Ex Parte 6892211 et al

Patent Trial and Appeal Board

Oct 31, 2012

95000328 (P.T.A.B. Oct. 31, 2012)

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.
95/000,328 01/14/2008 6892211 112056-0499C5RX 4693
24267 7590 11/01/2012
CESARI AND MCKENNA, LLP
88 BLACK FALCON AVENUE
BOSTON, MA 02210
EXAMINER
CHOI, WOO H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/01/2012 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
____________________

ORACLE AMERICA, INC.
Requester and Cross Appellant

v.

NETAPP, INC.,
Patent Owner and Appellant
____________________

Appeal 2012-009493
Inter Partes Reexamination Control No. 95/000,328
Patent 6,892,211 B2
Technology Center 3900
____________________

Before JAMESON LEE, STEPHEN C. SIU, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

Appeal 2012-009493
Reexamination Control No. 95/000,328
Patent 6,892,211 B2

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DECISION ON APPEAL
Patent Owner NetApp, Inc. appeals under 35 U.S.C. §§ 134(b) and
315(a) (2002) from the Examiner’s decision to reject claims 1-103. Third
Party Requester Oracle America, Inc.1 argues that the Examiner’s decision
should be affirmed. Requester also cross appeals under 35 U.S.C. §§ 134(b)
and 315(b) (2002) from the Examiner’s decision not to adopt proposed
rejections of claims 25-103 on additional grounds. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 315(a)-(b) (2002).2
We affirm-in-part.

STATEMENT OF THE CASE
Patent 6,892,211 B2 (the “‘211 Patent”), which is the subject of the
current inter partes reexamination, issued on May 10, 2005 based on
Application 10/822,630, filed April 12, 2004. The ‘211 Patent is a
continuation of a series of applications ultimately tracing lineage to

1 The reexamination was originally requested by Sun Microsystems, Inc.
Sun Microsystems, Inc. subsequently was acquired by Oracle America, Inc.,
which is a subsidiary of Oracle Corporation, which are now the real parties
in interest. See Cross Appeal Brief filed December 5, 2011, at 1. The
identified real parties in interest are referred to herein as “Requester.”
2 Our decision will make reference to Patent Owner’s Corrected Appeal
Brief (“PO App. Br.,” filed February 3, 2012), Requester’s Respondent Brief
(“Req. Resp. Br.,” filed March 2, 2012), Patent Owner’s Rebuttal Brief (“PO
Reb. Br.,” filed May 10, 2012), Requester’s Cross Appeal Brief (“Req.
Cross App. Br.,” filed December 5, 2011), Patent Owner’s Respondent Brief
(“PO Resp. Br.,” filed January 5, 2012), Requester’s Rebuttal Brief (“Req.
Reb. Br.,” filed May 3, 2012), and the Examiner’s Right of Appeal Notice
Footnote continued on next page.
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Application 08/071,643, filed June 3, 1993.
Patent Owner states that this appeal is related to the following other
reexaminations (PO App. Br. 4):
Reexamination Control Nos. 90/008,903 and 90/009,103
(Appeal 2012-004252) involving Patent 5,819,292 (the “‘292
Patent”), from which the ‘211 Patent claims priority; and
Reexamination Control No. 90/009,129 (Appeal 2012-003428)
involving Patent 7,174,352 B2, which claims priority to the
‘292 Patent.
The ‘211 Patent relates to methods of maintaining a consistent file
system and for creating read-only copies of a file system (col. 1, ll. 20-22).
Claims 1-24 have not been amended from the original patent, while claims
25-103 are newly presented in this reexamination. Claim 1 is exemplary of
the original claims on appeal:
1. A method of maintaining a file system stored in a
memory and on a storage system that includes one or more hard
disks, said method comprising steps of:
maintaining an on-disk root inode on said storage system,
said on-disk root inode pointing directly and indirectly to a first
set of blocks on said storage system that store a first consistent
state of said file system; and
maintaining an incore root inode in said memory, said
incore root inode pointing directly and indirectly to buffers in
said memory and a second set of blocks on said storage system,
said buffers and said second set of blocks storing data and
metadata for a second consistent state of said file system, said
second set of blocks including at least some blocks in said first
set of blocks, with changes between said first consistent state

