Ex Parte Mitsuma et al

Patent Trial and Appeal Board

Jun 22, 2016

12947155 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947, 155 11/16/2010
127893 7590 06/22/2016
Streets & Steele - Lenovo (Singapore) Pte, Ltd,
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
FIRST NAMED INVENTOR
Shinsuke Mitsuma
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
XJP920090095US 1 1391
EXAMINER
BANSAL, GURTEJ
ART UNIT PAPER NUMBER
2139
MAILDATE DELIVERY MODE
06/22/2016 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 SHINSUKE MITSUMA, TOSHIY ASU MOTOKI,
YUTAKA OISHI, and HYEONG-GE PARK
Appeal2014-005024
Application 12/947,155
Technology Center 2100
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is a virtual tape server that processes mount
requests from host systems. In one aspect, if a logical volume associated
with a request is not present in a virtual storage region and the request is a
write request, the host system is notified of mounting completion without
reading the requested logical volume from a physical table library into the
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Application 12/947,155
virtual storage region. See generally Spec. iii! 78-86; Fig. 5. Claims 1 and
11 are illustrative:
1. A method of a virtual tape server for processing a mount
request from a host system, the method comprising the steps of:
receiving a logical-volume mount request from the host
system using a virtual-tape drive of the virtual tape server;
determining whether the logical volume is present in a
virtual storage region of the virtual tape server using a
controller in the virtual tape server connected to the virtual-tape
drive;
determining using the controller, if it is determined that
the logical volume is not present in the virtual storage region,
whether the mount request is a write request; and
notifying, if it is determined that the mount request is a
write request, the host system of completion of the mounting
without reading the requested logical volume from a physical
tape library that is externally connected to the virtual tape
server into the virtual storage region.
11. A virtual tape server (VTS) that processes a mount
request from a host system, comprising:
at least one virtual-tape drive (VTD) that receives a
logical-volume (L VOL) mount request from the host system;
a virtual storage region that stores the logical volume;
and
control means connected to the virtual-tape drive and
determining whether the logical volume is present in the virtual
storage region, and if it is determined that the logical volume is
not present in the virtual storage region, determining whether
the mount request is a write request, wherein
if it is determined that the mount request is a write
request, the control means notifies the host system of
completion of the mounting without reading the requested
logical volume from a physical tape library that is externally
connected to the virtual tape server into the virtual storage
reg10n.
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Application 12/947,155
THE REJECTIONS
The Examiner rejected claims 1 and 11under35 U.S.C. § 102(b) as
anticipated by Gibble (US 2004/0044853 Al; Mar. 4, 2004). Final Act. 3-
4_ 1
The Examiner rejected claims 2-8 and 12-172 under 35 U.S.C.
§ 103(a) as unpatentable over Gibble and Haustein (US 2008/0040723 Al;
Feb. 14, 2008). Final Act. 4--10.
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Gibble. Final Act. 10-11.
THE ANTICIPATION REJECTION
The Examiner finds that Gibble processes a mount request by using a
controller that determines whether a logical volume is present in a virtual
storage region of a virtual tape server and, if not, determines whether the
request is a write request. Final Act. 3; Ans. 2-3. The Examiner also finds
that, after determining that a mount request is a write request, the host
1 Throughout this opinion, we refer to ( 1) the Final Rejection mailed April 9,
2013 ("Final Act."); (2) the Appeal Brief filed July 29, 2013 ("Br."); and (3)
the Examiner's Answer mailed October 29, 2013 ("Ans.").
2 Although the Examiner omits claims 12 and 13 from this rejection, we
nevertheless presume that they are rejected over Gibble and Haustein due to
the similarity of claims 12 and 13 to other claims so rejected. The
limitations of claim 12 are similar to those recited in claims 2 and 3 which
were included in this rejection. Claim 13 is also similar to rejected claim 4.
Moreover, rejected claim 17 depends from claim 12 which, as noted above,
was omitted from the rejection. Given these similarities, we presume that
the Examiner intended to include claims 12 and 13 in this rejection, and we
deem the Examiner's error in this regard harmless.
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Application 12/947,155
system is notified that mounting is complete without reading the requested
logical volume from a physical tape library into the virtual storage region as
claimed. Final Act. 3; Ans. 3--4.
Appellants argue that while Gibble determines whether a mount
command is expected to include data to be written, this determination is not
performed if the logical volume is not present in the virtual storage region as
claimed. Br. 9-10. Appellants add that Gibble does not notify the host
system of mounting completion without reading the requested volume as
claimed in light of the Examiner's acknowledgement that Gibble's system
reads data into a cache. Br. 10-11. Appellants argue other recited
limitations summarized below.
ISSUES
Under § 102, has the Examiner erred by finding that Gibble discloses:
(1) using a controller to determine whether a logical-volume mount
request is a write request if it is determined that the logical volume is not
present in the virtual storage region, and, if the mount request is a write
request, notifying the host system of mounting completion without reading
the requested logical volume from a physical tape library into the virtual
storage region as recited in claim 1?
(2) a virtual tape server (VTS) with a control means that performs the
functions recited in claim 11?
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Application 12/947,155
ANALYSIS
Claim 1
We begin by noting that method claim 1 recites two key conditional
limitations in the last two clauses of the claim, namely ( 1) using a controller
that determines whether a logical-volume mount request is a write request if
the controller determines that the logical volume is not present in the virtual
storage region, and (2) if the mount request is a write request, notifying the
host system of mounting completion without reading the requested logical
volume from a physical tape library into the virtual storage region.
These two steps are merely optional, for they are only performed if
the associated conditions precedent are met. Therefore, these steps need not
occur to satisfy claim 1 under its broadest reasonable interpretation. See
Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 F. App'x 603, 607
(Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may
be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed."); see also Applera Corp. v.
Illumina, Inc., 375 F. App'x 12, 21 (Fed. Cir. 2010) (unpublished)
(affirming a district court's interpretation of a method claim as including a
step that need not be practiced if the condition for practicing the step is not
met). Therefore, Appellants' arguments regarding Gibble's alleged failure
to disclose these conditional limitations (Br. 9-11) are not commensurate
with the scope of the claim, for the conditions need not be satisfied to
anticipate claim 1. Because the Examiner's findings regarding the other
recited elements are undisputed, we are unpersuaded of error in the
Examiner's anticipation rejection for that reason alone.
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Nevertheless, the Examiner finds that Gibble discloses all limitations
of claim 1, including the conditional limitations. On this record, we are
unpersuaded of error in those findings.
First, we see no error in the Examiner's finding that Gibble's
controller determines whether a logical-volume mount request is a write
request if it is determined that the logical volume is not present in the virtual
storage region. Final Act. 3; Ans. 2-3. As shown in Gibble's Figure 6, a
library manager ( 1) receives a command from a host to mount logical
volumes in step 600; (2) evaluates the command to determine whether data
is expected to be written to the logical volume in steps 610 and 620; and, if
so, (3) mounts the logical volume if there is available space on physical
volumes in steps 630 to 660. Gibble i-fi-162, 64---67.
Although Appellants acknowledge Gibble' s write request
determination in Figure 6, Appellants nonetheless contend that this
determination is not conditioned on the logical volume not being present in
the virtual storage region as claimed. Br. 10. But Appellants do not
squarely address-let alone persuasively rebut-the Examiner's position
that is based on the fact that the very act of mounting a logical volume in
Gibble's Figure 6 involves a determination that the volume is not present in
the cache 160 (virtual storage region); otherwise, there is no need to mount
an already-mounted volume. Ans. 2. This finding has a rational basis given
Gibble's functionality, and has not been persuasively rebutted.
Nor do Appellants persuasively rebut the Examiner's position that, if
the mount request is a write request, Gibble notifies the host system of
mounting completion without reading the requested logical volume from a
physical tape library into the virtual storage region. Final Act. 3; Ans. 3--4.
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As the Examiner indicates, Gibble's library manager sends a message to the
host to indicate when the mount completed. Ans. 3 (citing Gibble i-f 67).
Then, the host may write a logical volume to the cache. See Gibble i-f 67.
To be sure, the Examiner acknowledges that Gibble reads data from a
physical tape library into the virtual storage region (cache }-functionality
that, at first blush, appears diametrically opposite to claim 1 that specifies
that notification is performed without such reading. But the Examiner's
position is based on Gibble's particular sequence where notification occurs
before data is read into the virtual storage region. Ans. 3--4. Accord Final
Act. 3 (noting that data is read into the cache after sending an
acknowledgement that mounting is complete).
Under the Examiner's position, then, when the host system is notified,
data has not yet been read into the virtual storage region. Therefore,
notification is sent without reading the logical volume into the virtual
storage region, despite this reading occurring later. See Ans. 3--4.
