Ex Parte Ni et al

Patent Trial and Appeal Board

Oct 2, 2014

12017545 (P.T.A.B. Oct. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIAN NI and JIE LIN1
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Appeal 2012-006160
Application 12/017,545
Technology Center 2400
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Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3, 5, 16, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Xerox Corporation.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims are directed to a method for determining storage
locations for a resource and copies thereof, with the storage locations being
associated with a node in a network of nodes that forms a system. App. Br.
4, 8 (claim 1). The claims focus on determining a number of copies for the
resource based upon a probability that a node will be down, and then
randomly selecting a number of nodes where copies of the resource may be
stored. See Spec. ¶¶ 77–78; claim 1. When a predetermined number of
requests have been received for the stored locations, a number of nodes are
re-selected, or recalculated, to store copies of the resource based upon a cost
of not satisfying a resource request. Id. at ¶ 145; claim 1.
Related Case
Appeal No. 2012-006154 (United States Patent Application No.
12/017,534 to Jian Ni, Jie Lin, Steven J. Harrington, and Naveen Sharma) is
a related case. Although we issue a separate opinion in each case, we note
that the claimed subject matter is similar, the applied prior art overlaps, and
many of the arguments made by Appellants, and findings and conclusions
made by the Examiner, are substantially the same.
Claims on Appeal
Claims 1, 3, 5, 16, and 17 are the claims on appeal. Independent
claim 1 as illustrative. Claim 1 recites:
1. A method for determining storage locations for a resource
and copies thereof, a storage location being associated with a
node in a network of nodes, the network of nodes forming a
system, comprising:
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(a) determining, when a resource first enters the system
for storage thereof, a number of copies of the resource to be
stored, based upon a probability that a node will be down;
(b) randomly selecting, when the resource first enters the
system for storage thereof, a number of nodes to store copies of
the resource thereon, the number of nodes being equal to the
determined number of copies of the resource to be stored; and
(c) re-selecting, when a predetermined number of
requests have been received for the stored resource, the nodes
to store copies of the resource thereon, based upon a cost of not
satisfying a resource request.

App. Br. 7, Claims Appendix.

Evidence Considered
Rabinovich US 6,256,675 B1 July 3, 2001
Karlsson US 2005/0283487 A1 Dec. 22, 2005

Kavitha Ranganathan et al., Improving Data Availability through Dynamic
Model-Driven Replication in Large Peer-to-Peer Communities, Proceedings
of the 2nd IEEE/ACM International Symposium on Cluster Computing and
the Grid (CCGRID.02) (2002) (hereinafter “Ranganathan”).

Giwon On et al., QoS-Controlled Dynamic Replication in Peer-to-Peer
Systems, Proceedings of Third International Conference on Peer-to-Peer
Computing (2003) (hereinafter “On”).

Examiner’s Rejection
Appellants seek review of the rejection of claims 1, 3, 5, 16, and 17
under 35 U.S.C. § 103(a) as unpatentable over On, Karlsson, and
Rabinovich.
Issue on Appeal
Based on Appellants’ arguments, we discuss the appeal by reference
to claim 1. The issue on appeal is whether the Examiner erred in finding the
combination of On, Karlsson, and Rabinovich teaches or suggests the
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limitation in claim 1 of “(c) re-selecting, when a predetermined number of
requests have been received for the stored resource, the nodes to store copies
of the resource thereon, based upon a cost of not satisfying a resource
request.”
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–15) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 16–26) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis and consider Appellants’ arguments seriatim, as they are presented
in the Appeal Brief, pages 3–6 and the Reply Brief, pages 2–3.

