Ex Parte Rang et al

Patent Trial and Appeal Board

Oct 27, 2014

11616512 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/616,512 12/27/2006 Anton B. Rang SUNM070133PUS 2676
51344 7590 10/28/2014
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
REYES, MARIELA D
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
10/28/2014 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 ANTON B. RANG and HARRIET G. COVERSTON
____________________

Appeal 2012-006169
Application 11/616,512
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1–3, 6, 8, 9, and 11–20. Claims 4, 5, 7, 10, and 21 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection for claim 6.2

1 The real party in interest is Oracle America, Inc. by merger with Sun
Microsystems, Inc. to which the inventors assigned the invention (Appeal
Br. 1–2).
2 Our Decision is based on the Specification as filed on December 27, 2006
(“Spec.”); the Appeal Brief filed October 19, 2011 (“Appeal Br.’”); the
Examiner’s Answer mailed January 6, 2012 (“Ans.”); and the Reply Brief
filed March 6, 2012 (“Reply Br.”).
Appeal 2012-006169
Application 11/616,512
2
STATEMENT OF CASE
Appellants’ invention is directed to archiving a file that has multiple
file parts (Spec. p.1, ll.14–16). During an archiving operation for such a file,
a file part that has been archived to an archive device may be changed
directly by the file system in an object storage device, whereas a change to a
file part that has not been archived yet is stored in a log file until that file
part has been archived, at which point the changes stored in the log file for
that file part may be written to its respective object storage device (Spec. p.
6, ll. 11–22).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of archiving a file that has multiple file parts
stored on multiple object storage devices of a computer system,
wherein the file parts include first and second file parts and the
object storage devices include first and second object storage
devices, and wherein the first file part is stored on the first
object storage device and the second file part is stored on the
second object storage device, the method comprising:
saving the multiple file parts on one or more archive
devices;
allowing one or more changes to be made to the file
during the saving step;
establishing a journal file to receive at least one of the
changes made to the file during the saving step;
applying at least one of the changes made during the
saving step to one of the file parts stored on a respective object
storage device; and
applying at least one first part change to the first file part
stored on the first object storage device after the first file part
has been saved on a respective archive device, but before the
second file part has been saved, such that the at least one first
part change is not sent to the journal file;
Appeal 2012-006169
Application 11/616,512
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wherein the file parts saved on the one or more archive
devices do not include the one or more changes made to the file
during the saving step.
The claim limitations shown in emphasis are of particular interest to
our Decision on this appeal.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Malcolm ’725
Malcolm ’991
Berkowitz
US 5,675,725
US 5,684,991
US 7,395,387 B2
Oct. 7, 1997
Nov. 4, 1997
July 1, 2008
(filed Feb. 14, 2005)

REJECTION
The Examiner made the following rejection:
Claims 1–3, 6, 8, 9, and 11–20 are rejected under 35 U.S.C. § 103(a)
based on US Patent 5,675,725 (“Malcolm ’725”) in view of US Patent
7,395,387 (“Berkowitz”) and US Patent 5,684,991 (“Malcolm ’991”)(Ans.
4–15).
ANALYSIS
With respect to independent claims 1 and 13, Appellants argue that
the combination of references does not disclose the claim limitation
“applying at least one first part change to the first file part stored on the
first object storage device after the first file part has been saved on a
respective archive device, but before the second file part has been saved,
such that the at least one first part change is not sent to the journal file.” In
particular, the Appellants argue that while the Examiner acknowledges
Appeal 2012-006169
Application 11/616,512
4
Malcolm ’725 and Berkowitz do not disclose this limitation, Malcolm ’991
is also deficient to teach this limitation (Appeal Br. 5–10).
The excerpt of Malcolm ’991 cited by the Examiner teaches a
database that contains a record of all modified areas of files modified since
the last database was created (Ans. 6–7, 11, 14; Malcolm ’991, col. 2, ll. 15–
22). The database may be interrogated to establish which areas of files have
been modified and this information may then be used to permit the backing-
up of only modified portions of a file rather than the entire file (id.). To
perform backup using a file-by-file backup application, a modification file is
created, which contains the contents of the database and data from areas of
the file referred to in the database (id. at ll. 23–29). This file may then be
backed-up using a conventional backup application program (id.).
Alternatively, the modification file may not exist as a file per se but may
instead be simulated in such a way that the backup application interacts with
it as though it was an existing file (id. at ll. 30–35).
We agree with Appellants the excerpt of Malcolm ’991 relied upon in
the rejection does not teach or suggest the disputed limitation. In particular,
Malcolm ’991 does not teach that, during a saving operation of a file having
multiple file parts, changes are applied to a first file part stored on a first
object storage device after the first file part has been saved, but before the
second file part has been saved, such that the first part change is not sent to a
journal file.
We also disagree with the Examiner in finding the claims do not
require that the second file part be saved, only that the first file part be saved
before the second one, if this ever happens at all (Ans. 17). We agree with
Appellants that this is an error in the interpretation of the claim. The
preambles of both of claims 1 and 13 require the file has multiple file parts
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Application 11/616,512
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including “a first file part” and “a second file part”. The first limitations in
the bodies of these claims recite “saving the multiple file parts on one or
more archive devices.” (emphasis added.) Thus, the second file part is saved
on the archive device in claims 1 and 13. Independent claim 17 recites that
the multiple file parts include “one of the file parts” and “another of the file
parts” instead of a “first file part” and a “second file part,” as recited in
claims 1 and 13, but similarly recites that both are stored on the object
storage devices. Consequently, we agree with Appellants that, according to
all claims, the “second file part” or “another file part” is saved (Reply Br. 1–
2).
Dependent claims 2, 3, 8, 9, 11, and 12 depend from independent
claim 1, so our conclusion with respect to claim 1 applies to its dependent
claims as well.
Dependent claims 14–16 depend from independent claim 13, so our
conclusion with respect to claim 13 applies to its dependent claims as well.
Dependent claims 18–20 depend from independent claim 17, so our
conclusion with respect to claim 17 applies to its dependent claims as well.

NEW GROUND OF REJECTION
Rejection of Claim 6 under 35 U.S.C. § 112(d)
We enter a new ground of rejection for claim 6 under 35 U.S.C.
§ 112(d) as improperly dependent upon a canceled claim. Specifically,
claim 6 depends from claim 4, which was canceled by the Amendment filed
October 29, 2009.

Appeal 2012-006169
Application 11/616,512
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DECISION
For the above reasons, we do not sustain the rejection of claims 1–3,
6, 8, 9, and 11–20.
We enter a new ground of rejection for claim 6 under 35 U.S.C.
§ 112(d) pursuant to our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record.
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) (2009).

REVERSED
37 C.F.R. § 41.50(b)

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