Ex Parte Fineberg et al

Patent Trial and Appeal Board

May 28, 2013

11626678 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAM FINEBERG and PANKAJ MEHRA1
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Appeal 2010-009732
Application 11/626,678
Technology Center 2100
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Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-3, 5, 7-8, and 19-22. Appellants have previously
canceled claims 4, 6, and 9-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Hewlett-Packard Development Company,
L.P. (App. Br. 3.)
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STATEMENT OF THE CASE 2
The Invention
Appellants’ invention relates to increasing throughput of Database
(“DB”) Input/Output (I/O) systems with respect to the access of data
volumes stored on Enterprise Storage Systems (“ESS”) Redundant Array of
Inexpensive Disk (“RAID”) or other redundant storage protection schemes.
This improved throughput is realized through the application of a Network-
attached Persistent Memory Unit (“nPMU”) including a non-volatile
memory store (“nvRAM”) combined with a Remote Direct Access Memory
(“RDMA”) capable network interface card, as well as a change in the way
the DB commits changes to disk. Spec. ¶ [0001].
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added):
1. A method comprising:
writing a log update record regarding a particular
database transaction, the writing by a database application to a
storage controller,
writing, by the storage controller, updates to data
volumes, the updates to the data volumes determined solely
from the log update record, and

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
December 8, 2009); Reply Brief (“Reply Br.,” filed Apr. 15, 2010);
Examiner’s Answer (“Ans.,” mailed Feb. 19, 2010); Non-Final Office
Action (“NFOA,” mailed Oct. 2, 2009); and the original Specification
(“Spec.,” filed Jan. 24, 2007).
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writing, by the storage controller, updates to log
volumes, the updates to the log volumes determined solely
from the log update record.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Boyd US 6,721,806 B2 Apr. 13, 2004
Castro US 2007/0185920 A1 Aug. 9, 2007
Mizuno US 2007/0271313 A1 Nov. 22, 2007
Rejections on Appeal 3
1. Claims 1-3, 5, and 7-8 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Ans. 3.
2. Claims 1-2 and 7-8 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Mizuno et al. Ans. 3.
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mizuno and Boyd. Ans. 3.
4. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mizuno and Castro. Ans. 3.

