Ex Parte Rand et al

Board of Patent Appeals and Interferences

Mar 23, 2010

10412043 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID LEROY RAND and LLOYD ALAN POSTON
____________________

Appeal 2009-003639
Application 10/412,0431
Technology Center 2100
____________________

Decided: March 23, 2010
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 10, 2003. The real party in interest is Quantum
Corp. (App. Br. 2.)
Appeal 2009-003639
Application 10/412,043

2
STATEMENT OF THE CASE
The Appellants appeal from the Examiner’s rejection of claims 1-28
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appellants’ Invention
Appellants invented a data backup system, device, and method that
copies data from a primary data volume to a backup data volume. The
system copies from the primary data volume to the backup data volume the
data written to the primary data volume as well as a stamp indicating when
the data was written to the primary data volume. When necessary, the
system restores data on the primary data volume by generating an image of
the primary data volume at a particular specified point-in-time based on the
data stored (copied) on the backup data volume. During restoration, the
system also executes read/write requests utilizing the image of the primary
data volume instead of the primary data volume (in need of restoring).
(Spec. ¶¶ [0004], [0015]-[0016], [0033].)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of restoring data on a primary data volume,
the method comprising:

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed July 23, 2007; and Reply Brief (“Reply Br.”) filed December 18, 2007.
We also refer to the Examiner’s Answer (“Ans.”) mailed October 18, 2007.
Appeal 2009-003639
Application 10/412,043

3
generating an image of the primary data volume at a
specified point-in-time based on data stored on a backup data
volume,
wherein the data stored on the backup data volume
includes data written to the primary data volume and stamps to
indicate when the data was written to the primary data volume;
restoring the primary data volume based on the generated
image of the primary data volume; and
while the primary data volume is being restored,
satisfying read/write requests to the primary data volume using
the generated image of the primary data volume rather than the
primary data volume.

References
The Examiner relies on the following reference as evidence of
unpatentability:
Walker US 6,418,539 B1 Jul. 9, 2002

Ohran US 6,871,271 B2 Mar. 22, 2005
(filed Dec. 20, 2001)

West US 6,912,629 B1 June 28, 2005
(filed Jul. 28, 1999)

Autrey US 6, 915,315 B2 Jul. 5, 2005
(Continuation of Appl. No. 09/657, 291 filed Sept. 8, 2000)

Microsoft Computer Dictionary 267 (5th ed.).

Rejections on Appeal
The Examiner rejects claims 1, 2, 9, 10, and 12 under 35
U.S.C. § 103(a) as being unpatentable over the combination of West and
Walker.
Appeal 2009-003639
Application 10/412,043

4
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, and Autrey.
The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of West, Walker, and Ohran.
The Examiner rejects claims 6-8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, Ohran, and Autrey.
The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, and Autrey.
The Examiner rejects claims 13 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of West and Walker.
The Examiner rejects claims 14-16 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, and Ohran.
The Examiner rejects claims 17-19 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, Ohran, and Autrey.
The Examiner rejects claims 21 and 28 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of West and Walker.
The Examiner rejects claims 22-24 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, and Ohran.
The Examiner rejects claims 25-27 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Walker, Ohran, and Autrey.

ISSUE
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is as follows.
Do Appellants establish that the Examiner erred in finding the
combination of the West and Walker references collectively teaches or
Appeal 2009-003639
Application 10/412,043

5
suggests: (1) data stored on the backup data volume includes data written to
the primary data volume and stamps to indicate when the data was written to
the primary data volume; and (2) while the primary data volume is being
restored, satisfying read/write requests to the primary data volume using the
generated image of the primary data volume rather than the primary data
volume?