(“RAN,” mailed August 1, 2011), which is incorporated by reference in the
Examiner’s Answer mailed April 16, 2012.
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and said second consistent state being stored in said buffers and
in ones of said second set of blocks not pointed to by said on-
disk inode.
Claims App’x, PO App. Br. 34. Claim 25 is exemplary of the new claims on
appeal, and is identical to claim 1 other than added language shown in
italics:
25. A method of maintaining a file system stored in a
memory and on a storage system that includes one or more hard
disks, said method comprising steps of:
maintaining an on-disk root inode on said storage system,
said on-disk root inode having a plurality of block pointers,
said block pointers pointing directly and indirectly to a first set
of blocks on said storage system that store a first consistent
state of said file system on said one or more hard disks, each of
said block pointers having a same level of indirection, wherein
said first set of blocks comprises an inode of a file; and
maintaining an incore root inode in said memory, said
incore root inode comprising said block pointers from said on-
disk root inode and a plurality of buffer pointers, said buffer
pointers pointing directly and indirectly to buffers in said
memory and a second set of blocks on said storage system,
each of said buffer pointers having a same level of indirection,
said buffers and said second set of blocks storing data and
metadata for a second consistent state of said file system on
said one or more hard disks, said second set of blocks including
at least some blocks in said first set of blocks, with changes
between said first consistent state and said second consistent
state being stored in said buffers and in ones of said second set
of blocks not pointed to by said on-disk inode.
Claims App’x, PO App. Br. 38-39.
The prior art cited by the Examiner in rejecting the claims on appeal
is:
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1. Sean Quinlan, A Cached WORM File System, Software –
Practice and Experience, Vol. 21 (12), Dec. 1991, pp. 1289-99
(“Quinlan”);
2. Gerald Popek & Bruce J. Walker, The LOCUS Distributed
System Architecture, MIT Press, Cambridge, Massachusetts,
1985 (“Popek”);
3. Tatu Ylonen, Concurrent Shadow Paging: A New Direction
for Database Research, TKO-B86, Helsinki University of
Technology, 1992 (“Ylonen”);
4. Margo Ilene Seltzer, File System Performance and
Transaction Support, Doctoral Dissertation, University of
California at Berkeley, 1992 (“Seltzer”);
5. Jorg Schilling, Design and Implementation of a Fast File
System for Unix with Special Consideration of Technical
Parameters of Optical Storage Media and Multimedia
Applications, thesis submitted to Technical University of Berlin
on May 23, 1991, translated from German (“Schilling”);
6. Samuel J. Leffler et al., The Design and Implementation of
the 4.3BSD Unix Operating System, Addison-Wesley
Publishing Co., 1989 (“Leffler”);
7. Maurice J. Bach, The Design of the Unix Operating System,
Prentice Hall, Englewood Cliffs, New Jersey, 1990 (“Bach”);
8. Mendel Rosenblum & John K. Ousterhout, The LFS Storage
Manager, presented at USENIX Tech. Conf., Anaheim,
California, June 1990 (“Rosenblum I”);
9. Mendel Rosenblum & John K. Ousterhout, The Design and
Implementation of a Log-Structured File System, Proceedings
of the 13th ACM Symposium on Operating Systems Principles,
July 24, 1991, pp. 1-15 (“Rosenblum II”);
10. Jack Marshall Kent, Performance and Implementation
Issues in Database Crash Recovery, Ph.D. Dissertation,
Princeton University, 1985 (“Kent”);
11. Patent 5,379,391, Jan. 3, 1995 (“Belsan”);
12. Patent 5,218,695, June 8, 1993 (“Noveck”);
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13. Jim Gray et al., The Recovery Manager of the System R
Database Manager, ACM Computing Surveys, Vol. 13, No. 2,
June 1981 (“Gray”);
14. Patent 5,457,796, Oct. 10, 1995 (“Thompson”); and
15. Jason Gait, The Optical File Cabinet: A Random-Access
File System for Write-Once Optical Disks, IEEE Comput., June
1988 (“Gait”).

PRINCIPLES OF LAW
Claim Interpretation
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
We must be careful not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
“Although an inventor is indeed free to define the specific terms used
to describe his or her invention, this must be done with reasonable clarity,
deliberateness, and precision. ‘Where an inventor chooses to be his own
lexicographer and to give terms uncommon meanings, he must set out his
uncommon definition in some manner within the patent disclosure’ so as to
give one of ordinary skill in the art notice of the change.” In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (citation omitted).

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Anticipation
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989). “Under the principles of inherency, if
the prior art necessarily functions in accordance with, or includes, the
claimed limitations, it anticipates.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999). Inherency “‘may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.’” Id. (citation omitted).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

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35 U.S.C. § 112
The written description requirement of 35 U.S.C. § 112, first
paragraph,3 requires that “the disclosure of the application relied upon
reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Whether a specification complies with the written description requirement is
a question of fact. Ariad, 598 F.3d at 1351.
The enablement requirement of 35 U.S.C. § 112, first paragraph,
requires that “the specification of a patent must teach those skilled in the art
how to make and use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In
re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (the specification must teach
those of ordinary skill “how to make and how to use the invention as broadly
as it is claimed”); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (listing
factors to be considered in the enablement analysis). Enablement, like
obviousness, is a question of law based upon underlying facts. Id. at 735.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Because it is based on claim interpretation, indefiniteness is a

3 We note that 35 U.S.C. § 112, first and second paragraphs, are now 35
U.S.C. §§ 112(a) and (b) for patent applications filed on or after September
16, 2012.
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question of law as well. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d
946, 949 (Fed. Cir. 2007).

