Ex Parte Ohr et al

Board of Patent Appeals and Interferences

Nov 2, 2009

10856045 (B.P.A.I. Nov. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES P. OHR and THOMAS W. LANZATELLA
____________________

Appeal 2009-000050
Application 10/856,0451
Technology Center 2100
____________________

Decided: November 3, 2009
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 4, 6, 21 to 23,
26 to 29, 33, and 35 to 39 under authority of 35 U.S.C. § 134(a). Claims 5,

1 Application filed May 28, 2004. Appellants claim the benefit under
35 U.S.C. § 119 and 35 U.S.C. § 120 through various continuations of
provisional application 60/232,245, filed 9/12/00. The real party in interest
is Veritas Operating Co.
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7, 24, and 25 were indicated by the Examiner as being allowable if put into
independent form, incorporating the subject matter of their respective parent
claims.2 (App. Br. 2). Claims 8 to 20 have been cancelled. (App. Br. 14).
The Board of Patent Appeals and Interferences (BPAI) has jurisdiction
under 35 U.S.C. § 6(b).
Appellants’ invention relates to method for safely moving data from
one storage device to another by locking the data from modification during
the operation. In the words of Appellants:
It has been discovered that systems, methods, apparatus and software
can utilize storage resource locks to prevent modification (including
relocation) of data in the storage resource while a third-party copy
operation directed at the storage resource is occurring. A data
transport mechanism such as a data restore application requests that a
relevant portion of the storage resource be locked. Once locked, the
data transport mechanism requests a data mover to perform a third-
party copy operation whereby data is moved from a data source to the
locked portion of the storage resource. When the third party-copy
operation is complete, the data transport mechanism requests release
of the lock on the portion of the storage resource.

Accordingly, one aspect of the present invention provides a method.
The method includes requesting a lock on an allocated portion of a
storage resource. A third-party copy operation is initiated when a lock
grant indication is received. The third-party copy operation moves
data from a data source to the allocated portion of the storage
resource. Completion of the third-party copy operation is indicated
when the third-party copy operation is complete.

2 Claims 30 to 32 and 34 were also so indicated as allowable, but then made
subject to a later rejection in the Examiner’s Answer of 10/27/06.
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(Spec. 6, ¶¶ [17], [18].)

Claims 1 and 26 are exemplary:
1. A method comprising:

requesting a lock on an allocated portion of a storage resource;

initiating a third-party copy operation when a lock grant indication is
received,

wherein the third-party copy operation moves data from a second
storage resource to the allocated portion of the storage resource; and

indicating completion of the third-party copy operation when the
third-party copy operation is complete.

26. A computer readable medium comprising program instructions
executable on a processor, the computer readable medium being at least one
of an electronic storage medium, a magnetic storage medium, an optical
storage medium, and a communications medium conveying signals encoding
the instructions, wherein the program instructions are operable to implement
each of:

requesting a lock on an allocated portion of a storage resource;

initiating a third-party copy operation when a lock grant indication is
received,

wherein the third-party copy operation moves data from a second
storage resource to the allocated portion of the storage resource; and

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indicating completion of the third-party copy operation when the
third-party copy operation is complete.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Beal US 5,155,845 Oct. 13, 1992
Inagami US 5,506,980 Apr. 9, 1996
Phillips US 6,842,833 B1 Jan. 11, 2005
(filed Jun. 30, 1998)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 4, 6, 21 to 23, 26 to 29, 33, and 35 to 37 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Beal and Inagami.
R2: Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Beal and Inagami further in view of Phillips.
R3 (new rejection in Examiner’s Answer of 10/27/06): Claims 26 to 38
stand rejected under 35 U.S.C. § 101 for being directed to non-statutory
subject matter.
Appellants contend that the claimed subject matter is statutory and not
rendered obvious by Beal and Inagami alone, or in combination with
Phillips, for failure of the references to be properly combined, and for the
failure of the combination to teach all of the claimed limitations. The
Examiner contends that each of the claims is properly rejected.
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Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 and 35 U.S.C. § 103(a). The
issue turns on whether claims 26 to 38 encompass statutory subject matter,
(i.e., signals) and whether Beal and Inagami teach the claimed third-party
copy operation.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method for safely moving data using third
party copy techniques, for example in a Storage Area Network. (Spec. ¶
[02]). Third party copying of data is performed when data is transferred
from a first device, for example a server, to a second device, say another
server, by a third device, for example a data mover. (¶[10], ¶ [12]). To
protect the integrity of the transferring data, the storage devices are write
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protected, or “locked,” during the interval of the transfer. (¶ [17]). This
stops a fourth device from writing updated data to the storage devices in
the middle of the operation.
2. Beal teaches a disk storage system which includes an internal copy
service to write data from one volume of the system to another. (Col. 31,
ll. 40 to 44). To protect the integrity of the transfer, the copy service
requests the operating system to lock the volumes involved in the
process. (Col. 26, l. 34; col. 32, l. 24). The copying then takes place, and
at the end of that process, a signal indicating completion is issued. (Col.
32, l. 50).
3. Inagami teaches a multiprocessor system with a plurality of main
memories and shared extended memories. (Abstract). Data is swapped
out of the extended memories into the main memories when needed for
processing, in the manner of paging storage. (Col. 1, l. 18). This
swapping from one memory to another is performed by a special partial
write circuit. (Col. 3, l. 30). Inagami also teaches locking the memories
during from being wrongly written to during the swapping process. (Col.
3, l. 38).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988).
For post-prosecution analysis, our guiding courts use the following
analysis:
Patent claim is not invalid for indefiniteness unless it is
insolubly ambiguous; therefore, if meaning of claim is discernible,
claim is sufficiently clear to avoid invalidity on indefiniteness
grounds, even if interpreting claim is difficult, and construction is one
over which reasonable persons could disagree.

