Ex Parte Anderson

Board of Patent Appeals and Interferences

Feb 16, 2010

10600601 (B.P.A.I. Feb. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC ANDERSON
____________________

Appeal 2009-004041
Application 10/600,601
Technology Center 2100
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Decided: February 16, 2010
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and THU A.
DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-15, 17-
22, 24-27, and 29-34 under 35 U.S.C. § 134(a) (2002). Claims 16, 23, and
28 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.
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A. INVENTION
According to Appellant, the invention relates generally to migrating
between storage system designs (Spec. 1, ll. 4-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for performing adaptive migration and execution, the
method comprising:

obtaining a plan generated by a planner executable in a computer;

adapting the plan to satisfy migration constraints;

executing at least one move of a data chunk in the plan;

feeding back information relating to the execution of the at least one
move to the planner; and

modifying the plan by the planner in response to the information.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Borowsky US 6,381,619 B1 Apr. 30, 2002
(filed Sep. 13, 1999)

Claims 1-15, 17-22, 24-27, and 29-34 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by the teachings of Borowsky.
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II. ISSUE
The issue is whether Appellant has shown that the Examiner erred in
determining that Borowsky discloses “executing at least one move of a data
chunk” and “feeding back information relating to the execution of the at
least one move” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Borowsky
1. Borowsky discloses a computer data storage system with migration
plan generator which includes a migration planner which provides for
making terminal moves until no further terminal moves are possible,
then making “shunt” moves, or non-terminal moves, until further
terminal moves can be made (col. 2, ll. 21-26).
2. The migration planner is a program, wherein if a terminal move is
possible, the program proceeds to the “constraint met?” decision block
138, the “constraint met?” decision block then receives the set of
constraints 114 to determine whether or not the constraints have been
met, and if they have not been met, the program returns to the “build
plan” block 132 (col. 5, ll. 12-36; Fig. 5).
3. The ultimate goal in Borowsky is a data storage system which is not
only able to automatically configure itself but to reconfigure itself
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‘on-the-fly’; i.e. move stored data around based on changing access
patterns (col. 2, ll. 1-4).

