Ex Parte Curran et al

Board of Patent Appeals and Interferences

Aug 22, 2011

10154009 (B.P.A.I. Aug. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/154,009 05/23/2002 Robert J. Curran POU920020007US1 9899
46369 7590 08/23/2011
HESLIN ROTHENBERG FARLEY & MESITI P.C.
5 COLUMBIA CIRCLE
ALBANY, NY 12203
EXAMINER
SHAW, PELING ANDY
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
08/23/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. CURRAN, ROGER L. HASKIN,
KUEI-YU WANG-KNOP, and FRANK B. SCHMUCK
____________

Appeal 2009-0011245
Application 10/154,009
Technology Center 2400
____________

Before DENISE M. POTHIER, KALYAN K. DESHPANDE, and
ERIC B. CHEN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6 and 8. Claims 7 and 9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse. We also enter a new
ground of rejection under 37 C.F.R. § 41.50(b)

STATEMENT OF THE CASE
Appellants’ invention relates to a technique for accessing data in a
multimode storage data processing network. See generally Spec.
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¶ 0001. Claim 1 is reproduced below with a key disputed limitation
emphasized:
1. A method for accessing data in a shared storage environment, said
method comprising the steps of:
establishing metadata file system control structures on at
least some of a plurality of data processing nodes which share
access to a set of data storage devices to allow at least some data
processing nodes to act in parallel as metadata controller nodes;
coordinating usage of said metadata controller nodes acting
in parallel, including for each of said metadata controller nodes
acting in parallel: sending a request to a first node, acting as a
metadata controller node, to grant access to a file which is resident
within said set of storage devices, said request being sent from a
second node, which is acting as an application node and not as a
metadata-controller node, and which does not belong to said
plurality of nodes;
providing a lock for use by said first node, in response to
said request, wherein said lock includes permission for said first
node to allow said second node to directly access said file for a
limited period of time, such that said first node acts as the metadata
controller for said file via said lock;
transferring metadata information pertaining to said file to
said second node; and
accessing said file during said limited time from said second
node using said transferred metadata information.

The Examiner relies on the following as evidence of unpatentability:
Thekkath US 6,173,293 B1 Jan. 9, 2001

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THE REJECTION
The Examiner rejected claims 1-6 and 8 under 35 U.S.C. § 102(b) as
anticipated by Thekkath. Ans. 3-7.1

CONTENTIONS
Regarding claim 1, the Examiner mapped Thekkath’s discussion of
the lock server giving the file server a lease to the limitation of providing a
lock that includes permission for the first node to allow the second node to
directly access the file for a limited period of time. Ans. 4. The Examiner
also states that there is no distinguishable difference between the manner
Thekkath and Appellants access disks or files. Ans. 13-14.
Among other arguments, Appellants assert the recited application
node: (1) holds the lock through the temporarily assigned metadata
controller node and (2) has direct access to the storage devices. Br. 10.
Appellants contend that this recited locking mechanism differs from
Thekkath’s locking mechanism which still requires the application nodes to
access the files through a file server and, thus, these nodes have no direct
access to the storage devices. See Br. 10-11.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Thekkath discloses providing a lock that includes permission for the
first node to allow the second node to directly access the file for a limited
period of time?

