Ex Parte Gold et alDownload PDFPatent Trial and Appeal BoardJun 21, 201612889824 (P.T.A.B. Jun. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/889,824 09/24/2010 Stephen Gold 56436 7590 06/23/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82264616 7060 EXAMINER MACKES, KRISE ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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 mkraft@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, JEFFREY S. TIFF AN, and SRI HARSHAN KAP ANIP ATHI Appeal2015-000924 Application 12/889,824 Technology Center 2100 Before JOHN A. EV ANS, MELISSA A. RAAP ALA, and MONICA S. ULLAGADDI, Administrative Patent Judges. HAAPALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-15 and 17-21. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Claim 16 has been canceled. App. Br. 2. Appeal2015-000924 Application 12/889,824 fNVENTION Appellants' invention is directed to managing virtual storage resources for backup. Spec. i-f 6. Claim 1 is exemplary of the subject matter on appeal: 1. A method of managing virtual storage resources, compnsmg: receiving parameters input by a user to a user application, and parameters defined by the user application, wherein the user application is a backup manager, the parameters input by the user and the parameters defined by the user application define one or more characteristics for a backup job; analyzing the parameters of a plurality of backup jobs over time to model backup lifecycle; estimating size of available storage capacity over time based on the modeled backup lifecycle; and identifying storage options using the available storage capacity on an ongoing basis for future backup jobs. REJECTIONS ON APPEAL 2 Claims 9-15 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-3, 9, 11, 12, 14, 15, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Spackman (US 2 The Examiner withdrew the 35 U.S.C. § 112 rejection of claims 20 and 21. Ans. 3. 2 Appeal2015-000924 Application 12/889,824 2011/0016088 Al; Jan. 20, 2011) and Helliker (US 2005/0262168 Al; Nov. 24, 2005). 34 Claims 4, 5, and 13 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Spackman, Helliker, and Gold (US 2005/0081096; Apr. 14, 2005). Claims 6-8, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Spackman, Helliker, and Korman (US 2007 /0294206 Al; Dec. 20, 2007). Claim 10 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Spackman, Helliker, and Chang (US 2005/0050055 Al; Mar. 3, 2005). Claim 21 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Spackman, Helliker, and Anand (US 2007/0283017 Al; Dec. 6, 2007). ISSUES Appellants' contentions present us with the following issues: A) Did the Examiner err in finding claims 9--15 are directed to non- statutory subject matter? B) Did the Examiner err in finding the combination of Spackman and Helliker teaches or suggests receiving parameters input by a user to a user application, and parameters defined by the user application, wherein the 3 The header of this rejection omits claim 20. See Non-Final Act. 4. Because the body of the rejection includes findings directed to this claim, we determine this to be a harmless typographical error. See Non-Final Act. 8. 4 Appellants incorrectly characterize this rejection as an anticipation rejection under 35 U.S.C. § 102(e). Compare App. Br. 7 with Non-Final Act. 4. 3 Appeal2015-000924 Application 12/889,824 parameters define[] . . . one or more characteristics for a backup job ("parameters" limitation), as set forth in independent claim 1? C) Did the Examiner err in finding the combination of Spackman and Helliker teaches or suggests the limitations recited in dependent claim 20? D) Did the Examiner err in finding the combination of Spackman, Helliker, and Korman teaches or suggests the limitations recited in dependent claim 18? E) Did the Examiner err in finding the combination of Spackman, Helliker and Korman teaches or suggests the limitations recited in dependent claim 19? F) Did the Examiner err in finding the combination of Spackman, Helliker, and Anand teaches or suggests the limitations recited in dependent claim 21? ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions and the evidence of record. We disagree with Appellants' conclusions that the Examiner's 35 U.S.C. § 101 rejection and 35 U.S.C. § 103(a) rejections of claims 1-15, 17, 20, and 21 are in error. Appellants have persuaded us the Examiner has failed to establish that claims 18 and 19 are obvious over the cited prior art. Issue A: 35 USC§ 101 Rejection The Examiner finds claims 9-15 are directed to non-statutory subject matter because the claims do not recite the necessary physical articles or objects to constitute a machine or manufacture. Non-Final Act. 2. Specifically, the Examiner finds the "computer-readable medium" recited in the preamble of the claim encompasses transitory subject matter. Ans. 4. 