Ex Parte Aguilera et al

Patent Trial and Appeal Board

Sep 26, 2013

11700270 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCOS K. AGUILERA, ALISTAIR VEITCH
and SUSAN SPENCE
____________

Appeal 2011-003385
Application 11/700,270
1

Technology Center 2100
____________

Before MARC S. HOFF, CAROLYN D. THOMAS, and
JOHNNY A. KUMAR, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Hewlett-Packard Development Company, LP.
Appeal 2011-003385
Application 11/700,270

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-20, which are all the claims
pending in the application. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to providing snapshots or
clones in a distributed storage system. See Spec., 4: ¶[0015].
Claim 1 is illustrative:
1. A method of software execution, comprising:
generating one of a clone or a snapshot in a distributed
storage system that utilizes quorum-based replication by updating a
version tree and incrementing a version number at a quorum of
storage nodes in the distributed storage system.

Appellants appeal the following rejections:
2

R1. Claims 1-12, 14, and 16-20 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Minwen Ji (Instant Snapshots in a Federated Array
of Bricks, Internet Systems and Storage Laboratory, HP Lab. Palo Alto,
January 28, 2005)(hereinafter Ji);

2
The Examiner objected to claim 8 (Final Rej.: 2). However, the propriety
of the Examiner’s objections relate to petitionable matters and not to
appealable matters. Objections to the claims are petitionable matters under
37 C.F.R. § 181 to the Director of the USPTO. See MPEP 706.01; the
“Board will not hear or decide issues pertaining to objections and formal
matters which are not properly before the Board.” Accordingly, we will not
decide the objection.
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R2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ji and Lubbers (US Patent Pub. 2005/0160243 A1, July
21, 2005);
R3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ji and Norin (US 5,812,773, Sep. 22, 1998); and
R4. Claim 13 is rejected under 35 U.S.C. § 112, 2
nd
paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that application regards as the invention.

ANALYSIS
Rejection of Claims 1-7 and 16-20
Under 35 U.S.C. § 102(b)
Issue 1: Did the Examiner err in finding that Ji discloses
incrementing a version number at a quorum of storage nodes, as set forth in
claim 1?
Appellants contend that “Ji teaches sending the command to ‘all’
storage nodes, not a quorum of storage nodes. Furthermore, Ji never teaches
that a version tree is updated and a version number is incremented at a
quorum of storage nodes” (App. Br. 12).
The Examiner found that Ji discloses the argued limitation in that “[i]f
the coordinator receives a global quorum (i.e., a quorum in every replica set)
of OK replies, it proceeds to the second phase by sending a CommitSnapshot
command to all bricks” (Ans. 3)(emphasis omitted). We disagree with the
Examiner.
While Ji discloses creating a snapshot and a new version with the
snapshot name (see 2: section 4.1), the Examiner has failed to establish that
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Ji discloses updating a version tree and incrementing a version number at a
quorum of storage nodes, as required by claim 1.
While the terms “version” and “quorum” are shown, the Examiner has
not established that such is related to incrementing a version number at a
quorum of storage nodes. In other words, the Examiner merely directs us to
pages 1-2 of Ji and fails to provide any meaningful analysis in this regard
(see Ans. 18). We are therefore left to speculate as to the Examiner’s
position – speculation that raises a number of questions. We cannot say, nor
has the Examiner shown, how this necessarily teaches the specifics of
updating a version tree and incrementing a version number at a quorum of
storage nodes in the distributed storage system. Nor will we speculate in
that regard here in the first instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1, independent claim 16 which recites commensurate
limitations, and the dependent claims for similar reasons.

Rejection of Claims 8, 9, and 11-15 under 35 U.S.C. § 102(b)
Issue 2: Did the Examiner err in finding that Ji is prior art and Ji
discloses a version tree, as set forth in claim 8?

