Ex Parte Harvey et al

Patent Trial and Appeal Board

Dec 28, 2016

12525746 (P.T.A.B. Dec. 28, 2016)

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.
12/525,746 11/24/2009 Peter Harvey 046944-0003 1998
45309 7590 12/30/2016
Williams; Mullen
EXAMINER
222 Central Park Avenue SPIELER, WILLIAM
#1700
Virginia Beach, VA 23462-3035 ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
ip @ williamsmullen. com
dance @ williamsmullen. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HARVEY, MICHAEL HARVEY, RUDI BIERACH,
and
MARK WHARTON
Appeal 2016-004730
Application 12/525,746
Technology Center 2100
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—5 and 18—20. Claims 6—17 have
been withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Moonwalk Universal
PtyLtd. App. Br. 3.
2 Our Decision refers to Appellants’ Appeal Brief, filed November 19, 2015
(“App. Br.”); the Reply Brief, filed March 30, 2016 (“Reply Br.”); the
Examiner’s Answer, mailed March 8, 2016 (“Ans.”); the Final Office
Action, mailed June 24, 2015 (“Final Act.”); and the original Specification,
filed August 4, 2009 (“Spec.”).
Appeal 2016-004730
Application 12/525,746
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention relates to a data management system for
migration, copying, and movement of electronically stored information
within and between different electronic data storage systems. Spec. 1:3—8;
Abstract.
Claim 1 is the only independent claim on appeal, as reproduced below
with disputed limitations in italics'.
1. A data management system for managing the storage of
data on primary and secondary storage from a primary
information source having original file content to be stored
comprising:
a primary storage;
a secondary storage; and
one or more computer processors adapted to execute a
program stored in a computer memory, the program being
operable to provide instructions to the one or more computer
processors including providing virtual hierarchical storage
management using the primary and secondary storage without
stateful middleware and selected to provide the features of
control channel, data channel, demigration from the secondary
storage requiring only data channel stateless server agents and
no stateful middleware.
App. Br. 18 (Claims Appendix).
Examiner’s Rejections3 and Reference
(1) Claim 19 stands rejected under 35U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2—3.
3 The Examiner withdrew the 35 U.S.C. § 112, second paragraph, rejection
of claim 18 (Final Act. 2—3) in the Answer (Ans. 6).
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(2) Claims 1—5 and 18—20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Yakir et al. (US 2004/0049513 Al; published Mar.
11, 2004) (“Yakir”). Final Act. 3-6.
Issues on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether Yakir teaches the following limitations:
(1) “providing virtual hierarchical storage management
using the primary and secondary storage without stateful
middleware and selected to provide the features of control
channel, data channel, demigration from the secondary storage
requiring only data channel stateless server agents and no stateful
middleware,” as recited in Appellants’ independent claim 1.
App. Br. 10-14; Reply Br. 2-A;
(2) “wherein data transfers are streamed directly to a
target device,” as recited in Appellants’ dependent claim 2. App.
Br. 14; Reply Br. 4;
(3) “wherein the original content is stored as a migrated
file and includes stubs having stub-to-datastream mapping and
datastream-to-stub mapping,” as recited in Appellants’
dependent claim 3. App. Br. 15; Reply Br. 4;
(4) “wherein the stubs are globally meaningful stubs,
whereby a stub by itself is sufficient to locate and recover content
from secondary storage,” as recited in Appellants’ dependent
claim 4. App. Br. 15—16; Reply Br. 4;
(5) “wherein the information contained in the stub is of
a symmetric nature with respect to the information contained in
the migrated file whereby reverse mapping of the information
back to the stub is enabled,” as recited in Appellants’ dependent
claim 18. App. Br. 16; Reply Br. 4; and
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(6) “wherein the stub can be generated from the
migrated file on secondary storage,” as recited in Appellants’
dependent claim 19. App. Br. 16; Reply Br. 4.
ANALYSIS
§ 112, Second Paragraph Rejection of Claim 19
Claim 19 depends from claim 18, and further recites “the stub can be
generated from the migrated file on secondary storage.” App. Br. 19.
The Examiner concludes that claim 19 is indefinite because the claim
recites the words “can be” that “appear to make the generation an optional
feature, and it is unclear whether claim 19 actually requires the stub to be
generated.” Ans. 7; see also Final Act. 3.
Appellants argue the language of claim 19 provides a reasonable
degree of clarity and particularity in light of page 6, lines 1—7, and page 8,
lines 1—13 of Appellants’ Specification. App. Br. 9—10 (citing Spec. 6:1—7,
8:1-13).
The Examiner responds that “it is unclear whether claim 19 actually
requires the stub to be generated.” Ans. 7.
We agree with Appellants. Indefiniteness under 35 U.S.C. § 112,
second paragraph, is to be evaluated from the perspective of a person with
ordinary skill in the relevant art at the time of the invention—when the
patent application was filed. Cf. Nautilus, Inc. v. Biosig Instr., Inc., 134 S.
Ct. 2120, 2129—30 (2014) (explaining indefiniteness standard in the context
of a post-issuance validity determination). Claim 19, albeit broad, is not
indefinite because there is no ambiguity as to what is meant by the claimed
language. In particular, one of ordinary skill in the art would understand that
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“the stub can be generated from the migrated file” means that migrated file
data can be used to generate the stub.
For this reason, we do not sustain the rejection of claim 19 under
35 U.S.C. § 112, second paragraph.
§ 102(b) Rejection of Claims 1—5 and 18—20
based on Yakir
With respect to independent claim 1, the Examiner finds Yakir’s
original storage location teaches a primary storage, and Yakir’s other storage
location/repository storage location teaches a secondary storage. Final Act.
3 (citing Yakir 14). The Examiner then finds Yakir’s migration/demigration
application using a stub file teaches providing hierarchical storage
management without stateful middleware, to provide control channel, data
channel, and demigration from the secondary storage requiring only data
channel stateless server agents and no stateful middleware, as claimed. Ans.
7—8 (citing Yakir || 5—8, Hierarchical Storage Management (HSM)); Final
Act. 34 (citing Yakir 14, HSM, storage management server/system (SMS)
110).
Appellants contend the Examiner erred in finding Yakir discloses
storage management without stateful middleware to provide control channel,
data channel, and demigration from the secondary storage requiring only
data channel stateless server agents and no stateful middleware, as recited in
claim 1. App. Br. 10-14; Reply Br. 2-4. In particular, Appellants argue
“Yakir necessarily includes stateful middleware” because Yakir’s SMS and
“traditional HSM . . . and all of its description of moving files and managing
stubs pertains to stateful middleware.” App. Br. 11, 13 (citing Yakir || 2—8;
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Figs. 3, 4a, 4b). Appellants then argue the Examiner’s interpretation of the
claim term “no stateful middleware” as Yakir’s use of “a stub file instead of
a database to store file location information” is incorrect and is divorced
from Appellants’ Specification. App. Br. 11. Appellants further argue the
claimed “no stateful middleware” and “without stateful middleware” cannot
be interpreted broadly as Yakir’s storage uses a stub file, not a database, and
Appellants’ Specification explains that “stateful middleware can take other
forms besides databases,” such as “servers . . . indexes or such like.'” App.
Br. 11—12 (citing Spec. 1:21—23).
We do not find Appellants’ arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellants’ arguments
supported by a preponderance of evidence. Ans. 7—9. As such, we adopt the
Examiner’s findings and explanations provided therein. Id.
For additional emphasis, we note claim terms are given their broadest
reasonable interpretation consistent with the Specification. In re Am. Acad.
ofSci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Under the broadest
reasonable interpretation, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Appellants’ Specification does not
provide an explicit definition of what is excluded from the claimed “stateful
middleware.” Rather, Appellants’ Specification merely provides exemplary
descriptions of “stateful middleware.” See Spec. 1:22—27 (“some form of
‘stateful middleware’, be it in the form of servers, databases, indexes or such
like . . . introduces an additional layer, thereby creating another point of
potential failure ... a failure in the stateful middleware application software
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preventing data retrieval”), 1:29-2:1 (describing examples of stateful
middleware as “dedicated software, such as that known by the trademarks
‘CommVault’, ‘DataMigrator’ or ‘VERITAS Enterprise Vault’”).
Appellants’ Specification also describes that HSM stands for
“hierarchical storage management,” which can be “without stateful
middleware.” See Spec. 1:28, 2:18—20 (describing "hierarchical storage
management (HSM)” and “a data management system comprising virtual
hierarchical storage management without stateful middleware'1'’ (emphases
added)). Thus, Appellants’ Specification does not support Appellants’
argument that HSM systems (as in Yakir) “must have stateful middleware.”
