Cutforth, Craig F. et al.Download PDFPatent Trials and Appeals BoardMay 6, 202014152398 - (D) (P.T.A.B. May. 6, 2020) Copy Citation 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. 14/152,398 01/10/2014 Craig F. Cutforth STL18105 9303 73462 7590 05/06/2020 Hall Estill - Seagate Technology LLC 100 North Broadway, Suite 2900 Oklahoma City, OK 73102-8820 EXAMINER CADORNA, CHRISTOPHER PALACA ART UNIT PAPER NUMBER 2442 NOTIFICATION DATE DELIVERY MODE 05/06/2020 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): USPTO@dockettrak.com okcipdocketing@hallestill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG F. CUTFORTH, CAROLINE W. ARNOLD, and CHRISTOPHER J. DEMATTIO Appeal 2019-000402 Application 14/152,398 Technology Center 2400 Before MICHAEL J. ENGLE, PHILLIP A. BENNETT, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Seagate Technology LLC. Appeal Br. 1. Appeal 2019-000402 Application 14/152,398 2 CLAIMED SUBJECT MATTER The claims relate to migrating data within an object storage system using available storage system bandwidth. Spec. 1:2–4. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A computer-implemented method comprising: arranging a plurality of data storage devices into a plurality of zones of an object storage system, each zone corresponding to a different physical location and having an associated controller; using a server to store data objects from users of the object storage system in the respective zones in response to at least one request from at least one user connected to the server; deploy a new storage map for at least one zone of the plurality of zones; detecting an available bandwidth of the server; and directing migration of data objects between the zones in relation to the detected available bandwidth without a request for data migration from any of the at least one user of the object storage system. REFERENCES The prior art relied upon by the Examiner is: Spangler US 7,007,090 B1 Feb. 28, 2006 Shibayama Griesmer US 2007/0245110 A1 US 2010/0161827 A1 Oct. 18, 2007 June 10, 2010 REJECTIONS Claims 1–15 stand rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 7–8. Claims 1–9, 11–14, and 16–19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shibayama and Spangler. Id. at 9–24. Appeal 2019-000402 Application 14/152,398 3 Claims 10, 15, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shibayama, Spangler, and Griesmer. Id. at 24. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv). Rejection under § 112(b) In the Final Action, the Examiner determines the following limitation of claim 1 is indefinite: “a rebalancing module connected to the server and adapted to direct . . . migration.” Final Act. 7 (also finding a similar limitation in claim 12 indefinite). Specifically, the Examiner finds this limitation invokes § 112(f) and that “the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.” Id. at 7–8. The Examiner further finds, “FIGS. 5 and 8 disclose a rebalancing module and a monitoring module (comprising an element of the rebalancing module), but neither figure provides a corresponding structure for performing the claim function.” Id. at 8. Appellant contends that the Examiner “failed to adhere to the 3-prong analysis of MPEP § 2181.” Appeal Br. 6. Appellant further contends, “[t]he ordinary artisan would disagree and identify that the specification provides ample structure to trigger the rebuttable presumption that 35 U.S.C. §112(f) does not apply.” Id. Specifically, Appellant contends the Specification indicates that § 112(f) does not apply as follows: Appeal 2019-000402 Application 14/152,398 4 For instance, the ordinary artisan would understand the claimed rebalancing module as comprising monitor and data migration modules, as shown in FIG. 5, that are explicitly described as “realized by any of the logical levels” . . . “such as but not limited to the object services of the object ring.” See pg. 9, ln. 20-28. The ordinary artisan would further understand that the object ring (144) has storage (164) that “is a physical set of storage” that may be “geographically separated.” See pg. 7, ln. 20 to pg. 8, ln. 12. Hence, the ordinary artisan would conclude that the rebalancing module (170) of FIG. 5 is described as physically present in physical storage while being connected to a server of a network. Id. In the Answer, the Examiner finds, and we agree, that “Applicant does not contest the use of a generic placeholder (A) nor functional language (B).” Ans. 4. The Examiner further finds the claim language uses a generic placeholder, “module,” coupled with functional language (“rebalancing”), without reciting sufficient