Ex Parte Cochran et al

Board of Patent Appeals and Interferences

Jul 11, 2011

10798962 (B.P.A.I. Jul. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT ALAN COCHRAN and MARCEL DUVEKOT
____________________

Appeal 2009-008037
Application 10/798,9621
Technology Center 2100
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 12, 2004. The real party in interest is Hewlett-
Packard Development Co., LP. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-32 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to a redundant data storage
arrangement and related data synchronization method in which the
arrangement includes a primary storage entity and first and second remote
storage, and the method mirrors data to the first and second remote storage
entities and tracks writes to the first and second remote storage entities in
respective first and second sidefiles. The method compares the first sidefile
with the second sidefile and updates writes stored at the second remote
storage entity based upon the comparison. (Spec. ¶ [0007].)2
Representative Claim
Independent claim 1 further illustrates the invention and is reproduced
below with the key disputed limitations emphasized:
1. A data synchronization method for a redundant data
storage arrangement in which there are at least a primary
storage entity and mirroring first and second remote storage
entities in communication therewith, respectively, writes to the
first and second remote storage entities being tracked via
respective first and second sidefiles, the first and second storage
entities having different levels of write-currency relative to each
other, the method comprising:

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed June 10, 2008; and Reply Brief (“Reply Br.) filed November 7, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed September 8, 2008.
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receiving acknowledgements from the second remote
storage entity at both the primary storage entity and the first
remote storage entity;
comparing acknowledgements and sequence numbers in
the first sidefile with acknowledgements and sequence numbers
in the second sidefile; and
updating writes stored at the second remote storage entity
based upon the comparison of the first and second sidefiles.

References
The Examiner relies on the following references as evidence in
support of the rejections:
Harter US 6,098,179 Aug. 1, 2000

McDowell US 6,260,125 B1 Jul. 10, 2001

Carteau US 2002/0083281 A1 Jun. 27, 2002

Iwamura US 2005/0038968 A1 Feb. 17, 2005
(filed Oct. 2, 2003)

Frederick US 6,912,483 B2 Jun. 28, 2005
(filed Feb. 28, 2002)

