Ex Parte Botes et al

Board of Patent Appeals and Interferences

Jan 31, 2011

10999883 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAR BOTES and MICHAEL TIMPANARO-PERROTTA
____________________

Appeal 2009-007008
Application 10/999,883
Technology Center 2100
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

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.

Appeal 2009-007008
Application 10/999,883

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-29 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to the field of computer
systems, and more particularly, to data storage systems (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:
1. A system, comprising:

a processor; and

a memory comprising program instructions, wherein the
program instructions are executable by the processor to
implement file system software comprising an immutable
data mechanism, wherein the immutable data mechanism
is configured to:

track files in a file system implemented as a tiered
storage hierarchy comprising one or more storage
tiers and an immutable data container as a tracking
tier;

apply a policy to one or more attributes of the tracked
files, wherein the policy specifies particular
attributes of files to be stored as immutable data on
the immutable data container; and

store one or more of the files as immutable data to the
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immutable data container in response to said
application of the policy to the attributes of the
tracked files;

wherein the one or more files stored to the immutable
data container remain online within the file system.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yankovich US 2006/0129441 A1 Jun.15, 2006
McGovern US 7,155,460 B2 Dec. 26, 2006

Claims 1-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGovern in view of Yankovich.
Claims 11-17 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.

II. ISSUES
Has the Examiner erred in concluding that:
1) McGovern in view of Yankovich would have suggested “a memory
comprising program instructions … executable by the processor”
(claim 1) and
2) The “file system” and “host system” of claim 11 encompass purely
software implementations?
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
McGovern
1. McGovern discloses a write-once-read-many (WORM) storage
system for industries dealing in financial transactions and other
sensitive tasks, wherein selected data is stored in an immutable and
unalterable manner in light of concerns over institutional fraud and
mismanagement (col. 2, ll. 49-57; Abstract).
2. The Securities and Exchange Commission (SEC) promulgates SEC
Rule 17a-4 governing document retention for brokers and investment
institutions, wherein this rule requires that these entities store emails
and other documents in connection with a variety of transactions and
trades by clients of the entities unchanged and unchangeable for a
number of years (col. 3, ll. 4-14).
3. A file is committed to WORM state by transitioning the file attributes
from a not-read-only to a read-only state, wherein any attempt to
modify the file attributes, write to the file, or delete the file, by clients,
administrators or other entities is rejected and a request denied
message is returned to the attempting party (col. 4, ll. 41-50).
4. The storage operating system 200 implements a write-anywhere file
system that logically organizes the information as a hierarchical
structure of directories and files on the disks, wherein each “on-disk”
file may be implemented as a set of disk blocks configured to store
information (col. 7, ll. 46-51; Fig. 2).
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Yankovich
5. Yankovich discloses a system that creates documentation of internal
controls for a business to meet its financial and legal obligations,
wherein an automated, repeatable, and trackable process of complying
with SEC rules is established (Abstract).