Reply Br. 4.
Based on Appellants’ Specification, the Examiner has broadly
interpreted the terms “without stateful middleware” and “no stateful
middleware” as encompassing Yakir’s HSM application, which avoids data
retrieval failures because the HSM’s “stub file is kept in the file system in
place of the migrated file . . . [and] may . . . itself contain the information
necessary to locate the migrated file in the repository data location.” Ans. 8
(citing Spec. 1:25—27 (describing data retrieval failure by an intermediary
stateful middleware layer)). We find the Examiner’s interpretation
reasonable and consistent with Appellants’ Specification. Thus, we agree
with the Examiner that Yakir’s HSM application using a stub file for
migration/demigration teaches hierarchical storage management and
demigration without stateful middleware, as required by claim 1. Ans. 7—8;
Final Act. 4.
Appellants have not persuasively rebutted the Examiner’s specific
findings regarding Yakir, and merely restate, “the Yakir disclosure of
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traditional HSM systems in background paragraphs 0002-0007 has and must
have stateful middleware.” Reply Br. 4.
For the reasons set forth above, Appellants have not persuaded us of
error in the Examiner’s rejection of independent claim 1, and we agree with
the Examiner that Yakir discloses “providing virtual hierarchical storage
management using the primary and secondary storage without stateful
middleware and selected to provide the features of control channel, data
channel, demigration from the secondary storage requiring only data channel
stateless server agents and no stateful middleware,” as recited in claim 1.
Accordingly, we sustain the Examiner’s anticipation rejection of claim 1,
and dependent claims 5 and 20, which Appellants do not argue separately.
App. Br. 10.
Claim 2
With respect to dependent claim 2, Appellants argue the Examiner
erred in finding Yakir discloses data transfers are streamed directly to a
target device; rather, Yakir describes “using an HSM application for data
transfers, contrary to what is claimed in claim 2,” and “employ[s] stateful
middleware as argued above with regard to claim 1.” App. Br. 14; see also
Reply Br. 4.
As discussed supra with respect to claim 1, we are not persuaded that
Yakir’s HSM does not provide storage management and demigration
without stateful middleware, as recited in claim 1 (from which claim 2
depends). Appellants’ argument is also not commensurate with the scope of
claim 2. Claim 2 does not preclude an HSM application from streaming data
transfers. Claim 1 also does not preclude an HSM application from
streaming data transfers.
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Additionally, we agree with the Examiner that Yakir discloses a target
device is the device containing the original storage location of a file. Final
Act. 4 (citing Yakir 14). Contrary to Appellants’ characterization that Yakir
employs intermediate devices and does not stream directly as claimed (App.
Br. 14), Yakir discloses a migrated file is streamed directly to the target
device/original storage location when the migrated file is remigrated from
the repository back to the original storage location. See Yakir || 4, 6
(“recall the file data corresponding to the stub file from the repository
storage location to the original storage location”); Ans. 8; Final Act. 4.
Consequently, we find Yakir discloses the disputed limitation of claim
2. Accordingly, we sustain the Examiner’s anticipation rejection of claim 2.
Claim 3
With respect to dependent claim 3, Appellants argue Yakir cannot
anticipate the claim because “the nature of the stub data according to the
present invention is used to execute hierarchical storage management
without stateful middleware . . . [which] is not the case with Yakir.” App.
Br. 15. However, as discussed supra with respect to claim 1, we are
persuaded Yakir teaches providing hierarchical storage management without
stateful middleware, as recited in claim 1.
Additionally, we agree with the Examiner Yakir discloses the
“original content is stored as a migrated file,” as recited in claim 3. Final
Act. 4 (citing Yakir 14 (“When a file is migrated from its original storage
location to another storage location (. . . the ‘repository storage location’), a
stub file or tag file is left in place of the migrated file in the original storage
location”)). We also agree with the Examiner that Yakir’s stub files contain
the remote location of the data—teaching the claimed “stub-to-datastream
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mapping”—and attributes or metadata of the migrated file representing
“datastream-to-stub mapping,” as claimed. Id. (citing Yakir 14 (“The stub
file comprises information that allows the HSM application to locate the
migrated data in the repository storage location . . . [and] may also contain
attributes or metadata of the migrated file”)). Appellants have not
persuasively rebutted the Examiner’s specific findings by identifying
specific errors; rather Appellants’ arguments merely restate claim language
without explanation of error in the Examiner’s findings. App. Br. 15.