4 Appeal2015-000924 Application 12/889,824 The Examiner further finds the processor is not positively recited in the claim, and, therefore the claims are directed to only logic elements. Ans. 3- 4. Appellants contend the non-statutory rejection is in error because the claims recite logic instructions executable by a processor and stored on a computer-readable medium. App. Br. 5; see also Reply Br. 65. We are not persuaded by this argument. For all statutory categories, except process claims, the eligible subject matter must exist in some physical or tangible form. See Digitech Image Tech., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). We agree with the Examiner that the claim encompasses non-physical embodiments because the processor is not part of the system and the broadest reasonable interpretation of "computer-readable medium" encompasses transitory signals. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). Accordingly, we sustain the 35 U.S.C. § 101 rejection of claims 9-15. Issue B: Obviousness Rejection of Claims 1-15 and 17 Appellants contend Spackman does not disclose the "parameters" limitation recited in claim 1. App. Br. 8-10. 6 In particular, Appellants argue none of the parameters in Spackman are input by a user or defined by 5 Appellants additionally argue the Examiner appears to make a new ground of rejection in the Answer without so labeling the rejection. Reply Br. 3. We remind Appellants that the Board normally only considers matters affecting the merits of the invention, i.e., the rejections of claims. See 37 C.F .R. § 41.31 ( c ). Matters not affecting the merits of the invention, such as failure to designate a new ground of rejection, are to be raised by petition to the Director or to the PTO Official to whom the Director has delegated the authority to determine the petition. See 37 C.F.R. §§ 1.181-183. 6 See supra note 4. 5 Appeal2015-000924 Application 12/889,824 the user application. App. Br. 9; Reply Br. 5. Appellants further argue none of the criteria in Helliker are defined by the user application. App. Br. 9; Reply Br. 5. We are not persuaded by these arguments. The Examiner finds Spackman teaches receiving parameters input by a user to a user application, Helliker teaches receiving parameters defined by the user application, and the parameters taught by both references define one or more characteristics of a backup job. Non-Final Act. 4--5; see also Ans. 6-7. The cited sections of Spackman describe a user interface module 310 that comprises an input module 410, which includes a policy module 411 that elicits backup load characterization, restore load characterization, and performance requirements (parameters defining characteristics of a backup job) from a system administrator (user). Spackman i-fi-138, 40. Thus, we agree with the Examiner that Spackman teaches receiving the claimed parameters input by a user. We further agree that Helliker teaches the claimed parameters defined by the user application. The cited section of Helliker describes a scheduling manager program (application) that initiates a backup according to a predetermined schedule, the amount of usage of a particular network computer, or according to any other desired criteria (parameters defined by the user application). Helliker i-f 99. Although, Helliker describes the parameters are defined by a network manager, we observe that after they are input, the parameters are defined in the program and used to initiate backup jobs. Id. Appellants do not provide persuasive argument or evidence that the broadest reasonable interpretation of "defined by the user application" does not encompass such parameters. For the reasons stated above, Appellants do not persuade us the Examiner errs in finding the combination of Spackman and Helliker teaches 6 Appeal2015-000924 Application 12/889,824 or suggests the "parameters" limitation. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of: (i) claim 1; (ii) independent claim 9, for which Appellants rely on the same arguments made for claim 1 (see App. Br. 11 ); and (iii) dependent claims 2, 3, 11, 12, 14, 15, and 17, for which Appellants do not present separate arguments for patentability (see App. Br. 10-11). We further sustain the 35 U.S.C. § 103(a) rejections of dependent claims 4-- 6, 7, 8, 10, and 13, for which Appellants rely on the arguments made for claim 1 (see App. Br. 11-12, 14). Issue C: Obviousness Rejection of Claim 20 Appellants contend the rejection of claim 20 is in error because Spackman does not teach analyzing post processing working. App. Br. 10- 11; Reply Br. 6. In particular, Appellants argue the post processing working space is not a log. App Br. 10-11 (citing Spec. i-f 2). We