Nothing in the claim precludes this interpretation. As the Examiner
indicates, the claims do not recite that the logical volume is never read into
the virtual storage region, or that the host system is notified without ever
reading the logical volume into the region. Rather, the claims merely
require notification without reading the logical volume into the virtual
storage region-a limitation that is fully met when Gibble sends the
notification to the host system. Appellants' arguments to the contrary (Br.
10-11) are unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1.
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Claim 11
We also sustain the Examiner's rejection of independent claim 11
reciting a VTS with a control means that performs functions similar to those
recited in claim 1.
At the outset, we note that claim 11 is an apparatus claim with three
main elements that each perform active steps, namely (1) a virtual-tape drive
(VTD) that receives a logical-volume mount request; (2) a virtual storage
region that stores the logical volume; and (3) control means determining
whether the logical volume is present in the virtual storage region, and if not,
determining whether the mount request is a write request, and if a write
request is determined, the control means notifies the host system of
mounting completion without reading the requested logical volume into the
virtual storage region. Our emphasis underscores the fact that the claim does
not recite that the VTS' s three elements are configured to perform these
functions, but that they actually perform the functions.
Apparatus claims reciting active method steps have been held
indefinite under § 112(b ), for such claims raise the question of whether they
are infringed by devices that are merely capable of performing the recited
functions, or that they must actually perform those functions. See IP XL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005);
see also Rembrandt Data Technologies, LP v. AOL, LLC, 641F.3d1331,
1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting
transmitting method step). Nevertheless, the Examiner did not reject claim
11 on this basis, nor will we speculate in that regard here in the first instance
on appeal. Rather, we leave this question to the Examiner to consider after
our decision.
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In any event, the broadest reasonable interpretation of an apparatus
claim with structure that performs a function, which only needs to occur if a
condition precedent is met, still requires structure for performing the
function should the condition occur. Therefore, our interpretation of
apparatus claim 11 differs from the method claim because the structure,
namely the server with the three elements that perform the recited functions,
is present in the system regardless of whether the associated conditions are
met and the functions are actually performed.
Unlike claim 1, which is written in a manner that does not require all
steps be performed should the conditions precedent not be met as noted
previously, claim 11 is limited to structure that performs all recited
functions. In other words, apparatus claim 11 is narrower than method claim
1. To anticipate claim 11, then, the prior art must disclose the recited
structure expressly or inherently.
Nevertheless, for the reasons noted previously and by the Examiner
(Ans. 2--4), we see no error in the Examiner's position that Gibble discloses
such a structure. Appellants' arguments (Br. 11-12) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 11.
THE OBVIOUSNESS REJECTION OVER GIBBLE AND HAUSTEIN
Claims 2 and 3
We also sustain the Examiner's rejection of dependent claims 2 and 3,
both claims depending from claim 1. The claims recite determining a write
request using the controller either ( 1) on the basis of that the VTD has a
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Application 12/947,155
write-only attribute setting (claim 2), or (2) if a write-only flag is set in the
data information of the logical volume (claim 3).
Notably, both claims narrow the write request determination of claim
1-a determination that occurs if a logical volume is not present in the
virtual storage region. Therefore, both claims narrow a conditional
limitation in claim 1-a condition that need not be satisfied to anticipate
claim 1 as noted previously.
Nevertheless, the Examiner finds that Gibble discloses all limitations
of claims 2 and 3, including the conditional limitations of claim 1 from
which claims 2 and 3 depend. Despite Appellants' arguments to the contrary
(Br. 14--15), we see no error in the Examiner's reliance on Haustein's
"write" workload type attributes 114 in the table of Figures 3 and 5 for at
least suggesting using a write-only attribute setting or setting a write-only
flag which, as the Examiner explains, means that the next access is
anticipated or determined to be a write. Final Act. 5---6 (citing Haustein
i-f 37); Ans. 5 (citing Haustein i-f 74). Providing such a known technique
based on write-only attribute settings in connection with Gibble's write
request determination uses prior art elements predictably according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 2 and 3.
Claims 8 and 17
We also sustain the Examiner's rejection of claim 8 reciting that the
setting of write-only attributes is updated by ( 1) a command input from an
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operation terminal that is externally connected to the virtual tape server to
the controller, or (2) a command input from the host system to the virtual-
tape drive. Despite Appellants' arguments to the contrary (Br. 15-16), we
see no error in the Examiner's reliance on Haustein's table updating process
in paragraph 79 for at least suggesting updating write-only attributes via a
command input from a host. Final Act. 8-9; Ans. 5---6.