Impermissible Broadening
Under 35 U.S.C. § 305, “[n]o proposed amended or new claim
enlarging the scope of a claim of the patent will be permitted in a
reexamination proceeding.” A claim under reexamination is broader in
scope than the original patent claims “‘if it contains within its scope any
conceivable apparatus or process which would not have infringed the
original patent. . . . A claim that is broader in any respect is considered to be
broader than the original claims even though it may be narrower in other
respects.’” In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994) (citation
omitted).

PATENT OWNER’S APPEAL
I. Rejections
Patent Owner contests the Examiner’s decision to reject original
claims 1-24 on the following grounds:
1. Claims 1-3, 9-11, and 17-19 under 35 U.S.C. § 102(b) as
being anticipated by Quinlan (Ground 1);
2. Claims 4, 12, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Quinlan (Ground 2);
3. Claims 1-3, 9-11, and 17-19 under 35 U.S.C. § 102(b) as
being anticipated by Popek (Ground 3);
4. Claims 5-8, 13-16, and 21-24 under 35 U.S.C. § 103(a) as
being unpatentable over Popek in view of Ylonen (Ground 5);
5. Claims 1-3, 9-11, and 17-19 under 35 U.S.C. § 102(b) as
being anticipated by Seltzer (Ground 6);
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6. Claims 1, 9, and 17 under 35 U.S.C. § 102(b) as being
anticipated by Schilling (Ground 8);
7. Claims 2, 3, 10, 11, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Schilling;
8. Claims 1, 9, and 17 under 35 U.S.C. § 102(b) as being
anticipated by Leffler (Ground 9);
9. Claims 2, 3, 10, 11, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Leffler;
10. Claims 1, 9, and 17 under 35 U.S.C. § 102(b) as being
anticipated by Rosenblum I (Ground 11);
11. Claims 2, 3, 10, 11, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Rosenblum I;
12. Claims 1-3, 9-11, and 17-19 under 35 U.S.C. § 103(a) as
being unpatentable over Kent in view of Popek (Ground 14);
13. Claims 5-8, 13-16, and 21-24 under 35 U.S.C. § 103(a) as
being unpatentable over Kent in view of Popek and Ylonen
(Ground 15);
14. Claims 1, 9, and 17 under 35 U.S.C. § 102(b) as being
anticipated by Rosenblum II (Ground 16);
15. Claims 2, 3, 10, 11, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Rosenblum II; and
16. Claims 1, 9, and 17 under 35 U.S.C. § 102(b) as being
anticipated by Noveck (Ground 19).
See RAN 6-9; PO App. Br. 11-13. Patent Owner further contests the
Examiner’s decision to reject new claims 25-103 on the following grounds:
17. Claims 25-103 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement
(Ground 26);
18. Claims 25-103 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement (Ground
27); and
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19. Claims 25-103 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards
as the invention (Ground 28).
See RAN 6-9; PO App. Br. 11.

II. Issues
With respect to Patent Owner’s appeal, the principal issues are: (1) did
the Examiner err in interpreting the term “incore root inode,” and (2) did the
Examiner err in failing to consider and respond to two declarations
submitted by Patent Owner pertaining to the 35 U.S.C. § 112 rejections?

III. Analysis
A. Prior Art Rejections
As to the Examiner’s prior art rejections of original claims 1-24,
Patent Owner argues that none of the cited prior art references disclose an
“incore root inode” because the Examiner applied an overly broad
interpretation of the term that is inconsistent with the specification of the
‘211 Patent. PO App. Br. 17, 27-28. We begin by interpreting “incore root
inode.”
Patent Owner contends that the term means an inode that “performs
the function of rooting an entire file system, i.e., a set of blocks (or a set of
blocks and buffers) that store data and metadata for a consistent state of the
file system,” and the feature of rooting an entire file system distinguishes
over the cited prior art. PO App. Br. 17, 27-28. The Examiner appears to
have determined that the incore root inode is simply a root inode in main
memory, which is different from an on-disk root inode stored on a hard disk.
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See RAN 10-12, 31 (“The term incore as used in the art refers to the main
memory of a computer system.”), 35, 40 (“incore (i.e., stored in memory
buffers)”), 43 (“In every instance where [“incore”] appears in the references
of record, including the patent itself which clearly distinguishes an incore
inode from an on-disk inode, it is used to refer to the main memory, not
secondary storage devices.”); see also Office Action mailed September 8,
2009, at 7 (“the root inode that is brought ‘incore’ into the buffers that reside
in memory”). Requester argues that “incore root inode” means a “temporary
cache root inode.” Req. Resp. Br. 8-9.
We agree with the Examiner that applying the broadest reasonable
interpretation of the claim, as we must, ICON Health, 496 F.3d at 1379,
“incore” in the context of the ‘211 Patent means “in memory,” and an
“incore root inode” can simply be a root inode in memory. Independent
claim 1 recites “maintaining an incore root inode in said memory, said
incore root inode pointing directly and indirectly to buffers in said memory
and a second set of blocks on said storage system, said buffers and said
second set of blocks storing data and metadata for a second consistent state
of said file system.”4 The claim thus requires that the incore root inode point
to buffers and a second set of blocks that store data and metadata for a
consistent state “of said file system,” but does not recite that the incore root
inode “root[s] an entire file system.” Moreover, it is unclear what is meant
by the term “entire” in Patent Owner’s proposed interpretation.

