T 0122/14 (Storage virtualization controller/INFORTREND) of 27.8.2019

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division to refuse the present application for lack of an inventive step (Article 56 EPC).

II. With its statement setting out the grounds of appeal, the appellant filed claims 1 to 28 of a main request and claims 1 to 25 of an auxiliary request. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of these requests. It requested oral proceedings as a further auxiliary measure.

III. In its preliminary opinion given in the annex to the summons to oral proceedings, the board raised objections under Articles 123(2) and 56 EPC.

IV. In reply to the summons to oral proceedings, the appellant re-filed the requests on file and filed claims 1 to 28 of second to fifth auxiliary requests.

V. Oral proceedings were held before the board.

VI. Claim 1 of the main request reads as follows:

"An external storage virtualization controller (200), comprising:

a central processing circuitry (240) for performing IO operations in response to IO requests from a host entity (10);

at least one IO device interconnect controller (220, 300) coupled to said central processing circuitry (240);

at least one host-side IO device interconnect port provided in said at least one IO device interconnect controller for coupling to said host entity (10); and

at least one SAS device-side IO device interconnect port (600) provided in a said at least one IO device interconnect controller (220, 300) for coupling to and performing point-to-point serial-signal transmission with a set of at least one physical storage device, PSD,(420);

wherein said external storage virtualization controller (200) is capable of accommodating said set of at least one physical storage device (420) of different serial protocols through a SAS device-side IO device interconnect port;

wherein the IO requests are parsed to determine what operation is to be performed and on which sections of a virtualized LMU the operation is to be performed; and

wherein when the operation comprises some combination of a(n) internally-emulated, asynchronous, and synchronous device sub-operation, then the external storage virtualization controller (200) executes the associated sub-operations including transferring any associated data to/from the host entity (10) in response."

VII. Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the last two paragraphs (starting with "wherein the IO requests are parsed") were replaced with the following text:

"wherein said storage visualization controller (200) comprises at least two host-side IO device interconnect ports each for coupling to a host-side IO device interconnect and said storage visualization controller (200) is configured to present redundantly a logical media unit on two of said at least two host-side IO device interconnect ports."

VIII. Claim 1 of the second auxiliary request differs from claim 1 of the main request in that the last three paragraphs (starting with "wherein said external storage virtualization controller") were replaced with the following text:

"wherein said external storage virtualization controller (200) is capable of accommodating said set of at least one physical storage device (420) of SATA and/or SAS protocols through a SAS device-side IO device interconnect port; and

wherein when one of the IO requests from the host entity is received by said external storage virtualization controller, an IO complete report that the one of the I/O requests is successfully complete is first issued to the host entity by said external storage virtualization controller before said external storage virtualization controller actually completes said one IO request."

IX. Claim 1 of the third auxiliary request differs from claim 1 of the second auxiliary request in that the following text was added before the text starting with "an IO complete report":

"and when the one of the IO requests is a write back request,"

X. Claim 1 of the fourth auxiliary request differs from claim 1 of the second auxiliary request in that the text "comprised in a storage virtualization subsystem" was added after the text "An external storage virtualization controller (200) and the last paragraph (starting with "wherein when one of the IO requests") was replaced with the following text:

"wherein the storage virtualization subsystem comprises an enclosure management services mechanism that is implemented using an intelligent circuitry which runs a software program for managing and monitoring devices belonging to the storage virtualization subsystem."

XI. Claim 1 of the fifth auxiliary request differs from claim 1 of the fourth auxiliary request in that the following text was added to the end:

", wherein an I2C interconnect is provided as a communication medium between the external storage virtualization controller and the enclosure management services mechanism."

Reasons for the Decision

1. Main request and first auxiliary request

1.1 Claim 1 of both the main request and the first auxiliary request has the feature that the "external storage virtualization controller is capable of accommodating said set of at least one physical storage device of different serial protocols through a SAS device-side IO device interconnect port". When the appellant introduced this feature into the claims during the examination proceedings, it gave figure 8A and page 11, last paragraph of the application as its basis (see the letter of 27 May 2009, page 2, first paragraph). In its preliminary opinion, the board objected that the application as originally filed did not support the generalisation of the teaching of these passages, which mentioned only SATA and SAS protocols, to "different serial protocols". At the oral proceedings, the appellant argued that page 11, last sentence, which reads "the DASD array 400 comprises a plurality of DASD 420, such as hard disk drive (HDD), which comprises either SAS DASDs 420A or SATA DASDs 420s or both", gave SATA and SAS protocols only as examples, as would be apparent from the use of "such as". This argument does not convince the board since it is clear that the "such as" in the cited sentence refers not to SAS and SATA protocols but to "hard disk drive".

1.2 Therefore, claim 1 of both the main request and the first auxiliary request contains subject-matter which extends beyond the content of the application as originally filed (Article 123(2) EPC).

2. Second to fifth auxiliary requests

2.1 The second to fifth auxiliary requests were filed after the appellant had filed its statement setting out the grounds of appeal and hence may be admitted into the appeal proceedings only at the board's discretion (Article 13(1) RPBA).

2.2 It is established case law of the boards of appeal that the admissibility of amendments depends, among other things, on whether the amended claims converge with or diverge from the subject-matter previously claimed, i.e. whether they develop and increasingly limit the subject-matter of the independent claim of the main request in the same technical direction and/or in the direction of a single inventive idea, or whether they entail different lines of development (See "Case Law of the Boards of Appeal of the European Patent Office", Eighth Edition, 2016, IV.E.4.4.4).

2.3 In the present case, whereas the supposedly inventive idea pursued by the appellant in claim 1 of the main request was the capability of the storage virtualization controller to accommodate physical storage devices of different serial protocols, the features added to claim 1 of the second and third auxiliary requests are related to an IO complete report issued by the storage virtualization controller to the host, and the features added to claim 1 of the fourth and fifth auxiliary requests are related to enclosure management services. As the appellant also admitted at the oral proceedings, there is no technical relationship between these features.

2.4 Regardless, the appellant argued that the added features were all features of the same storage virtualization controller and narrowed the scope of protection sought in comparison with the main request, so these auxiliary requests should be seen as a further refinement and thus as a convergent development of the main request. If the appellant's argument were to be accepted, adding any further feature to a claim would constitute a convergent development. However, the correct criterion for judging whether an amendment constitutes a convergent development of the requests on file is, as stated above, whether the newly added features develop and limit the subject-matter of previous requests in the same technical direction. This is not the case for the second to fifth auxiliary requests.

2.5 For these reasons, the board exercises its discretion under Article 13(1) RPBA and does not admit the second to fifth auxiliary requests into the proceedings.

3. As there is no allowable request on file, the appeal is not allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.