1 Throughout this opinion, we refer to (1) the Appeal Brief filed November
18, 2008 and (2) the Examiner’s Answer mailed February 18, 2009.
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FINDINGS OF FACT (FF)
Thekkath
1. Thekkath discusses a scalable distributed file system 100 having a
client user programs (clients) 101, a file server 110, a disk server 120, a lock
server 130, and physical disks 102. A two layer file system accesses the
disks 102 and manages the files. The first layer is the distributed file server
110, and a second layer implements a distributed virtual disk server 120.
Col. 4, ll. 39-50; Fig. 1.
2. Thekkath discloses a server/machine arrangement 200. The
arrangement 200 includes computer systems 210 and 220 connected by a
network 230 to physical disks 102. Each system 210 includes a file server
110; each computer system or machine 220 includes a disk server 120 and a
lock server 130. Col. 5, l. 56 – col. 6, l. 14; Fig. 2.
3. Thekkath describes an alternative client/server configuration
where a file system can be exported to machines outside a trusted
administrative domain. In this scenario, an untrusted client machine 310 is
distinguished from a trusted server machine 320. Only the file server 110
executed on the trusted machine 320 communicates directly with the disk
and lock servers 120 and 130. The untrusted machine 320 has no direct
access to the disk and lock servers. Col. 7, ll. 43-55; Fig. 3.
4. Thekkath discloses a lock server 130 that provides locks for the
file server 110 or “leases” for a limited time. Col. 10, ll. 24-65; Fig. 6.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
anticipation rejection of independent claim 1 which calls for, in pertinent
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part, “providing a lock for use by said first node . . . wherein said lock
includes permission for said first node to allow said second node to directly
access said file for a limited period of time . . . .” Thekkath discloses a lock
server (e.g., 130) that can provide a lock to or lease the lock to the file server
for a limited time. See FF 4. In this manner and as the Examiner explains
(Ans. 13-14), Thekkath and Appellants’ invention are similar.
Yet, Thekkath discusses that access to the disks and thus to any file is
a two layer system that includes both the file server (e.g., 110) and the
distributed disk server (e.g., 120). See FF 1. Thus, even if the lock server
(e.g., 130) grants Thekkath’s file server (e.g., 110) a lease to access files (see
FF 4), we fail to see how Thekkath discloses providing a lock for use by the
first node (e.g., lock server 130) wherein the lock includes permission for the
first node to allow a second node (e.g., client 101 acting as an application
node) to directly access a file (e.g., 102) for a limited time, as recited. That
is, this second node (e.g., 101) is permitted access to the file through the file
server (e.g., 110) and not directly from the node itself. See FF 1. Moreover,
if we elect the second node to be the file server (e.g., 120), Thekkath still
uses the two layer system (see FF 1), requiring the disk server (e.g., 120) for
access to files and thus is not allowed direct access to files. See id. Also,
this file server does not act as an application node as recited.
In another embodiment, Thekkath discloses that the file server (e.g.,
110) is located within a computer system (e.g., a second node 210 acting as
an application node) and that files located within storage (e.g., 102) are
accessible through the disk and lock servers. See FF 2. This scenario will
also require the second node (e.g., 210) to use the disk server to access files.
See FF 1-2. Thus, any lock lease obtained by a first node (e.g., lock server
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130) does not permit the second node (e.g., 210) to directly access a file
located within a disk (e.g., 102) without using a disk server (e.g., 120).
The Examiner also cites to an alternative client/server configuration to
teach the providing step and specifically for showing a second node
communicating directly with the disks. Ans. 4, 14. In this embodiment,
Thekkath describes a file system that can be exported to machines outside a
trusted environment (e.g., 310) or used by a node that does not belong to the
nodes within the trusted environment. Nonetheless, this node (e.g., a second
node that does not belong to the trusted nodes) does not have direct access to
the disks and thus does not communicate directly with the files. See FF 3.
Rather, only the file server (e.g., 110) on the trusted machine (e.g., 320)
communicates with the disk and lock servers. See id. Thus, even if a lease
was obtained by the file server in this embodiment, the second node would
not be permitted or allowed to directly access files as recited. See id. And if
the trusted machine (e.g., 320) were elected as the second node, we find that
this machine or node has the same deficiencies as noted above with regard to
the other configurations. That is, the node will still need to communicate
with the disk server 120 before accessing the files and thus does not allow
the second node to directly access a file.
For the foregoing reasons, Appellants have persuaded us of error in
the anticipation rejection of: (1) independent claim 1; (2) independent claim
8 which recites commensurate limitations; and (3) dependent claims 2-6 for
similar reasons.

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New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
Claims 1-6 and 8 are rejected under 35 U.S.C. § 112, first paragraph as
failing to satisfy the written description requirement. To satisfy the written
description requirement, the disclosure must convey with reasonable clarity
to ordinarily skilled artisans that Appellants had possession of the claimed
invention as of the filing date. Ariad Pharmaceuticals, Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal citations omitted).
Independent claim 1 recites recites four different nodes: (1) “a
plurality of data processing nodes (claim 1, lines 3-4); (2) “metadata
controller nodes,” which are some data processing nodes (claim 1, line 4);
(3) “a first node, acting as a metadata controller node” (claim 1, lines 7-8);
and (4) a second node acting as: (a) an application node; (b) not as a
metadata controller node; and (3) does not belong to the plurality of nodes or
the recited plurality of data processing nodes discussed in item (1) (claim 1,
lines 9-11). This last recited node or the second node “which does not
belong to said plurality of nodes” fails to satisfy the written description
requirement.
Based on the above claim construction, independent claim 1 includes
data processing nodes as well as a second node, which acts as an application
node excluded from the data processing nodes or does not belong to these
data processing nodes, as recited. Appellants point to various passages (e.g.,
Spec. ¶¶ 0015-17, 0062, 0064, 0066, and 0067) in the Specification for
support for these limitations. See Br. 5, 9. Appellants also elaborate in the
Appeal Brief by stating that the specific recitation, “a second node . . . which
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does not belong to said plurality of nodes,” includes a node “outside the file
server cluster.” 2 See Br. 9-11.
Appellants state that the plurality of data processing nodes are
described in paragraphs fifteen through seventeen. See Br. 5. Paragraph 15
does not elaborate on what the data processing nodes are and, in fact, states
that a second node acts as a metadata controller node, in direct contrast to
claim 1. See Spec. ¶ 0015. Without using the particular words, “data
processing nodes” or a “second node,” Appellants further describe two
classes of nodes in a multi-node environment, including nodes that do not
act as metadata controller nodes but have direct file level access for a limited
time. See Spec. ¶ 0016. Appellants also describe one node class (i.e., Class
B) that includes application nodes, which requests access to data and have
direct file level access for a limited time when granted a lease. See Spec.
¶ 0017. Based on these discussions, an application node is a recited second
node since this node requests access to the files, acts as an application node
rather than a meta-data controller node, and is allowed direct access to the
file for limited period of time as recited. See id. Yet, there is no discussion
demonstrating to an ordinarily skilled artisan that Appellants were in
possession of the claimed second node that acts an application node being
excluded from the data processing nodes or “does not belong to said
plurality of nodes.”

