Ex Parte Gormley

Board of Patent Appeals and Interferences

Nov 13, 2006

10116676 (B.P.A.I. Nov. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte Steven J. Gormley
___________

Appeal No. 2006-3096
Application No. 10/116,676
Technology Center 2100
___________

ON BRIEF
___________

Before DIXON, BARRY, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-18, 21, and 22, which are all of the claims pending in this
application. Claims 19 and 20 have been canceled.

We REVERSE.

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Application No. 10/116,676

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BACKGROUND
The Appellant's invention relates to a method and system for maintaining enhanced
file availability in a Virtual Storage Access Method (VSAM) system. An understanding
of the invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A method for enhancing VSAM files online availability,
comprising:
switching online traffic from a first group of files to a
second group of files, wherein the first group of files is identified by a
first name and the second group of files is identified by a second name,
and the first group of files identified by the first name contain old data and
the second group of files identified by the second name contain new data;
obtaining exclusive control of the first group of files;
renaming the first group of files from the first name to a
third name, during which online traffic accesses the second group of files;
switching online traffic from the second group of files to
the first group of files currently identified by the third name;
obtaining exclusive control of the second group of files;
renaming the second group of files from the second name
to the first name, during which online traffic accesses the first group of
files;
switching online traffic from the first group of files
currently identified by the third name to the second group of files currently
identified by the first name;
obtaining exclusive control of the first group of files
currently identified by the third name; and
renaming the first group of files currently identified by the
third name to the second name, during which online traffic accesses the
second group of files;
whereby at least one of the first and second groups of files
is available for online traffic during each of the renaming steps.

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Application No. 10/116,676

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PRIOR ART
The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
BARRY et al. 5,887,274 Mar. 23, 1999
(BARRY)

JONES et al. 6,622,176 Sep. 16, 2003
(JONES) (filed Apr. 19, 1995)

BASANI et al. 2004/0215709 Oct. 28, 2004
(BASANI) (effective date Apr. 7, 2000)

REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellant regarding the above-noted rejections, we make reference to the Examiner's
answer (mailed April 27, 2006) for the reasoning in support of the rejection, and to
Appellant’s brief (filed July 22, 2005) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by Appellant and the Examiner. As a consequence of our
review, we make the determinations that follow.

35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be

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sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is prima facie obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight reconstruction to
supply deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.denied, 389 U.S. 1057 (1968). Our
reviewing court has repeatedly cautioned against employing hindsight by using the
Appellant's disclosure as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing Corp. v. American Maize-
Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
When determining obviousness, “the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “Mere denials and conclusory statements, however, are not sufficient to establish a
genuine issue of material fact.” Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
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Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations as recited in independent claim 1. From our review of the Examiner’s
rejection, we find the same deficiencies in the rejections which Appellant notes at pages
5-9 of the Brief.
Appellant argues that:
Barry has neither the purpose nor the novel elements of Appellant's invention. In
Barry, a DB2 data base is periodically reorganized, i.e., updated data is reordered
in the database file to make accessing more efficient (see col. 2, lines 6 through
19 and col. 12, lines 8 through 23). This is different than Appellant's invention,
where the purpose is providing access to updated data in a VSAM system
[Emphasis added.] [Br. 5].
We agree with Appellant that the Examiner has not provided a teaching or a
convincing line of reasoning as to the use of the claimed method in a VSAM system. In
a later discussion with respect to independent claim 18, the Examiner mentions column
10, line 54 of Barry which mentions a VSAM data set (Answer 15). While the reference
mentions VSAM in one location with respect to a data set format, we cannot find that this
teaches a method for enhancing VSAM files online availability in a system. In response
to Appellant’s argument, the Examiner merely states that the Basani reference teaches
file renaming of live, temp and backup designations and switching access (Answer 10).
We do not find this response addresses Appellant’s argument. Therefore, Examiner's
response to the argument is not sufficient or persuasive.
Appellant additionally argues that:
Barry does not provide for sequentially switching online access between two
files (the old data files and the new updated data files) in order to provide
continued access during a file renaming process. While the Examiner is correct in
pointing out that the database files in Barry are renamed (and exclusive access is
provided to the renaming process), Barry specifically acknowledges that access
to the files is disabled during the renaming process in order to permit the
renaming (see col. 7, lines 4 though 24) (Br. 5-6).
In response to Appellant’s argument, the Examiner merely states that the Basani
reference teaches file renaming of live, temp and backup designations and switching
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access (Answer 10). We do not find this response addresses Appellant’s argument
especially in light of the express teaching in Barry that access is disabled during the
renaming process. Moreover, we find that the Examiner has not identified an express
teaching in Basani which teaches that the access to files is not disabled during the
renaming process. Therefore, Examiner's response to the argument is not sufficient or
persuasive.
With respect to the Examiner’s responses in the Answer to Appellant’s arguments
concerning claim 1, we do not find that the Examiner has clearly addressed these
arguments and has not provided a convincing line of reasoning as to how the individual
references teach the claimed steps in a VSAM system for continued access to the files
during the renaming process. We find the Examiner’s reliance upon paragraph [0089] of
Basani does not clearly show or explain that access is maintained during the renaming
process. In light of this base deficiency, we additionally do not find that the Examiner
has provided a convincing line of reasoning why it would have been obvious to one
skilled in the art at the time of the invention to have combined these two teaching to
achieve the claimed method in a VSAM system. From the above deficiencies, we cannot
find that the Examiner has met the initial burden of establishing a prima facie case of
obviousness. Therefore, we cannot sustain the rejection of independent claim 1 and its
dependent claims.
We additionally find similar deficiencies in the Examiner’s presentation of a
prima facie case of obviousness of independent claims 7 and 13 and their respective
dependent claims. Therefore, we cannot sustain the rejection of independent claims 7
and 13 and their respective dependent claims.
With respect to independent claim 18, Appellant argues that the Examiner has not
made the requisite showing for claim 18 as with independent claim 1. We agree with
Appellant and find that the Examiner has not shown where either Barry or Basani teaches
or fairly suggests the claim language “at least one of the groups of old and new files
remains available for online access when either of the groups of files is renamed” which
is similar to that found in independent claim 1. Additionally, Appellant argues that the
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Examiner has not shown the batch program modules with the recited functions as set
forth in independent claim 18. The Examiner’s response seems to generally address
Appellant’s argument and the Examiner maintains that “both Barry et al. and Basani et al.
teach renaming file, especially, Basani et al. allow access or switching access during the
renaming process” (Answer 15). We find that the Examiner has not provided a clear
teaching or suggestion to support this position. Therefore, Examiner’s argument is not
persuasive, and we cannot find that the Examiner has met her initial burden of
establishing a prima facie of obviousness of independent claim 18. Therefore, we cannot
sustain the rejection of independent claim 18 and its respective dependent claims.

CONCLUSION
To summarize, the Examiner’s rejection of claims 1-18, 21, and 22 under 35 U.S.C.
§ 103(a) is reversed.

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Application No. 10/116,676

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REVERSED

JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

JLD/kis
Appeal No. 2006-3096
Application No. 10/116,676

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