Ex Parte Milby et al

Board of Patent Appeals and Interferences

May 25, 2010

09733530 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREGORY H. MILBY,
STEVEN C. GROLEMUND,
and SUSAN E. CHOO
____________
Appeal 2009-005253
Application 09/733,5301
Technology Center 2100
____________
Decided: May 25, 2010
____________

Before LEE E. BARRETT, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-29. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm-in-part.

1 Filed December 8, 2000, titled "Managing Allocation of Temporary
and Permanent Files in a Database System."
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STATEMENT OF THE CASE
The invention
The invention relates to a database system having a persistent storage
device storing a first file management context and a non-persistent memory
device storing a second file management context. Both the first and second
file management contexts are updated to allocate a permanent file, and the
second file management context is updated without updating the first file
management context to allocate a temporary file. Spec. 2, ll. 9-14.
Management overhead is reduced by performing certain tasks only if
permanent files are allocated. Spec. 6, ll. 20-21. For example, when a
temporary file is allocated, control logic "does not perform transaction
locking, logging of data changes made to the maps, and performing tasks to
provide data consistency across restart boundaries." Spec. 6, ll. 17-18.

Illustrative claim
Claim 1 is reproduced below for illustration:

1. A database system comprising:

a persistent data storage device storing a first file management
context and having a pool of storage elements; and

a non-persistent memory storing a second file management
context,

the first file management context to indicate allocated
permanent files in the pool of storage elements, and

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the second file management context to indicate allocated
temporary files and permanent files in the pool of storage elements.

The reference

Zheng US 6,571,259 B1 May 27, 2003

The rejection
Claims 1-29 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Zheng.
Appellants have submitted declarations under 37 C.F.R. § 1.131 to
remove Zheng as a reference.

37 C.F.R. § 1.131
Issue
Are Appellants' declarations under 37 C.F.R. § 1.131 sufficient to
remove Zheng as a prior art reference.

Principles of law
According to 37 C.F.R. § 1.131, a declaration submitted to establish
invention of the subject matter of the rejected claim prior to the effective
date of the reference on which the rejection is based (unless the rejection is
based on a statutory bar), shall present a showing of facts such, in character
and weight, as to establish reduction to practice prior to the effective date of
the reference, or conception of the invention prior to the effective date of the
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reference coupled with due diligence from prior to said date to a subsequent
reduction to practice or to the filing date of the application.
"Conception is the formation, in the mind of the inventor, of a definite
and permanent idea of the complete and operative invention, as it is
thereafter to be applied in practice." Cooper v. Goldfarb, 154 F.3d 1321,
1327 (Fed. Cir. 1998).
The party trying to show reasonable diligence "must account for
the entire period . . . until his reduction to practice[, actual or constructive]."
Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). If periods of
inactivity occur, each period of inactivity may be explained and excused for
"reasonable everyday problems and limitations encountered by an inventor."
Id. at 627. The evidence must be specific as to facts and dates. Gould v.
Schawlow, 363 F.2d 908, 920 (CCPA 1966). The question of diligence is
essentially one of fact. In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).
Diligence involves acts by both the inventor and the patent attorney.
The patent attorney must show reasonable diligence. 3 D. Chisum, Patents
§ 10.07[4][e] (2010); D'Amico v. Koike, 347 F.2d 867 (CCPA 1965)
(attorney diligence; an unexplained one month period of time during the
critical period was found to be a lack of diligence); Shindelar v. Holdeman,
628 F.2d 1337, 1342 (CCPA 1980) (willing to "excuse" only about 3 months
for preparing a patent application).

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Findings of fact
A declaration by the inventors states that a document titled "NCR
Invention Disclosure Record" was sent to Dan C. Hu on August 23, 2000,
with instructions to prepare a patent application. The Examiner does not
contest that the claimed invention is fully disclosed in that document.
A declaration by Mr. Hu states that he received the "NCR Invention
Disclosure Record" on August 23, 2000; the disclosure was immediately
placed in line to be prepared; that the number of applications in preparation
at the time required that it take about three months to prepare a draft of the
application; a draft was completed by November 24, 2000, and sent to the
inventors for review on that date; that a second draft was completed and sent
to the inventors on December 6, 2000; and that the application was filed on
December 8, 2000.

