Ex Parte MaDownload PDFPatent Trial and Appeal BoardMay 24, 201311173114 (P.T.A.B. May. 24, 2013) Copy Citation 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. 11/173,114 06/30/2005 Kenneth Ma 14528.00317 1259 16378 7590 05/24/2013 Broadcom/BHGL P.O. Box 10395 Chicago, IL 60610 EXAMINER AYASH, MARWAN ART UNIT PAPER NUMBER 2185 MAIL DATE DELIVERY MODE 05/24/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KENNETH MA ____________________ Appeal 2010-008475 Application 11/173,114 1 Technology Center 2100 ____________________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and JEFFREY S. SMITH, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 19-27, 31-39, and 43-45. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s invention is directed to intelligent auto-archiving of data between a data computing device and a data storage device. One or more 1 The real party in interest is Broadcom Corporation. Appeal 2010-008475 Application 11/173,114 2 intelligent algorithms are operable for determining which of one or more data files were used prior to a cutoff date (Spec. 5, 20-23). Claim 19 is exemplary of the claims on appeal: 19. A system for providing automated archiving of one or more data files stored in a data computing device comprising: a data storage device communicatively coupled to said data computing device; a first software resident in said data computing device; and a first processor in said data computing device, said first processor capable of executing said first software, wherein said executing said first software provides; monitoring of the storage capacity in said data computing device; determining if the available storage in said computing device has reached a threshold level; and employing one or more intelligent algorithms used for said automated archiving of said one or more data files, said one or more data files archived from said data computing device into said data storage device, said one or more intelligent algorithms operable for, at least determining which of said one or more data files were used prior to a cutoff date. The Examiner relies upon the following prior art in rejecting the claims on appeal: Belsan US 5,155,835 Oct. 13, 1992 Marsh US 6,931,657 B1 Aug. 16, 2005 Mi US 7,117,294 B1 Oct. 3, 2006 Roden US 7,395,395 B2 July 1, 2008 Claims 19-21, 23, 25, 26, 31-33, 35, 37, and 38 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Roden. Claims 19-27, 31-39, and 43-45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Marsh in view of Belsan. Appeal 2010-008475 Application 11/173,114 3 Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Jan. 11, 2010), the Reply Brief (“Reply Br.,” filed May 3, 2010), and the Examiner’s Answer (“Ans.,” mailed Mar. 2, 2010) for their respective details. ISSUES Appellant argues, inter alia, that Roden, Marsh, and Belsan all fail to teach “said one or more intelligent algorithms operable for, at least determining which of said one or more data files were used prior to a cutoff date” (App. Br. 15, 36, 39). Appellant’s contentions and the Examiner’s findings present us with the following issues: 1. Does Roden teach an intelligent algorithm operable for determining which of said one or more data files were used prior to a cutoff date? 2. Does the combination of Marsh and Belsan teach or fairly suggest an intelligent algorithm operable for determining which of said one or more data files were used prior to a cutoff date? PRINCIPLES OF LAW “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)). Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to Appeal 2010-008475 Application 11/173,114 4 a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). 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, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS § 102 REJECTION OVER RODEN Independent claims 19 and 31 each recite “one or more intelligent algorithms operable for, at least determining which of said one or more data files were used prior to a cutoff date.” The Examiner finds that Roden teaches this limitation (Ans. 4). In response to Appellant’s arguments, the Examiner asserts that because Roden discloses that content is selected for relocation based on how long the content has been stored in the storage device, “Roden makes clear that her invention is operable to select content for relocation based on temporal and/or access and access-frequency criteria such that appellant’s limitation is at least implicitly taught by the cited art” (Ans. 12). The Examiner further contends that “even the disclosure of relocating content based on how long the content has been stored appears to read on the limitation in question Appeal 2010-008475 Application 11/173,114 5 since the content is ‘used’ when it is stored” (Ans. 12), and that “if the cutoff date is set to a present-date, then the simple act of archiving as disclosed by Roden is sufficient to read on the instant claims” (Ans. 13). We find error in each of the Examiner’s findings. Treating the Examiner’s “implicitly taught” statement as a finding that “determining which data files were used prior to a cutoff date” is inherent to Roden, the Examiner has failed to demonstrate how or why Roden’s teaching of deletion based on how long content has been stored means that deletion (archiving) is necessarily present in Roden based on those files that were used prior to a cutoff date. We do not agree with the Examiner’s theory that content is used when it is stored. Appellant’s Specification refers to “when a file was last used by a user” (Spec. 17). The Specification further discloses an embodiment (a “third option”) wherein files are deleted “based on how frequent a file is used, for example. For example, the third option may invoke an algorithm that assesses the number of times a file is accessed over a period of time” (Spec. 17-18). “A file that is used or accessed a certain number of times over a certain period of time, may be marked for archiving” (Spec. 24). We thus find that Appellant’s Specification equates “use” with “access.” When a user accesses a file, the contents of that file are read from a storage device, and subsequently, possibly written to storage after processing. In contrast, storage of a file means only that such a file is written to a storage device. We find, as a result, that “storage” of a file does not equate to “use or access.” Last, even if we were to agree with the Examiner that the “cutoff date” could be set to the present date, the Examiner has failed to identify a Appeal 2010-008475 Application 11/173,114 6 teaching in Roden of identifying files used prior to that cutoff date, or any other date, as the claims require. We find that Roden does not teach all the limitations of independent claims 19 and 31. Accordingly, we will not sustain the Examiner’s § 102 rejection of claims 19-21, 23, 25, 26, 31-33, 35, 37, and 38 as being anticipated by Roden. § 103 REJECTION OVER MARSH IN VIEW OF BELSAN The Examiner finds that Marsh teaches determining which of said one or more data files were used prior to a cutoff date (Ans. 6). In response to Appellant’s traversal, the Examiner responds that Belsan, by disclosing that tracks that are least used are migrated to low access cylinders . . . is at least implicitly disclosing the instant limitation since a least used track may be an old, outdated, or otherwise unnecessary track, just as appellant appears to be claiming the migrating/archiving of “old” files (those past a cutoff date) . . . Thus the mere disclosure of archiving data/tracks is sufficient to read on the instant limitation. (Ans. 16). We find the Examiner’s findings to be erroneous. The Examiner’s rejection and response to argument do not explain where or how either Marsh or Belsan teach “determining . . . files used prior to a cutoff date.” We do not agree with the Examiner that Belsan’s teaching of migrating tracks with a low usage count equates to archiving of files simply used prior to a cutoff date. We also do not agree with the Examiner that “the mere disclosure of archiving data/tracks” (Ans. 16) is sufficient to meet the claim limitation at issue. Appeal 2010-008475 Application 11/173,114 7 We find that the combination of Marsh and Belsan fails to teach all the limitations of independent claims 19 and 31. Therefore, we will not sustain the § 103 rejection of claims 19-27, 31-39, and 43-45. CONCLUSIONS 1. Roden does not teach an intelligent algorithm operable for determining which of said one or more data files were used prior to a cutoff date. 2. The combination of Marsh and Belsan does not teach or fairly suggest an intelligent algorithm operable for determining which of said one or more data files were used prior to a cutoff date. ORDER The Examiner’s rejection of claims 19-27, 31-39, and 43-45 is reversed. REVERSED kis Copy with citationCopy as parenthetical citation