David Trachy

Patent Trials and Appeals Board

Jan 25, 2021

2020004739 (P.T.A.B. Jan. 25, 2021)

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.
15/376,075 12/12/2016 David Lee Trachy SL110 US01 5436
67070 7590 01/25/2021
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
SERRAO, RANODHI N
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/25/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DAVID LEE TRACHY1
________________

Appeal 2020-004739
Application 15/376,075
Technology Center 2400
________________

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–11 and 18–20, which constitute all of the pending
claims. Appeal Br. 2. Oral argument was held on January 11, 2021. A
transcript will be entered into the record in due course.
We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a
limited de novo review of 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). We AFFIRM IN PART.

1 Appellant identifies Spectra Logic Corp. as the real party in interest.
Appeal Brief filed February 24, 2020 (“Appeal Br.”), 2.
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CLAIMED SUBJECT MATTER
Appellant describes the presently claimed subject matter as follows:
A cloud environment is provided generally having at least
one private data center possessing a controller/routing system
and nonvolatile mass storage, a plurality of data objects retained
in the nonvolatile mass storage, and a public cloud storage
service provider linked to the controller/routing system. The
public cloud storage service provider possessing a database
containing policy decisions and metadata of the plurality of data
objects. When a data object is uploaded by an end-user to a
specific data bucket in the cloud environment, the private data
center is the recipient of the data object because the specific data
bucket is located in the private data center and not in the public
cloud storage service. Meta data and location information about
the data object is uploaded to the public cloud storage service
provider. The private data center is not in possession of the
policy decisions and the metadata for data objects. The public
cloud storage service provider is communicatively linked to the
end-user computing system by way of the controller/routing
system. The data center is independent of the public cloud
storage provider.
Spec., Abstr.
Independent claim 1 illustrates the subject matter of the appealed
claims:
1. A method comprising:
providing a first data center possessing a first
controller/routing system and non-volatile mass storage, a public
cloud storage provider independent from but connected to said
first controller/routing system, and a first end-user computing
system;
connecting said first end-user to said first controller/
routing system through a web address;
after said connecting step, said first end-user computing
system uploading a first data object to a previously defined data
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bucket to said web address; and storing said first data object to
said nonvolatile mass storage in said first data center and
storing metadata and directory information about said first
data object to a database for said data bucket, said database
retained solely in said public cloud storage provider and said first
data object never stored in said public cloud storage provider.

STATEMENT OF THE REJECTIONS2
Claims 1–11 and 18–20 stand rejected on the ground of nonstatutory
double patenting, the Examiner having determined that these claims are
unpatentable over claims 10–12 and 21 of co-pending U.S. Application
Number 15/376,048, now Trachy (US 10/645,165 B2; issued May 5, 2020).
Final Act. 15–17.3
Claim 18 stands rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Redberg (US 2015/0154418 A1; published June 4, 2015). Final Act. 7.4

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
September 9, 2019 (“Final Act.”); the Examiner’s Answer mailed April 7,
2020 (“Ans.”); and the Reply Brief filed June 8, 2020 (“Reply Br.”).
3 The Final Rejection states that all of claims 1–20 are rejected for non-
statutory double patenting over this reference. Final Act. 15. However, the
cover page of the Final Action states that claims 12–17 are withdrawn from
consideration. Id. at 1. We, therefore, understand that only claims 1–11 and
18–20 are subject to the double-patenting rejection.
The Final Rejection also rejects the present claims over various claims
of US Application 15/376,101 and 15/376,131. Final Act. 9–14. These
applications have been abandoned, respectively, on April 17, 2020 and
March 3, 2020. Accordingly, these rejections are moot.
4 Due to a pagination mistake, the Final Office Action sets forth the
Response to Arguments section and the Double Patenting Rejections on
pages 2–17. Then the Action’s pagination starts over and the rejections
based on prior art start on the second page 2 of the Final Action.
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Claims 1, 8, and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Redberg and Allain (US 2015/0222615 A1; published
Aug. 6, 2015). Final Act. 2–3, 6.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Redberg, Allain, and Chen (US 2014/0289839 A1; published Sept. 25,
2014). Final Act. 3–4.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Redberg, Allain, and Johnson (US 2004/0109457 A1; published June
10, 2004). Final Act. 4–5.
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Redberg, Allain, and Kotagiri (US 2013/0024722 A1; published
Jan. 24, 2013). Final Act. 5.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Redberg, Allain, and Morris (US 9,848,228 B1; issued Dec. 19, 2017).
Final Act. 5–6.

