Ex Parte Henze et al

Board of Patent Appeals and Interferences

Aug 8, 2011

11065690 (B.P.A.I. Aug. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD H. HENZE, PADMANABHA I.
VENKITAKRISHNAN, SCOTT MAROVICH, PANKAJ MEHRA, and
SAMUEL A. FINEBERG
____________

Appeal 2009-007826
Application 11/065,690
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-29 and 55. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

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A. INVENTION
The invention at issue on appeal relates to a data retention system
having a plurality of access protocols. In one embodiment, the system
comprises a memory store accessible through a virtual address space, a
controller communicatively coupled to the memory store, and an interface.
The controller is adapted to implement a memory access protocol for
accessing at least a first portion of the virtual address space and a secondary
storage protocol for accessing at least a second portion of the virtual address
space. The interface is communicatively coupled to the controller, and is
able to be communicatively coupled to a communications link. (Spec. 3;
[0007])

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A system for data retention with a plurality of access
protocols, comprising
a memory store accessible through a virtual address
space,
a controller communicatively coupled to the memory
store, said controller being adapted to implement a memory
access protocol for accessing at least a first portion of the
virtual address space and a secondary storage protocol for
accessing at least a second portion of the virtual address space,
and
an interface communicatively coupled to the controller,
and able to be communicatively coupled to a communications
link.

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C. REFERENCES
The Examiner relies on the following references as evidence:
Miyamoto US 5,845,061 Dec. 1, 1998
Pawlowski US 7,055,014 B1 May 30, 2006

D. REJECTIONS
Claims 1, 3, 6-29, and 55 stand rejected under 35 U.S.C. 102(e)
as being anticipated by Pawlowski.
Claims 2, 4, 5, and 24 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Pawlowski in view of Miyamoto.

ISSUE
The issue before us is:
Have Appellants demonstrated error in the Examiner's claim interpretation?

PRINCIPLES OF LAW
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628,
631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
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broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359(Fed. Cir. 2004). The properly interpreted claim must
then be compared with the prior art.

Obviousness under §103
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity and skill
were required in making or applying the said improvement than are
possessed by an ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute the essential
elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v.
Greenwood, 52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

ANALYSIS
Appellants have elected to group independent claims 23 and 55
together with independent claim 1. (App. Br. 16). Therefore, we select
representative claim 1 and will address Appellants' arguments with respect
thereto.
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Appellants argue that the Examiner's interpretation that "a memory is
’anything that stores information’ " is unreasonable and the Examiner's
interpretation of the term "’memory store’ to include hard disks with rotating
magnetic disk storages is inconsistent with the original specification." (App.
Br. 8-9). Appellants contend that:
A reasonable meaning of the term "a memory store" should not
include rotating magnetic disk storages such as hard disks since
such inclusion is inconsistent with the original specification.
The original specification makes it clear that the term ''memory
store" does not include rotating magnetic disk storages. The
original specification clearly distinguishes a memory store from
a hard disk in the following passages.

For instance, "the memory store 110 is generally faster
than access to traditional mass storage systems (such as those
incorporating magnetic disks), and preferably as close as
possible to the high speed of local main memory systems."
Original specification, paragraph 21, lines 1-4. The above
recited passage in the original specification distinguishes a
typical memory store from a hard disk, that is, a magnetic
storage disk, in terms of speed.

"Solid-state storage and other memory technologies suitable for
memory store 110 will probably continue to be a more
expensive medium for the durable, non-volatile retention of
data than rotating magnetic disk storage." Original
Specification, paragraph 36, lines 1-3. The above recited
passage in the original specification identifies the solid state
storage and other memory technologies suitable tor the memory
store in terms of costs. The passage clearly excludes magnetic
disk storage as a suitable technology for the memory store.
Thus, the original specification clearly distinguishes the
memory store from a hard disk. Hence, an interpretation that the
memory store includes a hard disk is inconsistent with the
original specification.
(App. Br. 9).

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We note that Appellants’ reliance on paragraph 36 of the original
Specification relates to figure 3. Paragraph [0035] states "FIG. 3 illustrates
an exemplary virtual address space 230 according to an
embodiment of the invention. The illustration depicts an example of how
partitions or regions of memory may be allocated in the virtual address space
230." Therefore, we find Appellants’ discussion to be unpersuasive of error
in the Examiner's showing of anticipation since Appellants have identified
no express exclusion, nor unsuitability of hard disks. Furthermore, if
Appellants desire solid-state or some other sub-category of memory then
Appellants may amend claims to be more specific and thereby distinguish
over rotating magnetic disk storage.1 The Examiner maintains that:
The appellant argues that the original specification makes it
clear that the term "memory store" does not include rotating
disk storages (Appeal Brief, Page 9, Lines 2- 6). However, the
appellants specification (¶ 0029) teaches that "In other
embodiments, the storage appliance 100 may include
technology for backing up physical memory 210 to a non-
volatile mass storage system such as a hard drive or array of
drives." This is in contradistinction to the appellants assertion
that the memory store clearly and absolutely does not include
rotating magnetic disk storages. A person of ordinary skill in
the art would reasonably presume that all storage is part of a
"memory store" absent some explicit disclosure or definition to
the contrary. The arguments appear to be directed to an
embodiment wherein the system does not "include technology
for backing up physical memory 210 to a non-volatile mass

1 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).