(i) Whether On, Karlsson, and Rabinovich Teach or Suggest Re-
selecting the Node to Store Copies of the Resource Thereon
Appellants contend On fails to teach or suggest re-selecting the nodes
to store copies of the resource thereon as required by claim 1. App. Br. 4–5.
Appellants generally argue, rather than teaching the disputed limitation, On
instead teaches the replacement of replicas with new replicas at the same
node. Id. In contrast to On, Appellants contend the claimed invention
requires the nodes for storing the copies are re-selected, meaning the re-
selected nodes must differ from those selected during the initial selection.
Id. Appellants rely upon an embodiment of On teaching that the
replacement scheme relates to creating new replicas during a simulation run
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when they reached quality of availability (“QoA”) does not satisfy the
required QoA. App. Br. 4. (citing On at page 5). Thus, according to
Appellants, On “teaches creating new replicas, not re-selecting nodes for
storing copies of the resource.” Id.
The Examiner first determines the broadest reasonable interpretation
of the claim terms “selecting” and “re-selecting,” as used in claim 1. Ans.
16–17. The meaning of the claim term “selecting,” according to the
Examiner, is “choosing” a node for purposes of replica placement, or
assigning that node. Id. The Examiner concludes “the term ‘re-selecting,’
as used in the Specification refers to a placement selection process occurring
after the initial selection step, in which a set of nodes for replica (copy)
placement may be ‘selected’ or ‘recalculated.’” Ans. 17 (citing Spec. ¶¶ 100,
145). The Examiner notes many of Appellants’ arguments are premised
upon an improper claim construction because there is nothing in the claim
language that precludes selection of a previously selected node in the re-
selecting step. Ans. 19–20. Under the broadest reasonable interpretation,
the Examiner concludes “re-selecting nodes for storing copies of the
resource thereon” may include selection of any node regardless of initial
selection. Ans. 10 (quoting claim 1). Appellants offer no persuasive
rebuttal to the Examiner’s proposed constructions. See Reply Br. 2–3.
The Examiner relies first upon Table 2 of On as teaching re-selecting
the nodes to store copies of the resource thereon as required by claim 1.
Ans. 6 (citing On, 4, Table 2 “replica replacement Local, UP, HA+UP3).
The Examiner also finds that the “replacement” scheme of On “is not limited
to substituting a copy of a resource on a single node, but rather includes
creating a new copy and/or replica placement according to different
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algorithms.” Ans. 17 (citing On, 3, col. 2, as teaching replacement schemes
performed by several algorithms). According to the Examiner, because the
“replica replacement” of On Table 2 refers to replica placement as distinct
from initial placement, On teaches the “re-select[ion of] nodes for storing
copies [(i.e. replicas)] of [a] resource thereon.” Id. The Examiner finds
reference to two distinct placement schemes in On (Random and UP) for the
initial and replacement phase further evidences that On teaches two distinct
phases or steps of replica placement. Id. at 17–18.
The Examiner also finds several embodiments of On execute different
replacement schemes and these teach replacement of replicas at different
nodes based upon distinct algorithms. Ans. 18–19 (citing On, 3 “Replica
Placement Algorithms”). The Examiner determines these replacement
schemes contradict Appellants’ argument that On only teaches the
replacement of replicas with new replicas at the same node. Id. Relying
upon these embodiments, the Examiner reasons On’s replacement schemes
may be distinct from that of the initial placement, and replicas may be
placed “on nodes other than the original.” Ans. 19. The Examiner also
relies upon On’s disclosure “that ‘different numbers and locations of replicas
for each original file and the access query number, peers’ storage capacity
and the number of live (i.e., up) peers affect the decision of creating replicas
for a given content at a given service time.’” Ans. 20 (quoting On, 3, col. 1
¶ 1). Appellants offer no persuasive rebuttal to the Examiner’s findings that
replicas are placed upon nodes other than the original based upon the cited
replacement schemes of On. See Reply Br. 2–3. We agree with the
Examiner’s findings.
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The system of On and that of Appellants’ claims are both directed to
optimal resource copy (replica) placement and use similar techniques; i.e.,
solution of an optimization problem subject to constraints. Compare Spec. ¶
100 (“optimization problem can be described as the following integer
programming problem”) with On, 3, col. 1, § 3b (“We can formulate the
replica placement problem as optimization problem as follows.”). We
disagree with both Appellants’ contention that On “merely teaches the
replacement of replicas with new replicas at the same node” and the
Appellants’ interpretation of the re-selecting step to prohibit the selection of
the same node. App. Br. 4 (emphasis added). We first determine the proper
claim scope for the claim limitations at issue.
We accord the claims their broadest reasonable interpretation
consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004). However, limitations appearing in the
Specification are not to be read into the claims. See In re Zletz, 893 F.2d
319, 321–22 (Fed. Cir. 1989). The Examiner offered a broad, but
reasonable, construction of the claim terms based upon a review of the
Specification. There is nothing in the Specification that precludes selection
of a previously selected node in the re-selecting step. Under the broadest
