Ex Parte Boldy et al

Board of Patent Appeals and Interferences

Jul 27, 2010

11019099 (B.P.A.I. Jul. 27, 2010)

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.
11/019,099 12/22/2004 Manfred Boldy DE920010092US1 9422
46136 7590 07/28/2010
WHITHAM, CURTIS,CHRISTOFFERSON & COOK, P.C. (IBM)
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
CYGIEL, GARY W
ART UNIT PAPER NUMBER
2187
MAIL DATE DELIVERY MODE
07/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANFRED BOLDY, PERTER SANDER, and
HERMANN STAMM-WILBRANDT
____________

Appeal 2009-004172
Application 11/019,099
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellants appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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We AFFIRM.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and apparatus for
reducing storage occupancy of digital data storage (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A digital data storage device storing information
blocks of a common length, and storing only a first block
among pluralities of identical information blocks, comprising:
a storage medium segmented into a reference area and a
block storage area, the block storage area segmented into
storage blocks of a common length, the storage blocks storing
the information blocks and the first blocks, and the remaining
area storing a reference information pointing to the each of the
first blocks, wherein a second or further block identical to any
of the first blocks is stored in the storage medium only as a
reference referring to the first block.
The References
The Examiner relies on the following references as evidence:
Kanfi US 5,559,991 Sep. 24, 1996
Dewitt US 5,732,265 Mar. 24, 1998
Nelson US 5,928,367 Jul. 27, 1999
Kanda JP 363027936 A Feb. 5, 1988
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The Rejections
The following rejections are before us for review:
Claims 1-5, 8, and 10-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Dewitt and Kanfi.
Claims 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dewitt, Kanfi, and Kanda.
Claims 13-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dewitt, Kanfi, and Nelson.2
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Brief has not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

II. ISSUE
1. Has the Examiner erred in finding that the combination of Dewitt and
Kanfi teaches or fairly suggests that “a second or further block identical to
any of the first blocks is stored in the storage medium only as a reference
referring to the first block” recited in claim 1?
2. Has the Examiner erred in setting forth a proffered conclusion of
obviousness rejecting claim 1 as being unpatentable over the combination of

2 The Examiner did not repeat the rejection under 35 U.S.C. § 112 of claim
16 presented in the Final Rejection in the Examiner’s Answer. We deem
that the Examiner withdrew the rejection due to the Appellants’ prior
amendment to the claim language.
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Dewitt and Kanfi? In particular, the issue turns on: a) Whether either Dewitt
or Kanfi teach away from the combination of Dewitt and Kanfi?; and b)
Whether one skilled in the art would be motivated to combine the teachings
of Dewitt and Kanfi without employing impermissible hindsight?
3. Has the Examiner erred in finding that the combination of Dewitt and
Kanfi teaches or fairly suggests “chain table” as recited in claim 2?
4. Has the Examiner erred in finding that the combination of Dewitt,
Kanfi, and Kanda teaches or fairly suggests “a counter number” as recited in
claim 6, and “the linkage table” as recited in claim 9?
5. Has the Examiner erred in finding that the combination of Dewitt,
Kanfi, and Nelson teaches or fairly suggests “said storage medium
comprises a first physical storage medium and a second physical storage
medium” recited in claim 13?

III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
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367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACTS
The following findings of fact (FFs) are supported by a preponderance
of the evidence.

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Dewitt
1. Dewitt discloses a method for optimizing storage by detecting
duplicate files utilizing file size and cyclic redundancy checks (CRC)
between every two files (col. 6 ll. 40-53), and modifying the entries of the
duplicate files to point to previous data sectors or logical blocks (col. 6, ll. 1-
13).
2. Dewitt further discloses tables containing the directory entries of files
(128-129) having pointers to data sectors/blocks (112-115) (Fig. 4, col. 5, l.
46-col. 6, l. 24). Dewitt also discloses that different media such as RAM,
ROM, flash memory, etc. can be used for the memory system (col. 3, ll. 53-
64).
Kanfi
3. Kanfi discloses a method and system of detecting a duplicate block
and corresponding signature of the block of a file, and storing only blocks
with different signature in the storage (col. 1, ll. 33-52).
4. Kanfi further teaches that a need to improve the efficiency of backup
file storage exists (col. 1, ll. 16-53).