Consequently, we find Yakir discloses the disputed limitation of claim
3. Accordingly, we sustain the Examiner’s anticipation rejection of claim 3.
Claim 4
Claim 4 depends from claim 3 and recites “the stubs are globally
meaningful stubs, whereby a stub by itself is sufficient to locate and recover
content from secondary storage.” App. Br. 18. Appellants argue Yakir’s
“information contained in the stub is used in some way by a stateful
middleware element (i.e., SMS (110)) to recall the file” in contrast to
Appellants’ system—in which “no stateful middleware is used in recalling
data, as the information in the stub is sufficient to recall a file.” App. 15—16.
However, as discussed supra with respect to claim 1, we are persuaded
Yakir provides storage management and demigration from secondary
storage without stateful middleware, as recited in claim 1.
Additionally, we agree with the Examiner that Yakir discloses a
globally meaningful stub which is sufficient to locate and recover content
from secondary storage, as recited in claim 4. See Final Act. 5 (citing Yakir
14 (the stub file “may also contain attributes or metadata of the migrated
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file,” “serves as an entity . . . through which the user can access the original
file,” and “stores information that can be used to locate the migrated data”)).
Consequently, we find Yakir discloses the disputed limitation of claim
4. Accordingly, we sustain the Examiner’s anticipation rejection of claim 4.
Claim 18
With respect to dependent claim 18, Appellants argue “Yakir requires
the use of stateful middleware and thus there is no truly symmetric nature of
the information with respect to the information contained in the migrated
file”; in contrast, the system of claim 18 “is consistent with the operation of
the present invention without stateful middleware, as all of the required
knowledge and logic is self-contained in the object pair, and thus no
middleware is required.” App. Br. 16. Appellants’ argument is not
commensurate with the scope of claim 18, which does not recite that “all of
the required knowledge and logic is self-contained in the object pair.” App.
Br. 16. Additionally, as discussed supra with respect to claim 1, we are not
persuaded that Yakir requires the use of stateful middleware for storage
management and demigration.
We also agree with the Examiner that Yakir’s stub contains symmetric
information that allows reverse mapping back to the stub. Final Act. 5
(citing Yakir 14 (the stub file “may also contain attributes or metadata of the
migrated file” as well as “a file name or file identifier that allows the
management system to find the necessary information ... to recall the
file”)).
Consequently, we find Yakir discloses the disputed limitation of claim
18. Accordingly, we sustain the Examiner’s anticipation rejection of claim
18.
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Claim 19
With respect to dependent claim 19, Appellants argue “Yakir requires
the use of stateful middleware and thus there is no truly symmetric nature of
the information that allows for generation of the stub from the migrated file
on the secondary storage.” App. Br. 16. As discussed supra with respect to
claims 1 and 18 (from which claim 19 depends), we are persuaded Yakir
does not require the use of stateful middleware for storage management and
demigration. We are also persuaded Yakir teaches a stub with symmetric
information, as required by claim 18.
We also agree with the Examiner that Yakir teaches the stub can be
generated from the migrated file on secondary storage, as required by claim
19. Final Act. 6. In particular, Yakir discloses stub file information is
generated from a migrated file when the file is re-migrated from repository
storage (secondary storage) to another storage location. See Yakir 14 (“The
migrated file may be remigrated from the repository storage location to
another repository storage location. The stub file information is updated to
point to the location of the migrated or remigrated data”); Final Act. 6.
Consequently, we find Yakir discloses the disputed limitation of claim
19. Accordingly, we sustain the Examiner’s anticipation rejection of claim
19.
CONCEUSION
We conclude Appellants have demonstrated the Examiner erred in
rejecting claim 19 under 35 U.S.C. § 112, second paragraph. However, on
the record before us, we conclude Appellants have not demonstrated the
Examiner erred in rejecting claims 1—5 and 18—20 under 35 U.S.C. § 102(b).
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DECISION
As such, we REVERSE the Examiner’s final rejection of claim 19
under 35U.S.C. § 112, second paragraph. However, we AFFIRM the
Examiner’s final rejection of claims 1—5 and 18—20 under
35 U.S.C. § 102(b). However,
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s final decision rejecting
claims 1—5 and 18—20 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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
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