Rejections on Appeal
1. The Examiner rejects claims 1-4, 6, 13-17, 19, and 26-32 under
35 USC § 103(a) as being unpatentable over the combination of Iwamura
and Carteau.
2. The Examiner rejects claims 5 and 18 under 35 USC § 103(a)
as being unpatentable over the combination of Iwamura, Carteau, and
Frederick.
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3. The Examiner rejects claims 7-9 and 20-22 under 35 USC
§ 103(a) as being unpatentable over the combination of Iwamura, Carteau,
and McDowell.
4. The Examiner rejects claims 10-12 and 23-25 under 35 USC
§ 103(a) as being unpatentable over the combination of Iwamura, Carteau,
and Harter.
ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding that the combination of
Iwamura and Carteau would have taught or fairly suggested “comparing
acknowledgements and sequence numbers in the first sidefile with
acknowledgements and sequence numbers in the second sidefile” as recited
in claim 1?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Appellants argue independent claim 1 and present nominal arguments
for each of independent claims 13 and 28-32. Appellants, however, simply
reiterate the arguments made with respect to claim 1 for claims 13 and 28-
32. (App. Br. 14-17.) Therefore, Appellants argue independent claims 1,
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13, and 28-32 together as a group based on claim 1. Appellants do not
present separate arguments for dependent claims 2-12 (dependent on claim
1) or 14-27 (dependent on claim 13). (App. Br. 14-18.) Consequently, we
select independent claim 1 as representative of Appellants’ arguments and
groupings with respect to the Examiner’s obviousness rejections. We have
considered only those arguments that Appellants have actually raised in their
Briefs. Arguments that Appellants could have made but chose not to make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the anticipation and
obviousness rejections – the so-called “prima facie” case. See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the United States Patent and
Trademark Office (USPTO) has the initial burden of proof “to produce the
factual basis for its rejection of an application under sections 102 and 103.”
(quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))). “[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the 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
obviousness in the Examiner’s Answer with respect to each of Appellants’
claims (Ans. 3-32) and, in particular, claim 1 (Ans. 3-6, 28-30). Therefore,
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we look to the Appellants’ Briefs to show error in the proffered findings and
reasoned conclusions. See Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 1 Under § 103
The Examiner rejects claim 1 as being obvious over Iwamura and
Carteau. (Ans. 3-6.) Specifically, the Examiner finds that Iwamura teaches
two remote storages and storage logs (first and second remote storage
entities with first and second sidefiles) (Ans. 3-4), as well as sequential IDs
(sequence numbers) and comparing sequential IDs (determining a missing
ID) (Ans. 4-5 (citing Iwamura ¶ [0236])). The Examiner also finds that
Carteau teaches receiving acknowledgements from a (second) remote
storage system at a primary storage system and a different (first) remote
storage system. (Ans. 4-6 (citing Carteau ¶ [0027]).) The Examiner further
provides a rationale for combining Iwamura and Carteau. (Ans. 5-6, 29-30.)
The Examiner also explains that Appellants’ arguments are not
commensurate with the Examiner’s interpretation of the disputed limitation
of claim 1 and that Appellants cannot show non-obviousness of the reference
combination by attacking the references individually. (Ans. 28-29.)
Appellants, on the other hand, contend that “Iwamura does not teach
or suggest using acknowledgements as part of his rollback process for
database recovery” and “Carteau does not teach or suggest using . . .
acknowledgements as part of a process for database recovery.” (App.
Br. 14.) Specifically, Appellants contend that:
Iwamura uses logs based on time and mentions the use of
continuous numbers as an alternative. Iwamura, though, never
teaches or suggests comparing both acknowledgements and
sequence numbers in one sidefile with acknowledgements and
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sequence numbers in a second sidefile as recited in claim 1.
Carteau discusses transmitting acknowledges, but never teaches
or suggests comparing both acknowledgements and sequence
numbers in one sidefile with acknowledgements and sequence
numbers in a second sidefile as recited in claim 1.
The differences between the claims and the teachings in
the art are great since the references fail to teach or suggest all
of the claim elements. As such, the pending claims are not a
predictable variation of the art to one of ordinary skill in the art.
(App. Br. 14-15.)
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of claim 1. We agree with the Examiner that the
limitations of Appellants’ claim recite “comparing acknowledgements and
sequence numbers in the first sidefile with acknowledgements and sequence
numbers in the second sidefile.” (App. Br. 20, claim 1.) We also agree that
Iwamura describes comparing sequential IDs in log files (Ans. 3-6), and
Carteau describes sending acknowledges (acknowledgements) from a remote
storage system (second remote storage entity) to another remote storage
system (first remote storage entity) and a primary computer (primary storage
entity). (Ans. 4-5.) We further agree with the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention to combine the teachings of Iwamura and Carteau.
(Ans. 5-6, 29-30.)
Appellants do not dispute that Iwamura teaches comparing sequential
IDs (sequence numbers) in a log of a first remote storage (the first sidefile)
with sequential IDs in a second remote storage (the second sidefile) as the
Examiner asserts. (See App. Br. 14-15, Reply Br. 2-3.) Appellants also do
not dispute that Carteau teaches sending acknowledges (acknowledgements)
from a second remote storage system to first remote storage system and a
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sending computer (primary storage system) as the Examiner asserts. (See
App. Br. 13-14, Reply Br. 2-3.)
Iwamura and Carteau both describe mirroring (writing) data to remote
storage systems. (Ans. 5.) Therefore, we find Iwamura and Carteau are in
the same field of endeavor and are analogous art. Thus, we conclude, as did
the Examiner, that it would have been obvious to an ordinarily skilled artisan
at the time of Appellants’ invention to combine Iwamura and Carteau (Ans.
5-6, 29-30) because comparing Carteau’s acknowledgements in conjunction
with Iwamura’s sequential IDs as taught by Iwamura is tantamount to the
predictable use of prior art elements and techniques according to their
established functions – an obvious improvement. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). We also find that the Examiner
articulates a rationale – improved efficiency and functionality (ensuring a
complete record of writes and ensuring complete resynchronization) – for
combining Iwamura and Carteau (see Ans. 5-6, 29-30) based on “some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 (quoting Kahn, 441 F.3d at 988).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton” – “[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.”
KSR, 550 U.S. at 421. “Common sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
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together like pieces of a puzzle.” Id. at 420. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). It is well settled
that “factfinders may use common sense in addition to record evidence” to
determine the legal issue of obviousness. Perfect Web Tech., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
A person of ordinary skill in the art would have had good reason to
pursue the known options (comparing data as taught by Iwamura, in this
instance additional data – the acknowledges/acknowledgements taught by
Carteau) for improving remote copy (mirroring) systems, as taught by
Iwamura, which would require no more than “ordinary skill and common
sense.” KSR, 550 U.S. at 421. Appellants have presented no evidence that
pursuing a known option such as comparing additional data “was uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog, 485
F.3d at 1162. Further, we find that a person of ordinary skill would have
perceived a reasonable expectation of success in the combination of these
elements of the prior art. See In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.”). Therefore, we conclude Iwamura and Carteau
would have taught comparing sequential IDs as taught by Iwamura and also
the acknowledgements taught by Carteau (i.e., an acknowledgement
corresponding to a sequential ID in a log of a first remote storage with an
acknowledgement corresponding to a sequential ID in a log of a second
remote storage).
We find Appellants’ contrary arguments unpersuasive for several
reasons. As explained by the Examiner, Appellants’ arguments are not
commensurate with the scope of the claim limitations. (Ans. 28.) Also as
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explained by the Examiner, Appellants attempt to attack each of the
references individually. One cannot show non-obviousness of the reference
combination by attacking the references individually. (Ans. 29.)
Additionally, although Appellants aver that the “differences between the
claims and the teachings in the art are great” and the “claims are not a
predictable variation” (App. Br. 15), they do not explain how comparing
additional data is beyond the skill in the art (supra).
Thus, we find Iwamura and Carteau would have taught or fairly
suggested the disputed claim limitation to one of ordinary skill in the art at
the time of Appellants’ invention. It follows that Appellants do not persuade
us of error in the Examiner’s obviousness rejection of claim 1. Appellants
do not separately argue claims 2-32 (supra). Consequently, it follows that
Appellants do not persuade us of error in the Examiner’s obviousness
rejections of claims 2-32, and we affirm the Examiner’s rejections of claims
1-32 for the reasons above.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-32 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-32 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)(1)(iv).
Appeal 2009-008037
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AFFIRMED

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