IV. ANALYSIS
35 U.S.C. § 103(a)
Claims 1, 5-7, 11, 14, 15, 17, 18, 21, 22, 24, 27, and 28
Appellants argue that the applied references, alone or in combination,
do not “teach applying a policy to one or more attributes of the tracked files,
wherein the policy specifies particular attributes of files to be stored as
immutable data” (App. Br. 18). In particular, Appellants contend that
“McGovern is directed at a conventional ‘flat’ file system that includes
WORM volumes for ‘immutable storage’, and not at a tiered storage
hierarchy” because “[a] directory tree is not storage’” (App. Br. 13-14).
Appellants also argue that “[n]othing in the cited art suggests that the SEC
rules mentioned in McGovern’s background discussion are policies applied
to one or more attributes of tracked files” (App. Br. 16). Furthermore,
Appellants argues that “Yankovich is silent as to the notion of tracking files”
(App. Br. 18).
The Examiner responds that “directory trees are hierarchical” wherein
“a ‘tier’ and a ‘level’ are synonymous” and “a directory tree is at least
suggestive of a hierarchical storage arrangement” (Ans. 15). The Examiner
also finds that “McGovern discusses the archiving of data related to
securities transactions, as required by SEC Rule 17a-4” and “thus, teaches
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archiving files mandated by a policy, such as SEC Rule 17a-4, and using
WORM technology for storing immutable data” (Ans. 16). The Examiner
explains that “[a] policy for storing may be reasonably interpreted as a
reason for storing” (Ans. 17). Further, the Examiner finds that “Yankovich
teaches the storage of files in order to comply with SEC rules for financial
reporting” and thus “if the process were tracked, stored files were (at least,
impliedly) necessary to create the required financial reports” (Ans. 18).
Appellants’ contentions that the cited references do not “teach
applying a policy to one or more attributes of the tracked files, wherein the
policy specifies particular attributes of files to stored as immutable data” and
that “Yankovich is silent as to the notion of tracking files” (App. Br. 18) are
not commensurate in scope with the language of claim 1. In particular,
contrary to Appellants’ argument, the system of claim 1 does not comprise
any of the “applying” or “tracking” steps but rather teaches that program
instructions comprised within the memory are “executable by the processor
to implement file system software comprising an immutable data
mechanism, wherein the immutable data mechanism is configured to”
perform the steps (emphasis added). In fact, claim 1 does not even require
that the file system software comprising the immutable data mechanism
configured to “track” and “apply” is comprised within the claimed system.
That is, claim 1 merely requires file system software, within or outside of the
claimed system, that may be implemented by the program instructions in the
memory of the claimed system.
Furthermore, as set forth in claim 1, the file system software (within
or outside of the claimed system) is not actually implemented as Appellants
contend, but rather intended to be implemented. An intended use will not
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limit the scope of the claim because it merely defines a context in which
program instructions comprised within the memory operate. Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003).
As discussed above, claim 1 also does not require any tracking of files
or applying of policies. Rather, claim 1 merely requires that the program
instructions in the memory are executable to implement file system software
comprising an immutable data mechanism, wherein the immutable data
mechanism is “configured to: track files …; apply a policy …; and store
one or more of the files” (emphasis added). Thus, similar to the “to
implement” discussion above, such intended use of “track” and “apply” will
not limit the scope of the claim because it merely defines a context in which
an immutable data mechanism operates.
Thus, the issue we address on appeal is whether McGovern in view of
Yankovich would have at least suggested “a memory comprising program
instructions … executable by the processor” as positively recited in claim 1.
McGovern discloses a write-once-read-many (WORM) storage
system for industries dealing in financial transactions and other sensitive
tasks, wherein selected data is stored in an immutable and unalterable
manner in light of concerns over institutional fraud and mismanagement (FF
1). We find McGovern in view of Yankovich would have at least suggested
a system comprising a processor and a memory comprising program
instructions that are executable by the processor, as specifically required by
claim 1.
We therefore find no error in the Examiner’s rejection of
representative claim 1 over McGovern in view of Yankovich. Since
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Appellants do not provide separate arguments for independent claims 11, 17,
18, and 24, these claims and claims 5-7, 14, 15, 21, 22, 27, and 28 depending
respectively therefrom also fall with claim 1.
We note that by arguing that the applied references do not “teach
applying a policy to one or more attributes of the tracked files, wherein the
policy specifies particular attributes of files to be stored as immutable data”
(App. Br. 18, emphasis added) , that “[n]othing in the cited art suggests that
the SEC rules mentioned in McGovern’s background discussion are policies
applied to one or more attributes of tracked files” (App. Br. 16), and that
“Yankovich is silent as to the notion of tracking files” (App. Br. 18),
Appellants appear to be arguing that individually, McGovern and Yankovich
do not anticipate the claimed features. However, the Examiner rejects the
claims over the combined teachings of the references, and the test for
obviousness is not what each reference teaches but what the combined
teachings would have suggested to one of ordinary skill in the art. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Merck, 800
F.2d 1091, 1097 (Fed. Cir. 1986).
McGovern discloses storing selected data in an immutable and
unalterable manner in light of concerns over institutional fraud/
mismanagement (FF 1) and in view of SEC Rule 17a-4 which requires that
storing of emails and other documents unchanged and unchangeable for a
number of years (FF 2). In a WORM state, the file attributes are transitioned
from a not-read-only to a read-only state (FF 3). We find the storing of
