Ex Parte Shodhan et al

Patent Trial and Appeal Board

Mar 28, 2014

11347081 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEERAJ SHODHAN, QINQIN WANG, LIK WONG,
and JOYDIP KUNDU

___________

Appeal 2011-003904
Application 11/347,081
Technology Center 2100
____________

Before ERIC B. CHEN, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003904
Application 11/347,081

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to a method of automatically managing
stored checkpoint data, including accessing a first user defined time period
that is related to multiple stored checkpoint data, identifying a first set of
checkpoint data having storage times that are within the first user defined
time period, identifying a second set of checkpoint data having storage times
that are older than the first user defined time period, and pruning the second
set of checkpoint data, according to a user specified process in proportion to
storage time of each checkpoint data of the second set of checkpoint data.
The older stored checkpoint data is more heavily pruned over recent stored
checkpoint data. (Abstract).
Claim 1 is exemplary, with disputed limitations in italics:
1. A computer-implemented method of managing
stored database checkpoint data, said method comprising:
accessing a first user defined time period, wherein said
first user defined time period is related to ages of a plurality of
stored database checkpoint data, and wherein each database
checkpoint data of said plurality of stored database checkpoint
data has an associated storage time;
identifying a first set of database checkpoint data having
storage times that are within said first user defined time period;
identifying a second set of database checkpoint data
having storage times that are older than said first user defined
time period; and
Appeal 2011-003904
Application 11/347,081

3

automatically pruning said second set of database
checkpoint data according to a user specified process in
proportion to storage time of each database checkpoint data of
said second set of database checkpoint data, wherein older
stored database checkpoint data is more heavily pruned over
recently stored database checkpoint data.

Claims 1-5, 7-12, 14-18, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Ali (US 2006/0053088 Al; Mar. 9, 2006) and
Sim-Tang (US 2005/0262097 Al; Nov. 24, 2005).
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ali, Sim-Tang, Hsu (US 7,058,664 B1; June 6, 2006), and Williamson
(US 3,674,009; July 4, 1972).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ali, Sim-Tang, and Hsu.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ali, Sim-Tang, Kan (US 2005/0144197 A1; June 30, 2005), and Vaitzblit
(US 2007/0005665 A1; Jan. 4, 2007).

ANALYSIS
We are persuaded by Appellants’ arguments (Br. 11) that the
combination of Ali and Sim-Tang would not have rendered obvious
independent claim 1, which includes the limitation “automatically pruning
said second set of database checkpoint data.”
The Examiner found that the Class C checkpoint of Ali corresponds to
the limitation “database checkpoint data.” (Ans. 5, 17 (citing Ali,
¶ [0314])). The Examiner further found that the decision block 1305 of Ali,
Appeal 2011-003904
Application 11/347,081

4
in which a determination is made if a conflicted protectable object is
excluded from a protected group, corresponds to the limitation
“automatically pruning.” (Ans. 6, 25-26 (citing Ali, ¶¶ [0132], [0133])).
Accordingly, the Examiner found that Ali teaches the limitation
“automatically pruning said second set of database checkpoint data.”
(Ans. 6). We do not agree.
Ali relates to “verifying data protected in the data protection system.”
(¶ [0002].) Figure 13 of Ali illustrates an overlap detection routine “for
detecting overlap of data sources contained in two or more protected groups”
(¶ [0026]), such that at decision block 1305, “[if] . . . the conflicted
protectable object is to be excluded from the current protected group, that
protectable object is removed from the current protected group but remains
in the existing protected group” (i.e., the claimed “automatically pruning”)
(¶ [0132]). Moreover, Figures 43 and 44 of Ali illustrate “a flow diagram of
a data transfer monitoring routine performed by a data protection system”
(¶ [0312]), such that “[t]he replication agent located at the storage
location 4305 receives, via the data mover, the transmitted records and the
Class C checkpoint and stores the transmitted records and Class C
checkpoint in a spill log 4313” (¶ [0314]).
However, the Examiner has provided insufficient evidence to support
a finding that the overlap detection routine of Ali (i.e., the claimed
“automatically pruning”) is applied to the replication agent of Ali, such that
the checkpoints are removed. Accordingly, the Examiner has provided
insufficient evidence to support a finding that Ali teaches that limitation
“automatically pruning said second set of database checkpoint data.” Thus,
we are persuaded by Appellants’ argument that “the ‘objects’ are not any
Appeal 2011-003904
Application 11/347,081

5
type of checkpoint described in Ali” and “no explanation or evidence [has
been provided] to show that Ali applies a similar ‘pruning’ technique to any
type of checkpoint.” (Br. 11).
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2-5, 7, and 21 depend from independent
claim 1. We do not sustain the rejection of claims 2-5, 7, and 21 under
35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 1.
Independent claims 8 and 15 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 8 and 15, as well as dependent claims 9-12, 14, 16-18,
and 20, for the same reasons discussed with respect to claim 1.
Claims 6 and 13 depend from independent claims 1 and 8,
respectively. Hsu and Williamson were cited by the Examiner for teaching
the additional features of claims 6 and 13. (Ans. 10-11). However, the
Examiner’s application of Hsu and Williamson does not cure the above
noted deficiencies of Ali.
Claim 19 depends from independent claim 15. Hsu was cited by the
Examiner for teaching the additional features of claim 19. (Ans. 12-13).
However, the Examiner’s application of Hsu does not cure the above noted
deficiencies of Ali.
Claim 22 depends from independent claim 1. Kan and Vaitzblit were
cited by the Examiner for teaching the additional features of claim 22.
(Ans. 13-14). However, the Examiner’s application of Kan and Vaitzblit
does not cure the above noted deficiencies of Ali.

Appeal 2011-003904
Application 11/347,081

6
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 15-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Independent claim 15 recites “[a] tangible computer readable storage
medium.” Appellants’ Specification discloses that:
The term “computer-readable medium” as used herein
refers to any medium that participates in providing instructions
to processor 404 for execution. Such a medium may take many
forms, including but not limited to, non-volatile media, volatile
media, and transmission media. . . . Transmission media can
also take the form of acoustic or light waves, such as those
generated during radio wave and infrared data
communications.
(Spec. ¶ [0056] (emphasis added)). Accordingly, claims 15-20 are directed
to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57
(Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is not a
‘process, machine, manufacture, or composition of matter.’ . . . [T]hus, such
a signal cannot be patentable subject matter.”); see also MPEP § 2106 (I)
(“Non-limiting examples of claims that are not directed to one of the
statutory categories . . . [include] transitory forms of signal transmission (for
example, a propagating electrical or electromagnetic signal per se.”)).
This decision contains a new ground of rejection pursuant to
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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
Appeal 2011-003904
Application 11/347,081

7
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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 ….

DECISION
The Examiner’s decision to reject claims 1-22 under 35 U.S.C.
§ 103(a) is reversed.
New ground of rejection has been entered under 37 C.F.R. § 41.50(b)
for claims 15-20, rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

REVERSED
37 C.F.R. § 41.50(b)

msc