4 Independent claims 9 and 17 recite similar limitations.
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Further, the specification of the ‘211 Patent equates “incore” with “in
memory” by disclosing that a “WAFL buffer is an incore (in memory) 4 KB
equivalent of the 4 KB blocks that are stored on disk.” ‘211 Patent, col. 6,
ll. 59-61 (emphasis added). The specification also distinguishes incore
inodes in memory from on-disk inodes on a hard disk. See, e.g., ‘211 Patent,
col. 5, l. 62-col. 6, l. 53 (on-disk inodes); col. 6, l. 54-col. 8, l. 57 (incore
inodes). Although a patent applicant is entitled to be his or her own
lexicographer and define the terms of a claim, the applicant must do so by
placing such definitions in the specification with sufficient clarity to provide
a person of ordinary skill in the art with notice of the meaning to be
imparted. Paulsen, 30 F.3d at 1480. Here, Patent Owner does not point to
any language in the specification of the ‘211 Patent clearly defining “incore
root inode” to require rooting of an entire file system. Indeed, as Requester
points out, the phrase “incore root inode” does not even appear in the
specification of the ‘211 Patent. See Req. Resp. Br. 8.
Patent Owner also points to the fact that the Examiner found that at
least four different data structures in the prior art are each an “incore root
inode,” as shown in the following chart:
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Popek, Leffler,
and Rosenblum
I and II
Seltzer Schilling Noveck
inode of root
directory

(RAN 14, 21,
23, 27, 37-38,
41)5
ifile inode

(RAN 16-17)
incore root
gnode

(RAN 19, 38-
40)
incore inode

(RAN 30)
PO App. Br. 17, 28. According to Patent Owner, this indicates that the
Examiner’s interpretation of the term is unreasonably broad. Id. We
disagree. The fact that multiple prior art references disclose an “incore root
inode” may be indicative of the breadth of the term, but it does not
automatically demonstrate that the Examiner’s interpretation is
unreasonable. Applying the broadest reasonable interpretation of the claim
in light of the specification of the ‘211 Patent, we interpret the term “incore
root inode” in claims 1-24 to encompass a root inode in memory.
We turn now to Patent Owner’s arguments regarding the prior art,
which are premised entirely on Patent Owner’s proposed claim interpretation
of “incore root inode” as rooting an entire file system. See PO App. Br. 28-
33; PO Reb. Br. 10-13. Because we disagree with Patent Owner that “incore
root inode” must be interpreted to require rooting an entire file system, we
are not persuaded that the Examiner erred. Patent Owner also argues that
the cited prior art references do not disclose an incore root inode because
none of the references call their data structure an “incore root inode.” PO

5 Portions of the RAN refer to Requester’s request for inter partes
reexamination.
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App. Br. 28. This argument is not persuasive either, as “[a]n anticipatory
reference . . . need not duplicate word for word what is in the claims.” See
Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369
(Fed. Cir. 1991); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)
(anticipation “is not an ‘ipsissimis verbis’ test”) (citation omitted).
Patent Owner makes an additional argument with respect to Quinlan
in particular. Patent Owner argues that the Examiner’s factual finding that
“incore root inodes are inherent in Unix and Unix like systems” like Quinlan
(RAN 10) is erroneous because the Examiner found multiple different data
structures in Unix systems to meet the limitation, as shown in the chart
above. PO App. Br. 17, 28-29. Consequently, according to Patent Owner,
Unix systems like Quinlan do not necessarily have an incore root inode. Id.
Given the interpretation of “incore root inode” explained above as simply a
root inode in memory, however, Patent Owner fails to explain how the
Examiner allegedly erred in finding that Unix systems like Quinlan
inherently have a root inode in memory. Moreover, the Examiner cited
another prior art reference, Bach, as evidence of root inodes in memory
being inherent in Unix systems, which Patent Owner does not address. See
RAN 10, 33-34.
We are not persuaded that the Examiner’s factual findings in the RAN
that the cited prior art references disclose, either expressly or inherently, an
“incore root inode” are in error. Accordingly, we sustain the prior art
rejections of claims 1-24.