reasonable interpretation, re-selecting means choosing or recalculating any
node regardless of initial selection. Paragraph 145 of the Specification
explains, for the re-selecting step, “[t]he nodes on which the resource is
stored my [sic] be recalculated so as to minimize costs when a resource
request rate has be [sic] established.” Spec. ¶ 145. Further, the example
replication schemes from the Specification do not suggest the same node
could not be re-selected. See, e.g., Spec. ¶¶ 106–110. The surrounding
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claim language is also not restrictive of and therefore allows re-selection of
any node. While claim limitation 1(b) requires “randomly selecting,” the
random requirement is not recited for the “re-selecting” limitation 1(c).
Claim 1; Spec. ¶ 145 (“The nodes at which the resource is stored my [sic] be
selected randomly when a resource first enters the system. The nodes on
which the resource is stored my [sic] be recalculated so as to minimize costs.
. . .”). Because nothing precludes selection of a previously selected node in
the re-selecting step, we disagree with the premise of Appellants’ arguments
addressing a failure of On to teach the disputed limitation and, therefore, we
also disagree with Appellants’ conclusions of Examiner error.
Alternatively, we also agree the embodiments of On cited by the
Examiner suggest to one of ordinary skill in the art that replicas may be
placed on nodes other than the original. See Ans. 20, § [b]. On provides
examples of replica replacement algorithms and teaches “different variants
of these heuristics and improvement techniques can be used with light
modifications to enhance the efficiency and performance of our basic
heuristics.” On, 3 (“Replica Placement Algorithms”); see also On, 3
(explaining “individual files are replicated from their original peer location
to other peers” and “different numbers and locations of replicas for each
original file and the access query number, peers’ storage capacity and the
number of live (i.e., up) peers affect the decision of creating replicas”). The
Examiner’s findings were not persuasively rebutted or addressed by
Appellants. See Reply Br. 2–3. Based upon these teachings, we agree with
the Examiner that the combination of On, Ranganathan, and Rabinovich
teaches “re-selecting . . . the nodes to store copies of the resource thereon.”
Claim 1.
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(ii) Whether On, Karlsson, and Rabinovich Teach or Suggest Re-
selecting, When a Predetermined Number of Requests Have
Been Received for the Stored Resource, the Node to Store
Copies of the Resource Thereon – Challenge to Karlsson
Appellants argue that Karlsson does not teach or suggest “re-selecting
when a predetermined number of requests have been received for the stored
resource, the nodes to store copies of the resource thereon.” App. Br. 5.
The Appellants provide no persuasive additional argument or support as to
why Karlsson may be deficient.
The Examiner responds by noting “[i]t is Rabinovich, not Karlsson []
that is cited as teaching the proposed limitation ‘re-selecting, when a
predetermined number of requests have been received for the stored
resource, the nodes to store copies of the resource thereon.’” (emphasis
removed) (citing Final Office Action, 7–8).
We agree with the Examiner. The Examiner relies upon Karlsson as
teaching, “(re-)selecting the nodes to store copies of the resource thereon,
based upon a cost of not satisfying a resource request.” Ans. 7. Because
Appellants contend Karlsson fails to teach a limitation that the Examiner
never relied upon Karlsson to teach, Appellants have shown no error in the
Examiner’s findings or conclusion. Our analysis in Section (iii) addresses
Appellants challenge to Rabinovich as failing to teach the “when a
predetermined number of requests have been received for the stored
resource” limitation.
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(iii) Whether On, Karlsson, and Rabinovich Teach or Suggest Re-
selecting, When a Predetermined Number of Requests Have
Been Received for the Stored Resource, the Node to Store
Copies of the Resource Thereon – Challenge to Rabinovich
Appellants argue Rabinovich fails to teach “re-selecting, when a
predetermined number of requests have been received for the stored
resource, the nodes to store copies of the resource thereon.” App. Br. 5–7
(quoting claim 1); Reply Br. 2–3. The Examiner relies upon Rabinovich as
teaching node selection when a predetermined number of requests have been
received for the stored resource. Ans. 8–9 (explaining Examiner’s reliance
upon Rabinovich).
Appellants suggest one embodiment of Rabinovich teaches, when a
node has received a certain number of requests, it looks to migrate the
replica to another host. App. Br. 5. Further, Appellants contend the
migration of the replica in Rabinovich is node-centric because the trigger is
based upon the number of requests for the resource at that node. Id.; Reply
Br. 5. In contrast, Appellants’ argue the language of claim 1 demands the
trigger must be “based upon the number of request for the resource within
the system.” Id. (emphasis added).
Additionally, Appellants contend their claims require the re-selection
process be for multiple nodes when a predetermined number of requests
have been received for the stored resource. Id.; Reply Br. 2–3. Because
Rabinovich allegedly teaches only a single node is selected for migration
based upon the number of requests at the initial node for the resource,
Rabinovich cannot teach the claimed invention. Id. Appellants’ rely upon
the plural claim language: “re-selecting, when a predetermined number of
requests have been received for the stored resource, the nodes to store copies
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of the resource thereon, based upon a minimization of a storage cost,” as
