Ex Parte Cochran et al

Board of Patent Appeals and Interferences

Jan 16, 2009

10945183 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT A. COCHRAN and TITUS E. DAVIS
____________________

Appeal 2008-2313
Application 10/945,183
Technology Center 2100
____________________

Decided: January 16, 2009
____________________

Before: ALLEN R. MACDONALD, ST. JOHN COURTENAY III and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-2 and 4-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-2313
Application 10/945,183

2
According to Appellants, the invention is a method and a system for
use of data consistent internal mirrors within a storage device (Abstract).
The system and method has devices that may include memory, mass storage
and data processing capability (Spec. 5, ¶ [0019]).

Exemplary Claim(s)
Claims 1 and 17 are exemplary claims and are reproduced below:
1. A storage network, comprising:
a first storage cell at a first location, the first storage cell including
a physical storage media and a storage controller that controls data
transfer operations with the physical storage media;
a second storage cell at a second location, the second storage cell
including a physical storage media and a storage controller that controls
data transfer operations with the physical storage media;
a third storage cell at a third location, the third storage cell
including a physical storage media and a storage media controller that
controls data transfer operations with the physical storage media;
wherein:
write operations executed on the first storage cell are copied
remotely in an ordered sequence to a cache memory in the second storage
cell;
write operations in the cache memory are mirrored onto a
primary storage media and a secondary storage media in the second
storage cell; and
write operations mirrored to the secondary storage media are
copied remotely to the third storage cell.

17. A storage controller, comprising:
an input port for receiving write operations from a first remote
storage cell;
a processor for executing the write operations;
an output port for forwarding the write operations to a third remote
storage cell; and
Appeal 2008-2313
Application 10/945,183

3
logic instructions stored on a computer readable medium which,
when executed by the processor, configure the processor to store the
received write operations in cache memory in an ordered sequence
corresponding to the order of execution of the write operations at the first
remote storage site, and to mirror the write operation from the cache
memory onto a first physical storage media and a second physical storage
media.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nakano US 2003/0051111 A1 Mar. 13, 2003

Rejections
The Examiner rejected claims 1-2 and 4-19 under 35 U.S.C. § 102(e)
as being anticipated by Nakano. Claim 3 was cancelled.

ISSUES
35 U.S.C. § 102: claims 1-2 and 4-19
Claims 1 and 10
Appellants contend Nakano does not disclose write operations in the
cache memory are mirrored onto a primary storage media and a secondary
storage media in the second storage cell (App. Br. 9-10). Appellants assert
Nakano instead discloses only that data from a cache memory is recorded
onto a single disk drive, i.e., a single storage media (Reply Br. 3, 6).
The Examiner found Nakano clearly discloses data centers may
include multiple storage sub-systems and one storage sub-system receives a
data block through synchronous transfer from a second storage sub-system 1
Appeal 2008-2313
Application 10/945,183

4
(Ans. 14). The Examiner further found Nakano discloses the received data
is stored in the cache memory of the storage sub-system 2 and is
copied/recorded and stored in the disk drive of storage sub-system 2 (Id.).

Issue 1
Have Appellants met the burden of showing the Examiner erred in
finding Nakano discloses data from a cache memory is mirrored onto two
different storage media in a second storage cell?

Claim 4
The Appellants next assert Nakano does not disclose the second
storage cell has a primary and secondary cache memory (App. Br. 9-10) or
that the cache memories would be structured as primary and secondary
cache memories (Reply Br. 5). Appellants also assert that Nakano does not
anticipate synchronously storing the write request in a first and a second
cache memory (App. Br. 11 and Reply Br. 7).
The Examiner found, since Nakano discloses multiple storage sub-
systems may be located in each data cell, that a storage sub-system includes
cache memories of first and second storage sub-systems, i.e., primary and
secondary cache memories (Ans. 15).1

1 We note claim 4 depends from claim 3, a cancelled claim. Claim 3
depended from claim 1 and thus, we treat claim 4 as if it now depended
directly from claim 1.
Appeal 2008-2313
Application 10/945,183

5
Issue 2
Have Appellants met the burden of showing the Examiner erred in
finding Nakano discloses a second storage cell with primary and secondary
cache memories?

Claim 12
Next Appellants assert Nakano does not anticipate synchronously
storing the write request in a first and a second cache memory (App. Br. 11
and Reply Br. 7).
The Examiner found that Nakano discloses a data block is received
from a storage sub-system through synchronous transfer and stored in a
cache memory of a second storage sub-system (Ans. 16).

Issue 3
Have Appellants met the burden of showing the Examiner erred in
finding Nakano discloses synchronously storing the write request in a
second storage cell with primary and secondary cache memories?

