Ex Parte Mackrory et al

Patent Trial and Appeal Board

Jan 27, 2015

12242953 (P.T.A.B. Jan. 27, 2015)

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.
12/242,953 10/01/2008 Mitchell Mackrory STK02127PUS1 9431
51344 7590 01/28/2015
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
SINGH, AMRESH
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
01/28/2015 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 MITCHELL MACKRORY
and MICHAEL A. BUCARI
____________

Appeal 2012-009006
Application 12/242,953
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1–6, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-009006
Application 12/242,953

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Invention
The claimed invention on appeal relates to “to maintaining copies of
data in a storage management system.” (Spec. 1, ll. 7–8).
Representative Claim
Independent claim 1 is representative of the invention on appeal:

1. A disaster recovery method for a storage management
system supporting local backup comprising:

writing data to a first storage media;

the data being listed in a control data set maintained by
the storage management system;

writing the data to a second storage media;

sending the second storage media off-site;

directing the data to a receiving management class;

writing the data to a third storage media based on the
receiving management class; and

creating a manifest file listing the data written to the
third storage media, the manifest file separate from the
control data set.

(Contested limitations emphasized and underlined).

Rejection
Claims 1–6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings and suggestions of Gibble (US Pub.
2004/0044830) and Trimmer (US Pub. 2004/0153739).
Appeal 2012-009006
Application 12/242,953

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Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of
claims 1–6 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).1
ANALYSIS
Representative Claim 1
Appellants contend:
Claim 1 recites “writing data to a first storage media; the data
being listed in a control data set maintained by the storage
management system.” Claim 1 further recites “creating a
manifest file listing the data written to the third storage media,
the manifest file separate from the control data set.” Put
another way, the manifest file is separate from the control data
set. This is shown in Figure 2b of [Appellant’s] patent
application. Note the control data set 42 and the manifest 62.
The manifest file is separate. Also note, the control data set and
the manifest file both list the data written (list the VTV s in an
MVC). Claim 1 recites the listing function of the control data
set and the manifest file.

On page 3 of the detailed action [the Examiner referring to
Gibble, Fig. 3], the Examiner states that the primary file
location information (in DASD cache 210) is the control data
set information. The Examiner further states that the stub
created for the secondary copy (in DASD cache 210) is the

1 Appellants filed a Notice of Appeal on November 1, 2011. The date of
filing the Notice of Appeal determines which set of rules applies to an ex
parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then
the 2004 version of the Board rules published in the 2011 edition of Title 37
of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed.,
Rev. 8, July 2010.
Appeal 2012-009006
Application 12/242,953

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manifest file listing. Upon closer review, [Appellant’s]
respectfully point out that DASD cache 210 includes HSM
database 320. HSM database 320, Gibble, paragraph 53,
associates object identities with data location on a physical
volume (one of the cartridges).

It is not clear that any of the items referred to by the
Examiner could reasonably be interpreted as a control data set
and a manifest file. To the extent that the Examiner relies on
Gibble, Figure3 (and Figure 6), the only place anything relating
to a listing function is performed is HSM database 320. (The
other part of DASD cache 210 is a cached volume database
310-clearly not listing data written as claimed). Accordingly,
the HSM database 320 does not provide the manifest file is
separate from the control data set as claimed; see example
shown in Figure 2b of [Appellant’s] patent application.

(App. Br. 3–4).

The Examiner disagrees:

In Gibble, Fig 6: 672 teaches creating of a stub file for the
secondary file location, this stub file, Fig 3: 340, is separate
from the control data file, Fig 3:330. Fig 6 flow diagram teach
that a stub file is created for the secondary file location (672),
after which the control data set is copied from DASD cache to a
primary tape pool, after which the primary file location is
inserted in the file header of the control file (662), therefore it is
evident that the control data set file and the stub file are
separate files.

Furthermore, in view of Page 5: ll. 5–20 of [A]ppellant’s
[S]pecification, separate, just illustrates separate files, data sets,
or devices, which is taught by Gibble, where the stubs (Fig
3:340) are separately displayed from control files (Fig 3:330).

(Ans. 8).

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Application 12/242,953

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This appeal turns on claim construction. In particular, we construe the
broadest reasonable interpretation of the claim term “separate.” (Claim 1:
“the manifest file separate from the control data set.”). We particularly note
Appellants refer to their Specification in urging this limitation is not taught
by Gibble:
Put another way, the manifest file is separate from the control
data set. This is shown in Figure 2b of [Appellant’s] patent
application. Note the control data set 42 and the manifest 62.
The manifest file is separate. Also note, the control data set and
the manifest file both list the data written (list the VTV s in an
MVC). Claim 1 recites the listing function of the control data
set and the manifest file.

Appellants appear to be urging that “separate” means physically
separate (i.e., different locations, e.g. on-site versus off-site storage) as
opposed to logically separate (e.g., different files or data structures).
However, our reviewing court guides: “claims may embrace ‘different
subject matter than is illustrated in the specific embodiments in the
specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (citation omitted). Because “applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
This reasoning is applicable here. As pointed out by the Examiner
(Ans. 8), Appellants Specification also describes “separate” in terms of
logical separateness, i.e., “separate files, data sets or devices.” (Ans. 8; see
also Spec. 5, ll. 5–20).
Therefore, on this record, we are not persuaded the Examiner’s
broader interpretation of the claim term “separate” is overly broad,
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unreasonable, or inconsistent with Appellants’ Specification. Moreover, the
Examiner relies on the secondary Trimmer reference to teach or suggest
storing data or media in a physically separate manner offsite. (Ans. 6,
Trimmer, ¶7). Our reviewing court guides: “A prima facie case of
obviousness is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary
skill in the art.” In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)). The Examiner’s rejection is
based on the combined teaching and suggestions of Gibble and Trimmer.
Appellant has not persuaded us that combining such teachings would
have been “uniquely challenging or difficult for one of ordinary skill in the
art,” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citation omitted), nor has Appellant presented evidence
that physical separation of data versus logical separation of data would have
yielded more than expected results to one of ordinary skill in the art. See
Appeal Brief Evidence Appendix: “None.”
We also agree with the Examiner that Appellants second argument is
directed to limitations that are not expressly claimed: “the control data set
and the manifest file both list the data written (list the VTVs in an MVC).
Claim 1 recites the listing function of the control data set and the manifest
file.” (App. Br. 3). We decline Appellants’ invitation to read limitations
(VTVs, MVC) from the Specification into the claim. Moreover, we find any
data set necessarily lists the data elements in the order stored, or in some
alternate order. As a matter of claim construction, we conclude “listing the
data” does not require displaying data to a human viewer, within the
meaning of claim 1, which is silent regarding any display function.
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For these reasons, on this record we are not persuaded the Examiner
erred. Therefore, we sustain the Examiner’s rejection of representative
claim 1, and associated dependent claims 2–6 (not argued separately) for the
same reasons articulated by the Examiner, and for the reasons discussed
above.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–6 under
§103.
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.
§ 41.50(f).
AFFIRMED

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