Ex Parte Morabad et al

Patent Trial and Appeal BoardDec 23, 2016

13753489 (P.T.A.B. Dec. 23, 2016)

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. 13/753,489 01/29/2013 Gururaj S. Morabad 83098389 6928 56436 7590 12/28/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER DANG, PHONG H ART UNIT PAPER NUMBER 2185 NOTIFICATION DATE DELIVERY MODE 12/28/2016 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GURURAJ S. MORABAD, GURUPRASAD RAMACHANDRACHAR, and NARAYANA RAO VENKATA NAGA SRIPADA Appeal 2016-000759 Application 13/753,4891 Technology Center 2100 Before DEBRA K. STEPHENS, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—15, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to “a bypass path [in a computer storage enclosure] such that, even if power to a storage enclosure is down, the 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP, which is wholly-owned by Hewlett-Packard Company. App. Br. 2. Appeal 2016-000759 Application 13/753,489 storage enclosure may forward signals to another storage enclosure with which it is connected.” Spec. 17. Representative Claim Claim 1 is representative and reproduced below with the limitations at issue emphasized: 1. A storage enclosure comprising: an IN port and an OUT port; an expander including expander logic circuitry to route signals received at the IN port to either a destination within the storage enclosure or to the OUT port; and a bypass path to direct Serial Attached SCSI (SAS) signals received at the IN port to the OUT port in an event of a power failure. Rejections Claims 1—4, 8—10, and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Lieber et al. (US 6,658,504 Bl; Dec. 2, 2003), Beer et al. (US 6,036,618; Mar. 14, 2000), and Davies et al. (US 2008/0010530 Al; Jan. 10, 2008). Final Act. 2. Claims 5—7, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Lieber, Beer, Davies, and Casanova et al. (US 2006/0104641 Al; May 18, 2006). Final Act. 7. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Lieber, Beer, Davies, and Islam et al. (US 2008/0034067 Al; Feb. 7, 2008). Final Act. 10. ISSUE Did the Examiner err in finding the combination of Lieber, Beer, and Davies teaches or suggests “a bypass path to direct Serial Attached SCSI 2 Appeal 2016-000759 Application 13/753,489 (SAS) signals received at the IN port to the OUT port in an event of a power failure,” as recited in claim 1? ANALYSIS Claim 1 recites “a bypass path to direct Serial Attached SCSI (SAS) signals received at the IN port to the OUT port in an event of a power failure.” The Examiner relies on Lieber for teaching “a bypass path to direct . . . signals received at the IN port to the OUT port”; Beer for teaching bypassing “in an event of a power failure”; and Davies for teaching the signals are “Serial Attached SCSI (SAS) signals.” Final Act. 3. First, we are not persuaded by Appellants arguing the references individually rather than in combination. In re Keller, 642 F.2d 413, 426 (CCPA 1981); App. Br. 7—8 (arguing Fieber individually), 8—9 (arguing Beer individually), 9 (arguing Davies individually), 10-11 (arguing Casanova individually), 12 (arguing Islam individually). Second, we agree with the Examiner that Appellants are arguing limitations not found in the claim as currently written. Ans. 3^4; App. Br. 10; Reply Br. 3^4. For example, the Examiner correctly concluded that the claim phrase in an event of a power failure “does not specify any specific power event or way of detecting . . . power failure.” Ans. 3. Indeed, Appellants have not defined explicitly the term “a power failure” in the Specification. Appellants attempt to introduce limitations from embodiments described in the Specification. Reply Br. 3^4. However, the Federal Circuit has said, “although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Phillips v. AWH Corp., 415 3 Appeal 2016-000759 Application 13/753,489 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Appellants have not sufficiently persuaded us that the claims as currently written are limited to the embodiments in the Specification. Thus, Appellants have not persuaded us the Examiner’s interpretation of “a power failure” is unreasonable in light of the Specification. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 2—15, which Appellants argue are patentable for similar reasons. See App. Br. 10-13; 37 C.F.R. § 41.37(c)(l)(iv). DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1—15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 4