Claim 17
Appellants further assert Nakano does not anticipate logic instructions
executed by the processor to store received write operations in the cache
memory in an ordered sequence that corresponds to the order of execution of
the write operations at the first remote storage site (App. Br. 11-12 and
Reply Br. 8).
Appeal 2008-2313
Application 10/945,183

6
The Examiner found that although not explicitly disclosed, some sort
of program memory must be present in the storage controller taught by
Nakano for a host/processor to execute the various operations; therefore, this
limitation is inherently embedded in the storage controller (Ans. 17).

Issue 4
Have Appellants met the burden of showing the Examiner erred in
finding that Nakano inherently describes logic instructions which configure
the process to store the received write operations in cache memory in an
ordered sequence corresponding to the order of execution of the write
operations at the first remote storage site?

Claim 18
Appellants finally assert that Nakano does not disclose logic
instructions executed by the processor to configure the processor to copy
write operations from the cache memory to respective first and second
storage media (App. Br. 13 and Reply Br. 9). Instead, Appellants assert the
Examiner’s argument is pure conjecture (Reply Br. 9).
The Examiner found that Nakano describes a data center may have
more than one storage sub-system. Thus, Nakano, according to the
Examiner, discloses write operations being stored synchronously in a first
cache memory and a second cache memory of a first and second storage sub-
system, respectively and then being copied to the first and second disk drive
of the first and second storage sub-system, respectively. The Examiner finds
that, although logic instructions are not specifically disclosed, some program
Appeal 2008-2313
Application 10/945,183

7
memory must exist for the host processor to perform the configuration and
mirroring and thus, logic instructions are inherent (Ans. 17-18).

Issue 5
Have Appellants met the burden of showing the Examiner erred in
finding Nakano inherently discloses logic instructions which configure the
process to copy write operations from the cache memory to respective first
and second storage media?

FINDINGS OF FACT (FF)
Appellants’ Invention
(1) Storage cells of Appellants’ invention may be implemented as
one or more communicatively connected storage devices, for example a
device from HP’s Storageworks line (Spec. 6, ¶ [0020]).
(2) Storage media may be a disk drive, for example (Spec. 11, ¶
[0031]).
Nakano’s Invention
(3) Data centers may exchange data through synchronous
transmission or through an asynchronous remote copying technique
depending upon location and other factors (p. 4, ¶ [0065] and p. 5, ¶ [0079]).
(4) Storage sub-systems are located at three or more data centers
and are interconnected by synchronous transfers of data and by an
asynchronous remote copy technique for constantly and sequentially
guaranteeing the order of data (p. 3, ¶ [0061]).
Appeal 2008-2313
Application 10/945,183

8
(5) Multiple storage sub-systems may be located in each data
center or may be connected to each data center (p. 5, ¶ [0078]).
(6) A storage sub-system includes a controller, cache and memory
(hard disk drive) (p. 6, ¶ [0100] and Fig.2). The controller includes a
channel adaptor for data exchange by a host and a remote copy destination
and a disk adaptor for controlling a hard disk drive (p.6, ¶ [0100]).
Microcode of the controller of the storage sub-system implements the data
copying and transfer (p. 6, ¶¶ [0097]-[0098]).
(7) The channel adaptor and the disk adaptor each include a
microprocessor and are connected to the cache memory (p.6, ¶ [0101] and
Figure 2).
(8) Cache memory receives the data from the host or storage sub-
system; stores data to be exchanged with the host or remote copy
destination; transmits the data to another storage sub-system by remote
copying; and configures the remote copying configuration using multiple
storage sub-systems (p. 6, ¶¶ [0098]-[0103]). The data stored in the cache is
written by the disk adaptor to a hard disk drive in an array of disk drives
under RAID (Redundant Array of Independent Disks) control (p. 6, ¶
[0104]).
(9) Data transmitted along multiple transfer paths may arrive at a
destination in a different path than transmitted by the source (p. 4, ¶ [0072]).
When received at a second storage sub-system, data transmitted along the
data transfer path is updated by the storage sub-system which arranges the
data in order using data sequence number information (p. 4, ¶ [0073]).
Appeal 2008-2313
Application 10/945,183

9
(10) A first storage sub-system transfers data to another (second)
storage sub-system that holds the data in cache (p. 6, ¶ [0098] and Figs. 1, 3,
and 10). The data is then transferred to another (third) storage sub-system
and then to a hard disk drive of the second storage sub-system (Id.). Data is
transferred synchronously and asynchronously to other storage sub-systems
(p. 6, ¶ [0097] and Figs. 1, 3, and 10).
(11) For each storage block defined in the cache memory, the
primary storage sub-system manages a table indicating whether the data
stored in the storage block has been transmitted to each secondary storage
sub-system (p. 17, ¶ [0267]).
(12) During the copying process performed through synchronous
transfer of data, a host issues a write instruction to a storage sub-system and
then to a second storage sub-system (p. 4, ¶ [0065]).