FINDINGS OF FACT (FF)
West Reference
1. West describes a system and method “for retrieving data . . .
stored on a backup or secondary storage system . . . to a local storage system
. . . [by] transferring . . . a point-in-time copy of primary system data from a
secondary storage system to the local system.” (Abstract.) West describes
generating (producing and/or supplying) a point-in-time copy (image) of
primary system data utilizing data stored on a remote secondary system
(backup volume) (Col. 3, ll. 36-46; col. 4, ll. 36-43; col. 7, l. 20 to col. 8, l.
30):
In conducting the point-in-time copy from the secondary
storage controller 110 to the primary storage controller 104, the
data information is copied to the disk array 108, through
primary storage controller 104 in the same manner as data is
copied to disk array 120 during normal remote copying. The
data transfer creates a local point-in-time copy that is the same
as the remote point-in-time copy.
(Col. 8, ll. 23-29.)
2. West describes restoring data on a primary data storage system
utilizing the generated point-in-time copy of the primary system data from
Appeal 2009-003639
Application 10/412,043

6
the remote secondary storage system. (Col. 3, ll. 33-52; col. 4, ll. 33-43; col.
7, l. 20 to col. 8, l. 30)
3. West describes storing a point-in-time copy of primary system
data to the remote secondary storage system, and storing identifying
information for the point-in-time copy including time of transfer information
(a transfer/copy time stamp) in the memory of the primary storage
controller:
In a preferred embodiment, the data is asynchronously
transmitted to the secondary system 105 so that the point-in-
time copy is identifiable. Information related to which volume
was transferred to the remote location and the time of the
transfer is stored in the shared data and program store, . . . of
the primary storage controller. . . .
. . . .
. . . In the preferred method, this type of information is
stored in the shared program and data store 226 (FIG. 2) but
may also be stored in the cache memory and comprises only the
necessary information to uniquely and unambiguously identify
remote copy volumes and when such a remote copy was
transmitted to the secondary system 105. The information can
be stored as a lookup table if the asynchronous scheme is based
on volumes. Otherwise, a time stamp may be sufficient.

(Col. 6, l. 64 to col. 7, l. 5; col. 7, ll. 36-44.)

Walker Reference
4. Walker describes a computer memory storage system divided
into redundant subsystems (Abstract; col. 1, ll. 12-16), that redirects read
and write operations to a backup mirrored storage device when the system
detects a failure of the primary storage device. (Abstract; col. 6, ll. 11-20.)

Appeal 2009-003639
Application 10/412,043

7
PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought – the so-called “prima
facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is
on the USPTO “to produce the factual basis for its rejection of an application
under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)). The “prima facie case” serves as a procedural mechanism
that shifts the burden of going forward to the applicant, who must produce
evidence and/or argument rebutting the case of unpatentability. See Oetiker,
977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
The Board of Patent Appeals and Interferences’ (Board’s) role on
appeal is to, “review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b) (2006). An appellant has the opportunity on
appeal to the Board to demonstrate error in the Examiner’s position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection 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), overruled in part on other grounds, KSR, 550
U.S. at 422).
The Board panel then reviews the rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
Appeal 2009-003639
Application 10/412,043

8
produced thereon. See Oetiker, 977 F.2d at 1445 (“In reviewing the
examiner’s decision on appeal, the Board must necessarily weigh all of the
evidence and argument.”) (emphasis added); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (appeal brief must include “[t]he contentions of appellant
with respect to each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on”). Specifically, the
Board reviews the particular finding(s) contested by an appellant anew in
light of all the evidence and argument on that issue.

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415, 416. The operative question is
Appeal 2009-003639
Application 10/412,043

9
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 417.

ANALYSIS
Appellants contend that: (1) “the West reference does not disclose
both a backup data volume and an image of the primary data volume” (App.
Br. 6); (2) “the West reference does not disclose the feature of ‘generating
an image of the primary data volume at a specified point-in time based on
data stored on a backup data volume’” (App. Br. 7); (3) “the West reference
fails to disclose ‘stamps to indicate when the data was written to the primary
data volume’” (App. Br. 8); (4) “the West reference does not disclose the
feature of ‘restoring the primary data volume based on the generated image
of the primary data volume’” (App. Br. 8); and (5) “the Walker reference
does not disclose, ‘while the primary data volume is being restored,
satisfying read/write requests to the primary data volume using the generated
image of the primary data volume rather than the primary data volume’”
(App. Br. 9). The Examiner, on the other hand, finds that “West teaches a
method of restoring data on a primary data volume . . . wherein the data
stored on the backup data volume includes data written to the primary data
volume and stamps.” (Ans. 4.) The Examiner also finds that “Walker
teaches while the primary data volume is being restored, satisfying
read/write requests to the primary data volume using the generated image of
the primary data volume rather than the primary data volume.” (Ans. 5.)
Accordingly, we decide the question of whether West and Walker
collectively teach or suggest data stored on a backup data volume including
stamps to indicate when the data was written to a primary data volume, and
Appeal 2009-003639
Application 10/412,043

