Cutforth, Craig F. et al.

Patent Trials and Appeals Board

May 6, 2020

2019000402 (P.T.A.B. May. 6, 2020)

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.
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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.
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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:
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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
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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
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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).
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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-
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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).
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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.
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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
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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
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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
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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