are not persuaded by this argument. The Examiner finds, and we agree, that Appellants do not provide a specific definition of "post processing working space." Ans. 8. Paragraph two of the Specification does not provide a definition of the disputed claim term, but merely sets forth "when using a deduplication-enabled VLS product with post processing, the deduplication process may use additional storage capacity for the post-processing." See Spec. i-f 2. We agree with the Examiner the cited portion of Spackman describes a log that is being used to perform an analysis of the backup jobs over time (post processing). Ans. 8 (citing Spackman i-f 32). In the absence of a narrowing definition, Appellants do not persuade us that the broadest reasonable interpretation of post processing working space does not encompass the log described in Spackman. Accordingly, Appellants fail to persuade the Examiner errs in 7 Appeal2015-000924 Application 12/889,824 finding the combination of Spackman and Helliker teaches or suggests the disputed limitation of claim 20 and we sustain the 35 U.S.C. § 103(a) rejection of this claim. Issue D: Obviousness Rejection of Claim 18 Claim 18 recites wherein analyzing further comprises including how much and when storage space is returned to an available storage pool. The Examiner finds Korman describes a rate of change that teaches the claimed 'how much' of the claim and time describes the 'when' recited in the claim. Ans. 10-11 (citing Korman i-f 41). Appellants argue Korman does not teach the disputed limitation because Korman describes measuring storage capacity and calculating a rate of storage consumption to predict when the capacity will be depleted. App. Br. 12; Reply Br. 7. We agree. Korman describes "the prediction engine can calculate a rate of change of the remaining storage capacity." Korman i-f 41; see also Korman i-fi-1 42--43. The cited sections do not describe returning storage space to a storage pool. Accordingly, Appellants persuade us that the Examiner has not established the combination of Spackman, Helliker, and Korman teaches or suggests the disputed limitation of claim 18 and we do not sustain the 35 U.S.C. § 103(a) rejection of this claim. Issue E: Obviousness Rejection of Claim 19 The Examiner finds Korman teaches claim 19's limitation wherein analyzing further comprises including storage space not immediately returned and not returned at all to a storage pool even after a reclaiming operation. Ans. 11 (citing Korman i-f 41). For similar reasons as that discussed in Issue D, we agree with Appellants' argument (App. Br. 13) that the cited section of Korman does not describe analyzing storage space 8 Appeal2015-000924 Application 12/889,824 returned/not returned after a reclaiming operation. See Korman il 41. Accordingly, the Examiner has not established the combination of Spackman, Helliker, and Korman teaches or suggests the disputed limitation of claim 19, and we do not sustain the 35 U.S.C. § 103(a) rejection of this claim. Issue F: Obviousness Rejection of Claim 21 Appellants contend Anand does not teach receiving a user definition of maximum bandwidth and service level indicating how long before a backup job is safely replicated, as recited in claim 21, because "percentage of bandwidth and frequency of sync does not disclose a service level indicating how long before a backup job is safely replicated." App. Br. 14. Appellants argue "Anand does not disclose anywhere that 'frequency' is a service level as alleged by the Examiner." Reply Br. 8. Appellants' arguments do not persuade us of error. We agree with the Examiner that Appellants describe the safeness of the backup job is defined by the maximum bandwidth and the service level. Ans. 12; see also App. Br. 7 ("the user defines maximum bandwidth and service level which indicate how long before a backup job is safely replicated."). We further agree that Anand describes a user can specify the percentage of network bandwidth and the frequency of synchronization. Non-Final Act. 13 (citing Anand i-f 34). The Examiner finds the frequency described by Anand teaches the claimed service level. Appellants do not provide persuasive argument or evidence why the broadest reasonable interpretation of "service level" does not encompass "frequency of synchronization." Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 21. 9 Appeal2015-000924 Application 12/889,824 DECISION We affirm the Examiner's decision to reject claims 9--15 under 35 U.S.C. § 101. We affirm the Examiner's decision to reject claims 1-15, 17, 20, and 21under35 U.S.C. § 103(a). We reverse the Examiner's decision to reject claims 18 and 19 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). See 37 C.F.R. § 41.50(±). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation