Ex Parte LOH et al

Board of Patent Appeals and Interferences

May 13, 2004

09428871 (B.P.A.I. May. 13, 2004)

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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written for publication and is not binding precedent of the Board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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________________
Ex parte DANNY D. LOH and JIMMY PING FAI CHUI
______________________
Appeal No. 2003-0227
Application No. 09/428,871
______________________
ON BRIEF
______________________

Before Krass, Barrett and Owens, Administrative Patent Judges.
Owens, Administrative Patent Judge.
DECISION ON APPEAL

This appeal is from the examiner’s final rejection of
claims 1–44, 50, 63-70 and 72-90, and refusal to allow claims 56,
62 and 71 as amended after the final rejection and claims 45-49,
51-55 and 57-61 as amended after the examiner’s answer. These
are all of the claims in the application.
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THE INVENTION
The appellants claim 1) a multi-tier digital image storage
system, method and protocol, and 2) a method and protocol for
using a unique file identification value to access a digital
image from a data storage unit. Claims 1 and 87 are
illustrative:
1. A multi-tier data storage system to support
photographic printing of uploaded digital images,
comprising:
a first data storage unit for storing digital images
uploaded over a network;
a second data storage unit coupled to the first data
storage unit for archiving digital images residing on the
first data storage unit for more than predetermined period;
a third data storage unit coupled to the second data
storage unit, the third data storage unit caching a
requested digital image from the second data storage unit if
the requested digital image is unavailable on the first data
storage unit; and,
a printer coupled to one of the first, second or third
data storage units, the printer accessing a digital image
from one of the data storage units to produce a print.
87. A method for managing a digital image storage
system, comprising:
generating a functional path name directory based on a
unique file identification value;
storing data files based on generated unique
identification values; and
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accessing a digital image based on the functional path
name directory and producing a print from the digital image.
THE REFERENCES
Craig 5,790,176 Aug. 4, 1998
Garfinkle et al. (Garfinkle) 6,017,157 Jan. 25, 2000
(filed Dec. 24, 1996)
THE REJECTION
Claims 1-90 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Garfinkle in view of Craig.
OPINION
We reverse the aforementioned rejection. We need to address
only the independent claims, i.e., claims 1, 21, 37, 45, 51, 57,
63, 71, 76, and 87.
The appellants state (brief, page 5), and the examiner
agrees (answer, page 3), that the claims stand or fall together.
The claims, however, cannot stand together because different
inventions are claimed. Independent claims 1, 21, 45, 51, 57, 71
and 76 are directed toward a system, method or protocol for
multi-tier digital image data storage, whereas independent
claims 37, 63 and 87 are directed toward a method or protocol for
using a unique file identification value to access a digital
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image from a data storage unit. The claimed system, method or
protocol for multi-tier data storage does not require the claimed
method or protocol for using a unique file identification value
to access a digital image from a data storage unit, and
vice versa.
The rejection of the claims directed toward a method or
protocol for using a unique file identification value to access a
digital image from a data storage unit cannot be affirmed because
the examiner has not addressed these claims in his explanation of
the rejection.
The claims directed toward a system, method or protocol for
multi-tier data storage require a second data storage tier which
archives digital images from a first data storage tier, and
require that if a requested digital image is unavailable on the
first data storage tier, a third data storage tier caches the
requested digital image from the second data storage tier.
Garfinkle discloses two-tier data storage wherein an image
server (16) stores digital images in a commercially available
database on a RAID (redundant array of independent (or
inexpensive) disks) disk partition to guard against disk
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failures, and the server digital image data is archived on an
archival medium such as an 8 mm tape drive at regular intervals
to guard against catastrophic failures (col. 4, lines 49-54).
Craig discloses a multimedia server which allocates storage
based on the ranking of a feature and the output of trend
processing performed by a usage probability processor (col. 10,
lines 29-31). Typically, the storage priority, from highest to
lowest priority features, is: DRAM, magnetic disk, high speed
tape, and archival tape (col. 10, lines 36-48).
The examiner argues that Garfinkle’s use of two levels of
storage indicates an acknowledgment of the tradeoff between
storage accessibility and cost, and that Craig teaches that it
was known to use several levels of storage hierarchy to optimize
the tradeoff between large size and low cost and small size and
high cost (answer, pages 6-7). The examiner argues that given
the disclosures of these tradeoffs, it would have been obvious to
one of ordinary skill in the art to provide a third data storage
unit as a caching unit for temporary storage of frequently
requested items in Garfinkle’s system (answer, pages 7-8). The
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appellants’ claims directed toward multi-tier data storage,
however, do not merely require a third data storage unit as a
caching unit but, rather, require that if requested data is
unavailable on a first data storage unit, the third data storage
unit caches the data from a second data storage unit which
archives data from the first data storage unit. The examiner
does not explain how Garfinkle and Craig would have led one of
ordinary skill in the art to this system.
The examiner points out that Garfinkle removes the digital
images from the image server after a fixed period of time to free
up disk space for other images, and that Garfinkle prefers
multiple RAID partitions so that the image server can process new
rolls of film when one partition is unavailable due to service or
backup procedures (col. 5, lines 40-52) (answer, pages 6-7). The
examiner concludes from these and the above-discussed disclosures
that “[i]t would have been obvious to the skilled artisan to
provide the claimed third data storage unit to ‘cache’ the images
requested from the second storage unit so that if the customer
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wants to access them repeatedly, the long delays associated with
accessing tape storage are only incurred once; subsequent
requests for the same images can be provided quickly since the
third data storage unit would obviously be some type of storage
unit with a shorter access time than tape” (answer, page 7). The
examiner, however, does not explain, and it is not apparent, how
this conclusion follows from the relied-upon reference
disclosures rather than coming from the appellants’ disclosure.
The examiner argues that a separate partition of Garfinkle’s
image server (col. 5, lines 49-52) anticipates the appellants’
third data storage unit (answer, page 8). This argument is not
well taken because the examiner does not explain how this
separate partition caches digital images from a second storage
unit which archives digital images from a first storage unit.
The examiner argues that “Garfinkle’s special directory
reserved for caching thumbnail images anticipates the third data
storage unit (column 6, lines 64-66). Even though this directory
is on the image server, it is a separate area from where the full
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digital images are stored and can therefore be considered a
separate data storage unit” (answer, page 8). Garfield discloses
that “the thumbnail digital images are cached at the image
server 16 in a special directory reserved for this purpose. (see
e.g., et, FIG. 3B). Subsequent access to the thumbnail digital
images may be obtained by retrieving them directly from this
cache. Thumbnail digital images in the cache can be deleted as
required, and regenerated as needed” (col. 6, line 64 - col. 7,
line 3). The thumbnail digital images are cached on a data
storage tier that is comparable to the appellants’ first data
storage tier. The examiner does not explain how Garfinkle’s
image server’s special directory for caching thumbnail digital
images from this first data storage tier anticipates a data
storage unit that caches digital images from a second data
storage tier that archives digital images from the first data
storage tier.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.
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DECISION
The rejection of claims 1-90 stand rejected under 35 U.S.C.
§ 103 over Garfinkle in view of Craig is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/dpv
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