PRINCIPLES OF LAW
Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). "Claims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). "[T]he PTO gives claims
their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324
Appeal 2008-2313
Application 10/945,183

10
(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)).

§ 102 Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Inherency
“In relying upon the theory of inherency, the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis in original). “[A]fter the PTO
establishes a prima facie case of anticipation based on inherency, the burden
shifts to appellant to ‘prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.’” In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d 210, 212-13
(CCPA 1971)). See also MPEP §§ 2112 (IV.), (V.).

Appeal 2008-2313
Application 10/945,183

11
GROUPING OF CLAIMS
Claims 1-2 and 5-9; claims 10-11 and 15-16; claim 4 and claim 12
Based on the arguments presented in Appellants’ Brief, we decide the
appeal of claims 1-2 and 5-9 on the basis of claim 1 alone; claims 10-11 and
15-16 on the basis of claim 10 alone; claims 12-14 on the basis of claim 12
alone; and claims 18-19 on the basis of claim 18 (which depends from claim
17). See 37 C.F.R. § 41.37(c)(1)(vii). We decide claims 4 and 17
independently.

ANALYSIS
Issue 1: 35 U.S.C. §102: claims 1-2, 5-11 and 15-16
Appellants recite a storage network wherein “write operations in the
cache memory are mirrored onto a primary storage media and a secondary
storage media in the second storage cell” (claim 1). Storage cells may be
communicatively connected storage devices, for example a device from
HP’s Storageworks line (FF 1). Therefore, we find storage devices can be
many different types of storage.
In Nakano, data centers have one or more storage sub-systems, each
of which includes a controller, cache, and memory (FF 4 and FF 5). The
data centers may exchange data through synchronous or asynchronous
transfers of data; therefore, we find Nakano describes storage devices
communicatively connected and accordingly, describes storage cells.
Additionally, since the storage cells (data center) of Nakano exchange data,
we further find Nakano describes a first storage cell transmitting data to a
second storage cell (FF 5).
Appeal 2008-2313
Application 10/945,183

12
In Nakano, a data center may include more than one storage sub-
system (FF 5). Each storage sub-system includes an array of hard disk
drives (FF 6 and FF 8). Since storage media of Appellants’ invention may
be a disk drive (FF 2) and each storage sub-system has a hard disk drive, we
find primary and secondary storage media.
Each storage sub-system additionally includes cache (FF 6) that
transmits data to another storage sub-system (FF 8). Therefore, we find
Nakano describes a primary storage media (hard disk drive) in the first
storage cell (data center) writes to a cache memory and a secondary storage
media in a second storage cell.
Nakano further describes that storage sub-systems synchronously
transfer data and guarantee the order of data (FF 3). Thus, we find mirroring
the write request is performed in an ordered sequence (claim 10).
Based on the above findings, we further find Nakano discloses “write
operations in the cache memory are mirrored onto a primary storage media
and a secondary storage media in the second storage cell” (claim 1).

Issue 2: 35 U.S.C. §102: claim 4
Nakano describes a data center (storage cell) may have multiple
storage sub-systems (FF 5). Since each storage sub-system has cache (FF 6)
and each storage cell may have multiple storage sub-systems (FF 5), Nakano
discloses an embodiment where each storage cell has more than one cache
memory. Therefore, we find Nakano discloses “the second storage cell
comprises primary cache memory and secondary cache memory” (claim 4).

Appeal 2008-2313
Application 10/945,183

13
Issue 3: 35 U.S.C. §102: claim 12
Nakano discloses as part of the synchronous transfer of data, a host
issues a write instruction to a storage sub-system (and a second storage sub-
system if that is the operation chosen) (FF 9). Appellants’ write request also
is transferred from the host and a controller initiates a write operation to a
primary and secondary cache (Spec. 14, ¶ [0038]). As discussed above, a
storage cell may have primary and secondary caches. Therefore, we find
that Nakano discloses synchronously storing the write request in a second
storage cell with primary and secondary cache memories.