Analysis
The Examiner finds that there is no evidence of conception because
the "NCR Invention Disclosure Record" document has no signatures or dates
and "the lack of signatures and dates raise clear doubts about the reliability
and accuracy of information presented." Ans. 8. Appellants argue that the
MPEP allows dates to be removed, but the Examiner finds no evidence that
dates were ever present and were later removed. Ans. 9.
The Examiner does not dispute that the "NCR Invention Disclosure
Record" describes the disclosed and claimed invention. Conception is a
mental act. The NCR document is written evidence of conception at the
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time it was received by Mr. Hu on August 23, 2000; that is, Mr. Hu is a
witness to the documents as received. Appellants only need to establish a
date of conception before the filing date of Zheng. It would be a different
situation if August 23, 2000, was after the filing date of Zheng. On the facts
presented, there is clearly conception before the filing date of Zheng.
The Examiner finds that there is insufficient evidence of diligence.
"Since the date of conception is not affirmatively established or confirmed
by the inventors, the time lag from conception to contact with Mr. Hu cannot
be determined with certainty." Ans. 9. Appellants argue that they only need
to establish a date of conception before the filing date of the Zheng reference
and do not need to explain the time before Mr. Hu received the document.
Br. 5; Reply Br. 5.
Appellants are clearly correct on this point.
Nevertheless, although the Examiner's reasons are not persuasive, we
are not convinced that the evidence establishes diligence. Attorney diligence
is easier to show than inventor diligence, but we think more is needed than
just the bare statement that the application was placed in line and that it took
about three months to draft an application. We find that the times after the
completion of the first draft on November 24, 2000, are sufficient to
reasonably establish diligence from that time to the date of filing. However,
we think more evidence is required to explain the time period before that.
At a minimum, some statement is required in the declaration about internal
procedures for handling applications to aver that applications were routinely
taken up in order of receipt. We are reluctant to read that this was done into
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Mr. Hu's statement that the disclosure was "placed in line to be prepared."
While three months is a not unreasonable amount of time for preparing an
application, there is no general rule that three months is prima facie diligent.
We think some effort should be made to explain normal office practice and
workload so some reasonable inference can be made that are no unexplained
gaps in time. Diligence is a question of fact and no formulas can be stated as
to what kind and amount of facts are necessary. However, the facts here
require us to assume too much. Accordingly, we find that Appellants have
not established diligence so as to antedate Zheng.

Conclusion
Appellants' declarations under 37 C.F.R. § 1.131 are not sufficient to
remove Zheng as a prior art reference.

ANTICIPATION
Claim 23
Appellants argue that the rejection of claim 23 should be reversed
because Zheng has been removed as a reference. Since we conclude that
Zheng has not been removed as a reference, the rejection of claim 23 is
affirmed.

Claims 1-22 and 26-29
Issue
The Examiner finds that columns 1-3 of the block index 39 in the
table structure of Figure 3 of Zheng corresponds to a "first file management
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context" stored in a relational table where "[t]he relational table itself is a
permanent storage device because the table itself is never erased." Final
Office Action (FOA) 2. The Examiner finds that all of the columns of the
table are a "second file management context" "stored in a cache, which is
non-persistent memory." FOA 2.
Appellants argue that everything in Figure 3 is stored in memory, so
the block index 39 fails to satisfy the limitation of "a persistent data storage
device storing a first file management context." Br. 6. Appellants disagree
with the Examiner's statement that the relational table is "persistent storage"
because Figure 1 shows the file system index 37 having the block index 39
"in-memory" (non-persistent storage) as opposed to disk storage 22
(persistent storage). Br. 6-7. It is argued that a table cannot be considered a
storage device, but is a data structure stored in a storage device. Br. 7.
Appellants argue that independent claims 16 and 27 have a similar
limitation. Br. 7.
Based on the contentions, the issue is:
Does Zheng teach "a persistent data storage device storing a first file
management context"?
Independent claims 1, 16, and 27 stand or fall together.

Principle of law
"Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim. A prior art
disclosure that 'almost' meets that standard may render the claim invalid
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under § 103; it does not 'anticipate.'" Connell v. Sears, Roebuck & Co.,
722 F.2d 1542, 1548 (Fed. Cir. 1983) (citations omitted).

