Ex Parte Itoh et al

Board of Patent Appeals and Interferences

Oct 26, 2010

11015524 (B.P.A.I. Oct. 26, 2010)

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.
11/015,524 12/17/2004 Hiroshi Itoh JP920030285US1 6020
49056 7590 10/26/2010
LIEBERMAN & BRANDSDORFER, LLC
802 STILL CREEK LANE
GAITHERSBURG, MD 20878
EXAMINER
AYASH, MARWAN
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
10/26/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROSHI ITOH and RYOHTA KAWASE

____________________

Appeal 2009-004381
Application 11/015,524
Technology Center 2100
____________________

Before JAMES D. THOMAS, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004381
Application 11/015,524

I. STATEMENT OF CASE
Appellants appeal the Examiner’s second rejection of claims 1-29
under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention is directed to a duplication
apparatus for copying data stored in each block of a source storage device to
a destination storage device, and a duplication method, a duplication
program, a block identification data acquisition program and a recording
medium (Spec. 1, 10-14).

B. ILLUSTRATIVE CLAIM
Claims 1 and 12 are exemplary and reproduced below:

1. A duplication apparatus to copy a block of data from a
source storage device to a destination storage device,
comprising:

a non-target block identification data acquisition unit
adapted to obtain non-target block identification data of a block
having recorded contents of a non-target file; and

a target block copy unit adapted to copy to the
destination storage device each block stored in the source
storage device having block identification data that does not
match the non-target block identification data.

12. An apparatus to copy block data from a source storage
device to a destination storage device, comprising:

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a free block acquisition unit adapted to maintain an
unused free block of a plurality of blocks being recorded in the
source storage device and to record a file in such a state that use
of the free block is inhibited for the recording of a file to be
copied;

a non-target block identification data acquisition unit
adapted to obtain free block identification data to identify the
free block; and

a target block copy unit adapted to copy to the
destination storage device each block, each of the plurality of
the blocks being stored in the source storage device, on
condition that the block identification data for the block does
not match the free block identification data.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Kedem US 6,076,148 Jun. 13, 2000
Beal US 6,073,221 Jun. 06, 2000
Christmas US 6,275,915 B1 Aug. 14, 2001
Dunham US 6,353,878 B1 Mar. 05, 2002
Wolfgang US 2007/0130222 A1 Jun. 07, 2007

Claims 1, 2, 8, 14, 15, 21, 26, and 27 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Beal.
Claims 12, 13, 24, 25, 28 and 29 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Christmas.
Claims 3-7 and 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable Beal in view of Dunham.
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Claims 9-11, 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable Beal in view of Christmas.
Claims 26-29 stand rejected under 35 U.S.C. § 101 as being directed
to non-statory subject matter.

II. ISSUES
Has the Examiner erred in finding that:
1) Beal teaches “a target block copy unit adapted to copy to the
destination storage device each block stored in the source storage device
having block identification data that does not match the non-target block
identification data” (claim 1), as Appellants contend?
2) Christmas teaches “a target block copy unit adapted to copy to the
destination storage device each block, each of the plurality of the blocks
being stored in the source storage device, on condition that the block
identification data for the block does not match the free block” (claim 12), as
Appellants contend?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Beal
1. Beal discloses a memory that contains a track table which includes
information which identifies each track in a disk drive that includes
current data and each track which includes no current data or is, in
other words, empty (col. 3, ll. 11-15).
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2. Non-empty track data is transferred to I/O control module and is
written to backup disk drive (col. 3, ll. 62-63), wherein only data from
non-empty tracks are transferred (col. 4, ll. 1-2).
Christmas
3. Christmas discloses a memory that comprises a plurality of memory
areas which has associated therewith an indication of which ones of
the memory areas are shadowed (col. 1, ll. 53-57), wherein, if it is
determined that the written memory area is shadowed, the writing is
replicated on another memory, but if it is determined that the written
memory is not shadowed, the writing is not replicated on the other
memory (col. 1, l. 64 to col. 2, l. 2).

