Ex Parte Gold et al

Patent Trial and Appeal Board

Feb 23, 2017

11769485 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
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.
11/769,485 06/27/2007 Stephen Gold 82232240 4886
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
VO, THANH DUC
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN GOLD and SHANNON MO YES CLARK
Appeal 2016-003634
Application 11/769,485
Technology Center 2100
Before ROBERT E. NAPPI, CAROLYN D. THOMAS, and SCOTT E.
BAIN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the Final
Rejection of claims 1 through 20.
We affirm-in-part.
INVENTION
The invention is directed to a system of managing resources in a
physical storage library behind a virtual storage library. See Abstract of
Appellants’ Specification. Claim 1 is illustrative of the invention and
reproduced below:
1. A virtual storage system, comprising:
Appeal 2016-003634
Application 11/769,485
a virtual storage library having virtual storage devices to
emulate physical storage devices of a physical storage library;
and
a controller to:
share tape drive resources in the physical storage library
with plural different contending copy applications in the virtual
storage library without creating separate pools of tape drives
reserved for each of the plural different contending copy
applications, and
use user-defined policy rules to determine which of the
plural different copy applications in a job queue are assigned to
which physical tape drives in the physical storage library.
REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7 under 35 U.S.C. §
103(a) as unpatentable over Kishi (US 2003/0014568 Al; publ. Jan. 16,
2003) and Basham (US 2003/0050729 Al; publ. Mar. 13, 2003). Answer 2—
1}
The Examiner has rejected claims 8, 9, 11, 13, 15 through 17, and 19
under 35 U.S.C. § 103(a) as unpatentable over Kishi, Basham, Wideman
(US 7,263,596 Bl; iss. Aug. 28, 2007), and Goiffon (US 2002/0120662 Al;
publ. Aug. 29, 2002). Answer 7—13.
The Examiner has rejected claims 10, 12, 18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over as unpatentable over Kishi, Basham,
Wideman, Goiffon, and Hessel (US 4,707,693; iss. Nov. 17, 1987). Answer
13-15.
1 Throughout the Opinion we refer to the Appellants’ Appeal Brief, dated
July 27, 2015 (“App. Br.”), the Reply Brief, dated February 22, 2016
(“Reply Br.”), and the Examiner’s Answer, mailed January 4, 2016
(“Answer”).
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Application 11/769,485
The Examiner has rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Kishi, Basham, Wideman, Goiffon, and Lubbers (US
2003/0188233 Al; publ. Oct. 2, 2003). Answer 15-16.
ISSUES
Rejection of claims 1,2, and 4 through 7
Appellants argue on pages 6 and 10 of the Appeal Brief, and pages 1
and 4 of the Reply Brief that the Examiner’s rejection of representative
claim 1 is in error. Appellants’ arguments present us with the following
issues:
1) Did the Examiner err in finding Kishi teaches plural copy
applications and a virtual storage library that is created without
having separate pools of tape drives reserved for each of the plural
different contending copy applications?
2) Did the Examiner err in finding the combination of Kishi and
Basham teach user defined policy rules?
We note on pages 3 through 5 of the Reply Brief, Appellants argue the
Examiner has not explained how Kishi’s system would be modified or that
the skilled artisan would make the combination. Appellants have not shown
good cause as to why these arguments could not be presented earlier. As
such, these arguments have not been considered, and are waived. See Ex
parte Borden, 93 USPQ2d 1473, 1476 (BPAI 2010) (informative) (absent a
showing of good cause, the Board is not required to address arguments in
Reply Brief that could have been presented in the principal Appeal
Brief); 37 C.F.R. § 41.41(b)(2).
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Application 11/769,485
Rejection of claims 8, 9, 11, 13, 15 through 17, and 19
Appellants’ arguments on pages 12 through 15, directed to these
claims present us with the same two issues as discussed above with respect
to claim 1.
Rejection of claims 10, 12, 14, 18, and 20
Appellants’ arguments on pages 16 and 17, directed to these claims
assert that the rejection of these claims is in error for the reasons discussed
with respect to claim 8 and 17.
Rejection of claim 3
Appellants argue on page 10 through 12 of the Appeal Brief and pages
4 and 5 of the Reply Brief, that the Examiner’s rejection of claim 3 is in