Appellants contend that “[t]he reference was not available to the
public on the internal accession date” (App. Br. 11). Appellants further
contend that “the snapshot . . . shows the date ‘12/22/2009’ at the bottom
which indicates the publication date of the version being shown” (Reply Br.
2).
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The Examiner found that “the HP web site and the Internet Archive
Wayback Machine both provide evidence that Ji’s reference was available to
the public during the year of 2005” (Ans. 15). We agree with the Examiner.
We find the Appellants’ arguments unpersuasive regarding the
Wayback Machine evidence as one of ordinary skill in the art would
understand that the date highlighted by Appellants in the bottom right hand
corner, i.e., 12/22/2009, merely indicates a date of printing a hardcopy, not
the date of publication. Furthermore, the Archive evidence presented by the
Examiner clearly shows dates as early as 2005. We are therefore persuaded
that the Examiner did not err in presenting Ji as prior art.

Appellants further contend that “Ji does not teach using a version tree
as recited in claim 8” (App. Br. 13).
The Examiner found that “Ji clearly teaches using a version tree to
create a new version of a snapshot as ‘[t]here is a map for each snapshot or
current version” (Ans. 19). We agree with the Examiner.
Particularly, Ji discloses that “[t]he new version points to the current
map and the current volume points to the new map. The new map’s
prevMap pointer points to the current map” (2: section 4.1). In other words,
Ji discloses a map for each snapshot or current version. Appellants’
Specification defines a version tree as a data structure that is used to describe
the relationship between various storage branches (see ¶ [0026]). We find
that the claimed “version tree” reads on Ji’s mapping of snapshots and
current versions.
Therefore, based on the record before us, we find no error in the
Examiner’s rejection of claim 8 essentially for the reasons indicated by the
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Examiner as emphasized above, and of claims 9 and 11-15, which were not
argued separately.

Claim10
Issue 3: Did the Examiner err in finding that Ji discloses cloning?
Appellants contend that Ji does not teach cloning (App. Br. 17).
The Examiner found that Ji discloses cloning in teaching that “a
snapshot version of the volume reflects the updates up to the point in time
when the corresponding snapshot operation is started” (Ans. 22 (emphasis
omitted). We agree with the Examiner.
In Appellants’ Specification, cloning is defined as a copy that can
change independently of its source (¶ [0016]). In other words, a clone is
merely a copy that can be updated/revised. Similarly, Ji discloses that “[a]
version of a volume is a copy of the volume that reflects the updates to the
volume up to a certain point in time. The current version of the volume
reflects all the updates in the past and changes as new updates arrive” (Ji: 2:
section 2). We find that Ji’s teachings are consistent with Appellants’
cloning and the Examiner’s reliance on such teachings is persuasive.
Therefore, based on the record before us, we find no error in the
Examiner’s rejection of claim 10 essentially for the reasons indicated by the
Examiner.

Rejection of Claims 13 and 15 under
35 U.S.C. § 103(a)
Here, Appellants merely argue that Lubbers and Norin fail to cure the
deficiencies of Ji but present no substantive arguments pertaining to the
Examiner’s obviousness rejections of claims 13 and 15. Accordingly, we
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summarily sustain these rejections. See Manual of Patent Examining
Procedure (MPEP) § 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.”).

Rejection of Claim 13 under 35 U.S.C. § 112, 2
nd
paragraph
Issue 4: Did the Examiner err in finding that claim 13 is amenable to
two or more plausible claim constructions?
Appellants contend that “the term ‘children’ refers to all of the
children that are in the sharing list” (App. Br. 9).
The Examiner found that “[s]ince the sharing list is split, it is unclear
whether ‘all children’ refers to the original sharing list or any part of the split
sharing list” (Ans. 14). We agree with the Examiner.
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); see also Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim … indefinite.”). Here, the term “all children” could apply to the
original list or to only one of the split lists. As such, it is unclear what the
metes and bounds of the claimed invention entails.
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Therefore, based on the record before us, we find no error in the
Examiner’s rejection of claim 13 essentially for the reasons indicated by the
Examiner.

DECISION
We reverse the Examiner’s § 102(b) rejection of claims 1-7 and 16-
20.
We affirm the Examiner’s § 102(b) rejection of claims 8-12 and 14.
We affirm the Examiner’s § 103(a) rejections of claims 13 and 15.
We affirm the Examiner’s § 112, 2
nd
paragraph rejection of claim 13.
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-IN-PART

ELD