Ex Parte Resch et al

Patent Trial and Appeal Board

Jul 27, 2018

15167482 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/167,482 05/27/2016 Jason K. Resch
89322 7590 07/31/2018
Garlick & Markison (IBM)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
CS00499C2/END920l65760US9 1054
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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
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, GARY W. GRUBE, and
TIMOTHY W. MARKISON
Appeal2018-002127
Application 15/167,482
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-15, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter a new ground of rejection.
1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 2. International Business Machines
Corporation is the Applicant for the instant patent application. See Bib. Data
Sheet.
1
Appeal2018-002127
Application 15/167,482
CLAIMED SUBJECT MATTER
Appellants' invention relates to data storage solutions within
computing systems. Spec. 1 :23-24. According to the Specification, data is
encoded to produce a set of encoded data slices. Spec. 2 7: 1-7; Fig. 8A. The
set of encoded data slices is stored in one set of dispersed storage networks
(DSNs), and then other DSNs "(e.g., when storing replicated slices)."
Spec. 27:4--11. In one example, a threshold number of encoded data slices is
sent to a local DSN, and the remaining encoded data slices are sent to a
second DSN. Spec. 27:15-18. Claim 1 is illustrative and reproduced below:
1. A method for execution by a computing device associated
a [sic] with a storage system that includes a plurality of dispersed
storage networks (DSN), the method comprises:
obtaining a set of encoded data slices for storage in the
storage system, wherein a data segment of data is dispersed
storage error encoded to produce the set of encoded data slices;
selecting, based on one or more factors from a set of
factors, one or more of a local vault, a regional vault, and a global
vault for storing the set of encoded data slices to produce a vault
selection;
determining, based on at least one factor from the set of
factors, a number of copies of the set of encoded data slices for
storing in each vault of the vault selection to produce a number
of copies;
identifying "Z" number of sets of storage units for storing
the number of copies of the set of encoded data slices, wherein
the "Z" number is equal to a number of vaults of the vault
selection times the number of copies; and
sending the number of copies of the set of encoded data
slices to the Z number of sets of storage units.
2
Appeal2018-002127
Application 15/167,482
REJECTIONS
Claims 1-3, 5-8, 10-13, and 15 stand rejected under 35 U.S.C.
§ I03(a), as being unpatentable over Mehr (US 2010/0274982 Al; Oct. 28,
2010) and Wolfe (US 2011/0055161 Al; Mar. 3, 2011). Final Act. 5-21.
Claims 4, 9, and 14 stand rejected under 35 U.S.C. § I03(a), as being
unpatentable over Mehr, Wolfe, and Pangal (US 2011/0167221 Al; July 7,
2011). Final Act. 21-25.
OPINION
Prima F acie Case of Obviousness
"In rejecting claims under 35 U.S.C. Section 103, the Examiner bears
the initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)). Obviousness is a question of law based on
findings of underlying facts. See Graham v. John Deere, 383 U.S. 1, 17
(1966). The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007), reaffirmed the framework for determining obviousness as
set forth in Graham. The KSR Court summarized the four factual inquiries
set forth in Graham that we apply in determining whether a claim is
reasonably likely to be unpatentable as obvious under 35 U.S.C. § I03(a) as
follows: (1) determining the scope and content of the prior art, (2)
ascertaining the differences between the prior art and the claims at issue, (3)
resolving the level of ordinary skill in the pertinent art, and (4) considering
objective evidence indicating obviousness or nonobviousness. KSR, 550
U.S. at 406.
3
Appeal2018-002127
Application 15/167,482
The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Mehr and Wolfe. Final Act. 5-7. In particular,
the Examiner finds that Mehr discloses many recited elements of claim 1
including, among other things, determining a number of copies of a set of
encoded data slices for storing in each vault of a vault selection to produce a
number of copies. Final Act. 5-6 ( citing Mehr ,r 39). The Examiner also
finds paragraph 39 of Mehr discloses "identifying 'Z' number of sets of
storage units for storing the number of copies of the set of encoded data
slices, wherein the 'Z' number is equal to a number of vaults of the vault
selection times the number of copies," as recited in claim 1 (hereinafter the
"disputed limitation"). Id. at 6. Although the Examiner acknowledges that
Mehr does not disclose producing the set of encoded data slices by dispersed
storage error encoding a data segment of data, the Examiner cites paragraph
23 of Wolfe for teaching this feature in concluding that the claim would
have been obvious. Id. at 7.