IV. PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

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V. ANALYSIS
Claims 1-10, 12, 13, 30, and 31
Though Appellant admits that “Borwosky describes a migration
planner to migrate a data system from an initial configuration to a goal
configuration” (App. Br. 5), Appellant argues that “the migration plan is not
executed by the migration planner 116” and thus the steps referenced by the
Examiner “do not relate to execution of a move, but rather to building of a
migration plan that indicates the selected moves” (App. Br. 6). In
particular, Appellant contends that “there is absolutely no disclosure in
Borowsky of feeding back information relating to the execution of the at
least one move (of a data chunk in the plan) to the planner, and modifying
the plan by the planner in response to the feedback information” (Id.).
The Examiner finds that “Borowsky teaches the data stores are
moved, or migrated, among the storage devices under the direction of a
control 28 such as a computer, processor, controller, etc” (Ans. 28) and
Figure 5 of Borowsky “teaches a feedback mechanism which send a
feedback that goal configurations are not being met and to select another
move” (Ans. 29). Thus, according to the Examiner, “[t]his feedback
information is relating to the execution of a move because when control 28
such as a computer/processor is making a move/executing, the constraints
138 … are being checked which all related to the execution of the moves”
(Id.).
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Accordingly, the issue that we address on appeal is whether Borowsky
discloses “executing at least one move of a data chunk” and “feeding back
information relating to the execution of the at least one move” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184. Claim 1 simply does not place any limitation
on what an “execution” means, includes or represents, other than that at least
one move of data chunk is executed in the plan, and the information relation
to the execution is fed back to the planner.
Borowsky discloses a computer data storage system with a migration
planner for making terminal and non-terminal (shunt) moves (FF 1), wherein
the data storage system is able to automatically configure and reconfigure
itself ‘on-the-fly’ (FF 3). Thus, contrary to the Appellant’s assertion that
Borowsky does not “relate to execution of a move, but rather to building of a
migration plan that indicates the selected moves” (App. Br. 6), Borowsky
clearly discloses “executing at least one move of a data chunk” as required
in claim 1. That is, we find that an artisan skilled in the art would have
understood that making the terminal and non-terminal moves by the
migration planner in the computer data storage system having ‘on-the-fly’
automatic configuration/reconfiguration comprises execution of the moves.
Though Appellant also contends that Borowsky does not teach
“feeding back information relating to the execution of the at least one move
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(of a data chunk in the plan) to the planner, and modifying the plan by the
planner in response to the feedback information” (App. Br. 6), we agree
with the Examiner’s finding that Figure 5 of Borowsky “teaches a feedback
mechanism which send[s] a feedback that goal configurations are not being
met and to select another move” (Ans. 29). In particular, Borowsky’s
migration planner is a program which receives the set of constraints to
determine whether or not the constraints have been met, and if they have not
been met, a feedback is sent to select another move (FF 2).
Thus, we agree with the Examiner that “[t]his feedback information is
relating to the execution of a move because when control 28 such as a
computer/processor is making a move/executing, the constraints 138 … are
being checked which all related to the execution of the moves” (Ans. 29).
Appellant provides no argument to dispute that the Examiner has
correctly shown where this claimed element appears in Borowsky. Thus,
Appellant has not shown that the Examiner erred in finding that Borowsky
teaches this claim feature.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting independent claim 1 and claims 2-10, 12, 13, 30,
and 31 depending therefrom and falling therewith under 35 U.S.C. § 102(b).
Claims 14, 32, and 33
Regarding independent claim 14, Appellant similarly contend that
“when building the plan according to Fig. 5 of Borowsky, there is no
‘feedback configuration information regarding in-progress execution of the
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at least one move’ of a data chunk in the plan, since the plan has not yet
been executed” (App. Br. 7). However, as discussed above, we agree with
the Examiner that Borowsky discloses such teachings. That is, we find that
the making of the terminal and non-terminal moves by the migration planner
in the computer data storage system having ‘on-the-fly’ automatic
configuration/reconfiguration comprises execution of the moves. In
particular, we agree with the Examiner that Borowsky’s feedback
information for reconfiguration “is relating to the execution of a move
because when control 28 such as a computer/processor is making a
move/executing, the constraints 138 … are being checked which all related
to the execution of the moves” (Ans. 29).
Appellant provides no argument to dispute that the Examiner has
correctly shown where this claimed element appears in Borowsky. Thus,
Appellant has not shown that the Examiner erred in finding that Borowsky
teaches this claim feature.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting independent claim 14, and claims 32 and 33
depending therefrom and falling therewith, under 35 U.S.C. § 102(b).
Claims 15, 17-22, and 24-27
Similarly, regarding independent claim 15, Appellant contends that
“Borowsky clearly does not disclose a planner that is able to generate a
configuration plan based upon configuration information that relates to
execution of a move” (App. Br. 8). However, as discussed above, we find
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Borowsky’s making of the terminal and non-terminal moves comprises
execution of the moves, and agree with the Examiner that Borowsky’s
reconfiguration “is relating to the execution of a move because when control
28 such as a computer/processor is making a move/executing, the
constraints 138 … are being checked which all related to the execution of
the moves” (Ans. 29).
Appellant provides no argument to dispute that the Examiner has
correctly shown where this claimed element appears in the Borowsky. Thus,
Appellant has not shown that the Examiner erred in finding that Borowsky
teaches this claim feature.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting independent claim 15, and claims 17-22 and 24-
27 depending therefrom and falling therewith, under 35 U.S.C. § 102(b).
Claim 11
As to claim 11 depending from claim 10, Appellant adds the
contention that “the cited passage of Borowsky does not disclose
determining if an executor is available” (App. Br. 9). However, the
Examiner finds that Borowsky discloses such teachings, wherein “the
program processes/executes all the possible moves and the executor has to
be available to execute the moves” (Ans. 13). Other than citing the claim
language (App. Br. 9), Appellant provides no convincing argument to
dispute that the Examiner has correctly shown where the claimed elements
appear in Borowsky.
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Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 11 under 35 U.S.C. § 102(b).
Claim 29
As to claim 29 depending from claim 1, Appellant repeats the
contention that “Fig. 5 of Borowsky relates to building a migration plan, not
to execution of the steps of the migration plan” (App. Br. 9). However, as
discussed above, we agree with the Examiner and find that Borowsky
discloses such execution of the migration plan. We find that the Appellant
has also not shown that the Examiner erred in rejecting claim 29 under
35 U.S.C. § 102(b).

VI. CONCLUSIONS
(1) Appellant has not shown that the Examiner erred in finding that
claims 1-15, 17-22, 24-27, and 29-34 are anticipated by the teachings of
Borowsky.
(2) Claims 1-15, 17-22, 24-27, and 29-34 are not patentable over the
prior art of record.

VII. DECISION
We affirm the Examiner's decision rejecting claims 1-15, 17-22, 24-
27, and 29-34 under 35 U.S.C. § 102(b).

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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)(iv).

AFFIRMED

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