Ex Parte Colgrove et al

Board of Patent Appeals and Interferences

Jul 29, 2011

10749279 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN COLGROVE, PAR BOTES, MICHAEL TIMPANARO-
PERROTTA, CHARLES H. SILVERS, and PETER VAJGEL
____________________

Appeal 2009-008035
Application 10/749,2791
Technology Center 2100
____________________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 31, 2003. The real party in interest is
VERITAS Operating Corp. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-42. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
The invention at issue on appeal relates to computer system, storage
medium, and method for migrating and restoring data in a multi-class file
system such that migrated data remains active (online) within the file system
and does not need to be restored from offline storage in order to be accessed.
(Spec. ¶¶ [0012], [0013], [0036], [0039], [0040].)2
Representative Claim
Independent claim 1 further illustrates the invention and is reproduced
below with the key disputed limitations emphasized:
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 configured to assign and migrate
data in a multi-class file system comprising a hierarchy of
storage classes, wherein more actively accessed data are
migrated to higher storage classes in the hierarchy of storage

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed June 30, 2008; and Reply Brief (“Reply Br.”) filed November 17, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed September 15,
2008.
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classes and less actively accessed data are migrated to lower
storage classes in the hierarchy of storage classes, wherein
migrated data remains online within the multi- class file system;
a restore mechanism configured to restore the multi-
class file system, wherein, in said restore, the restore
mechanism is configured to:
restore the higher storage classes; and
restore the lower storage classes after completion
of said restore of the higher storage classes;

wherein the file system software is further configured
to grant one or more applications access to the more actively
accessed data on the higher storage classes after completion of
said restore of the higher storage classes and prior to
completion of said restore of the less actively accessed data on
the lower storage classes.

References
The Examiner relies on the following references as evidence of
unpatentability:
Woods US 5,881,311 Mar. 9, 1999

Curran US 2004/0267822 A1 Dec. 30, 2004
(filed Jun. 24, 2003)

Rejection on Appeal
The Examiner rejects claims 1-42 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Curran and Woods.

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ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the combination of Curran and
Woods would have taught or suggested that “a memory comprising program
instructions . . . executable by the processor to implement: file system
software configured to assign and migrate data in a multi-class file system
. . . wherein migrated data remains online within the multi- class file system”
as recited in claim 1?

FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Appellants’ Claim & Specification
1. Appellants’ claim 1 recites, in relevant part, “a memory
comprising program instructions . . . executable by the processor to
implement: file system software configured to assign and migrate data in a
multi-class file system . . . wherein migrated data remains online within the
multi- class file system.” (App. Br. 35.) Appellants’ Specification explains
that “[t]he multi-class storage mechanism 104 may later relocate or migrate
the file (or a portion of the file) to another storage class 122 according to the
policies. A migrated file remains online within the file system, even if the
file is moved to the lowest storage class 122; migration does not move files
to offline storage.” (Spec. ¶ [0039] (emphasis added).) The Specification
further explains that:
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From the application and/or user’s perspective, the file appears
to be in the same location in the file system where the user put
it. Migrated data remains in the file system no matter which
storage class it is migrated to. Migrated data remains active or
online in the file system, and does not have to be restored from
offline storage media in order to be accessed.
(Spec. ¶ [0040] (emphasis added).) Accordingly, Appellants provide a
particular definition for the term “online” in their Specification.

ANALYSIS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the obviousness rejection –
the so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984) (the 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 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 the obviousness rejection in the Examiner’s Answer
with respect to Appellants’ claims (Ans. 3-22) and in particular independent
claim 1 (Ans. 3-7, 13-20). Therefore, we look to the Appellants’ Briefs to
show error in the proffered conclusions. See Kahn, 441 F.3d at 985-86.
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Arguments Concerning the Examiner’s Rejection of
Representative Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
obvious over the combination of Curran and Woods. (Ans. 3-7, 13-20.)
Specifically, the Examiner submits that Woods discloses migrating data in a
multi-class file system “wherein migrated data remains online within the
multi-class file system.” (Ans. 5, citing Woods – Col. 6, ll. 11-27; col. 15,
ll. 54-67; Figs. 2A, 2B, 4.) In particular, the Examiner interprets the term
“online” to refer to disks or hard disk drives, or alternately to simply mean
“remaining available.” (Ans. 14.)
Appellants, on the other hand, contend that the combination of Curran
and Woods does not teach that the migrated data remains online and, in fact,
Woods teaches exactly the opposite. (App. Br. 14-17.) In particular,
Appellants assert that Woods teaches a conventional Hierarchical Storage
Management (HSM) system, which migrates data to offline storage. (App.
Br. 14-17.)
Based on the record before us, we find error in the Examiner’s
obviousness rejection of Appellants’ claim 1. We agree with Appellants that
Woods, cited by the Examiner as teaching migrated data remaining online,
in fact describes migrating data to offline storage. (App. Br. 14-17 (citing
Woods – Col. 17, ll. 7-43).) Further, the Examiner’s interpretation of
“online” is not consistent with Appellants’ Specification, which uses the
terms “online” and “active” synonymously and defines “online” as meaning
“not hav[ing] to be restored from offline storage media in order to be
accessed.” (FF 1.)
Absent a convincing explanation from the Examiner in support of why
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the cited portions of Woods in combination with Curran are deemed to teach
the disputed features, we are left to speculate how and why the references
are being applied. Consequently, we are constrained by the record before us
to conclude that the combination of Curran and Woods would not have
taught or suggested each recited feature of Appellants’ claim 1 to one of
ordinary skill in the art at the time of Appellants’ invention, and thus the
rejection of claim 1 fails to establish a prima facie case of obviousness.
Appellants’ independent claims 15, 16, 17, and 30 include limitations
similar in scope to the limitations of claim 1. Appellants’ claims 2-14
(dependent on claim 1), 18-29 (dependent on claim 17), and 31-42
(dependent on claim 30) stand with their respective independent claims.
Thus, based on the record before us and for the reasons set forth with respect
to claim 1, we find that the Examiner erred in concluding the combination of
Curran and Woods would have taught or suggested the disputed limitations
recited in Appellants’ claims 1-42. Accordingly, we reverse the Examiner’s
obviousness rejection of these claims.

CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims
1-42 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-42 under 35 U.S.C.
§ 103(a).

REVERSED
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