Appellants contend the rejection fails to establish a prima facie case of
obviousness because the rejection lacks a clear articulation of the reasons
why the claimed invention would have been obvious. App. Br. 6-8. In
particular, Appellants argue the rejection merely recites the disputed
limitation and quotes Mehr' s paragraph 39 and, therefore, lacks a clear
articulation of the reasons why these features would have been obvious. Id.
at 7-8 (citing KSR, 550 U.S. at 418; In re Kahn, 441 F.3d 977, 988 (2006)).
We are not persuaded of Examiner error. We emphasize the word
"obvious" here because Appellants appear to argue the Examiner's legal
conclusion of obviousness is deficient, but primarily contest the Examiner's
4
Appeal2018-002127
Application 15/167,482
findings concerning Mehr's scope and content-an underlying factual
inquiry. See Graham 383 U.S. at 17; KSR 550 U.S. at 406. Appellants'
contention is, therefore, problematic for that reason alone.
Appellants do not otherwise contest the adequacy of the Examiner's
conclusion of obviousness based on the underlying factual inquiries. The
Examiner concludes combining Mehr and Wolfe would have been obvious
"because it offers the advantage of maintaining the integrity of file data."
Final Act. 7. We find the Examiner articulated reasoning with some rational
underpinning for combining the teachings of Mehr and Wolfe. See KSR,
550 U.S. at 418.
Thus, we find that the evidence cited by the Examiner supports a
prima facie case of obviousness of the claimed subject matter of claim 1.
See Final Act. 5-7.
The Disputed Limitation
"If [the Examiner's] burden is met, the burden of coming forward
with evidence or argument shifts to the applicant. After evidence or
argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument." Oetiker, 977 F.2d at
1445; see also Rijckaert, 9 F.3d at 1532.
Appellants contend Mehr does not teach or suggest the disputed
limitation. App. Br. 9. We, therefore, begin by construing the disputed
limitation. We give 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). Here, claim 1 recites, in pertinent part,
5
Appeal2018-002127
Application 15/167,482
[a] determining ... a number of copies of the set of encoded
data slices for storing in each vault of the vault selection
to produce a number of copies;
[b] identifying "Z" number of sets of storage units for storing
the number of copies of the set of encoded data slices,
wherein the "Z" number is equal to a number of vaults of
the vault selection times the number of copies.
App. Br. 11 (Claims App.) (letter designations added for ease of reference).
We begin by noting step [b], the disputed limitation, recites that the
"Z" number is equal to a number of vaults of the vault selection times the
number of copies ("the number of copies per vault"). Although there are
two explicit antecedent bases in step [a] of the number of copies per vault,
for purposes of this Decision, we construe the number of copies per vault
nonetheless implicitly refers to the number of copies produced in step [a].
Appellants' Specification does not define the number of copies per
vault. Thus, under a broadest reasonable interpretation, the Examiner finds,
and we agree, that the number of copies per vault corresponds to the number
of copies in each vault of the vault selection. Ans. 4.
With this construction, we see no error in the Examiner's findings that
paragraph 39 of Mehr teaches the disputed limitation. According to the
Examiner, Mehr discloses the number of copies per vault as being the
number "1" because Mehr stores one copy in each vault. Ans. 4. The
Examiner further finds "'Z' would be equal to the set of storage locations
(Mehr used 3) times the number of copies per vault, which is a value of 1, so
Z would equal 3. Id. Mehr teaches that 3 replica copies were made, to be
held in the set of 3 storage locations." Ans. 4. We agree with the
Examiner's findings and adopt them as our own.
6
Appeal2018-002127
Application 15/167,482
Mehr is directed to distributing backup data among distributed and
cloud backup environments. Mehr, Abstract; ,r 5. Mehr's Figure 3 shows a
system for distributing backup data and is reproduced below:
206
"'300
SUPER PEER
D1STRJl3lirl0N
302
COMPONENT ~106
CLOUD
CLOUD 304
BA.CKL:P
COMPONENT
MO.NITOR 306
crnv!PONENT
208
PEER 1
210
PEER 2
FIG. 3
Mehr' s Figure 3 shows a system for distributing backup data across peers
and an online storage environment.
As illustrated in Mehr's Figure 3, a system 300 includes super peer 206. Id.
,r 37. Mehr's "[s]uper peer 206 includes a distribution component 302 that
manages locality of backup data amongst a set of peers. For example, the
set of peers can include super peer 206, peer 208, peer 210, and any other
peers associated with super peer 206." Id. ,r 38. Mehr's distribution
7
Appeal2018-002127
Application 15/167,482
component 302 dispenses "the backup data among the set of peers and/or
cloud 106 based upon a level of redundancy. In one example, the level of
redundancy can indicate that three replica copies of a portion of backup data
are to be scattered among the set of peers and/or cloud 106." Id. ,r 39
( emphasis added).
We emphasize the word "scattered" because a general-purpose
dictionary defines the term "scatter" as "to cause to [separate] widely."
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 1043 (vb. def la) (10th ed.
1993) (emphasis added); see also THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE 1612 (vb. def I) (3rd ed. 1992) (defining the term
"scatter" as "[t]o cause to separate and go in different directions"). Thus,
Mehr's scattering of the three replica copies among the set of peers and/or
cloud 106 causes the three replica copies to separate widely in different
directions among the set of peers and/or cloud 106. Contrary to Appellants'
arguments (Reply Br. 3--4), Mehr, then, at least suggests causing the three
replica copies to distribute among three separate storage locations in the set
of peers and/or cloud 106.
Mehr's "peers (e.g., super peer 206, peer 208, and peer 210) and cloud
106 can include a data store that retains at least backup data. The data store
can be, for example, either volatile memory or nonvolatile memory."
Mehr ,r 41. Thus, Mehr at least suggests identifying "3" (the claimed "'Z'
number") data stores (the claimed "sets of storage units") for storing the
replica copies (the claimed "number of copies of the set of encoded data
slices"), wherein the "Z" number is equal to "3" separate storage locations in
the set of peers and/ or cloud 106 ( the claimed "number of vaults of a vault
8
Appeal2018-002127
Application 15/167,482
selection") times "1" copy in each separate storage location ( the claimed
"number of copies").
Summary
For the above reasons, we are unpersuaded of Examiner error.
Accordingly, we sustain the rejection of: (1) claim 1; (2) independent claims
6 and 11, which Appellants argue relying on the arguments made for claim 1
(see App. Br. 9); and (3) claims 2-5, 7-10, and 12-15, which variously
depend, directly or indirectly, from claims 1, 6, and 11, and were not
separately argued with particularity (see id. at 9-10).
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1-15 under 35 U.S.C.
§ 112, ,r 2, pursuant to our authority under 37 C.F.R. § 4I.50(b). The
statutory provision 35 U.S.C. § 112, ,r 2, reads as follows: "The specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention."
"It is of utmost importance that patents issue with definite claims that
clearly and precisely inform persons skilled in the art of the boundaries of
protected subject matter." MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2173 (9th ed. Rev. 08.2017, Jan. 2018).
Regarding step [a] discussed above, which recites "determining ... a
number of copies of the set of encoded data slices for storing in each vault of
the vault selection to produce a number of copies," it is unclear what exactly
is "a number of copies." In other words, it is unclear whether "a number of
9
Appeal2018-002127
Application 15/167,482
copies" is (1) the actual copies of data that consequently produce a number
of the actual copies of data, or (2) solely the number itself. Further, if the
produced number of copies in step [a] is solely a number itself, it is unclear
whether the number represents (1) a total number of copies of a set of
encoded data slices stored in each vault of a vault selection, (2) an equal
number of copies of the set of encoded data slices stored in each vault of a
vault selection, or (3) another unrelated number of copies.
Accordingly, we find step [a] indefinite because it is amenable to at
least two plausible claim constructions discussed above. Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI Nov. 19, 2008) (precedential) (holding that
when a claim is amenable to two or more plausible claim constructions, the
claim is unpatentable under 35 U.S.C. § 112, ,r 2, as indefinite). See also
MPEP § 2173 .05(b) ( citing Miyazaki).
DECISION
We affirm the Examiner's decision to reject claims 1-15 under
35 U.S.C. § 103(a).
We enter a new ground of rejection for claims 1-15 under 35 U.S.C.
§ 112, ,r 2.
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
10
Appeal2018-002127
Application 15/167,482
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that 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 the appeal 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 prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 4I.50(b)(l), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
11
Appeal2018-002127
Application 15/167,482
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(±), 41.52(b ).
AFFIRMED
37 C.F.R. § 4I.50(b)
12