NON-STATUTORY DOUBLE PATENTING
Claims 1–11
DETERMINATIONS AND CONTENTIONS:
As noted above, the Examiner rejects claims 1–11 and 18–20 on the
ground of nonstatutory double patenting, determining that these claims are
unpatentable over claims 10–12 and 21 of Trachy. Final Act. 15–17.
Claim 10 of Trachy reads as follows (formatting modified):
10. A method of using a hybrid cloud network, the method
comprising:
providing a public cloud service linked to a first private
data center, said first private data center possessing nonvolatile
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storage and a controller/routing system, said first private data
center further possessing a data bucket that contains a first data
object;
entering said hybrid cloud network via a web address that
is uniquely tied to said first private data center;
requesting access to said first data object;
after said requesting step, said first private data center
determining that said first data object is located locally after
receiving location information for said first data object from said
public cloud service; and
after said determining step, providing access to said first
data object.
Appellant argues, “claim 1 in the instant application is directed to an
end-user uploading a data object and claim 10 of [Trachy] is directed to
providing access to a stored data object after locating the data object in a
different database.”
The Examiner subsequently clarifies the rejection, as follows:
the co-pending applications all recite cloud storage systems as
the mapping clearly shows in the office action. Furthermore,
MPEP 804 states, “Even though the specification of the applied
patent or copending application is not technically considered to
be prior art, it may still be used to interpret the applied claims.”
And the specifications of the copending applications disclose,
“uploading a first data object to a previously defined data bucket
. . . and storing said first data object to nonvolatile mass storage,”
as well as “a data object received by an end-user and stored to a
nonvolatile mass storage.” Therefore the non-statutory double
patenting rejections of the claims should be sustained.
Ans. 13 (citing MPEP 804.II.B.2).
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ANALYSIS:
We agree with Appellant’s characterization of Trachy’s claim 10.
Appeal Br. 29. Furthermore, based on the Examiner’s clarification in the
Examiner’s Answer, we understand that the Examiner is basing the double-
patenting rejection on Trachy’s claim language, itself, and only using
Trachy’s Specification to interpret the meaning of the claims’ language.
That is, we understand the Examiner not to be issuing a non-obviousness
double-patenting rejection that is additionally based on Trachy’s written
disclosure. See In re Schneller, 397 F.2d 350 (CCPA 1968) (wherein the
court affirmed a non-obviousness double-patenting rejection of claims
directed to a unitary clip reciting claim elements ABCXY, the rejection
based on that appellant’s prior patent, which claimed elements ABCX and
also disclosed elements ABCXY). Our interpretation of the present
rejection’s basis is also influenced by the fact that PTO policy requires
examiners to receive authorization from the TC Director to issue a
Schneller-type non-obviousness double patenting rejection, but here the
Examiner does not indicate that any such authorization was requested or
received. As the MPEP explains,
The Technology Center (TC) Director must approve any
nonstatutory double patenting rejections based on Schneller. If
an examiner determines that a double patenting rejection based
on Schneller is appropriate, the examiner should first consult
with the examiner's supervisory patent examiner (SPE). If the
SPE agrees with the examiner then approval of the TC Director
must be obtained before such a nonstatutory double patenting
rejection can be made.
MPEP 804.II.B.3.
Reviewing the language of Trachy’s claim 10, then, the Examiner
does not set forth sufficient rationale for why Trachy’s method of providing
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access to a stored data object after locating the data object in a different
database would render obvious presently appealed claim 1, which, in
contrast, is directed to a method of storing data objects to a non-volatile
mass storage and storing metadata and directory information to a public
cloud. Final Act. 15.
We, therefore, reverse the double-patenting rejection of independent
claim 1. We, likewise, reverse the double-patenting rejection of claims 2–
11, which depend from claim 1.
Claims 18–20
DETERMINATIONS AND CONTENTIONS:
The Examiner rejects claim 18 over claim 21 of Trachy. Final
Act. 17. Independent claim 18 reads as follows:
18. A storage arrangement comprising:
a first data center possessing non-volatile mass storage
and a first master controller/routing system;
a public cloud storage provider independent from but
connected to said first data center by way of said first master
controller/routing system;
a first end-user computing system connected to said first
data center by way of said first master controller/routing
system;
a first data object, previously received from said first
end-user, logically stored to a data bucket, said first data object
in said data bucket retained by said nonvolatile mass storage,
said first data object or copy of said first data object never
stored in said public cloud storage provider; and
a database for said data bucket retained and managed by
said public cloud storage provider, said database including
metadata about said first data object and policy decisions for
said first data object, said database exclusively located in said
public cloud storage provider.
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Claim 21 of Trachy reads as follows (formatting modified):
21. A storage arrangement comprising:
a private data center possessing a master controller/routing
system and nonvolatile mass storage;
a plurality of data objects retained in said nonvolatile mass
storage;
a public cloud storage provider linked to said master
controller/routing system, said public cloud storage provider
possessing a database logically containing policy decisions and
metadata of said plurality of data objects,
said public cloud devoid of any possession of said data
objects, said data center devoid of any possession of said policy
decisions and said metadata of said plurality of data objects,
said public cloud storage provider adapted to be
communicatively linked to an end user computing system by way
of said master controller/routing system,
said data center is independent of said public cloud storage
provider.
Appellant argues claim 18, as follows:
Claim 18 in the instant application, as a whole, is directed to “a
first data object, previously received from said first end-user,
logically stored to a data bucket, said first data bucket retained
by said nonvolatile mass storage, said first data object or copy of
said first data object never stored in said public cloud storage
provider.”
Appeal Br. 32.
Appellant further asserts, “In contrast, claim 21 of [Trachy] is directed
to ‘. . . Said public cloud storage provider possessing a database logically
containing policy decisions and metadata of said plurality of data objects . . .
Said data center devoid of any possession of said policy decisions.’” Appeal
Br. 32.
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Appellant then paraphrases the claims’ language:
More specifically, claim 18 in the instant application is directed
to a data object received by an end-user and stored to a
nonvolatile mass storage[,] and claim 21 of [Trachy] is directed
to a public cloud having policy decisions for a plurality of data
objects whereby those policy decisions are not in a data center
where the data object resides.
And Appellant urges reversal of the double-patenting rejection,
“[b]ecause these claims are directed to two distinct inventions that are
neither anticipated (because they are not the same invention) nor
obvious over one another (because they are directed to two different
device configurations).” Appeal Br. 32.
ANALYSIS:
Appellant’s arguments effectively amount to little more than a
recitation of portions of the claim language, and an unsupported legal
conclusion that the claims are distinct. These assertions, then, do not
constitute an argument on the merits because “[a] statement [that] merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv).
We, therefore, affirm the double-patenting rejection of claim 18 and
also of dependent claims 19 and 20, which Appellant does not argue
separately. Appeal Br. 32.

