Ex Parte Ma

Patent Trial and Appeal Board

May 24, 2013

11173114 (P.T.A.B. May. 24, 2013)

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.
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Application 11/173,114

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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.
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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
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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
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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
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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.
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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