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B. 35 U.S.C. § 112 Rejections
As to the Examiner’s rejections of new claims 25-103 for lack of
written description, lack of enablement, and indefiniteness, Patent Owner
argues that the Examiner failed to consider two declarations submitted by
Patent Owner and failed to explain why the declarations are insufficient to
overcome the rejections. PO App. Br. 15-16, 18-20. As it is relevant to our
consideration of the issues, we begin by reviewing the procedural history of
this reexamination.
1. Patent Owner added new claims 25-28 in a response dated October
9, 2008, and added new claims 29-103 in a response dated December 8,
2009.
2. In an Action Closing Prosecution mailed October 5, 2010 (“First
ACP”), the Examiner rejected claims 25-103 under 35 U.S.C. § 112 as
lacking written description in the specification of the ‘211 Patent for the
claimed limitation of an “on-disk root inode having a plurality of block
pointers, said block pointers pointing directly and indirectly to a first set of
blocks on said storage system[,] . . . each of said block pointers having a
same level of indirection.” First ACP 7-8. According to the Examiner, it is
impossible to have a root inode with pointers that point both directly (see the
“level 1 inode” shown in Figure 4B) and indirectly (see the “level 2 inode”
shown in Figure 4C) where such pointers also have the “same level of
indirection.” First ACP 8. The Examiner similarly concluded that claims
25-103 are not enabled and are indefinite under 35 U.S.C. § 112 based on
the “same level of indirection” limitation. Id. at 9-10. The Examiner found
that other limitations in various dependent claims lacked written description
as well. Id. at 8-9.
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3. In its response filed November 5, 2010, Patent Owner argued that
claims 25-103 meet the requirements of 35 U.S.C. § 112 and submitted two
declarations in support: the Declaration Under 37 C.F.R. § 1.132 of David
Hitz, and the Declaration Under 37 C.F.R. § 1.132 of Blake H. Lewis (the
“Section 112 Declarations”). Mr. Hitz (one of the inventors of the ‘211
Patent) and Mr. Lewis explained in their declarations, with citations to the
specification of the ‘211 Patent, why they believe the Examiner is incorrect
in finding the “same level of indirection” limitation to be impossible.
4. Requester submitted comments on December 6, 2010 arguing that
the new claims should be rejected under 35 U.S.C. § 112, but based on a
different limitation: “a second consistent state of said file system [stored] on
said one or more hard disks.”
5. The Examiner issued a Right of Appeal Notice on March 21, 2011
(the “First RAN”) rejecting claims 25-103 for lack of written description,
lack of enablement, and indefiniteness based on the “same level of
indirection” limitation. First RAN 8, 43-49. The Examiner also included
the following paragraph 95 regarding the “second consistent state” limitation
argued by Requester:
Requester asserts that the limitation “a second consistent
state of said file system stored on said one or more hard disks”
is not supported by the specification (Comments, pp. 5-6). It
appears that Requester is correct. Patent Owner has not
provided support for the limitation as required. The limitation
“a second consistent state of said file system on said one or
more hard disks” appears to be in conflict with the limitation
“changes between said first consistent state and said second
consistent state being stored in said buffers and in one of said
second set of blocks not pointer to by said on-disk inode”
because once the incore root inode of the second consistent
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state is written on disk it becomes the on-disk root inode. The
specification does not disclose preserving two consistent states
on disk while also maintaining the changes between the two
states in buffers and blocks not pointed by the on-disk inode.
First RAN 45.
6. On April 27, 2011, Patent Owner filed a petition arguing that
prosecution should be reopened because paragraph 95 of the First RAN
constituted a new ground of rejection.
7. The Examiner issued an Action Closing Prosecution on May 18,
2011 (“Second ACP”) and a Right of Appeal Notice on August 1, 2011
(“RAN”). Both rejected claims 25-103 for lack of written description, lack
of enablement, and indefiniteness based on the “same level of indirection”
limitation, and included paragraph 95.
8. On August 19, 2011, Patent Owner filed a petition arguing that
certain amendments to the claims, filed on June 16, 2011, should be entered
and considered.
9. In a decision mailed November 17, 2011 (the “Petition Decision”),
the Office dismissed Patent Owner’s April 27, 2011 petition as moot and
denied Patent Owner’s August 19, 2011 petition. The Office concluded that,
inter alia, the RAN “did address the Hitz and Lewis declarations (see pages
33 and 36 of the second RAN),” and “paragraph 95 of the second ACP is a
response to arguments regarding a rejection under 35 U.S.C. 112 for claims
25-103 (Ground 26), and is not part of the actual rejection.” Petition
Decision 5.
We turn now to Patent Owner’s arguments. Patent Owner contends
that under In re Alton, 76 F.3d 1168 (Fed. Cir. 1996), the Examiner was
obligated to consider the Section 112 Declarations and explain why they
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allegedly are insufficient to overcome the rejections, but failed to do so. PO
App. Br. 15-16, 18-20. Alton involved a similar written description rejection
where the patent owner submitted a responsive declaration addressing
whether the specification adequately described the claimed subject matter.
76 F.3d at 1171. The examiner gave “[l]ittle weight” to the declaration,
finding it to be opinion evidence rather than factual evidence. Id. The
Federal Circuit concluded that the examiner and the Board erred in
“summar[ily] dismiss[ing] . . . the declaration, without an adequate
explanation of why the declaration failed to rebut the Board’s prima facie
case of inadequate description.” Id. at 1174. In particular, while the
declaration addressed “why the claimed subject matter, although not
identical to the analog described in the specification, was in Alton’s
possession,” the examiner and the Board erred by “provid[ing] only
conclusory statements as to why the declaration did not show that a person
skilled in the art would realize that Alton had possession of the claimed
subject matter” and “failing to articulate adequate reasons to rebut the . . .
declaration.” Id. at 1176.
We agree with Patent Owner that Alton is applicable to the facts of
this case. While the RAN does not contain an explicit statement that the
Examiner reviewed the Section 112 Declarations, we assume that to be the
case given the Office’s prior determination that the RAN “did address the
Hitz and Lewis declarations (see pages 33 and 36 of the second RAN)”6 and