structure in the Specification to perform the recited function. Id. at 4–5. Regarding the Specification’s teachings, the Examiner finds that “logical levels,” “object services,” “object ring,” and “physical set of storage,” relied on by Appellant, recite insufficient structure. Id. at 6. In Reply, Appellant contends for the first time that the term “module” is not a generic placeholder because one of ordinary skill in the art would have viewed the Specification as “correlat[ing] the term ‘module’ with a sufficiently definite meaning for the claimed function.” Reply Br. 1–2. Appellant contends the “rebalancing module” of Figure 5 is “realized” in the “data structure rings . . . that translate[] inputs . . . into available bandwidth and data migration commands.” Id. at 2 (citing Spec. pgs. 9–11). Appellant further contends, “[w]ith various references in the specification describing Appeal 2019-000402 Application 14/152,398 5 how the claimed rebalancing module is resident in a physical data storage device, the ordinary artisan would correlate the term ‘module’ with circuitry that is configured with programmable logic to carry out the claimed function.” Id. (citing Spec. 5–8, Figs. 3–4). As noted, this dispute turns on whether the “rebalancing module” limitation is a means-plus-function limitation under § 112(f), for if it is, it must be construed in light of the corresponding structure in the Specification and its equivalents. See In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). For computer-related inventions, if special programming is required for a general-purpose computer to perform the means-plus-function limitation, then the application usually must disclose enough of an algorithm to provide the requisite structure—a disclosure that can be expressed in any understandable terms (e.g., a mathematical formula, in prose, or as a flowchart). See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1341 (Fed. Cir. 2008); see also Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We see no error in the Examiner’s means-plus-function interpretation. Apart from reciting a server connected to the “rebalancing module,” the claim recites no particular structure to perform the recited function of “adapted to direct migration of sets of data objects between zones in relation to an available bandwidth of the network in response to the controller deploying a new storage map for a zone.” Although omitting the term “means” in a claim element creates a rebuttable presumption that § 112(f) does not apply, such an omission does not automatically prevent that element from being construed as a means- plus-function element. See Williamson v. Citrix Online, LLC, 792 F.3d Appeal 2019-000402 Application 14/152,398 6 1339, 1348 (Fed. Cir. 2015) (en banc). For example, the term “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6.” Id. at 1350. In such a case, § 112(f) will apply if the claim fails to recite sufficiently definite structure, or else recites function without reciting sufficient structure for performing that function. See id. at 1349. That is the case here. First, we agree with the Examiner that the term “module” is a generic placeholder for software or hardware that performs the recited function. See Ans. 4. That is, the term “module” is merely a nonce word of “non-structural generic placeholder” equivalent to the term “means” because it fails to connote sufficiently definite structure and, in the context of claim 1, invoke § 112(f). See id. at 1350 (interpreting the term “distributed learning control module” as means-plus-function under the previous version of § 112(f) because it did not recite sufficiently definite structure). To the extent Appellant contends that the term “module” is inherently structural to avoid means-plus-function treatment under § 112(f) (see Reply Br. 1–2), there is no persuasive evidence on this record to substantiate such a contention. Appellant’s argument that the rebalancing module is resident in a physical data storage device is analogous to the claimed processors executing software that this Board has held were non-structural generic placeholders. See Ex parte Lakkala, 2013 WL 1341108 (PTAB Mar. 13, 2013) (informative); Ex parte Erol, 2013 WL 1341107 (PTAB Mar. 13, 2013) (informative); Ex parte Smith, 2013 WL 1341109 (PTAB Mar. 14, 2013) (informative). Appeal 2019-000402 Application 14/152,398 7 We also agree with the Examiner that the Specification fails to disclose sufficient corresponding structure for the means-plus-function limitations to perform the recited functions. Final Act. 7–8; Ans. 5–7. While Appellant contends the claimed