2 Notably, claim 1 recites the second node “does not belong to said plurality
of nodes” (i.e., the plurality of data processing nodes) and does not require
the second node be outside a file server cluster. Nonetheless, we present this
discussion by Appellants to provide some insight into what the phrase,
“which does not belong to said plurality of nodes,” means.

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Paragraph 0062 discusses that a General Parallel File System (GPFS)
cluster can assign a member to be the metanode, while a requesting node is
not designated as a metadata control node. See Spec. ¶ 0062. Thus, in this
case and in contrast to claim 1, a node within the cluster makes requests to
the metanode (e.g., the recited second node) and thus belongs to the plurality
of clustered data processing nodes. See id. Appellants also describe
providing leases to application nodes that have direct access to files or the
recited second node in claim 1. See Spec. ¶ 0064. This passage further
reinforces that the application node is the recited second node but does not
describe this node as failing to belong to the data processing nodes.
Appellants also discuss Figures 1-4. See Spec. ¶¶ 0066-68, 0103;
Figs. 1-4. Paragraph 0066 describes Nodes 1 through 3 in Figure 1 as
application nodes (e.g., 101-103) or data processing nodes that lack the full
ability to act as Metadata Controller nodes (e.g., 301-304). See Spec. ¶
0066; Fig. 1. These application nodes (e.g., 101-103) therefore are a second
node that acts as an application node and not as a metadata controller as
recited. However, these nodes are not excluded from the data processing
nodes and thus are part of or belong to the recited plurality of data
processing nodes, contrary to claim 1. See id.
Paragraph 0066 also discusses Figure 3 which shows a similar
arrangement of data processing nodes (e.g., 151-153), separated by metadata
controllers (e.g., 310, 320), where a data processing node can be a second
node that acts as an application node and not as a metadata controller node.
See ¶ 0066; Fig. 3. However, once again, the application or second node is
not excluded from the data processing nodes and belongs to the recited data
processing nodes. See id. Figure 4 has a similar arrangement to Figure 3.
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Compare Fig. 3 with Fig. 4. These discussions therefore fail to demonstrate
to an ordinarily skilled artisan that Appellants had possession at the time of
filing of the claimed invention of a second node that “does not belong to said
plurality of nodes.”
Paragraph 0067 further describes that an Application node obtains a
lease to access files from a Metadata Controller Node but does not provide
any further information about a second node “which does not belong to said
plurality of nodes.” Lastly, we have not found any other discussion in
Appellants’ disclosure demonstrating that Appellants have possession of this
limitation at the time of filing. See generally Specification.
For the above reasons, we conclude that the Appellants’ Specification
does not describe the claimed invention of “a second node, which is acting
as an application node and not as a metadata-controller node, and which
does not belong to said plurality of nodes” in sufficient detail that one skilled
in the art can reasonably conclude that the inventors had possession of this
claimed invention at the time of filing. Dependent claims 2-6 include all the
limitations of independent claim 1 and thus are similarly rejected for the
above reasons. Also, independent claim 8 has a commensurate limitation to
the above-quoted limitation and is rejected as failing to satisfy the written
description requirement for the same reasons as discussed in connection with
claim 1.

CONCLUSION
The Examiner erred in rejecting claims 1-6 and 8 under § 102.
A new ground of rejection for claims 1-6 and 8 has been presented
under 35 U.S.C. § 112, first paragraph.
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DECISION
The Examiner’s decision rejecting claims 1-6 and 8 is reversed.
We have entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claims 1-6 and 8.
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 . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the 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 the appeal 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 §
41.52 by the Board upon the same
record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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