Issue 4: 35 U.S.C. §102: claim 17
Nakano discloses the controller includes a channel adaptor and a disk
adaptor each of which includes a microprocessor (FF 6). The controller
executes microcode to perform data copying and transfer (FF 6). The data
order is maintained through use of data sequence number information (FF
9).
Although Nakano does not specifically recite the “logic instructions
are stored on a computer readable medium which, when executed by the
processor, configure the processor to store the received write operations in
cache”, we find that since the controller executes microcode in the controller
(FF 6), and the microcode is logic instructions, the microcode must be stored
on some type of computer readable medium, i.e. program memory.
Additionally, since the processor stores the write operations in cache
memory (FF 10), we find the processor must be configured to store the
received write operations in cache. Accordingly, we find logic instructions
Appeal 2008-2313
Application 10/945,183

14
stored on a computer readable medium are inherently anticipated as are
“logic instructions executed by the processor” that “configure the processor
to store the received write operations in cache”.
Nakano also discloses that data transmitted from a first storage sub-
system will be arranged in the same order in the second storage sub-system -
an ordered sequence corresponding to the order of execution of the write
operations at the first remote storage site (claim 17). Since the data is first
received by a cache and then written to a disk drive, a cache receives data
from a storage sub-system in a specified order (FF 9).
We find the Examiner has provided a rationale in the Answer that
reasonably supports the finding of inherent anticipation. We see no response
in the Reply Brief that specifically addresses the Examiner’s finding.
Therefore, we find Appellants have not met the burden of proving that the
subject matter shown to be in the prior art does not possess the characteristic
relied on by the Examiner. See In re King, 801 F.2d at 1327.

Issue 5
Nakano discloses two storage sub-systems receiving data from a first
storage sub-system (FF 10). Data to be transferred is held in cache and then
transmitted to the other storage sub-systems (FF 8 and FF 10). Each of the
storage sub-systems has at least one hard disk drive (FF 6 and FF 8).
Although Nakano does not specifically recite “logic instructions
stored on a computer readable medium which, when executed by the
processor, configure the processor to copy write operations”, for the reasons
Appeal 2008-2313
Application 10/945,183

15
set forth in addressing issue 4, we find the processor is configured to copy
write operations from the cache memory.
We additionally find two storage sub-systems, each with a hard disk
drive, receive data from the cache of a first storage sub-system. A hard disk
drive is a physical storage media; therefore, we find the write operation from
the cache memory is copied to first and second storage media. We further
find Nakano discloses “logic instructions stored on a computer readable
medium which, when executed by the processor, configure the processor to
copy write operations from the cache memory to respective first and second
storage media,”
Again, as above, we find the Examiner has provided a rationale in the
Answer that reasonably supports the finding of inherent anticipation. We
see no response in the Reply Brief that specifically addresses the Examiner’s
finding. Therefore, we find Appellants have not met the burden of proving
that the subject matter shown to be in the prior art does not possess the
characteristic relied on by the Examiner.

CONCLUSION OF LAW
We find Nakano discloses each of the elements claimed either
expressly or inherently. Specifically, we find:
Appellants have not met the burden of showing the Examiner erred in
finding Nakano discloses data from a cache memory is mirrored onto two
different storage media in a second storage cell.
Appeal 2008-2313
Application 10/945,183

16
Appellants have not met the burden of showing the Examiner erred in
finding Nakano discloses a second storage cell with primary and secondary
cache memories.
Appellants have not met the burden of showing the Examiner erred in
finding Nakano discloses synchronously storing the write request in a
second storage cell with primary and secondary cache memories.
Appellants have not met the burden of showing the Examiner erred in
finding Nakano inherently discloses logic instructions which configure the
process to store the received write operations in cache memory in an ordered
sequence corresponding to the order of execution of the write operations at
the first remote storage site.
Appellants have not met the burden of showing the Examiner erred in
finding Nakano inherently discloses logic instructions which configure the
process to copy write operations from the cache memory to respective first
and second storage media.
Accordingly, we find Appellants have not met the burden of showing
the Examiner erred in rejecting claims 1-2 and 4-19 under
35 U.S.C. § 102(e) as being anticipated by Nakano.
Appellants did not separately argue claims 2, 5-9, 11, 13-16 and 19.
Since claims 2 and 5-9 depend directly and indirectly from claim 1; claims
11 and 15-16 depend directly from claim 10; claims 13-14 depend directly
from claim 12; and claim 19 depends directly from claim 18, and claims 1,
4, 10, 12, 17 and 18 have been found to be anticipated by Nakano, we find
claims 1-2 and 4-19 under 35 U.S.C. § 102(e) are anticipated by Nakano.
With respect to all claims before us on appeal, arguments which Appellants
Appeal 2008-2313
Application 10/945,183

17
could have made but chose not to make have not been considered and are
deemed to be waived. See 37 C.F.R, § 41.37(c)(1)(vii). See also In re
Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).

DECISION
The Examiner’s rejection of claims 1-2 and 4-19 under
35 U.S.C. § 102(e) as being anticipated by Nakano is affirmed.

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

msc

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS CO 80527-2400