6 Patent Owner argues that pages 33 and 36 of the RAN, cited in the Petition
Decision, were directed to other declarations executed by Mr. Hitz and Mr.
Lewis on December 8, 2009 pertaining to the content of the prior art and
Footnote continued on next page.
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the fact that the Examiner mentioned the declarations in the context of
refusing to enter certain proposed amendments. See Petition Decision 5;
RAN 51-52. The Examiner, however, did not explain in the RAN any
reasons why the Section 112 Declarations were insufficient to rebut the
prima facie case of inadequate written description, as required by Alton.
Indeed, the substance of the Section 112 Declarations does not appear to be
addressed at all in the RAN. Thus, Patent Owner is correct that the record in
support of the rejection is even more deficient than in Alton, where the
examiner had at least made “conclusory” statements regarding the
examiner’s reasons for finding the declaration unpersuasive. See PO App.
Br. 19; PO Reb. Br. 5.
We therefore cannot sustain the rejection of claims 25-103 for lack of
written description. Also, for similar reasons, we cannot sustain the
rejections for lack of enablement and indefiniteness. The rejections on those
grounds are based on the same allegedly irreconcilable conflict where the
claims require pointers pointing “directly and indirectly” while at the same
time having the “same level of indirection.” See RAN 43-49. The Section
112 Declarations likewise explain why the declarants believe there to be no

secondary considerations of nonobviousness. See PO App. Br. 18-19 & n. 2,
4. Patent Owner contends that the discussion of those topics on pages 33
and 36 of the RAN indicates that the Examiner considered those
declarations, but there is no indication that the Examiner considered the
Section 112 Declarations filed November 5, 2010, which dealt with a
different issue. Id. We need not resolve this issue, however, as we conclude
that even assuming that the Section 112 Declarations were considered, the
Examiner did not explain why they were insufficient to rebut the prima facie
case under Alton.
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conflict. The rejections under 35 U.S.C. § 112 must be reversed so that the
necessary explanation of why the Section 112 Declarations do not rebut the
Examiner’s prima facie case of lack of written description, lack of
enablement, and indefiniteness can be provided. See Alton, 76 F.3d at 1176;
see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”).
Requester’s arguments that the RAN complied with Alton also are
unpersuasive. Requester contends that the issue is only one of “semantics”
because the Examiner in the RAN explained the 35 U.S.C. § 112 rejections
in detail and responded to Patent Owner’s arguments, which in turn
“referenced” the Section 112 Declarations. Req. Resp. Br. 5-6. Regardless
of whether Patent Owner cited the declarations in its papers, the RAN does
not cite any specific content of the declarations or explain why the
declarations, executed by persons allegedly of ordinary skill in the art, are
insufficient. Such explanation must be provided according to Alton.
Further, nothing in Alton indicates that a patent owner’s arguments may be
equated with a declaration from a third party declarant as Requester
suggests. See Req. Resp. Br. 5-6.
Requester also points to the Office’s conclusion that the RAN “did
address the Hitz and Lewis declarations (see pages 33 and 36 of the second
RAN).” See Petition Decision 5; Req. Resp. Br. 4-5. The portions of pages
33 and 36 mentioning declarations from Mr. Hitz and Mr. Lewis, however,
are not directed to the 35 U.S.C. § 112 rejections and do not address any
specific content of the Section 112 Declarations. Even assuming that the
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Section 112 Declarations were considered, the RAN does not contain the
necessary articulated reasoning required by Alton.
Finally, Requester contends that the Examiner also rejected claims 25-
103 as lacking written description based on the “second consistent state”
limitation, and Patent Owner failed to address that rejection in its Appeal
Brief. Req. Resp. Br. 4. We agree with Patent Owner that the Office
previously determined that the “second consistent state” limitation,
referenced in paragraph 95 of the second ACP and RAN, is not part of the
Examiner’s rejection. See PO Reb. Br. 6 (citing Petition Decision 5
(“paragraph 95 of the second ACP is a response to arguments regarding a
rejection under 35 U.S.C. 112 for claims 25-103 (Ground 26), and is not part
of the actual rejection”)) (emphasis added). Thus, we need not address that
limitation to determine whether the rejections under 35 U.S.C. § 112 were in
error.
The record does not contain the necessary explanation of why the
Section 112 Declarations are deemed insufficient to rebut the prima facie
case of lack of written description, lack of enablement, and indefiniteness of
claims 25-103. Accordingly, we cannot sustain the rejections of claims 25-
103 under 35 U.S.C. § 112. See Alton, 76 F.3d at 1176; Oetiker, 977 F.2d at
1445. In addition, because the record is deficient, we express no opinion at
this time as to the merits of the underlying rejections.