selected data as immutable and unalterable in view of SEC Rule 17a-4
(requiring such storage) to comprise applying a policy to attributes of a file,
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wherein the policy specifies particular attributes of files to be stored as
immutable data.
Furthermore, Yankovich discloses a system that creates
documentation of internal controls for a business to meet its financial and
legal obligations, wherein a trackable process of complying with SEC rules
is established (FF 5). We find Yankovich at the least suggests tracking of
files, and thus conclude that McGovern in view of Yankovich at the least
would have suggested applying a policy to one or more attributes of tracked
files, wherein the policy specifies particular attributes of files to be stored as
immutable data.
Accordingly, we find no error in the Examiner’s finding that
McGovern “teaches archiving files mandated by a policy, such as SEC Rule
17a-4, and using WORM technology for storing immutable data” (Ans. 16),
that “[a] policy for storing may be reasonably interpreted as a reason for
storing” (Ans. 17), and that “Yankovich teaches tracking the storage of files
in order to comply with SEC rules for financial reporting” because “if the
process were tracked, stored files were (at least, impliedly) necessary to
create the required financial reports” (Ans. 18).
Though Appellants contend that McGovern is not directed to “a tiered
storage hierarchy” (App. Br. 18), we agree with the Examiner’s finding that
“directory trees are hierarchical” wherein “a ‘tier’ and a ‘level’ are
synonymous” and “a directory tree is at least suggestive of a hierarchical
storage arrangement” (Ans. 15). That is, McGovern discloses a storage
operating system that logically organizes the information as a hierarchical
structure of directories and files on the disks (FF 4). We find such storage
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system that organizes information as a hierarchical structure to comprise a
tiered storage hierarchy.
Claims 2, 12, 19, and 25
Appellants argue that Appellants can find nothing in Yankovich “that
teaches … storing updates to files as additional immutable data” (App. Br.
20). However, as discussed above, claim 1 from which claim 2 depends
does not positively recite “file system software” comprising the immutable
data mechanishm, and thus, “the immutable data mechanism is further
configured to … store updates” also does not further limit the claim.
We note that by arguing that Yankovich does not teach “the notion of
storing updates” (App. Br. 20), Appellants appear to be arguing that
Yankovich does not anticipate the claimed features. However, as discussed
above, the test for obviousness is what the combined teachings would have
suggested to one of ordinary skill in the art.
We therefore find no error in the Examiner’s conclusion that the
features of claim 2 would have been suggested by the combined teachings of
McGovern in view of Yankovich. Since Appellants do not provide separate
arguments for claims 12, 19, and 25, these claims fall with claim 2.
Claims 3, 13, 20, and 26
Appellants argue that nothing in Yankovich teaches storing updates
and reconstructing a file (App. Br. 21). However, we similarly find that “the
one or more files … and the updates … are configured to enable the
reconstruction” also does not further limit the claim. That is, claim 3 merely
requires that the files and updates are “configured to enable the
reconstruction” and does not require any reconstruction, as argued.
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We therefore find no error in the Examiner conclusion that the
features of claim 3 would have been suggested by the combined teachings of
McGovern in view of Yankovich. Since Appellants do not provide separate
arguments for claims 13, 20, and 26, these claims fall with claim 3.
Claim 4
Appellants argue that the cited references have nothing to do with “an
immutable data container being removed from the system and placed in a
different system to perform said reconstruction” (App. Br. 22). However,
we similarly find that the container “is configured to be removed” also does
not further limit the claim. That is, claim 4 merely requires that the
container be “configured to” be removed and does not require any removal,
as argued.
We therefore find no error in the Examiner’s conclusion that the
features of claim 4 would have been suggested by the combined teachings of
McGovern in view of Yankovich.
Claims 8-10, 16, 23, and 29
As for claims 8-10, the Examiner concludes that McGovern in view of
Yankovich would have suggested these features (Ans. 24-26). However,
Appellants merely contend that the applied references do not disclose the
features of the claims and then merely repeats the claim language (App. Br.
22-25). Appellants provide no convincing argument to dispute that the
Examiner has correctly shown where all the claimed elements appear in the
prior art. Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting claims 8-10 and claims 16, 23, and 29 falling
with claims 9 and 10 over McGovern in view of Yankovich.
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35 U.S.C. § 101
Though the Examiner finds that “[i]ndependent claim 11 is directed to
software per se” (Ans. 5, emphasis omitted), claim 11 recites “a system”
comprising “a file system … comprising one or more storage tiers and an
immutable data container” and “host system” that “comprises file system
software.” We conclude that claim 11 is directed to a machine, i.e., a system
comprising a storage device such as the immutable data container.
Accordingly, we agree with Appellants that the system comprising a file
system comprising an immutable data container of claim 1 satisfies 35
U.S.C. § 101.
Though the Examiner finds that “the claim itself at lines 4-5 indicates
that a host system ‘comprises file system software’” (Ans. 5), we conclude
the claimed file system software is sufficiently tied to a machine such as a
system and data container.
For the foregoing reasons, we cannot sustain the rejection of claim 11
and claims 12-17 standing therewith under 35 U.S.C. § 101.

V. CONCLUSIONS AND DECISION
We affirm the Examiner’s rejection of claims 1-29 under 35 U.S.C. §
103(a), but reverse the Examiner’s rejection of claims 11-17 under 35 U.S.C.
§ 101.
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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peb

MEYERTONS, HOOD, KIVLIN, KOWERT, GOETZEL/SYMANTEC
P.O. BOX 398
AUSTIN, TX 78767-0398

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