rebalancing module is described as “realized by any of the logical levels,” an “object ring,” and “a physical set of storage,” none of these concepts represents an algorithm for performing the claimed function of “adapted to direct migration of sets of data objects between zones in relation to an available bandwidth of the network in response to the controller deploying a new storage map for a zone.” See Appeal Br. 6. Tellingly, Appellant never contends the Specification discloses any algorithm to provide the requisite structure. In short, Appellant does not identify sufficient structure disclosed in the Specification corresponding to the recited module that, as noted previously, is a means-plus-function limitation. Therefore, claim 1 is indefinite. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1 and claims 2–15 not argued separately with particularity. Rejections under § 103 Appellant selects independent claim 16 as a representative claim of claims 1–9, 11–14, and 16–19. Appeal Br. 7. As Appellant argues claims 1–9, 11–14, and 16–19 as a group, “all claims subject to the ground of rejection stand or fall together.” 37 C.F.R. § 41.37(c)(1)(iv). Thus, “‘the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.’” In re Huai- Appeal 2019-000402 Application 14/152,398 8 Hung Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011) (quoting predecessor rule, 37 C.F.R. § 41.37(c)(1)(vii)). Appellant contends that the combination of Shibayama and Spangler fails to teach or suggest “data migration in relation to available bandwidth.” Appeal Br. 7 (paraphrasing claim 16). Initially, Appellant poses an issue of claim construction for the claimed “data migration.” See id. Appellant contends, From the specification, the ordinary artisan would understand the claimed migration of data at least in view of FIGS. 5 & 7, and the associated description of the specification, as autonomously responding to deployment of a new storage map by migrating data based on detected available bandwidth. See pg. 9, ln. 21 to pg. 11, ln. 29; pg. 13, ln. 4 to pg. 14, ln. 2. Id. During prosecution, the PTO gives the language of the proposed claims “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). The “broadest reasonable interpretation” standard does not prejudice the applicant, who has the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims. In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984). Moreover, “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 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Appeal 2019-000402 Application 14/152,398 9 Claim 16 does not recite “autonomously responding to deployment of a new storage map by migrating data based on detected available bandwidth,” but rather, “deploy a new storage map” and “directing migration of data objects . . . in relation to the detected available bandwidth.” Appellant merely states, without explanation, that “the ordinary artisan would understand the claimed migration of data” to mean “autonomously responding to deployment of a new storage map by migrating data based on detected available bandwidth.” See Appeal Br. 7. Appellant points to no definition of “migration of data” in the Specification. Instead, Appellant cites approximately three pages of the Specification but fails to point to, or even quote, any specific language supporting its interpretation. See id. We are persuaded, then, that Appellant impermissibly invites us to read limitations into claim 16 from the Specification—i.e., “autonomously responding to deployment of a new storage map by migrating data based on detected available bandwidth,” which we decline to do.2 Turning to Appellant’s arguments on the teachings of the prior art, Appellant contends that Shibayama teaches away from the claims “by exclusively teaching migration of data after a migration request.” Appeal Br. 8. Claim 16, in contrast, recites “directing migration of data objects . . . without a request for data migration from any . . . user.” On this point, the Examiner finds that “Shibayama does not reference a user or a device that would ordinarily be considered a user device, but instead specifically cites 2 We acknowledge that independent claims 1 and 12 may recite different limitations, but as discussed above, Appellant waived arguments for those claims by relying solely on claim 16 as representative. Appeal 2019-000402 Application 14/152,398 10 the CPU of a management server.” Ans. 7 (citing Shibayama ¶ 151). In Reply, Appellant contends that “Shibayama explicitly requires a user to select the migration source and migration destination before a computing device executes the data migration.” Reply Br. 2 (citing Shibayama ¶¶ 58, 63, 66, 68–70). Appellant’s argument is unpersuasive. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, although Shibayama refers to some user-initiated activity (e.g., “storage apparatus . . . selected by a user as the migration source” (¶ 58), “data migration destination . . . specified beforehand by the user” (¶ 63), “migration plan . . . prepared by the user” (¶ 66), “the user can also specify . . . the . . . method of the data migration” (¶ 68)), Shibayama also refers to processor-initiated activity (e.g., “the CPU 210 of the management server 200 issues a migration start command” (¶ 151)). Accordingly, Shibayama’s mere disclosure of alternatives to CPU-based migration does not teach away from the solution claimed. Appellant next contends that the references fail to teach or suggest “without a request for data migration” because Spangler “requires a request in order for data migration to occur and is silent with respect to responding Appeal 2019-000402 Application 14/152,398 11 to a new map deployment with data migration.” Appeal Br. 8. Similarly, Appellant contends, “Spangler contradicts the present claims and teaches away from the claimed data migration in response to a new map deployment without a request for data migration.” Id. These arguments are not commensurate with the scope of Appellant’s representative claim 16, as claim 16 does not recite “responding to a new map deployment with data migration” or “in response to a new map deployment.” In any event, the Examiner explains in the Answer, and Appellant does not rebut, that Shibayama also teaches or suggests the disputed limitation. Ans. 10 (“Shibayama entirely covers the negative limitation . . ., i.e., ‘executing the data migration without any request for data migration from users’”); Final Act. 10 (applying Shibayama to claim 1’s “direct migration . . . in response to . . . deploying a new storage map for a zone”); id. at 17 (similar for claim 12); see Reply Br. passim; Shibayama ¶ 151 (“the CPU 210 of the management server 200 issues a migration start command”). Moreover, the Examiner relies on Shibayama, not Spangler, for the recited “new storage map” limitations, and thus, Appellant impermissibly argues the references individually by arguing that Spangler is “silent with respect to responding to a new map deployment.” E.g., Final Act. 21; see also id. at 10, 17 (applying Shibayama to claims 1 and 12 as discussed supra); Appeal Br. 8; see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references.). Appellant also contends that one of ordinary skill in the art would not have combined the references because the “broadcasting bandwidth involving digital communications in Spangler is fundamentally different Appeal 2019-000402 Application 14/152,398 12 than the claimed data storage bandwidth involving data storage devices and zones in an object storage system.” Appeal Br. 9. The Examiner finds, and we agree, that “these [references] merely having difference[s] does not render [the] prior art references as being unobvious to combine or lacking a motivation to combine.” Ans. 11. To the extent Appellant is arguing the references are non-analogous art, Appellant does not even attempt to address the test for analogous art. See, e.g., In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”) (internal citation omitted); MPEP § 2141.01(a). Accordingly, Appellant’s argument is unpersuasive. Claim 16 also requires “directing migration of data objects . . . in relation to the detected available bandwidth.” As part of its motivation to combine argument, Appellant also contends that “[d]espite the same keyword ‘bandwidth,’ the ordinary artisan would find no reasonable similarity between the communications bandwidth of Spangler and the claimed data storage bandwidth, as described in FIG. 7 and pages 9–13 of the specification.” Appeal Br. 9. Appellant proposes no construction of bandwidth based on the cited five pages of Specification, merely stating that the claimed bandwidth differs from Spangler’s bandwidth. Such conclusory arguments are unpersuasive. We, therefore, sustain the rejection, along with the rejection of independent claims 1 and 12 argued collectively with claim 16 and the Appeal 2019-000402 Application 14/152,398 13 dependent claims, which Appellant does not argue separately. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15 112(b) Indefiniteness 1–15 1–9, 11–14, 16–19 103 Shibayama, Spangler 1–9, 11–14, 16–19 10, 15, 20 103 Shibayama, Spangler, Griesmer 10, 15, 20 Overall Outcome 1–20 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation