Ex Parte Budaya et al

Patent Trial and Appeal Board

Sep 5, 2013

10993048 (P.T.A.B. Sep. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANGELIQUE R. BUDAYA, AARON S. MAHAR,
JAMES A. SPRINGER, WARREN K. STANLEY, and GAIL A. SPEAR
___________

Appeal 2011-003864
Application 10/993,048
Technology Center 2100
____________

Before ERIC B. CHEN, MICHAEL J. STRAUSS, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1, 5-14, 16-20, 24-29, 38, 42-49, and 53-59. Claims 2-4,
15, 21-23, 30-37, 39-41, and 50-52 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter new
grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to a deploying computing infrastructure
for clearing metadata in a storage subsystem, including identifying metadata
tracks to clear, receiving a request from a client to clear the identified tracks,
quiescing any active processes, clearing the identified tracks, and resuming
the quiesced processes. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for clearing metadata in a storage
subsystem of a storage controller coupled to a host device and
at least one direct access storage device (DASD), the direct
access storage device configured into tracks having customer
data and metadata, the method comprising:
identifying one or more of a plurality of types of
metadata tracks, stored on a direct access storage device in the
storage subsystem, to clear, the type of metadata selected from
a group consisting of a storage controller level, a logical
subsystem level and a volume level;
receiving a clear metadata tracks (CMT) request from a
client to clear metadata tracks, the CMT request including an
identification of a metadata type and an identification of one or
more metadata tracks associated with the metadata type;
after receipt of the CMT request, quiescing any processes
active in the storage subsystem;
clearing the identified metadata tracks substantially in
parallel;
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and resuming the quiesced processes after the identified
metadata tracks have been cleared.

Claim 11 stands provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1, 11, 21, and 31 of commonly owned co-pending U.S. Patent
Application No. 10/993,092.2
Claims 1, 5-10, 12-14, 16, 17, 19, 20, 24-28, 38, 42-47, 49, and 53-583
stand rejected under 35 U.S.C. § 103(a) as being obvious over Slingwine
(U.S. Patent 5,442,758; Aug. 15, 1995) and Mosher, Jr. (U.S. Patent No.
5,745,753; Apr. 28, 1998).
Claims 11, 18, 29, 48, and 59 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Slingwine, Mosher, Jr., and Micka (U.S. Patent No.
6,611,901 B1; Aug. 26, 2003).

ANALYSIS
We are persuaded by Appellants’ arguments (Br. 15) that the
combination of Slingwine and Mosher, Jr. would not have rendered obvious
independent claim 1, which includes the limitation “identifying one or more

1 Both Appellants and the Examiner have inadvertently included cancelled
claim 30 in the statement of the rejection. (Br. 3; Ans. 4.)
2 Appellants have not presented any arguments challenging the propriety or
the substance of the rejection of claim 1 under the judicially created doctrine
of obviousness-type double patenting. Thus, any such arguments are
deemed to be waived.
3 Both Appellants and the Examiner have inadvertently included cancelled
claims 21, 22, 50, and 51 and dependent claim 48 in the statement of the
rejection. (Br. 14; Ans. 5.)
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of a plurality of types of metadata tracks, stored on a direct access storage
device in the storage subsystem, to clear.”
The Examiner found that the deletion flag of Slingwine corresponds to
the limitation “identifying one or more of a plurality of types of metadata
tracks, stored on a direct access storage device in the storage subsystem, to
clear.” (Ans. 5-6.) In particular, the Examiner found that “the deletion flag
itself is metadata as it describes whether an element should or should not be
deleted.” (Ans. 18.) We do not agree.
Slingwine relates to computer systems, in particular, “a reduced
overhead mutual-exclusion mechanism that provides data coherency.”
(Col. 1, ll. 10-12.) Figure 3 of Slingwine illustrates a mutual-exclusion
mechanism 90 (col. 6, ll. 33-35) that includes a callback 100, “element of a
generation data structure” that “tracks a set of elements 102 waiting for safe
erasure” (col. 6, ll. 42-44) and an updater, “a thread that updates a data
element” (col. 8, ll. 51-52). Slingwine further explains that “[a]n updater
deleting an element removes it from a data structure by unlinking it or using
a deletion flag.” (Col. 8, ll. 63-64.)
Although the Examiner cited the deletion flag of Slingwine for
teaching the claimed “metadata” (Ans. 5-6, 18), the Examiner has provided
insufficient evidence to support a finding that such deletion flag is “cleared”
or erased from a memory. Accordingly, we are persuaded by Appellants’
arguments that “even if the deletion flags (or indicators) of Slingwine are
considered to be metadata under a broad definition, they . . . are not cleared
as recited in claim 1.” (Br. 15.)
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 5-10 depend from independent claim 1.
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We do not sustain the rejection of claims 5-10 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to independent claim 1.
Independent claims 12, 16, 20, 38, and 49 recite limitations similar to
those discussed with respect to independent claim 1. We do not sustain the
rejection of claims 12, 16, 20, 38, and 49, as well as dependent claims 13,
14, 17, 19, 24-28, 42-47, and 53-58, for the same reasons discussed with
respect to claim 1.
Claims 11, 18, 29, 48, and 59 depend from independent claims 10, 16,
20, 38, and 49. Micka was cited by the Examiner for teaching the additional
features of claims 11, 18, 29, 48, and 59. (Ans. 17-18.) However, the
Examiner’s application of Micka does not cure the above noted deficiencies
of Slingwine and Mosher, Jr.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 38 and 42-48 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Independent claim 38 recites “[a] computer program product of a
computer readable storage medium” (emphasis added). Appellants’
Specification discloses that:
Examples of computer readable media include recordable-type
media such as a floppy disk, a hard disk drive, a RAM, and CD-
ROMs. Examples of transmission-type media include digital
and analog communication links.
(Spec. ¶ [0030] (emphasis added)). Accordingly, claims 38 and 42-48 are
directed to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is
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not a ‘process, machine, manufacture, or composition of matter.’ . . . [T]hus,
such a signal cannot be patentable subject matter.”); see also MPEP § 2106
(I) (“Non-limiting examples of claims that are not directed to one of the
statutory categories . . . [include] transitory forms of signal transmission (for
example, a propagating electrical or electromagnetic signal per se.”)).

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record ….

DECISION
The Examiner’s decision to reject claim 1 under the judicially created
doctrine of obviousness-type double patenting is affirmed. However, the
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Examiner’s decision to reject claims 1, 5-14, 16-20, 24-29, 38, 42-49, and
53-59 under 35 U.S.C. § 103(a) is reversed.
New ground of rejection has been entered under 37 C.F.R. § 41.50(b)
for claims 38 and 42-48, rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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