Ex parte Hayter

Board of Patent Appeals and Interferences

Oct 31, 2001

08581721 (B.P.A.I. Oct. 31, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES HAYTER
__________
Appeal No. 1999-2263
Application 08/581,721
___________
ON BRIEF
___________
Before HAIRSTON, JERRY SMITH and LEVY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-10, which
constituted all the claims in the application. An amendment
filed concurrently with the appeal brief cancelled claims 2-4
and 7-10 and was entered by the examiner. Accordingly, this
appeal is now directed to the rejection of claims 1, 5 and 6.

Appeal No. 1999-2263
Application 08/581,721
2
Appeal No. 1999-2263
Application 08/581,721
3
The disclosed invention pertains to a method and
apparatus for migrating a source data center to a target data
center to support the migration of one or more applications
from the source data center to the target data center.
Representative claim 1 is reproduced as follows:
A method for migrating volumes of data supporting a
source data center, comprising a source mainframe and a source
DASD, to a target data center, comprising a target mainframe
and a target DASD, to support the migration of one or more
applications from the source mainframe to the target
mainframe, comprising the steps of:
(a) verifying data integrity on the source DASD;
(b) initiating one or more processes to mirror the
volumes of data from the source DASD to the target DASD, and
to mirror one or more data updates to the volumes of data by
the applications of the source mainframe to the target DASD;
(c) synchronizing said data updates to the volumes of
data by the applications of the source mainframe with
corresponding data updates to the target DASD;
(d) deactivating the applications of the source
mainframe;
(e) mirroring one or more remaining data updates to
the volumes of data by the applications of the source
mainframe to the target DASD;
(f) disconnecting the source data center from the
target data center; and
(g) bringing the target data center on-line and
initiating the applications of the target mainframe.
Appeal No. 1999-2263
Application 08/581,721
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Appeal No. 1999-2263
Application 08/581,721
5
The examiner relies on the following references:
Yanai et al. (Yanai) 5,544,347 Aug. 6, 1996
(filed Apr. 23, 1993)
The admitted prior art described in appellant’s specification.
Claims 1, 5 and 6 stand rejected under 35 U.S.C. §
103. As evidence of obviousness the examiner offers Yanai in
view of the admitted prior art.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
Appeal No. 1999-2263
Application 08/581,721
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skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1, 5 and 6. Accordingly, we reverse.
Appellant has indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 6]. Consistent with this indication
appellant has made no separate arguments with respect to any
of the claims on appeal. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d
1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Therefore, we will consider the rejection against independent
claim 1 as representative of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
Appeal No. 1999-2263
Application 08/581,721
7
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Appeal No. 1999-2263
Application 08/581,721
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Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
Yanai provides a data storage backup by migrating data
from a source data center to a target data center which can be
used in the event that the source data center is hit by a
major disaster. With respect to representative, independent
claim 1, the examiner finds that Yanai teaches steps (a), (b),
(c) and (g). Although Yanai does not explicitly disclose
steps (d), (e) and (f), the examiner finds that these steps
would have been obvious to the artisan when the data transfer
of Yanai is applied to an intentional data migration of a data
center as described in the admitted prior art [answer, pages
3-5].
Appellant makes three main arguments in response to
the rejection. First, appellant argues that the examiner has
failed to establish a prima facie case of obviousness because
Yanai and the admitted prior art do not teach steps (d), (e)
and (f) of claim 1. Second, appellant argues that the only
Appeal No. 1999-2263
Application 08/581,721
9
suggestion to apply the teachings of Yanai to a controlled
data center migration comes from appellant’s own disclosure.
Third, appellant argues that the successful results of his
Beta Test are evidence of improved/unexpected results which is
evidence of nonobviousness [brief, pages 11-21].
Appeal No. 1999-2263
Application 08/581,721
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With respect to appellant’s first argument, the
examiner responds that Yanai inherently performs steps (d) and
(f), and that step (e) is suggested by the combined teachings
of Yanai and the prior art data center migrations. With
respect to appellant’s second argument, the examiner responds
that the artisan would have recognized the obviousness of
applying Yanai’s mirroring method to a data center migration
event as described in the prior art. With respect to
appellant’s third argument, the examiner responds that the
Beta Test evidence submitted by appellant as part of the
specification of this application does not establish
nonobviousness of the claimed invention [answer, pages 6-11].
Appellant responds that the claimed invention is
directed to the migration of applications from a source
mainframe to a target mainframe, and not just the transfer of
data for backup purposes [reply brief].
After a careful review of the record in this case, we
agree with the position argued by appellant. In our view, the
disposition of this appeal is determined by appellant’s second
argument discussed above. We agree with appellant that there
is no suggestion within the applied prior art that the
Appeal No. 1999-2263
Application 08/581,721
11
techniques of Yanai should be applied to a data center
migration. The mere fact that it was known to migrate data
from one data center to another data center in the prior art
does not establish the obviousness of using Yanai’s teachings
in that environment. The only suggestion to apply data
mirroring techniques to a data center migration comes from
appellant’s own disclosure of the invention. As argued by
appellant, it is improper to use his own disclosure to provide
the motivation necessary for modifying the prior art to arrive
at the claimed invention. We can find no suggestion in Yanai
and the admitted prior art data migration techniques to apply
the techniques of Yanai to these prior art data migration
techniques.
Appeal No. 1999-2263
Application 08/581,721
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In summary, since we do not find the examiner’s
proposed modifications to be suggested by the applied prior
art, we do not sustain the examiner’s rejection of claims 1, 5
and 6. Therefore, the decision of the examiner rejecting
claims 1, 5 and 6 is reversed.
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 1999-2263
Application 08/581,721
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RICHARD K. ROBINSON
MCI COMMUNICATIONS CORP.
1133 19TH STREET, N.W.
WASHINGTON, DC 20036
JS:caw