10150123 (B.P.A.I. Jul. 8, 2008)

Ex Parte Schwartz et al

Board of Patent Appeals and InterferencesJul 8, 2008

10150123 (B.P.A.I. Jul. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JEFFREY D. SCHWARTZ and GARY LEE THUNQUEST ____________________ Appeal 2008-0615 Application 10/150,1231 Technology Center 2100 ____________________ Decided: July 8, 2008 ____________________ Before: JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE 1 Application filed May 16, 2002. The real party in interest Hewlett- Packard Co. Appeal 2008-0615 Application 10/150,123 Appellants appeal from a final rejection of claims 1 to 43 under authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Appellants’ invention relates to storing user information (data) on a cluster of application servers where each application server has its own local storage device, and is adapted to perform point-in-time copies (PTC) of the stored data. In the words of the Appellants: One configuration of the present invention therefore provides a method for storing updatable user data using a cluster of application servers. The method includes; storing updateable user data across a plurality of the application servers, wherein each application server manages an associated local storage device on which resides a local file system for storage of the user data and for metadata pertaining thereto; receiving a point-in-time copy (PTC) request for a client; freezing the local file systems of the plurality of clustered application servers; creating a PTC of the metadata of each frozen local file system; and unfreezing the local file systems of the plurality of clustered application servers. (Spec., p. 2, middle). Claim 1 is exemplary: 1. A method for storing updatable user data using a cluster of application servers, said method comprising: storing updateable user data across a plurality of said application servers, wherein each said application server manages an associated local storage device on which resides a local file system for storage of the user data and for metadata pertaining thereto; receiving a point-in-time copy (PTC) request from a client; freezing the local file systems of the plurality of clustered application servers; 2 Appeal 2008-0615 Application 10/150,123 creating a PTC of the metadata of each of the frozen local file systems; and unfreezing the local file systems of the plurality of clustered application servers. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Spencer Jr. US 2002/0188610 A1 Dec. 12, 2002 Fujibayashi US 2003/0131278 A1 Jul. 10, 2003 Berkowitz US 2003/0149736 A1 Aug. 7, 2003 REJECTION Claims 1 to 43 stand rejected under 35 U.S.C. § 103(a) for being obvious over Berkowitz (‘736) and Spencer (‘610) in view of Fujibayashi (‘278). Groups of Claims: Claims 1 to 43 stand or fall together. (Br., p. 8, top). Claim 1 is representative. Appellants contend that the claimed subject matter is not rendered obvious by Berkowitz in combination with Spencer and Fujibayashi, for failure of the references to be properly combinable in a rejection, and for failure of the combination to teach claimed limitations. The Examiner contends that each of the claims is properly rejected. Rather than repeat the arguments of Appellants or the Examiner, we refer to the Brief and the Answer for their respective details. We consider in 3 Appeal 2008-0615 Application 10/150,123 this opinion only those arguments that Appellants actually made in the Briefs. All other arguments are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2 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. § 103(a). The issue turns on whether there is a legally sufficient justification for combining the disclosures of Berkowitz, Spencer and Fujibayashi, and whether the combination teaches freezing the local file systems as claimed. 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 (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)). 2 Appellants have not presented any substantive arguments directed separately to the patentability of the dependent claims or related claims in each group, except as will be noted in this opinion. In the absence of a separate argument with respect to those claims, they stand or fall with the representative independent claim. 4 Appeal 2008-0615 Application 10/150,123 “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., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 1740. In sustaining a multiple reference rejection under 35 U.S.C. § 103(a), the Board may rely on one reference alone without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). ANALYSIS From our review of the administrative record, we find that the Examiner has presented a prima facie case for the rejection of Appellants’ claims under 35 U.S.C. § 103(a). The prima facie case is presented on pages 4 to 7 of the Examiner’s Answer. In opposition, Appellants present a number of arguments. Arguments with respect to the rejection under 35 U.S.C. § 103(a) The first argument addresses the issue of whether the references Berkowitz, Spencer and Fujibayashi are properly combined in the rejection under 35 U.S.C. § 103(a). This argument is labeled the Could vs. Would issue in the Brief. (Br., p. 8 to 11). In the words of the Appellants, “Here, at best, the Examiner’s rejection merely establishes that the elements of the 5 Appeal 2008-0615 Application 10/150,123 present claims could have resulted by combining various pieces taken from the applied art. The rejection fails, however, to explain why the claimed invention would have been made.” (Br., p. 9, top). This issue goes to the heart of one of the Supreme Court’s major clarifications this year, as presented in KSR Int’l Co. v. Teleflex, Inc. (cited above). The Examiner has pointed out, with references to paragraph numbers, where Berkowitz teaches most of the elements of representative claim 1. (Ans., p. 4, top). Data is stored on system area networks (Berkowitz, ¶ 1); a point-in -time copy request is received from a client (¶ 38); the local file system is frozen (¶ 47); a PTC of the metadata is created (¶ 42); and the local file system is then unfrozen (¶ 47, “thawed”). Though the storage system (#308) is shown with multiple storage devices, the Examiner turns to Spencer (Spencer, Figure 4) to demonstrate that a system with multiple application servers, each with its own storage device, is old in the prior art. May these references be combined? Appellants argue that Spencer does not teach or motivate the change of architecture, as it is focused on solving another problem. (Br., p. 9, middle). “It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1732 (2007). In this case, we find that a person of ordinary skill in the art would want to gain the benefits of the architecture of Spencer and would apply it to Berkowitz, “as 6 Appeal 2008-0615 Application 10/150,123 pursuing the known options within his or her technical grasp.” (Id.) In a similar manner the teachings of Fujibayashi can be combined, demonstrating a local file system. We thus find in the context of the legal guidance of today that the references have been properly combined. Appellants have a second contention, however, namely that in Fujibayashi the “snapshots are NOT created when the files systems are frozen.” Without considering the merits of that teaching in Fujibayashi, we note that in Berkowitz the copy process is clearly shown to be performed on a frozen storage system (Berkowitz, ¶ 47), and indeed that is the teaching relied upon by the Examiner in her rejection. (Ans., p. 11, bottom). CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that the Appellants have not established that the Examiner erred in rejecting claims 1 to 43. DECISION The Examiner's rejection of claims 1 to 43 is Affirmed. 7 Appeal 2008-0615 Application 10/150,123 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)(1)(iv). AFFIRMED pgc HEWLETT-PACKARD COMPANY Intellectual Property Administration P.O. Box 272400 Fort Collins CO 80527-2400 8