error. Appellants’ arguments present us with the following issues: Did the
Examiner err in finding the combination of Kishi and Basham teach that the
copy applications include a) mirroring the virtual storage to physical storage,
b) copying physical tapes under control of a backup application, and c) using
tape cartridges to extend storage capacity of the virtual storage library, as
recited in claim 3?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in rejecting claims 1,2, and
4 through 20, but we agree with Appellants’ conclusion that the Examiner
erred in rejecting claim 3.
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Application 11/769,485
Rejection of claims 1,2, and 4 through 7
Appellants’ arguments directed to the rejection of these claims have
not persuaded us of error. Initially we note that Appellants, in both the
Appeal Brief dated July 1, 2015 (defective Appeal Brief) or the Appeal Brief
dated July 27, 2015, failed to comply with rule 37 C.F.R. § 41.37(c)(ii), and
did not identify the prior appeal and prior decision in this patent application.
The Examiner did identify the prior decision and provided a comprehensive
response to Appellants’ arguments. See Answer 16 and 17 (citing page 5 of
our March 27, 2014 decision on appeal of this patent application). The
Examiner finds the plural hosts, each having applications that access the
server, meet the claimed copy applications. Answer 16—17. We concur with
the Examiner’s finding. Thus, Appellants’ arguments directed to the first
issue have not persuaded us the Examiner erred in finding Kishi teaches
plural copy applications and a virtual storage library.
Appellants’ arguments directed to the second issue assert that since
neither Kishi nor Basham teach the limitation directed to plural copy
applications, the references do not teach user defined policy rules to
determine which copy applications are assigned to which physical tape
drives. App. Br. 9-10. We are not persuaded of error by this argument. As
discussed above, we concur with the Examiner’s finding that Kishi teaches
plural copy applications accessing a virtual library. Further, the Examiner
has found that Basham teaches a method of assigning physical devices to
hosts which meets the claimed rules. App. Br. 17. Thus, we sustain the
Examiner’s rejection of representative claim 1 and claims 2 through 7 which
are similarly rejected and not argued separately.
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Application 11/769,485
Rejection of claims 8, 9, 11, 13, 15 through 17, and 19.
As discussed above, Appellants’ arguments directed to these claims
present us with the same issue as discussed with respect to claim 1.
Accordingly, we sustain the Examiner’s rejection of these claims for the
reasons discussed above with respect to claim 1.
Rejection of claims 10, 12, 14, 18, and 20
As discussed above, Appellants assert the rejection of these claims is
in error for the reasons discussed with respect to claim 8. Accordingly, we
sustain the Examiner’s rejections of these claims.
Rejection of claim 3
Appellants’ arguments directed to the rejection of claim 3 have
persuaded us the Examiner erred in finding the combination of Kishi and
Basham teach that the copy applications include a) mirroring the virtual
storage to physical storage, b) copying physical tapes under control of a
backup application, and c) using tape cartridges to extend storage capacity of
the virtual storage library, as recited in claim 3. Appellants argue that the
Examiner’s rejection of claim 1 equates the host to the claimed copy
application, but the Examiner has not shown that the host performs the copy
applications recited in claim 3. Reply Br. 4—5.
The Examiner responded to Appellants’ arguments, citing Kishi
paragraphs 4 and 21 as teaching the limitations of claim 3. We have
reviewed the cited paragraphs of Kishi and disagree with the Examiner that
the cited paragraphs of Kishi teach that the host (which the Examiner
equates to the claimed copy application) performs the three applications
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Application 11/769,485
recited in claim 3. Accordingly, we do not sustain the Examiner’s rejection
of claim 3.
ORDER
We sustain the Examiner’s rejections of claims 1, 2, and 4 through 20
under 35 U.S.C. § 103(a).
We do not sustain the Examiner’s rejection of claims 3 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)(l)(iv).
AFFIRMED-IN-PART
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