Ex Parte Resch

Patent Trial and Appeal Board

Jun 20, 2016

12749625 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121749,625 03/30/2010
89322 7590 06/22/2016
Garlick & Markison (IBM)
ATTN: MELANIE MURDOCK
P.O.Box 160727
Austin, TX 78716
FIRST NAMED INVENTOR
Jason K. Resch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CS00253 7379
EXAMINER
MOBIN, HASANUL
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
MMURDOCK@TEXASPATENTS.COM
ghmptocor@texaspatents.com
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON K. RESCH
Appeal2014-008346
Application 12/749,625 1
Technology Center 2100
Before ALLEN R. MacDONALD, LINZY T. McCARTNEY, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The real party in interest is identified as Cleversafe, Inc. App. Br. 2.
Appeal2014-008346
Application 12/749,625
STATEMENT OF THE CASE
Appellant's invention relates to dispersed storage of data slices.
Abstract. Claim 1 is exemplary of the matter on appeal:
1. A method for use in a dispersed storage system,
the method comprising:
generating a plurality of data slices from a block of data
to be stored in the dispersed storage system;
determining a plurality of dispersed storage units for
storing the plurality of data slices, by determining a
corresponding geographical location associated with each of the
plurality of dispersed storage units, and selecting each of the
plurality of dispersed storage units based on the corresponding
geographical location, so that the plurality of data slices
corresponding to the data block are not stored in a single
geographical location.
App. Br. 82 (Claims Appendix).
REJECTIONS
Claims 1-3, 5-12, and 14--18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gladwin et al. (US 2007 /0079082 Al; published
Apr. 5, 2007) ("Gladwin") in view of Chatley (US 2009/0144422 Al;
published June 4, 2009). Final Act. 4--10.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gladwin, Chatley, and Serqey (US 2006/0152761 Al;
published July 13, 2006). Final Act. 10-13.
2 The pages of the file copy of Appellant's Brief and Reply Brief are not
numbered. For purposes of this Decision, we treat as numbered the pages of
these Briefs.
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Application 12/749,625
ANALYSIS
The Examiner finds the combination of Gladwin and Chatley teaches
the claim 1 limitations. Final Act. 4--7. In particular, the Examiner finds
Gladwin teaches data slices stored in dispersed storage locations and relies
on Chatley for the disputed limitation:
[D]etermining a plurality of dispersed storage units for storing
the plurality of data slices, by determining a corresponding
geographical location associated with each of the plurality of dispersed
storage units, and selecting each of the plurality of dispersed storage
units based on the corresponding geographical location, so that the
plurality of data slices corresponding to the data block are not stored in
a single geographical location (emphasis added).
Id. at 6-7 (citing Chately i1i126, 129-131; Fig. lOA-lOC).
The Examiner additionally finds Chatley's load balancing includes
storing the requested files in geographic locations. Ans. 2-3 (citing Chatley
i1i126, 129-131; Fig. lOA.-lOC).
The Examiner further finds rationale to combine Gladwin and Chatley
for the benefit of storing, accessing, and manipulating data in a data
communications network while balancing loads on a plurality of
geographically distributed storage nodes as taught by Chatley. Id. at 7.
We are not persuaded by Appellant's argument Chately does not teach
the disputed limitation because Chatley is related to retrieval of information
in response to a request. App. Br. 4--5; Reply Br. 2--4. According to
Appellant, "Chatley retrieves data in response to download requests to
balance loading geographically." App. Br. 5. Instead, we agree with the
Examiner's findings because, while Chately relates to retrieval of
information, that information is stored information and is stored in
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Application 12/749,625
geographic locations. Ans. 2-3 (citing Chatley iii! 26, 129-131; Fig. lOA-
lOC).
We are not persuaded by Appellant's argument Chatley teaches away
from the claimed invention because "Chatley stores complete copies of each
file to be downloaded in each geographical location - the direct opposite of
the feature described in Claim 1." App. Br. 5---6. The Examiner finds
Gladwin teaches slices of data stored in dispersed storage units and relies on
Chatley for the different geographic locations associated with the dispersed
storage units. Final Act. 6-7; Ans. 3--4. We agree with the Examiner the
storing of complete data copies, rather than slices of data, is simply an
alternative and Appellant presents no persuasive evidence that would
discourage one of ordinary skill in the art to follow Chatley's teaching of
different geographic locations, discussed above. "A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (internal
quotation and citation omitted).
In view of the above, we are not persuaded by Appellant's arguments
and, instead, agree with the Examiner's findings. Appellant's arguments
assert an unreasonably narrow teaching of the cited references and
Appellant's argue the references individually whereas the rejection is based
on the combination of the references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 )( "[O]ne cannot show nonobviousness by attacking references
individually where, as here, the rejections are based on combinations of
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Application 12/749,625
references" (citations omitted)); Jn re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See Keller, 642 F.2d at 425.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on "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 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'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The Examiner's
findings are reasonable because the skilled artisan would "be able to fit the
teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR,
550 U.S. at 420-21.
On this record, Appellant does not present sufficient evidence that the
combination of the cited references was "uniquely challenging or difficult
for one of ordinary skill in the art" or "represented an unobvious step over
the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellant
provided objective evidence of secondary considerations, which our
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Application 12/749,625
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claim 10 as it recites a similar limitation and is not argued
separately. Claims 2-9 and 11-18 depend from claims 1 and 10, and are not
argued separately. Therefore, we also sustain the rejection of these claims.
DECISION
We affirm the Examiner's decision rejecting claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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