ART-BASED REJECTIONS
Determinations and Contentions
As noted, the Examiner finds that Redberg discloses every limitation
of independent claim 18. Final Act. 7. The Examiner also relies on this
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same rationale for finding that Redberg discloses all of the limitations of
independent claim 1 with the exception of connecting the end-user to the
first controller/routing system through a web address. Id. at 2–3.
To this end, the Examiner interprets the claim limitation, “a first data
center possessing a first controller/routing system and non-volatile mass
storage,” as reading on Redberg’s Cloud Gateway 108 in combination with
Cloud Stores 114: “The Examiner submits that the disclosed network
attached storage (NAS) and the cloud stores of Redberg clearly reads on the
claimed data center since cloud storage and network attached storage
comprise one or more servers typically used for the remote storage,
processing, or distribution of large amounts of data.” Final Act. 3 (citing
Redberg ¶ 46) (emphasis added). The Examiner also finds that Redberg
discloses the claimed public cloud storage provider. Final Act. 3
(ambiguously mapping the limitation as follows: “a public cloud storage
provider (Fig. 2)”).
Appellant argues that the Examiner maps Redberg’s public cloud
(which Redberg refers to as Cloud Store 114 in Figure 1 and as Cloud
Service Provider 206a–c in Figure 2) to both the claimed non-volatile mass
storage and also the claimed public cloud storage. Appeal Br. 11.
The Examiner subsequently clarifies the rejection:
The Examiner. . . submits that the network attached storage
(NAS) and the Cloud Service Provider are described in
paragraph [0046] of Redberg as was cited in the Non-final Office
Action therefore it cannot be considered a new rejection.
Furthermore, claim 1 explicitly recites a first data center
possessing a first controller/routing system and nonvolatile mass
storage, a public cloud storage provider. Therefore the rejection
is clearly consistent with the elements of the claim.
Ans. 4.
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Analysis
We understand the Examiner to be misinterpreting the independent
claims to be reciting that the first data center possesses (1) a first controller
routing system, (2) a non-volatile mass storage, and (3) a public cloud
storage provider. See Ans. 4. In fact, though, the independent claims recite
(1) “a first data center” (which possesses a first controller/routing system
and non-volatile mass storage), and separately (2) “a public cloud storage
provider independent from but connect to said first controller/routing
system.” Appeal Br. 34, 38. That is, Appellant claims a non-volatile mass
storage and a separate public cloud storage. Id.
The Examiner’s mapping of the claims’ two distinct storage elements
to the same cloud store of Redberg is unreasonable. “Where a claim lists
elements separately, the clear implication of the claim language is that those
elements are distinct components of the patented invention.” Becton,
Dickinson & Co. Tyco Healthcare Grp., 616 F.3d 1249, 1254 (Fed.
Cir. 2010) (internal quotation marks omitted); see also Microsoft v.
Proxyconn, Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015) (rejecting the Board’s
unpatentability finding permitting “two other computers” claim limitation to
cover the same structures recited in separate claim limitations), rev’d on
other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc).
Accordingly, we reverse the anticipation rejection of claim 18.
With respect to the obviousness rejections of claims 1, 2, 6–8, 19,
and 20, the Examiner does not rely on any of the additionally cited
references to cure the noted deficiency of the anticipation rejection over
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Redberg. Final Act. 2–6. Accordingly, we reverse the obviousness
rejections for the reasons noted in relation to independent claims 1 and 18.

DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–11, 18–20 Non-Statutory
Double Patenting
over Trachy
18–20 1–11
18 102 Redberg 18
1, 8, 20 103 Redberg, Allain 1, 8, 20
2 103 Redberg, Allain,
Chen
2
6 103 Redberg, Allain,
Johnson
6
7 103 Redberg, Allain,
Kotagiri
7
19 103 Redberg, Allain,
Morris
19
Overall
Outcome
18–20 1–11