REQUESTER’S CROSS APPEAL
I. Proposed Rejections
Requester contests the Examiner’s decision not to adopted proposed
rejections of new claims 25-103 on the following grounds:
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1. Claims 25-103 under 35 U.S.C. § 305 as being impermissibly
broadened;
2. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Quinlan (Ground 1);
3. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Popek (Ground 3);
4. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Seltzer (Ground 6);
5. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Schilling (Ground 8);
6. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Leffler (Ground 9);
7. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Rosenblum I (Ground 11);
8. Claims 25-103 under 35 U.S.C. § 103(a) as being
unpatentable over Kent in view of Popek (Ground 14);
9. Claims 25-103 under 35 U.S.C. § 102(b) as being anticipated
by Rosenblum II (Ground 16); and
10. Claims 25-103 under 35 U.S.C. § 102(b) as being
anticipated by Noveck (Ground 19).
See RAN 6-9, 47, 49-50; Req. Cross App. Br. 2.

II. Issues
With respect to Requester’s cross appeal, the principal issues are: (1)
did the Examiner err in determining that claims 25-103 are not
impermissibly broadened as compared to the original claims of the ‘211
Patent, and (2) did the Examiner incorrectly determine that claims 25-103
are not anticipated or rendered obvious by the prior art references cited in
Requester’s proposed prior art rejections?

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III. Analysis7
A. Proposed Impermissible Broadening Rejection
Requester’s argument that claims 25-103 are impermissibly
broadened is based on a comparison of the language of original independent
claim 1 with the language of new independent claim 25. Claim 1 recites
“maintaining an incore root inode . . . pointing directly and indirectly to
buffers in said memory,” and a “second set of blocks on said storage
system” where the storage system “includes one or more hard disks.”
Requester contends that the claim therefore requires buffers in memory and
a second set of blocks on a hard disk. Req. Cross App. Br. 4. Claim 1
further recites “said buffers and said second set of blocks storing data and
metadata for a second consistent state of said file system.” Thus, according
to Requester, claim 1 requires that the data and metadata for the second
consistent state be stored both in memory (via the buffers) and on a hard

7 We note that Requester’s Notice of Cross Appeal filed September 6, 2011
states that Requester “appeals the non-entry of rejection of claims 25-103
over art of record, in the event claims 25-103 satisfy the requirements under
35 U.S.C. 112,” and does not identify any proposed impermissible
broadening rejection under 35 U.S.C. § 305 or any particular proposed
rejection(s) based on 35 U.S.C. §§ 102 or 103, instead merely citing
unspecified “art of record.” 37 C.F.R. § 41.61(b)(2) provides that a
requester “may file a notice of cross appeal with respect to any . . . final
determination not to make a proposed rejection, of any . . . new claim of the
patent.” MPEP § 2674 provides that “[i]t is not sufficient to merely appeal
from the allowance of a claim (i.e., the examiner’s finding of a claim
patentable); the third party requester must identify each previously proposed
rejection to be contested.” Regardless, we disagree with Requester that the
Examiner erred with respect to either rejection, for the reasons explained
below.
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disk (via the second set of blocks). Id. Claim 25, however, recites “said
buffers and said second set of blocks storing data and metadata for a second
consistent state of said file system on said one or more hard disks.”
Requester’s position is that the added language of “on said one or more hard
disks” in claim 25 impermissibly broadens original claim 1 by requiring the
data and metadata to be stored “on at least only the hard disk,” not in both
memory and the hard disk. Id. at 4-5. The Examiner disagrees, concluding
that the claims are not impermissibly broadened by virtue of the added
language. RAN 47.
We are not persuaded of error by the Examiner. As Patent Owner
points out, new claim 25 incorporates verbatim all of the original language
of claim 1 and adds additional requirements, such as the “same level of
indirection” limitation discussed above. See PO Resp. Br. 7. All of the
language cited by Requester as allegedly requiring that the data and
metadata be stored both in memory and on a hard disk is still present in
claim 25. The added language of “on said one or more hard disks” does not
negate that original language. Claim 25 still requires that the buffers
(together with the second set of blocks) store data and metadata for a second
consistent state of the file system and, importantly, that those buffers be “in
said memory.” The claim therefore would not be satisfied by a situation
where the data and metadata were stored only on the hard disk, as Requester
suggests. Moreover, Requester’s argument that the added language of “on
said one or more hard disks” means “on at least only the hard disk” (and not
necessarily in memory as well) is unreasonable given the fact that claim 25
does not use the term “only” and the original language has not been
changed.
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Like new claim 25, the other new independent claims 26-29, 49, 72,
91, and 96-99 contain all of the original language of claim 1 and add
additional requirements. For the same reasons explained above, we are not
persuaded that these independent claims, or the dependent claims depending
therefrom, impermissibly broaden the scope of the original claims.
Accordingly, we sustain the Examiner’s determination not to adopt
Requester’s proposed rejection of claims 25-103 under 35 U.S.C. § 305.

