Ex Parte Soneji et al

Patent Trial and Appeal Board

Dec 22, 2014

11876191 (P.T.A.B. Dec. 22, 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.
11/876,191 10/22/2007 DEEPAK SONEJI FLEX-37200 5751
28960 7590 12/22/2014
HAVERSTOCK & OWENS LLP
162 N WOLFE ROAD
SUNNYVALE, CA 94086
EXAMINER
ROLAND, GRISELLE CORBO
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
12/22/2014 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 DEEPAK SONEJI and EVAN ZHANG
____________________

Appeal 2012-007364
Application 11/876,191
Technology Center 2100
____________________

Before JEFFREY S. SMITH, MICHAEL J. STRAUSS, and
CHRISTA P. ZADO, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007364
Application 11/876,191

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 8, 14, and 20–28. Claims 2, 4–7, 9–13, and 15–19 are canceled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to data recovery in an enterprise data storage
system. Abst. Claim 1, reproduced below, is representative of the claimed
subject matter with the disputed limitations emphasized in italics:
1. A system for providing testing data, the system comprising:
a backup storage system;
a backup database stored within the backup storage system,
wherein:
the backup database replicates data stored within a
primary database; and
the primary database is stored on a primary storage
system in communication with the backup storage system and
in communication with computational devices of a plurality of
distinct entities to maintain data for the plurality of distinct
entities;
a processor communicatively coupled to the backup storage
system, the processor having instructions to generate a virtual
database as a plurality of software pointers respectively
associated with data elements of the backup database without
replicating the data elements of the backup database; and
an interface to the virtual database allowing access by a
computational device of at least one of the distinct entities,
whereby test data may be retrieved from the backup database by
the computational device of the at least one of the distinct
entities over the interface.

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Application 11/876,191

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Randal
Asgar-Deen
US 2005/0223043 A1
US 7,552,358 B1
Oct. 6, 2005
June 23, 2009

REJECTIONS1
The Examiner rejected claims 1, 3, 8, 14, and 20–28 under 35 U.S.C.
§ 103(a) as being unpatentable over Randal and Asgar-Deen. Ans. 10–24.

APPELLANTS’ CONTENTION
Because Asgar-Deen’s pointers “point internally within the third host
165 to data elements that are replicated” they fail to teach or suggest the
disputed limitation including without replicating the data element of the
backup database. App. Br. 9.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4–9)
and Reply Brief (Reply Br. 1–3), the issue presented on appeal is whether

1 Appellants argue the rejection of claim 1. Separate patentability is not
argued for claims 3, 8, 14, and 20–28. “A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence).
Further, merely restating with respect to a second claim an argument,
previously presented with respect to a first claim, is not an argument for
separate patentability of the two claims. Therefore, based on Appellants’
arguments, we decide the appeal of claims 1, 3, 8, 14, and 20–28 based on
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2012-007364
Application 11/876,191

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the Examiner erred in finding the combination of Randal and Asgar-Deen
teaches or suggests the disputed limitation.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 9–24) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 24–27) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants contend Asgar-Deen’s teaching of pointers is insufficient
because the pointers are not associated with data elements of the backup
database so as to avoid replicating the data elements of the backup database.
App. Br. 9. Instead, according to Appellants, Asgar-Deens pointers point
internally within third host 165 to data elements that are replicated. Id. The
Examiner responds by finding Asgar-Deen describes backup metadata
objects that point to images (i.e., pointers associated with data elements of a
backup) and use of the metadata points to existing images, making it
“possible to avoid creating full images of the secondary data objects
themselves, which would have resulted in duplication of data.” Ans. 24.
The Examiner concludes combining Randal’s teaching of a processor having
instructions to generate a virtual database respectively associated with data
elements of the backup database with Asgar-Deen’s teaching of pointers to
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Application 11/876,191

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avoid duplication of data would result in teaching or suggesting the disputed
claim limitation. Ans. 12–13.
We agree with the Examiner. Appellants fail to provide sufficient
evidence or argument to persuade us Asgar-Deen’s teaching of pointers is
limited to internal use within a host and is not applicable to data elements of
different databases as required by the disputed limitation of claim 1. Nor do
Appellants explain why Asgar-Deen’s teaching of pointers so as to avoid
data duplication is inapplicable to Randal’s second backup aggregation. In
particular, although Asgar-Deen’s use of pointers may not be used to avoid
duplication between the first and second backup aggregations or between the
primary data objects and the second backup aggregation, as conceded by
Appellants, “[t]he use of such pointers within the second backup aggregation
does avoid data duplication within the second backup aggregation.” Reply
Br. 2. Therefore we find one of ordinary skill in the art would appreciate the
use of pointers, whether internal or external to a particular backup or
database, avoids duplication of data.
In rejecting claim 1 the Examiner relies on Randal for teaching the
recited subject matter except for the use of software pointers and generating
the virtual database without replicating the data elements of the backup
database. Ans. 10–12. However, the Examiner finds and we agree Asgar-
Deen’s backup metadata objects teach software pointers and the use of these
pointers to avoid data duplication teaches providing access to data elements
without replicating the data elements. Ans. 12–13. Therefore we further
agree with the Examiner in concluding the combination of Randal and
Asgar-Deen teaches or suggests the disputed limitation. Ans. 13.
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For the reasons supra, we are unpersuaded of Examiner error.
Accordingly, we sustain the rejections of independent claim 1 and, for the
same reasons, the rejection of independent claim 8 under 35 U.S.C. § 103(a)
over Randal and Asgar-Deen together with the rejections of dependent
claims 3, 14, and 20–28 which were not separately argued.

CONCLUSION
The Examiner did not err in finding the combination of Randal and
Asgar-Deen teaches or suggests the disputed limitation.

DECISION
The Examiner’s decision to reject claims 1, 3, 8, 14, and 20–28 is
affirmed.
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).

AFFIRMED

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