10
during restoration of a primary data volume, satisfying read/write requests to
the primary data volume using a generated image of the primary data
volume.
After reviewing the record on appeal, we agree with Appellants and
we find the West and Walker collectively do not teach or suggest data stored
on a backup data volume including stamps to indicate when the data was
written to a primary data volume, and during restoration of a primary data
volume, satisfying read/write requests to the primary data volume using a
generated image of the primary data volume. The West reference describes
generating a point-in-time copy (image) of primary system data utilizing
data stored on a remote secondary system (backup volume), and restoring
data on a primary data storage system utilizing the generated point-in-time
copy. (FF 1, 2.) The West reference also describes storing a point-in-time
copy of primary system data to the remote secondary storage system, and
storing identifying information for the point-in-time copy including time of
transfer information (a transfer/copy time stamp) in the memory of the
primary storage controller. (FF 3.) West does not disclose, teach, or suggest
a data record including a time stamp stored on a backup device; much less a
time stamp indicating when the data was written to a primary data volume,
as recited in Appellants’ claim 1.
The Walker reference describes a computer memory storage system
divided into redundant subsystems, which redirects read and write
operations to a backup mirrored storage device when the system detects a
failure of the primary storage device. (FF 4.) Thus, Walker teaches
redirecting read and write operations to a mirrored copy of the primary
storage device on a backup storage device. Walker does not teach, and the
Appeal 2009-003639
Application 10/412,043

11
West and Walker references collectively do not teach, satisfying read and
write operations (i.e., performing write operations to and read operations
from) a point-in-time copy of the data of the primary data volume.
Thus, Appellants persuade us that the Examiner erred in finding the
combination of the West and Walker references collectively teaches or
suggests: (1) data stored on the backup data volume includes data written to
the primary data volume and stamps to indicate when the data was written to
the primary data volume; and (2) while the primary data volume is being
restored, satisfying read/write requests to the primary data volume using the
generated image of the primary data volume rather than the primary data
volume. We, therefore, cannot sustain the Examiner’s obviousness rejection
of the independent claim 1.
Appellants’ other independent claims 13 and 21 include a similar
limitation directed to satisfying read/write requests to the primary data
volume using the generated image of the primary data volume during
restoration of the primary data volume. Appellants’ dependent claims 2-12,
14-20, and 22-28 also include this limitation because of their dependence
upon their respective base independent claims. Thus, Appellants also
persuade us of error in the Examiner’s obviousness rejections of independent
claims 13 and 21, and dependent claims 2-12, 14-20, and 22-28. Each of the
Examiner’s obviousness rejections include the same basis of error – i.e., the
finding that “Walker teaches while the primary data volume is being
restored, satisfying read/write requests to the primary data volume using the
generated image of the primary data volume rather than the primary data
volume” (Ans. 5). We, therefore, also cannot sustain the Examiner’s
obviousness rejections of claims 2-28.
Appeal 2009-003639
Application 10/412,043

12

CONCLUSION OF LAW
On the record before us, we find that Appellants have established that
the Examiner erred in finding the combination of the West and Walker
references collectively teaches or suggests: (1) data stored on the backup
data volume includes data written to the primary data volume and stamps to
indicate when the data was written to the primary data volume; and (2) while
the primary data volume is being restored, satisfying read/write requests to
the primary data volume using the generated image of the primary data
volume rather than the primary data volume.

DECISION
We reverse the Examiner’s rejection of claims 1-28 under 35
U.S.C. § 103(a).

REVERSED

erc

Kraguljac & Kalnay
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131