Ex Parte Kaplan

Board of Patent Appeals and Interferences

Apr 26, 2012

11129275 (B.P.A.I. Apr. 26, 2012)

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.
11/129,275 05/13/2005 Marc Adam Kaplan YOR920050217US1
(163-81)
1998
49267 7590 04/26/2012
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
04/26/2012 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 MARC ADAM KAPLAN
____________

Appeal 2009-010218
Application 11/129,2751
Technology Center 2100
____________

Before JOSEPH L. DIXON, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
Appeal 2009-010218
Application 11/129,275

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-31, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates to a policy decision stash and
corresponding methods for storage lifecycle management. (Spec., 1,
¶[0001].)
Claim 1 is illustrative:
1. In a computer processing system, an apparatus for
storage lifecycle management for a plurality of managed
objects, comprising:
a policy decision manager for creating and managing a
policy decision stash, the policy decision stash being associated
with predictive policy decisions for the plurality of managed
objects and configured to allow the predictive policy decisions
for the plurality of managed objects to be incrementally updated
and accessed in the policy decision stash by a policy identifier
and an effective timestamp for the policy identifier.
(Argued limitations emphasized)
Appellant appeals the following rejection:

Claims 1-31 under 35 U.S.C. § 103(a) as unpatentable over Adams
(US 5,659,743, Aug. 19, 1997) and Miura (US Patent Pub. US
2002/0184223 A1, Dec. 5, 2002).

ANALYSIS
Appellant argues claims 1, 2, 11, 12, 21, and 22 as a group (App. Br.
14-25.). For claims 2, 11, 12, 21, and 22, Appellant essentially repeats the
same argument made for claim 1. We will, therefore, treat claims 2, 11, 12,
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21, and 22 as standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
Claims 1, 2, 11, 12, 21, and 22
Issue 1: Did the Examiner err in finding that the combination of
Adams and Miura discloses an effective timestamp for the policy identifier,
as claimed?
Appellant contends:
In contrast the “effective timestamp for the policy identifier” as
recited in Claims 1, 11, and 21, the time stamp of Adams
referred to by the Examiner is intended to mark a time of LAST
access performed on that file, hence referring to the PAST. In
contrast, the “effective timestamp for the policy identifier”
recited in Claims 1, 11, and 21 refers to an action to be
performed IN THE FUTURE.

(App. Br. 17-18, emphasis original.) Appellant further contends that
“Miura is directed to a LATEST (i.e., ‘until when’) date and time. Hence,
not only does Miura NOT disclose an effective timestamp as recited in
Claims 1, 11, and 21, but Miura TEACHES AWAY from the same.” (App.
Br. 19, emphasis original.)

The Examiner found that in Miura “the usage rule ‘expiration date’
represented by the usage rule identifier ‘0001’ has an attribute value in BCD
. . . indicating a date until when the content is usable is an effective
timestamp.” (Ans. 17.) We agree.

Here, Appellant’s Specification describes an effective timestamp as
“the earliest data and time at which some policy rule dictates a management
action should be initiated against the file.” (Spec., 13, ¶[0041].) Similarly,
the Examiner found that Miura discloses “the usage rule ‘expiration date’
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represented by the usage rule identifier ‘0001’ . . . indicating a date until
when the content is usable.” (Miura, ¶[0091].) In other words, Miura
discloses the earliest date at which content expires, i.e., a time in the future.
In Miura, the expiration date triggers the action of “non-use.” Thus, we are
not persuaded that Miura teaches away from an action at a future time. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference...would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327 (Fed. Cir.
2001). We do not find this to be the situation before this Board. Thus, we
find that the claimed “effective timestamp for the policy identifier” reads on
Miura’s future expiration date associated with its usage rule/identifier.
Thus, based on the record before us, we find no error in the
Examiner’s obviousness rejection of representative claim 1 essentially for
the reasons indicated by the Examiner. Independent claims 11 and 21, and
dependent claims 2, 12, and 22 fall for similar reasons.

Issue 2: Did the Examiner err in combining Adams and Miura?
Appellant contends that “Adams disparages the use of parameter-
based policy identifiers while Miura discloses the use of parameter-based
policy identifiers, the references (Adams and Miura) teaches away from their
combination.” (App. Br. 20-21.)
The Examiner found that “[a]n ordinary skilled person would be
motivated to modify Adams in view of Miura’s teachings because that
would allow the storage management system to provide the capability of
distributing a usage rule according to a variation of a content, and further
enhance the efficiency of the storage management system of Adams.” (Ans.
18.) We agree.
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Firstly, we do not find, and Appellant does not establish, that Adams
criticizes, discredits, or otherwise discourages the use of policy identifiers.
“[T]he prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Furthermore, the question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17- 18 (1966). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” and the basis for an obviousness rejection must include an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id.
Here, the Examiner has articulated a reason for combining the cited
references and found that the combination of Adams and Miura shows the
predictable use of prior art elements according to their established functions.
Therefore, we find Appellant’s argument that the Examiner erred in
combining Adams and Miura unpersuasive.

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Claims 8, 18, 28, and 31
Appellant argues claims 8, 18, 28, and 31 as a group (App. Br. 25-28).
For claims 18, 28, and 31, Appellant repeats the same argument made for
claim 8. We will, therefore, treat claims 18, 28, and 31 as standing or falling
with claim 8. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927
F.2d 588, 590 (Fed. Cir. 1991).

Issue 3: Did the Examiner err in finding that the combination of
Adams and Miura discloses a decision priority metric and a file weighting
metric, as claimed?
The Examiner found that Adams discloses to “[c]alculate the total
weighted count by adding the weighted count values from all the used cycle
table entries.” (Ans. 22.)
Appellant contends that in Adams, “the weighted count relates to
access cycles and not to files as does the file weighting metric recited in
Claims 8, 18, and 28.” (App. Br. 26)(emphasis omitted.) We agree with
Appellant.
Even if we assume arguendo (without deciding) that Adams’ access
cycles are weighted (as proffered by the Examiner), we do not find, and the
Examiner has not established, that Adams’ “weighted access cycles” is
equivalent to a file weighting metric as claimed. Instead, it appears that
Adams’ weighted access cycles relate to a function as oppose to a file itself.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 8 and claims 18, 28, and 31, which include
a similar limitation. Therefore, we reverse the Examiner’s §103 rejection of
claims 8, 18, 28, and 31.

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Claims 3-7, 9, 10, 13-17, 19, 20, 23-27, 29, and 30
Appellant has not presented separate arguments for dependent claims
3-7, 9, 10, 13-17, 19, 20, 23-27, 29, and 30. Therefore, these claims fall
with the claims from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We reverse the Examiner’s § 103 rejection of claims 8, 18, 28, and 31.
We affirm the Examiner’s § 103 rejection of claims 1-7, 9-17, 19-27,
29, and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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