3 We note that the rejection of claims 1-3, 5, 7-8, and 19-22 as being
indefinite under 35 U.S.C. § 112, ¶2 has been withdrawn by the Examiner.
Ans. 8.
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ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
conclusions with respect to the written description rejection of claims 1-3, 5,
and 7-8 and, with respect to the anticipation rejection of claims 1-3, 5, and 7-
8, we agree with (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. Written Description Rejection of Claims 1-3, 5, and 7-8
Issue 1
Appellants argue (App. Br. 10-12; Reply Br. 1-2) that the Examiner’s
written description rejection of claim 1 under 35 U.S.C. § 112, first
paragraph is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method lacks written description support for the limitations in
claim 1 relating to updates to the data volumes and log volumes
being determined solely from the log update record?
Analysis
Appellants contend that “[s]tating a claim limitation in terminology
different than used in the specification does not lead to a failure under the
Written Description requirement.” App. Br. 11. Appellants go on to
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contend that the claim language at issue in claim 1 merely represents a
rephrasing of the support in the Specification. Id.
In response, the Examiner states that Appellants added the phrases
“determined solely from the log update record” by the amendment filed on
Feb. 10, 2009, and relied upon paragraph [0025] for support of the added
claim language. Ans. 8. The Examiner further points out that Appellants
argue that Appellants’ Specification discloses “All other I/O can be initiated
by the SSC based on the data contained in that record” (the log record), and
that there is no disclosure of solely using the log record as argued and
claimed. Id. (emphases in original, citing App. Br. 11-12).
The first paragraph of 35 U.S.C. § 112 requires that the “specification
shall contain a written description of the invention . . . .” 35 U.S.C. § 112.
This requirement is separate and distinct from the enablement requirement.
See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991).
Under Vas-Cath, an applicant must convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention, and that the invention, in that context, is whatever is now
claimed. Id., 1563-64.
An objective standard for determining compliance with the written
description requirement is that “the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she] invented what is
claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). While there
is no in haec verba requirement, newly added claim limitations must be
supported in the specification through express, implicit, or inherent
disclosure. In re Oda, 443 F.2d 1200 (CCPA 1971).
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Appellants’ original disclosure states “[i]n Figure 2 it was illustrated
that much of the I/O performed in a database update is redundant. In fact,
everything that is needed to update log volumes, data volumes, and the
remote copies is contained in the log record.” Spec. ¶ [0025] (emphasis
ours). Appellants’ disclosure further provides that “as shown in Figure 5, to
update the database we can simply have the database [210] write its part of
the log record [502] to persistent memory in a SSC. All other I/O can be
initiated by the SSC based on the data contained in that record.” Id.
We agree with Appellants’ contentions because we find that the
recitation of “the updates to the data volumes determined solely from the log
update record, and writing, by the storage controller, updates to log volumes,
the updates to the log volumes determined solely from the log update
record” (claim 1) have support in Appellants’ Specification, as cited above.
We equate the recited “determined solely from the log update record” with
the disclosed “everything that is needed to update log volumes . . . is
contained in the log record.” Spec. ¶ [0025].
While the Examiner states that the phrase “all other I/O can be
initiated” (Ans. 8) does not provide the same disclosure as “using only the
log record . . . or ‘solely’ as claimed,” we disagree with the Examiner
because, when the entirety of the Specification is considered, particularly
paragraph [0025], the description clearly allow persons of ordinary skill in
the art to recognize that Appellants had possession of a method that allows
simplified updates of data and log volumes using only the log record.
Accordingly, Appellants have provided arguments and evidence to
persuade us of at least one error in the Examiner’s characterization of
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Appellants’ written description support for the claim limitations at issue.
Therefore, for the reasons discussed supra, we cannot sustain the
Examiner’s written description rejection of independent claim 1. For the
same reasons, we also cannot sustain the written description rejection of
claims 2, 3, 5, 7, and 8 that depend therefrom.
2. Rejection of Claims 1-3, 5, and 7-8
Issue 2
Appellants argue (App. Br. 14-21; Reply Br. 2-4) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by
Mizuno is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is anticipated by Mizuno, particularly that Mizuno
discloses the steps of “writing, by the storage controller,
updates to data volumes, the updates to the data volumes
determined solely from the log update record, and writing, by
the storage controller, updates to log volumes, the updates to
the log volumes determined solely from the log update record,”
as recited in claim 1?
Analysis
Appellants contend that Mizuno does not change the prior art
technique requiring multiple writes for updating data volumes and log
volumes as shown and described by Mizuno’s Figure 2A. In particular,
Appellants contend that Mizuno’s database management system (DBMS 25)
contains both a transaction execution module 27 that updates requested data
on data volume 7, and a log creating module 26 that creates and stores the
history of processing executed by transaction execution module 27 in log
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volume 5 of storage system 3. App. Br. 16 (citing Mizuno ¶¶ [0043] -
[0044]).
Appellants’ Figure 2A is reproduced below

