Ex Parte Montalvo et al

Patent Trial and Appeal Board

Jun 15, 2017

13446268 (P.T.A.B. Jun. 15, 2017)

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.
13/446,268 04/13/2012 Luis Montalvo THOM 5007 (PF110069) 1016
72109 7590 06/19/2017
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
NORTH TOWER, 6TH FLOOR
MORRISTOWN, NJ 07960-6834
EXAMINER
TRAN, BAO G
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
06/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent @ my ers wolin .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS MONTALVO, SERGE DEFRANCE, and
NICOLAS LE SCOUARNEC
Appeal 2017-000583
Application 13/446,268
Technology Center 2100
Before JOSEPH L. DIXON, ROBERT E. NAPPI, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—21, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to storage
systems. See generally Spec. 1. Claim 1 is exemplary:
1. A method for uploading in an on-line storage system a file
from a user client device through a gateway, said gateway being
connected to the user client device through a local area network
Appeal 2017-000583
Application 13/446,268
and to the on-line storage system through a wide area network,
said on-line storage system comprising a storage server coupled
to a target storage device in which the file is to be stored,
wherein the method comprises the following steps:
the gateway receives a file from the user client device;
the gateway stores the received file in a gateway storage
device;
the gateway checks with the storage server the presence
of the received file in the target storage device;
if said received file is not present in the target storage
device, the gateway uploads the received file to the target
storage device, and
if said received file is already stored in the target storage
device, the gateway receives from the storage server a link to
the file that is already stored in the target storage device.
References and Rejections
Claims 1, 5—8, 11, 12, 14, 15, 17, and 18 are rejected under 35
U.S.C. § 102 (e) as being anticipated by Prahlad (US 2013/0238572 Al,
pub. Sept. 12, 2013).
Claims 2—4, 9, 10, 13, 16, and 19-21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Prahlad and Ben-Shaul (US
2010/0094817 Al, pub. Apr. 15, 2010).
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Application 13/446,268
ANALYSIS
Anticipation
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Prahlad discloses “the gateway
checks with the storage server the presence of the received file in the target
storage device,” as recited in independent claim 1 (emphases added).1 See
App. Br. 8—10; Reply Br. 4—5.
The Examiner maps the claimed gateway to Prahlad’s cloud gateway
1540. See Final Act. 6; Ans. 2. With respect to the disputed limitation “the
gateway checks with the storage server the presence of the received file in
the target storage device” (emphasis added), the Examiner finds in Prahlad’s
paragraph 145, “the deduplication module 299 accesses the deduplication
database 297 to check if a copy or sufficient number of copies or instances
of the data object have already been appropriately stored on a cloud storage
site 115.” Ans. 3 (emphasis added; original emphases omitted). The
Examiner further finds “[t]he deduplication module 299 is one of the
components of the cloud gateway 154[0]” by citing Prahlad’s paragraph 281.
Ans. 3.
Prahlad’s paragraph 281 states: “the cloud gateway 1540 may utilize
components or modules within the data storage system 1610 (e.g., a
deduplication module 299 and/or a deduplication database 297) and/or
utilize components within the cloud gateway itself (e.g., data migration
components 1652).” Prahlad 1281 (emphasis added). Therefore, contrary
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Application 13/446,268
to the Examiner’s assertion, Prahlad’s paragraph does not teach “[t]he
deduplication module 299 is one of the components of the cloud gateway
154[Of (Ans. 3). Instead, that paragraph teaches the deduplication module
299 is a “component^ or module[] within the data storage system 1610.”
Prahlad 1281. Asa result, the Examiner has not shown Prahlad teaches “the
gateway checks with the storage server the presence of the received file in
the target storage device” (emphasis added) under the Examiner’s mapping.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 1.
Independent claim 7 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 7. Therefore, for
similar reasons, we reverse the Examiner’s rejection of independent claim 7.
We also reverse the Examiner’s anticipation rejection of
corresponding dependent claims 5—6, 8, 11, 12, 14, 15, 17, and 18.
Obviousness
The Examiner cites an additional reference for the obviousness
rejection of claims 2—4, 9, 10, 13, 16, and 19-21. The Examiner relies on
Prahlad in the same manner discussed above in the context of claim 1, and
does not rely on the additional reference in any manner that remedies the
deficiencies of the underlying anticipation rejection. See Final Act. 9—13.
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 2—4, 9, 10, 13, 16, and 19—21.
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Application 13/446,268
DECISION
We reverse the Examiner’s decision rejecting claims 1—21.
REVERSED
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