Bancorp Services LLC v. Hartford Life Insurance Co., 359 F.3d 1367 (Fed.
Cir. 2004).
However, during prosecution before this Office, while the Appellants
still have the opportunity to amend the claims, a higher standard of clarity is
required:
In particular, rather than requiring that the claims are insolubly
ambiguous, we hold that if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite.

Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (precedential opinion) (BPAI
2008).

Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
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allow.” Our reviewing court further states that “the words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The “ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. §§ 101, and 103. The prima facie case is presented
on pages 3 to 14 of the Examiner’s Answer. In opposition, Appellants
present a number of arguments.

Arguments with respect to the rejection
of claims 26 to 38
under 35 U.S.C. § 101 [R3]
The first issue of our review is that of statutory subject matter under
35 U.S.C. § 101. Such a claim for computer instructions embodied in a
signal only is not considered by this office to be statutory under 35 U.S.C.
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§ 101.3 This policy has been confirmed by the Court of Appeals for the
Federal Circuit in In re Nuijten. “A transitory, propagating signal like
Nuijten's is not a ‘process, machine, manufacture, or composition of matter.’
Those four categories define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable
subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Appellants argue that their claim is to a medium, not a signal per se.
(Reply Br. 13, bottom). Claim 26 reads in relevant part, “the computer
readable medium being . . . a communications medium conveying signals
encoding the instructions . . . .” As the Specification is not helpful in further
defining a communications medium (Spec. 14, ¶ [44]), common meaning
would interpret a communications medium as perhaps a wire, or perhaps a
carrier signal. The latter interpretation is clearly non-statutory. (In re
Nuijten, cited above). During prosecution in the USPTO, the Office has
been instructed to interpret claims reasonably but broadly, as the Appellants

3 See, e.g., In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). Ex Parte
Hartmann, No. 2006-1607, 2006 WL 2700810, at *4 (BPAI 2006) (non-
precedential). 'Signals' are not statutory subject matter. See also U.S. Patent
& Trademark Office, Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available
at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (emphasis in original) (“Interim
Instructions”).

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have the opportunity while still before the office to make clarifying
amendments. (See In re Zletz, cited above, and Ex parte Miyazaki, also cited
above). Thus, interpreting the claim with the broader carrier wave
interpretation, we find the noted claims encompass non-statutory subject
matter, and are properly rejected. The Appellants have not demonstrated
error in the Examiner’s rejection.

Arguments with respect to the rejection
of claims 1 to 4, 6, 21 to 23, 26 to 29, 33, and 35 to 37
and
claims 38 and 39
under 35 U.S.C. § 103(a) [R1][R2]
Claims 1 to 4, 6, 21 to 23, 26 to 29, 33, and 35 to 37 have been
rejected for being obvious over Beal and Inagami. Appellants argue that
Beal does not teach a third-party copy operation (App. Br. 3–7, middle). We
agree, and the Examiner agrees, but this is not conclusive as the Inagami
reference, not the Beal reference, was cited to teach the third-party copy
operation. (Answer 4, middle). Appellants then argue that the cited portion
of Inagami does not teach the third party copy. (App. Br. 7, middle). We
find that Inagami does indeed have such a teaching, at the points cited by the
Examiner. (See FF #3, above). Thus, we do not find these arguments
persuasive of error.
Finally, Appellants argue that Beal and Inagami are non-analogous
teachings, and cannot be combined and applied against the claims. We do
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not find Appellants’ logic convincing, as all the references and the
Appellants’ claims all address copying data from memory to memory, and
all even have a lock on the memory during the process. (See FF#1, #2, and
#3). We thus find the cited art analogous to the claims, and do not find error
in the rejection.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 26 to 38 under 35 U.S.C. § 101
or in rejecting claims 1 to 4, 6, 21 to 23, 26 to 29, 33, and 35 to 39 under
35 U.S.C. § 103(a) [R1 or R2].
DECISION
R1: The rejection of claims 1 to 4, 6, 21 to 23, 26 to 29, 33, and 35 to 37
under 35 U.S.C. § 103(a) for being obvious over Beal and Inagami is
affirmed.
R2: The rejection of claims 38 and 39 under 35 U.S.C. § 103(a) for being
obvious over Beal and Inagami further in view of Phillips is affirmed.
R3 (new rejection): The rejection of claims 26 to 38 under 35 U.S.C. § 101
for being directed to non-statutory subject matter is affirmed.

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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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