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storage system such as a hard drive or array of drives." The
original specification does not provide the clarity necessary to
bar an interpretation that the memory store comprises rotating
magnetic disk storage. Further, the claims do not specifically
exclude the use of a rotating magnetic disk storage as the
claimed memory store.

(Answer 12). The Examiner further maintains that:

The appellant cites (Appeal Brief, Page 12:Lines 3-6) portions
of the specification that discuss a mass storage protocol and
memory access protocol and what typically characterizes these
protocols. However, the claim only recites a "storage protocol"
and not a mass storage protocol. The appellant makes an issue
of the mass storage protocol, but a mass storage protocol is
inherently vague and indefinite since the metes and bounds of
how much storage qualifies as "mass storage" can not be
determined. In addition any protocol that accesses any form of
memory is a memory access protocol and this interpretation in
no way contradicts the specification. Further, the appellant
cites (Appeal Brief: Page 12: Lines 12-17) a portion of the
original specification that discusses a remote direct memory
access protocol which is clearly more specific than the
"memory access protocol" as claimed.

The features upon which applicant relies (i.e., remote direct
memory access protocol and a mass storage protocol) are not
recited in the rejected claim(s). Although the claims are
interpreted in light of the specification, limitations from the
specification are not read into the claims. See In re Van Geuns,
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Circuit 1993).

(Ans. 13-14 ). On this record, Appellants have not shown that the Examiner
claim construction is overly broad, unreasonable, or inconsistent with the
Specification. We agree with the Examiner’s interpretation of the claims in
light of Appellants' original Specification. Therefore, we find Appellants'
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argument regarding rotating magnetic disks to be unpersuasive of error in
the Examiner showing of anticipation.
Appellants further contend with respect to the virtual address space
that:
Since a vdisk is saved in a volume 150 of Fig. 1, more
specifically, data disks 130, when a vdisk is being accessed in
the data disks 130, access to the data disks 130 is being made
directly at the data disks 130 and not through another space
such as a virtual address space. The Final Office Action fails to
show that there is a virtual address space outside the data disks
130 through which the disks 130 are accessed.

(App. Br. 11). The Examiner maintains that Pawlowski (column 10) teaches
the translation of addresses from logical to virtual and virtual to logical to
facilitate communication with the v-disks and this clearly is an access to
memory store through a virtual address space. (Answer 12). We agree with
the Examiner and find no claimed limitation which substantively details the
"virtual address space." Therefore, Appellants' argument does not show
error in the Examiner's showing of anticipation of representative claim 1.
Therefore, we sustain the rejection of independent claim 1 and independent
claims 23 and 55 grouped there with.
With respect to dependent claims 19 and 20, Appellants contend that
the Examiner has not specifically pointed out how Pawlowski teaches or
suggests at least a conversion of inaccessibility of a selected region from a
first access protocol to a second access protocol using metadata. (App. Br.
14 and 15). The Examiner further buttresses the rejection in the responsive
arguments at page 14 of the Answer. Appellants contend in the Reply Brief
at page 4 that the relied upon passage does not discuss "converting metadata
or converting I-groups due to the use of different protocols," but the claim
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does not require the conditional language "due to the use of different
protocols." Therefore, Appellants' argument is not commensurate in scope
with the express language of dependent claim 19. Therefore, Appellants'
argument is not persuasive of error in the Examiner's showing of
anticipation. With respect to dependent claim 20, Appellants contend that
Pawlowski "teaches away" from having such a feature. However,
“[t]eaching away is irrelevant to anticipation.” Seachange International,
Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Therefore,
Appellants' argument is not persuasive of error in the Examiner’s showing of
anticipation.
With respect to dependent claims 2, 4, 5, and 24, Appellants rely upon
the arguments advanced with respect to independent claim 1 which we found
unpersuasive of error in the Examiner's showing of anticipation. Therefore,
Appellants' argument is not persuasive with respect to obviousness.
Additionally, Appellants argue that Pawlowski and Miyamoto teach away
from making the proposed combination. (App. Br. 17-18; Reply Br. 4). We
have reviewed Appellants' proffered citations, but find no express teaching
away therein. Therefore, Appellants' argument is not persuasive of error in
the Examiner’s showing of obviousness.
With respect to claims 4, 5, and 24, Appellants rely upon the
arguments advanced with respect to dependent claim 2 which we found
unpersuasive of error in the Examiner’s showing of obviousness.

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CONCLUSION
For the aforementioned reasons, the Appellants have not shown error
in the Examiner's claim interpretation nor shown error in the Examiner's
showings of anticipation and obviousness.

VII. ORDER
We affirm the anticipation rejection of claims 1, 3, 6-29 and 55, and
the obviousness rejections of claims 2, 4, 5, and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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