IV. ANALYSIS
35 U.S.C. § 102(b)
Claims 1, 2, 8, 14, 15, 21, 26, and 27
Though Appellants admit that Beal discloses “distinction … on a track
by track basis” that “is limited to tracks that have recorded data and
track[sic] that do not have recorded data” (App. Br. 7), Appellants contend
that Beal “does not distinguish between types of data recorded on the tracks”
(App. Br. 6). Appellants further contend that Beal “does not teach
duplication on a block basis” and that “[t]he difference between a block and
a track is noted in the earlier response to the Office Action” (App. Br. 7).
However, the Examiner finds that, in Beal, “as non-empty tracks are
identified, the empty or non-target files are also identified” (Ans. 3). The
Examiner points to U.S. Patent No. 6,076,148 to Kedem, which defines that
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“a block may comprise an individual track of a disk storage device” (Ans.
20).
Thus, to address whether Beal teaches “a target block copy unit
adapted to copy to the destination storage device each block stored in the
source storage device having block identification data that does not match
the non-target block identification data” as recited in claim 1, we give the
claims their broadest reasonable interpretation. See In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). Moreover, “[a]n anticipatory reference . . .
need not duplicate word for word what is in the claims.” Standard Havens
Prods., Inc., v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
Claim 1 does not place any limitation on what “non-target block
identification data” means, includes, or represents, other than reciting that
the acquisition unit is “adapted to obtain non-target block identification data
of a block” and a copy unit is adapted to copy each block having block
identification data “that does not match the non-target block identification
data.” In fact, claim 1 does not even place any limitation on a “block” other
than the copy unit is adapted to copy each block having block identification
data “that does not match the non-target block identification data.” We thus
give “block” its ordinary meaning of a group of information units.
Accordingly, we give “non-target block identification data” its broadest but
reasonable meaning of data in a group that is identified as not targeted.
Beal discloses identifying non-empty track data and empty track data
(FF 1), wherein only data from non-empty tracks are transferred (i.e., data
from empty tracks are not transferred) (FF 2). Contrary to Appellants’
contention that Beal “does not distinguish between types of data recorded on
the tracks” (App. Br. 6), we find Beal to disclose distinguishing between
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non-empty track data and empty track data. In fact, Appellants admit that
Beal discloses “distinction … on a track by track basis” (App. Br. 7).
Though Appellants argue that Beal “does not teach duplication on a
block basis” (App. Br. 7), as the Examiner finds (by pointing to U.S. Patent
No. 6,076,148 to Kedem), “a block may comprise an individual track of a
disk storage device” (Ans. 20). Given the claim construction above, we
agree with the Examiner’s finding. That is, since Beal discloses identifying
empty/non-empty track data, wherein empty track data is not targeted and
only the tracks having data that does not match the empty track data are
copied (FF 2), we find that claim 1’s block reads on Beal’s copied track
comprising a group of information units and find claim 1’s non-target block
identification data to read on Beal’s empty track data in a group that is
identified as not targeted. Accordingly, we find that Beal teaches the
limitations of claim 1.
Appellants do not provide separate arguments for claims 2, 8, 14, 15,
21, 26, and 27 (App. Br. 6-8). Thus, claims 2, 8, 14, 15, 21, 26, and 27 also
fall with claim 1. Accordingly, we find that the Examiner did not err in
rejecting claims 1, 2, 8, 14, 15, 21, 26, and 27 under 35 U.S.C. § 102(b).
Claims 12, 13, 24, 25, 28, and 29
Though Appellants admit that Christmas “pertains to creating a
shadow copy of pages of memory either statically or dynamically” (App. Br.
8), Appellants contend that “Applicants are claiming that the duplication of
the data occurs after the data has been recorded on the source storage device,
and thereafter, select blocks of data are duplicated” (App. Br. 9). That is,
according to Appellants, in Christmas, “there is no replication of data after
program execution has ceased” (id.). Appellants then assert that “the
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limitation of the fact that the copying takes place from the source storage
unit to the destination storage unit is in the preamble” (id.). Appellants also
argue that Christmas “does not relate to managing duplication of data on a
block by block basis” (id.).
However, the Examiner finds that “there is no disclosure in Christmas
which recites the simultaneous or concurrent storage of data [as Appellants
contend]” and instead “steps 602 and 606 occur as different operations”
(Ans. 22). As to Appellants’ argument that there is no replication of data
after program execution has ceased, the Examiner finds that “the claim
language requires no such thing” (id.). In particular, the Examiner finds that
“this ‘limitation’ has not been given patentable weight because the recitation
occurs in the preamble” where “it merely recites the purpose of a process or
the intended use of a structure” (id.). The Examiner then finds that “pages
are equivalent to blocks” and that “[s]ince only select pages are duplicated
[in Christmas] … Christmas does in fact distinguish duplication on a page-
by-page or block by block basis” (Ans. 23).
As to Appellants’ contention that “Applicants are claiming that the
duplication of the data occurs after the data has been recorded” while in
Christmas “there is no replication of data after program execution has
ceased” (App. Br. 9), such contention is not commensurate in scope with the