B. Proposed Prior Art Rejections
The Examiner refused to adopt Requester’s proposed prior art
rejections of new claims 25-103 based on the limitation recited in the claims
that each of the plurality of block pointers in the on-disk root inode have “a
same level of indirection.” RAN 49-50. According to the Examiner:
This limitation restricts the shape of the file system tree to only
those where all of the leaf nodes are at the same level. In a
conventional Unix file system, direct pointers and indirect
pointers can coexist in the same inode, allowing the file system
tree to be of any shape. Requester has not shown that the on-
disk root inodes of the prior art references used to reject claims
1-24 have a plurality of block pointers where each of the block
pointers has a same level of indirection.
Id. Requester argues that if conventional Unix file system trees “can be”
any shape, then a fortiori the Unix file system trees disclosed in the prior art
references cited by Requester “can be” file system trees with block pointers
having a same level of indirection. Req. Cross App. Br. 6. Therefore,
according to Requester, block pointers having a same level of indirection are
“inherent” in the Unix prior art references cited by Requester. Id.
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We are not persuaded by Requester’s arguments. Inherency requires
that the prior art necessarily include the claimed limitation. MEHL, 192
F.3d at 1365. Requester’s reasoning that a file system could possibly have
block pointers with a same level of indirection because file system trees “can
be” any shape does not establish the necessity required for a finding of
inherency. As Requester does not point to any facts indicating that Unix file
systems like those of the cited prior art necessarily have the same level of
indirection feature required by claims 25-103, inherency has not been
established.8
Accordingly, we sustain the Examiner’s determination not to adopt
Requester’s proposed rejections of claims 25-103 under 35 U.S.C. §§ 102
and 103.

CONCLUSION
We conclude that:
(1) the Examiner did not err in rejecting claims 1-24 under 35 U.S.C.
§§ 102 and 103;
(2) the Examiner erred in rejecting claims 25-103 under 35 U.S.C. §
112;
(3) the Examiner did not err in determining not to adopt Requester’s
proposed rejection of claims 25-103 under 35 U.S.C. § 305; and

8 Patent Owner also argues that Requester’s inherency argument amounts to
a new ground of rejection prohibited by 37 C.F.R. § 41.67(c)(1)(vi). PO
Resp. Br. 9-10. As Requester has not met its burden of demonstrating error
by the Examiner, however, we need not reach this issue.
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(4) the Examiner did not err in determining not to adopt Requester’s
proposed rejections of claims 25-103 under 35 U.S.C. §§ 102 and 103.

DECISION
Regarding the subject matter of Patent Owner’s appeal, the
Examiner’s decision that claims 1-24 are unpatentable over the prior art
under 35 U.S.C. §§ 102 and 103 is affirmed. The Examiner’s decision that
claims 25-103 are unpatentable under 35 U.S.C. § 112 is reversed.
Regarding the subject matter of Requester’s cross appeal, the
Examiner’s determination not to enter the proposed rejection of claims 25-
103 under 35 U.S.C. § 305 and the Examiner’s determination not to enter the
proposed rejections of claims 25-103 under 35 U.S.C. §§ 102 and 103 are
affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
AFFIRMED-IN-PART

ack

Patent Owner:

Cesari and McKenna, LLP
88 Black Falcon Avenue
Boston, MA 02210

Third Party Requester:

DLA Piper US LLP
2000 University Avenue
E. Palo Alto, CA 94303-2248