FIG. 2A is a block diagram showing the configuration of a primary site
according to the first embodiment
Appellants contend that Mizuno’s communication between database
server 2 and storage system 3 represents conventional prior art because it
requires separate and independent data writes for each of the data volume
and log volume. App. Br. 16. In contrast, Appellants contend that their
claimed method eliminates the need for multiple writes to accomplish
updating of both the data volume and the log volume, while Mizuno
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discloses that transactions between the database server and the storage
system require multiple writes, i.e., at least one write for the data volume
update, and one write for the log volume update. App. Br. 17. Appellants
then conclude that this disclosure by Mizuno therefore does not teach or
suggest, either expressly or inherently, “updates to the data volumes
determined solely from the log update record,” and “updates to the log
volumes determined solely from the log update record,” as recited in
claim 1. Id. (emphases added).
In response to Appellants’ contentions cited above regarding
Mizuno’s reliance upon multiple writes to accomplish updating, the
Examiner finds that this distinction argued by Appellants, i.e., that
Appellants have no need for multiple writes to accomplish updating of both
the data volume and the log volume, is not recited in the rejected claims. In
addition, the Examiner cites Mizuno as disclosing updates to data volumes
by only using the updated log from the backup log volume. Ans. 9-10.
“The log applying module 30 retrieves the updated log from the backup log
volume 15 and obtains from the backup data volume 16 data to be updated
(505). The log applying module 30 applies the updated log to the obtained
data, thereby updating the data (506).” Mizuno ¶ [0118].
In response to the Examiner’s findings regarding Mizuno’s disclosure
of log data being used to update the backup data volume, supra, Appellants
shift the emphasis of their arguments to contend that, in the embodiment
cited by the Examiner, “the writing by the storage controller 4 in the primary
site is not a write ‘by a database application to a storage controller’ as
required by the claims . . . [since] the storage controller is not a database
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application.” Reply Br. 3. Appellants further contend that “[w]hile the
database server 2 of Mizuno writes the storage system 3 (which comprises
storage system controller 4), it is the storage system controller 4 of Mizuno
that writes the log data to the storage system controller 14, not the database
server 2.” Id.
We note that claim 1 requires, inter alia, “writing a log update record
regarding a particular database transaction, the writing by a database
application to a storage controller.” We further point out that, in the
Answer, the Examiner found that Mizuno discloses a database application
writing to a storage controller in which storage systems 3 and 13 may be
interpreted as Appellants’ claimed storage controller, and Fig. 3 represents a
database application. Ans. 10 (citing Mizuno Fig. 3).
We agree with the Examiner’s finding that Mizuno Fig. 3 and related
portions of its disclosure (Mizuno ¶¶ [0073] – [0074]) teaches a database
application that causes the writing of a log update record. Mizuno discloses
that client computer 80 sends an online processing request to DB server 2
that specifies the processing to be executed. Such processing may be
specified by a combination of SQL commands sent as an online processing
request according to a TCP/IP protocol. Mizuno ¶ [0073]. Further, DB
server 2 receives the processing request and executes requested online
processing which can include, for example, the DB server 2 analyzing SQL
commands contained in the online processing request, and executing
requested processing such as a data update. Mizuno ¶ [0074]. As such, we
agree with the Examiner that Mizuno’s above-cited disclosure meets the
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limitation “writing by a database application to a storage controller,” as
recited in claim 1.
Therefore, we agree with the Examiner that Mizuno anticipates
claim 1 because we find that Appellants’ recitation of “updates
. . . determined solely from the log update record” at least reads on Mizuno’s
disclosure of log applying module 30 applying the updated log to the data
and thereby updating the data, and the recitation of “writing by a database
application to a storage controller” reads on Mizuno’s disclosure of the use
of SQL commands, as discussed above.
Accordingly, Appellants have not provided evidence or arguments
sufficient to persuade us of reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 1.
Appellants have not separately argued the dependent claims on appeal and,
for the same reasons discussed with respect to independent claim 1, we also
sustain the various rejections of claims 2, 3, 5, 7, and 8, depending from
claim 1.
CONCLUSIONS
(1) The Examiner erred with respect to the written description
rejection of claims 1-3, 5, and 7-8 under 35 U.S.C. § 112, ¶1, and we do not
sustain the rejection.
(2) The Examiner did not err with respect to the rejection of claims
1-2 and 7-8 under 35 U.S.C. § 102(e) as being anticipated by Mizuno, and
we sustain the rejection.
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(3) The Examiner did not err with respect to the rejections of
claims 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable over various
combinations of Mizuno with Boyd, and Mizuno with Castro, respectively,
and we sustain the rejections.
DECISION
The decision of the Examiner to reject claims 1-3, 5, and 7-8 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

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