language of claim 12. That is, claim 12 does not recite any such duplication
of data after recording of data on the source storage device, and thus does
not require any such replication of data after program execution has ceased.
Although Appellants assert that “the limitation of the fact that the
copying takes place from the source storage unit to the destination storage
unit is in the preamble” (App. Br. 9), we agree with the Examiner’s finding
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that “the recitation occurs in the preamble” and is merely an intended use of
the apparatus (Ans. 22). That is, we agree that “to copy data from a source
storage device to a destination storage device” is merely an intended use in
the preamble. An intended use will not limit the scope of the claim because
it merely defines a context in which the invention operates. Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Further, since the body of claim 12 fully and intrinsically
sets forth all of the limitations of the claimed invention, the intended use in
the preamble is not considered a limitation and is of no significance to claim
construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997).
As to Appellants’ contention that Christmas “does not relate to
managing duplication of data on a block by block basis” (App. Br. 9), as the
Examiner finds, “pages are equivalent to blocks” and that “[s]ince only
select pages are duplicated [in Christmas] … Christmas does in fact
distinguish duplication on a page-by-page or block by block basis” (Ans.
23).
Christmas discloses identifying which ones of the memory areas are
targeted to be copied and which are not targeted to be copied (FF 3). In fact,
as admitted by Appellants, Christmas “pertains to creating a shadow copy of
pages of memory either statically or dynamically” (App. Br. 8). Given the
claim construction above regarding the term “block” of claim 1, we agree
with the Examiner’s finding. That is, we find that claim 12’s block reads on
Christmas’s copied pages comprising a group of information units and find
claim 1’s non-target block identification data to read on Christmas’s data in
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a group that is identified as not targeted. Accordingly, we find Christmas
teaches the limitations of claim 12.
As for claims 28 and 29, Appellants repeat that Christmas “does not
distinguish duplication on a block by block basis” (App. Br. 12). As
discussed above, in view of our claim construction, we find Christmas to
disclose duplication of data based upon blocks of data.
Appellants do not provide separate arguments for claims 13, 24, and
25 from those of claim 12. Thus, claims 13, 24, and 25 also fall with claim
12. Accordingly, we find that the Examiner did not err in rejecting claims
12, 13, 24, 25, 28, and 29 under 35 U.S.C. § 102(b).
35 U.S.C. § 103(a)
Claims 3-7, 9-11, 16-20, 22, and 23
As for claims 3-7, 9-11, 16-20, 22, and 23, Appellants merely argue
that “the Examiner’s evaluation did not elicit any motivation or suggestion
to combine [the references]” (App. Br. 12, 15, and 18), and that the
references “lack the fundamental replication based upon blocks of data” or
“does not conduct a duplication of data based upon blocks of data in the
manner claimed by Applicants” (App. Br. 15, 18, 20, 21). As discussed
above, in view of our claim construction, we find both Beal and Christmas to
disclose duplication of data based upon blocks of data.
As to Appellants’ contention that there is no motivation or suggestion
to combine the references, as the Examiner finds, “[i]t would have been
obvious to one having ordinary skill in the art at the time the invention was
made to provide means for determining the size of a non-target file based on
free memory space in a storage device in the apparatus of Beal as taught by
Dunham as a way of ensuring that a fixed amount of data storage is
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efficiently divided” (Ans. 9) or to “provide means for accessing memory,
receiving memory access requests, and extracting identification data in order
to identify memory in the device of Beal as taught by Christmas since these
faculties are necessary to the proper operation of a selective memory
duplication device” (Ans. 13). We agree with the Examiner since the
combination of one known element (Dunham’s means for determining the
size of a file or Christmas’s identification of memory) with another (Beal’s
memory) would have yielded predictable results to one of ordinary skill in
the art at the time of the invention. That is, we find that such combination is
no more than a simple arrangement of old elements, with each performing
the same function it had been known to perform, yielding no more than one
would expect from such an arrangement. See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 406 (2007).
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that adding Dunham’s means for determining the size
of a file or Christmas’s identification of memory with Beal’s memory was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418-19).
Accordingly, we find that the Examiner did not err in rejecting claims
3-7 and 16-20 under 35 U.S.C. § 103(a) over Beal in view of Dunham or
rejecting claims 9-11, 22 and 23 under 35 U.S.C. § 103(a) over Beal in view
of Christmas.
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35 U.S.C. §101
Since our decision finds that all the claims on appeal were rejected
under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) without error, we need not
reach the rejection of claims 26-29 under § 35 U.S.C. § 101.

V. CONCLUSION AND DECISION
The Examiner’s decision rejecting claims 1, 2, 8, 12-15, 21 and 24-29
under 35 U.S.C. § 102(b) and rejection claims 3-7, 9-11, 16-20, 22 and 23
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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802 STILL CREEK LANE
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