support that their claims require re-selecting more than one node. Reply Br.
3.
The Examiner relies upon Rabinovich’s teachings related to “[a]
method for managing the placement of replicas of an object on hosts,” as
depicted in Figure 5, to teach “re-selecting, when a predetermined number of
requests have been received for the stored resource, the nodes to store copies
of the resource thereon.” Ans. 8 (quoting Rabinovich, col. 8, ll. 32–49; claim
1). The Examiner first finds the Specification discloses re-selection may
include migration of copies. Ans. 24–25 (quoting Spec. 27 ¶ 130 (“The
copies of file k originally stored at nodes selected by the file availability-
random scheme will now be migrated to the newly selected nodes. . . .”)).
Next, the Examiner explains Rabinovich teaches the replica may be migrated
or copied to another node based on the number of requests received by a
node for a replica, as admitted by Appellants. Id.
The Examiner responds to Appellants’ arguments by noting the
limitations Appellants’ rely upon “are not recited in the rejected claim(s).”
Ans. 24. Specifically, Appellants’ contention that “the reselection process is
for multiple nodes when a predetermined number of requests have been
received [within the system] for the stored resource” improperly reads into
the claims the emphasized limitations. Id. (emphasis added). The Examiner
finds nothing in the claims require the re-selection process be for multiple
nodes. Id. Likewise, the Examiner finds neither the claims nor the
Specification require the request for the resource be system centric as
opposed to node-centric, as argued by Appellants. Id.; App. Br. 6.
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Finally, the Examiner finds, even if the claims require re-selection for
multiple nodes, Rabinovich teaches or suggests the same. Ans. 24–25. The
Examiner finds Rabinovich’s description of multiple hosts and replicators
where replication is based on requests for multiple objects on multiple hosts
teaches to one of skill in the art that re-selection may occur for more than
one node. Id. (citing Rabinovich, col. 14, ll. 33–47). This finding was not
persuasively rebutted or addressed by Appellants. See Reply Br. 2–3.
We agree with the Examiner’s findings and conclusions as related to
the teachings of Rabinovich and the scope of claim 1. First, under the
broadest reasonable interpretation, re-selection may occur for one, or more
than one, node. The claim language of limitation 1(c) of “the nodes” derives
antecedent basis from the term “a number of nodes” in limitation 1(b).
Claim 1. “A number of nodes” can be one node because one is a number.
Also, the indefinite article “a” is also understood to carry the meaning of one
or more. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1342 (Fed. Cir. 2008) (“an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising’”). Therefore, re-selecting may be for one or
more nodes.
Regardless, we also agree with the Examiner’s finding that
Rabinovich teaches or suggests re-selection for multiple nodes. See
Rabinovich, col. 14, ll. 33–47. The Examiner’s finding that Rabinovich’s
description of multiple hosts and replicators teaches one of skill in the art
that re-selection may occur for more than one node is not persuasively
rebutted. Having made a prima facie case of obviousness, the burden shifts
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to Appellants to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
While the Appellants’ argue the “claimed invention recites a system
centric reselection process; whereas Rabinovich teaches a node centric
migration process,” such a distinction is not actually claimed. App. Br. 5.
The Appellants repeatedly import the limitation “within the system” to the
end of the claim language “based upon the number of requests for the
resources.” See App. Br. 5 ¶ 7, Reply Br. 2 ¶ 5. However, the Specification
does not use the phrase “within the system,” nor does the Specification
provide any indication that the number of requests for the stored resources
cannot occur at the node. Compare Appellants’ arguments at Reply Br. 2–3
with Spec. ¶ 89 (“three strategies to serve a user request initiated from node j
for file k and calculate the corresponding expected cost are described below”
infers that in at least some embodiments, selection may be initiated from a
node). The claims do not require a system wide request threshold, nor do
the claims preclude the re-selection process from being “node centric” (i.e.,
determined by a node in the system) as opposed to “system centric.”
Appellants state that dependent claims 16 and 17 stand or fall with the
patentability of independent claim 1. App. Br. 6. Because Appellants’
arguments against the rejection of claims 1, 16, and 17 are unpersuasive, we
sustain the Examiner’s rejection of those claims.

(iv) Claims 3 and 5
Appellants note in the “Status of Claims” that “Claims 1, 3, 5, 16, and
17 are appealed.” App. Br. 2. However, in the “Grounds of Rejection to be
Reviewed on Appeal,” Appellants only challenge the Examiner’s rejection
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of claims 1, 16, and 17. App. Br. 3. Because Appellants make no separate
arguments for the patentability of claims 3 and 5, which both depend from
claim 1, the Examiner’s rejection of these claims under 35 U.S.C. § 103(a)
as unpatentable over On, Karlsson, and Rabinovich is sustained for the
reasons discussed supra regarding claim 1.

CONCLUSION
The rejection of claims 1, 3, 5, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over On, Karlsson, and Rabinovich is affirmed.

DECISION
We AFFIRM the Examiner’s Final Rejection of claims 1, 3, 5, 16, and
17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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