Findings of fact
Zheng relates to a file server providing transaction processing to
maintain data integrity in the event of a system crash.
As shown in Figure 1, the file server 20 includes disk storage 22, a
storage layer 25, a file system cache memory 24, and a file system cache
manager 34. The invention concerns efficient management of the file
system cache 24 in such a way that the on-disk file structure in 22 is in a
consistent state after a system crash. Col. 5, ll. 55-64.
"The file system cache 24 is managed by a file system cache manager
routine 34 that keeps up to a certain number of file system blocks in random
access memory." (Emphasis added.) Col. 6, ll. 1-3.
The file system cache manager 34 accesses an in-memory file system
index 37. Index 37 has an upper level consisting of an in-memory directory
and file mapping structure 38 that is similar to the on-disk directory
structure, and a lower level which includes a block index 39 of the status of
the storage blocks in the file system. Col. 6, ll. 32-50.

Analysis
Zheng clearly describes that the block index 39 is "in-memory" and
that the file system cache manager routine 34 is in "random access memory."
Random access memory and "in-memory" describe volatile or non-persistent
memory. If Zheng intended that the memory was persistent memory it
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would have said so, e.g., Zheng describes that "the buffer cache 26 can be
nonvolatile, battery-backed semiconductor" (col. 5, ll. 29-31). Persistent
memory could also be implied by disk storage, which is inherently
persistent. We agree with Appellants that "[t]he disk 22 in Zheng is
distinguished from the term 'memory,' also used in Zheng." Reply Br. 7.
The Examiner states that Appellants have not shown that the table is
destroyed when power is shut off (Ans. 11). Appellants have shown that the
block index 39 is stored "in-memory," not in disk storage. We agree with
Appellants that a "person of ordinary skill in the art would clearly
understand that an in-memory is not intended to be maintained across a
power loss." Reply Br. 7. The Examiner has not shown why this is wrong.
There is no indication or suggestion in Zheng that the block index 39 is
stored in some form of persistent memory.
The Examiner states that "[t]he relational table itself is a permanent
storage device because the table itself is never erased" (FOA 2) and "the
table of FIG. 3 in Zheng et al. is in fact a form of persistent storage, by
reason that the table is never destroyed and is used repeatedly to maintain a
log of memory allocations" (Ans. 11). We agree with Appellants that a table
is not a storage device, but is a data structure stored in a storage device. The
Examiner does not point to anything in Zheng which teaches that the table is
not lost when power is removed, a fundamental characteristic of a "persistent
data storage device."
Therefore, the Examiner has failed to establish that the block index 39
in Zheng is stored in "a persistent data storage device."
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Conclusion
The Examiner has not shown that Zheng teaches "a persistent data
storage device storing a first file management context." Accordingly, the
rejection of claims 1-22 and 26-29 is reversed.

Claims 24 and 25
Appellants argue that there is no teaching of updating one or both of
the first and second file management contexts based on the state of a flag in
a request. Br. 8.
The Examiner's rejection refers to the discussion of claim 20 which
states that setting a bit from "0" to "1" is activation of a flag. FOA 4; Ans. 6.
In response to Appellants' argument, the Examiner states that "as seen in
FIG. 3, any of the binary digits or pointers in any one of the rows and
columns can be updated, so both contexts are in fact capable of being
updated." Ans. 12.
The Examiner does not address the actual claim language which
requires a "request containing a flag to indicate a permanent file or a
temporary file" (claim 24) and updating one or both of the first and second
file management context based on the flag. The 1s and 0s in Zheng are not
"flag to indicate a permanent file or a temporary file." Assuming that the
block index 39 contains two file management contexts, the Examiner does
not show that the contents are updated in response to a flag indicating a
permanent or temporary file. Accordingly, the rejection of claim 24 and its
dependent claim 25 is reversed.
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CONCLUSION
The rejection of claims 1-22 and 24-29 under 35 U.S.C. § 102(e) is
reversed.
The rejection of claim 23 under 35 U.S.C. § 102(e) is affirmed.
Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

erc

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TERADATA CORPORATION
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