asserts that a virtual domain ID would be inherent to Kaneda’s “virtual-FC switch,” because Appellants’ Specification discloses that a virtual domain ID is associated with a virtual switch (Ans. 10). We do not agree that a virtual domain ID is necessarily present in Kaneda. Further, we agree with Appellants’ argument that Kaneda’s switch detection technique, in which IP switches are made to appear virtually as FC switches (¶ [0059]), does not pertain to providing a virtual domain ID to an autonomous region of a fabric for sharing a device (App. Br. 5). We conclude that the combination of Yao and Kaneda does not teach or fairly suggest assigning a virtual domain ID to a device in a remote autonomous region of a fabric, or providing that virtual domain ID to another autonomous region of the fabric for sharing the device. We will not sustain the Examiner’s § 103 rejection of claims 1-18. Appeal 2010-008597 Application 10/444,817 5 CONCLUSIONS 1. The combination of Yao and Kaneda does not teach or fairly suggest assigning a virtual domain ID to a device in a remote autonomous region. 2. The combination of Yao and Kaneda does not teach or fairly suggest providing the virtual domain ID to another autonomous region of the fabric. ORDER The Examiner’s rejection of claims 1-18 is reversed. REVERSED babc