Ex Parte Halstead et al

Patent Trial and Appeal Board

Dec 31, 2013

11268158 (P.T.A.B. Dec. 31, 2013)

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.
11/268,158 11/07/2005 Mark J. Halstead EMS-02304 2170
7590 01/02/2014
Muirhead and Saturnelli, LLC
Suite 1001
200 Friberg Parkway
Westborough, MA 01581
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
01/02/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK J. HALSTEAD, DAN ARNON, and DAVID MEIRI
____________

Appeal 2011-006436
Application 11/268,158
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006436
Application 11/268,158

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 20-25 and 32-37. Claims 1-19
and 26-31 were canceled. (App. Br. 2.). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
The invention at issue on appeal concerns storage devices and
methods for accessing mirrored data, prior to synchronization, on a first
storage volume or on a second storage volume if an initial version of the
data is present but has not been copied to the first volume. (Spec. 3:4-5:9;
Abstract.)
Representative Claim
Independent claim 20, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
20. A method of accessing mirrored data after reversing a
communication path between a first volume on a first storage
device and a mirrored second volume on a second storage
device, comprising:
allowing access to the mirrored data prior to
synchronizing the mirrored data between the first volume and
the second volume;
if an initial version of the mirrored data is provided on
the first volume, accessing the mirrored data on the first
volume;
if the initial version of the mirrored data is provided on
the second volume and the initial version of the mirrored data
has been copied from the second volume to the first volume,
accessing the mirrored data on the first volume; and
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Application 11/268,158

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if the initial version of the mirrored data is provided on
the second volume and the initial version of the mirrored data
has not been copied from the second volume to the first volume,
accessing the mirrored data on the second volume prior to
synchronizing the mirrored data between the first volume and
the second volume.
Rejection on Appeal
The Examiner rejects claims 20-25 and 32-37 under 35 U.S.C.
§ 102(e)
1
as being anticipated by U.S. Patent No. 6,654,752 B2, issued Nov.
25, 2003 (filed Aug. 26, 2002 claiming benefit of U.S. 09/597,404, filed
June 21, 2000) (“Ofek”).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that Ofek discloses,
allowing access to the mirrored data prior to
synchronizing the mirrored data between the first volume and
the second volume;
if an initial version of the mirrored data is provided on
the first volume, accessing the mirrored data on the first
volume;

1
The Examiner rejects claims 20-25 and 32-37 under 35 U.S.C. § 102(b)
(Ans. 3-4). We note, however, the priority date of the present invention is
November 30, 2001 – the filing date is November 7, 2005 claiming priority
to U.S. 09/998,683 filed November 30, 2001. Ofek issued November 25,
2003 with a priority date of June 21, 2000. Thus, the proper ground of
rejection is 35 U.S.C. § 102(e). We find this typographical error to be
harmless and correct the ground of rejection to clarify the record.
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Application 11/268,158

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if the initial version of the mirrored data is provided on
the second volume and the initial version of the mirrored data
has been copied from the second volume to the first volume,
accessing the mirrored data on the first volume; and
if the initial version of the mirrored data is provided on
the second volume and the initial version of the mirrored data
has not been copied from the second volume to the first
volume, accessing the mirrored data on the second volume prior
to synchronizing the mirrored data between the first volume and
the second volume
within the meaning of Appellants’ claim 20 and the commensurate
limitations of claim 32?

ANALYSIS
The Examiner rejects claims 20-25 and 32-37 under 35 U.S.C.
§ 102(e) as being anticipated by Ofek. (Ans. 3-14.) Appellants contend that
Ofek does not disclose the disputed features of the claims. (App. Br. 7-18;
Reply Br. 3-11.)
We agree with Appellants that the portions of Ofek identified by the
Examiner do not disclose the disputed features of independent claim 20 (and
independent claim 32). (Id.) Specifically, we agree with Appellants that
Ofek (col. 17, ll. 9-18; col. 20, ll. 1-17; col. 22, ll. 50-65; col. 23, ll. 11-14;
Figs. 9, 13, 17, 18), cited by the Examiner as describing the recited
conditions and step of “allowing access to the mirrored data prior to
synchronizing the mirrored data between the first volume and the second
volume” (Ans. 4-14), instead merely describes copying (restoring) data from
a business continuation volume (BCV) (App. Br. 8-10).
Ofek describes mirroring data between a first and second volume (M1
and M2) and restoring data from a BCV. (Ofek, col. 16, l. 64 to col. 17, l.
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Application 11/268,158

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63; Fig. 9; see App. Br. 8-11.) Although the BCV may act as a mirror, such
mirroring occurs after synchronization of M1 and M2. (Ofek, col. 17, ll. 58-
63; col. 18, ll. 1-14.)
Consequently, we are constrained by the record before us to conclude
that Ofek fails to disclose the recited features of Appellants’ claim 20, and
the rejection of claim 20 fails to establish a prima facie case of anticipation.
Appellants’ independent claim 32 includes limitations of commensurate
scope. Appellants’ dependent claims 21-25 and 33-37 depend on and stand
with claims 20 and 32, respectively.
Accordingly, we reverse the Examiner’s anticipation rejection of
claims 20-25 and 32-37.

CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 20-
25 and 32-37 under 35 U.S.C. § 102(e).

DECISION
We reverse the Examiner’s rejections of claims 20-25 and 32-37.

REVERSED

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