Kanda
5. Kanda discloses a method of “a reference counter for every data
block of a system and managing the total number of files sharing the data
block.” (Abstract).
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Nelson
6. Nelson discloses utilizing two memories “mirrored memory” (Fig. 5,
Abstract).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
Grouping of The Claims
The Appellants have elected to argue claims 1-5, 8, and 10-12
together as a group (App. Br. 20 and 23). Therefore, we select independent
claim 1 as the representative claim for this group. The Appellants have also
elected to argue claims 13-17 together as a group (App. Br. 25). Therefore,
we select claim 13 as the representative claim for this group. Thus, we will
address the Appellants’ arguments with respect to the representative claims.
37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).
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35 U.S.C. § 103(a) Rejections

Issue 1
With respect to claim 1, the Appellants contend that Dewitt teaches
only avoiding duplicating files that consist of a plurality of sectors/blocks,
but does not teach “avoiding storage of duplicate blocks (e.g. each block
corresponding in length to a sector), a variable plurality of which comprises
a given file.” (App. Br. 20). The Appellants further contend that claim 1 is
allowable because Kanfi fails to cure the admitted deficiency of Dewitt, and
does not teach the feature of the instant invention that “only one block
having a given content is stored other than as a reference to a given first
block over the entire memory and all files stored therein.” (App. Br. 21;
emphasis original). Specifically, Appellants argue that Kanfi only teaches a
limited number of blocks of one file being compared and avoiding storage of
duplicate blocks for the file. (Id.)
We disagree with the Appellants’ contentions. We broadly yet
reasonably construe the disputed claim limitation – “a second or further
block identical to any of the first blocks is stored in the storage medium only
as a reference referring to the first block.” As any second or further block
identical to any of the first blocks is stored only as reference referring to the
first block regardless if the blocks (first and second blocks) belong to one
file or multiple files in the storage medium. This is because there is no
limitation regarding files of the storage in the claim language to prevent us
from reading the language broadly. To avoid importing limitations from the
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specification into the claims, it is important to keep in mind that the
purposes of the specification are to teach and enable those of skill in the art
to make and use the invention and to provide a best mode for doing so. See
Spectra-Physics Inc. v. Coherent Inc. 827 F.2d 1524, 1533 (Fed. Cir. 1987).
Thus, we decline to read the disclosed limitation from the Specification (all
files in the storage are to be compared for duplicate blocks) into the claimed
limitations.
We find Dewitt teaches performing comparisons of all data files to
detect duplicate files and only storing the pointer entries to the previously
stored identical files for the duplicate files (FF 1). We also find Kanfi
teaches the mechanism of comparing the blocks to find the duplicate blocks
and storing only signatures of the duplicate blocks (FF 3).
The Supreme Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S., at 418.
We find that the knowledge of optimizing storage by adding only the pointer
or the signature of the duplicate files or blocks to the identical file or block
would have been within the skill in the art, as evidenced by Dewitt or Kanfi.
We, therefore, find that combining the well-known elements of detecting
duplicate blocks and storing only the signature of the duplicate block instead
storing the duplicate block, as taught by Kanfi, with the well-known
technique of detecting duplicate files for all the files in the storage and only
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storing the entry of the duplicate files, as taught by Dewitt, is nothing more
than a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S., at 417.

Issue 2
The Appellants contend that “operating on blocks of equal length as in
Kanfi would preclude the principal criterion of file length by which Dewitt
et al. discriminates identical files. On the other hand, the avoidance of
writing duplicate files as in Dewitt et al. would preclude the use of Kanfi for
producing backup files.” (App. Br. 22).
We disagree with the Appellants’ contention that implies Dewitt and
Kanfi teach away from each other. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR, at 417. (Emphasis added). Here, the duplicate block detecting
technique of Kanfi was well known to improve the efficiency of the storage.
One of ordinary skill in the art would recognize that Kanfi’s method would
improve the similar system of Dewitt in the same or similar way. We find
that the combination of Dewitt and Kanfi is “a design step well within the
grasp of a person of ordinary skill in the relevant art” and the benefit of
doing so would be obvious. Id. at 427. The Appellants have not shown that
employing detection of duplicate blocks of Kanfi in detecting duplicate files
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in all files of Dewitt was uniquely challenging or difficult for one of
ordinary skill in the art or represented an unobvious step over the prior art.
The Appellants further contend that the combination of Dewitt and
Kanfi of the Examiner appears to be an exercise in attempted hindsight
reconstruction according to the Appellants’ disclosure. According to the
Appellants, in reading identical files of equal length on the recitation of “the
block storage area segmented into storage blocks of a common length . . . is
very essence of . . . use of the Appellants’ disclosure and, hence, the very
essence of hindsight.” (App. Br. 22).
We disagree with the Appellants’ contention.

To determine whether there was an apparent reason to combine
the known elements in the way a patent claims, it will often be
necessary to look to interrelated teachings of multiple patents;
to the effects of demands known to the design community or
present in the marketplace; and to the background knowledge
possessed by a person having ordinary skill in the art. To
facilitate review, this analysis should be made explicit. But it
need not seek out precise teachings directed to the challenged
claim's specific subject matter, for a court can consider the
inferences and creative steps a person of ordinary skill in the art
would employ.