Appellants' contention that Haustein' s manually updating the table is
not the same as a command updating write-only attributes of a virtual-tape
drive (Br. 16) is unavailing. In short, Appellants do not squarely address-
let alone persuasively rebut-the Examiner's position based on host
commands associated with applications that are used to update Haustein's
table. Ans. 6. Accordingly, the weight of the evidence on this record favors
the Examiner's position.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8, and claim 17 not argued separately with particularity.
Claim 14
We also sustain the Examiner's rejection of claim 14 reciting, in
pertinent part, a data-transfer control section connected to a (1) virtual-tape
drive information database, and (2) virtual-tape information database.
The Examiner cites Haustein's Figure 5 in the rejection and the Answer as
teaching these databases, but articulates somewhat different positions
regarding which particular elements of this table correspond to the recited
databases. See Final Act. 9; see also Ans. 6-7. In the rejection, the
Examiner refers to each column of Haustein's Figure 5 "being a respective
table," but in the Answer, the Examiner maps Haustein's entire table to a
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"virtual-tape drive information storage region" and columns within the table
to a "virtual tape information storage region." Compare Final Act. 9, with
Ans. 6-7 (emphasis added). We emphasize "region" here, for that term is
not claimed, but rather a (1) virtual-tape drive information database, and (2)
virtual-tape information database.
Despite this inconsistency, the Examiner's position has a rational
basis, particularly in light of the scope and breadth of the term "database."
To be sure, Appellants refer to the virtual-tape drive information database
132 and virtual-tape information database 134 in paragraph 57 in connection
with their arguments. Br. 16. Moreover, paragraph 39 describes preferred
elements of these databases. Although these non-limiting descriptions
inform our understanding of the recited databases, Appellants' Specification
does not define the term "database" to so limit its interpretation. Accord
Spec. i-f 116 (noting that the term "preferably"- the very term used in
connection with the databases in paragraph 39-indicates optional features
of the invention).
Accordingly, we construe the term "database" with its plain meaning.
The term "database" is defined quite broadly as "[a]ny electronically-stored
collection of data." Alan Freedman, THE COMPUTER GLOSSARY 86 (9th ed.
2001). Accord In re Comiskey, 554 F.3d 967, 981 (Fed. Cir. 2009) (citing
this definition from an earlier edition). Therefore, the recited databases are
any electronically-stored collections of data pertaining to virtual-tape drive
information and virtual-tape information, respectively.
Given this interpretation, we see no error in the Examiner's reliance
on the identified data in Haustein's table in Figure 5 as corresponding to the
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recited databases. Appellants' arguments to the contrary (Br. 16) are
unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14.
Claim 15
We also sustain the Examiner's rejection of claim 15 reciting, in
pertinent part, a write attribute table of the virtual-tape drive, where the table
discriminates whether the drive is write-only. Despite Appellants' argument
that Haustein's tables in Figures 3 and 5 are directed to scheduled tasks (Br.
16), Appellants do not persuasively rebut the Examiner's position which is
based on functionality associated with the "write" attribute in Haustein' s
tables for at least suggesting a write-only attribute corresponding to a virtual
tape drive. See Ans. 7 (citing Haustein i-f 37). Accordingly, the weight of
the evidence on this record favors the Examiner's position.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15.
THE OBVIOUSNESS REJECTION OVER GIBBLE
We also sustain the Examiner's rejection of claim 9 over Gibble.
Notably, claim 9 depends from claim 1 and recites two conditional
limitations, the first of which is disputed. See Br. 17 (arguing that Gibble' s
paragraph 67 does not address or mention whether a logical volume is
present in the virtual storage region). But as noted previously, these
conditions need not be satisfied to meet claim 9 as noted previously. For
this reason alone, we are unpersuaded of error in the Examiner's rejection.
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Nevertheless, the Examiner finds that Gibble at least suggests the
conditional limitations of claim 9. Despite Appellants' arguments to the
contrary (Br. 17), we see no error in the Examiner's position that Gibble in
paragraph 67 at least suggests notifying the host system of mounting
completion if the logical volume is present for the reasons noted previously
and by the Examiner. Final Act. 10-11; Ans. 7-8.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 9, and claim 103 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting (1) claims 1 and 11 under § 102,
and (2) claims 2-10 and 12-17 under§ 103.
DECISION
The Examiner's decision rejecting claims 1-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 Although claim 10 recites a method "according to one of Claims 9" which
suggests a multiple dependent claim, we nonetheless presume that the claim
was intended to depend only from claim 9. Nevertheless, we leave the
question of whether this inconsistency renders claim 10 indefinite to the
Examiner to consider after our opinion.
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