KSR, at 401.
Here, detecting a duplicate block and storing only a pointer/reference
for a duplicate block was well known as evidenced by the teachings of Kanfi
at the time of the invention. A person of ordinary skill in the art who detects
the duplicate files in file system as taught by Dewitt would have obviously
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employed the Kanfi’s method because a file can be divided into block to be
stored as taught in Dewitt. We also find that Kanfi expressly teaches the
motivation to improve the redundancy of the storage (FF4). Thus, we find
that the Examiner’s motivation statement, even though it may be similar to
Appellants’ Specification, it is not based on impermissible hindsight.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. We further sustain the Examiner’s obviousness rejection of
dependent claim 12, which has not been separately argued, falls with its
base claims. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 F.2d at
1572.
Issue 3
With respect to claim 2, the Appellants contend that Figure 4 of
Dewitt does not teach the chain table defined in the present application, a
table containing references to table entries having some relationship to a
given entry. Dewitt fails to teach the feature because Dewitt teaches files
rather than blocks (App. Br. 23).
We disagree with the Appellants’ contention. First, we do not find,
and the Appellants do not indicate, where a specific definition of the term
“chain table” is found in the Specification. We therefore broadly and
reasonably interpret “chain table” as any table with chains (connections)
between the tables. Furthermore, under our claim construction, we find
Dewitt teaches a chain table with two tables of directories containing the
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names of files and references of sectors/blocks connected with sector/block
tables (112-115) (FF 2). Therefore, Appellants have not shown error in the
Examiner’s showing of obviousness of claim 2.
With respect to claim 10, the Appellants contend that neither Dewitt
nor Kanfi teaches formatting the number of physical blocks equals the
number of entries of the reference table (App. Br. 24).
We disagree with the Appellants’ contention. We find Dewitt teaches
that the directory table has 2 entries (124-125) equal to the number of the
physical block storage 112 and 115 (FF 2).
We, therefore, sustain the Examiner’s obviousness rejection of
claims 2 and 10. We further sustain the Examiner’s obviousness rejection
of dependent claims 3-5, 8, and 11, which has not been separately argued,
falls with its base claims. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson,
816 F.2d at 1572.
Issue 4
With respect to claim 6, the Appellants contend that the Kanda
reference cited by the Examiner does not teach “a counter number counting
a number of references to that first block in the reference area” recited in
claim 6 (App. Br. 25).
We disagree with the Appellants’ contention. We find that Kanda
teaches a reference counter to count the total number of files (references)
sharing the block (FF 5).
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We thus find that combining the well known element of the reference
counter of Kanda with the well known method of treating duplicate blocks
taught by the combination of Dewitt and Kanfi is nothing more than a
“predictable use of prior art elements according to their established
functions.” See KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 6. We further sustain the Examiner’s obviousness rejection of
dependent claim 7, which has not been separately argued, falls with its base
claims. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 F.2d at 1572.
With respect to claim 9, the Appellants contend that “none of the
applied references appears to teach or suggest the use of a linkage table”
(App. Br. 25).
We disagree with the Appellants’ contention. We again do not find,
and the Appellants do not indicate, where a specific definition of the
“linkage table” can be found in the Specification. We therefore broadly and
reasonably interpret “linkage table” as any table with links between the
tables. We find Dewitt teaches that a linkage table with two tables of
directory containing the names of file and reference of sectors/blocks
connect with links into sector/block tables 112-115 (FF 2). Therefore,
Appellants have not shown error in the Examiner’s showing of obviousness
of claim 9.

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Issue 5
With respect claim 13, the Appellants contend that the Nelson
reference does not teach the limitation of “a first physical storage medium
and a second physical medium storage medium” recited in claim 13, but
only redundant controllers and redundant storage on the same storage
medium (App. Br. 26).
We disagree with the Appellants’ contention. Under a broad and yet
reasonable claim interpretation, “a first physical storage medium and a
second physical medium storage medium” does not necessarily mean that
the two physical media are separate and different media. We find that the
argued limitation reads on the teaching of Nelson’s mirrored memories (FF 6)
or even reads on the teachings of Dewitt’s directories with links to storage
blocks (FF 2).
With respect to claims 14-17, the Appellants contend that there is no
teaching about different storage media in the cited references (App. Br. 26).
We disagree with the Appellants’ contention. We find that Dewitt
teaches the well known feature (FF 2).
Accordingly, we sustain the Examiner’s obviousness rejection of
dependent claims 13-17.
Therefore, we sustain the Examiner’s obviousness rejection of claims
1-17.

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VI. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellants’
countervailing evidence and arguments for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1-17 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

VII. ORDER
We affirm the obviousness rejections of claims 1-17 under 35 U.S.C.
§ 103(a).
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

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WHITHAM, CURTIS,CHRISTOFFERSON & COOK, P.C. (IBM)
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190