Ex Parte Teloh et al

Board of Patent Appeals and Interferences

Jun 7, 2007

09988853 (B.P.A.I. Jun. 7, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN TELOH, PHILIP NEWTON and SIMON CROSLAND
____________

Appeal 2007-0265
Application 09/988,853
Technology Center 2100
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Decided: June 7, 2007
____________

Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY and ALLEN
R. MACDONALD, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-51. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2007-0265
Application 09/988,853

A. INVENTION
The invention at issue on appeal replicates data in a computer
network. Accelerated business practices and the globalization of the
marketplace require business communications and operations to function
around-the-clock. Corporate data repositories must be able to provide
critical data regardless of interruptions caused by hardware failure, software
failure, or geographical disaster. To achieve the necessary data continuity
and resilience, businesses employ remote data repositories to back-up and
store the critical data (Specification 1.)

For its part, the Appellants' invention replicates data from a local
location and forwards the replicated data to a remote location. (Id. 6.) The
invention uses the Transmission Control Protocol/Internet Protocol, i.e.,
TCP/IP, to forward the replicated data. (Id. 7.)

Claim 21 which further illustrates the invention, follows.
21. In a storage network, a method to create a replica of
selected data in said storage network, said method comprising
the steps of:

instructing a first data replication facility at a first
electronic device in said storage network to track changes to
one or more storage locations of a first storage medium that
correspond to said selected data;

instructing said first data replication facility to generate
said replica of said selected data based on said tracked changes
to said one or more locations of said first storage medium;

placing said replica of said selected data in a data
structure; and
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Application 09/988,853

forwarding said replica of said selected data in
accordance with a communication protocol from said data
structure to a second data replication facility at a second
electronic device in said storage network for storage of said
replica on a second storage medium by said second electronic
device.

B. REJECTIONS
Claims 1-4, 6-10, 12-16, 18, 20-23, 25-29, 31-35, 37-41, 43-46 and
48-50 stand rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent
No. 6,629,264 ("Sicola"). Claims 5, 11, 17, 19, 30 and 42 stand rejected
under 35 U.S.C. § 103(a) as obvious over Sicola and U.S. Patent
No. 6,629,264 ("Wahl"). Claims 24, 36, 47 and 51 stand rejected under
§ 103(a) as obvious over Sicola and U.S. Patent No. 6,209,002 ("Gagne").

II. GROUPING OF CLAIMS
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).1

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief.

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Application 09/988,853

Here, the Appellants argue claims 1-4, 6-10, 12-16, 18, 20-23, 25-29,
31-35, 37-41, 43-46 and 48-50, which are subject to the same ground of
rejection, as a group. (Br. 12-15). We select claim 21 as the sole claim on
which to decide the appeal of the group.

III. ISSUE
With the aforementioned representation in mind, rather than reiterate
the positions of parties in toto, we focus on the issue therebetween. The
Examiner makes the following findings.
As to claim 21, Sicola et al. teaches, in a storage network (see
column 7, lines 1-11), a method to create a replica of selected
data in the storage network (see column 1, lines 5-10), the
method comprising the steps of: instructing a first data
replication facility at a first electronic device in the storage
network to track changes to one or more storage locations of a
first storage medium that correspond to the selected data (see
column 12, lines 17-34). . . .

(Answer 7.) Based on the premise that "[i]ndependent claims 1, 8, 13, 21,
33 and 45 all require the element of logically grouping two elements held by
a storage device (regardless of the elements being structures, data structures,
selected data, or one or more volumes) into a group, wherein said group is a
single data set," (Appeal Br. 12-13), the Appellants argue, "Sicola fails to
disclose this step of grouping two elements held by a storage device into a
group." (Id. 13.) The Examiner "submits that independent claim[ ] 21 . . .
make[s] no mention of grouping any kind." (Answer 17.) Therefore, the
issue is whether the representative claim requires logically grouping two
elements held by a storage device.
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IV. PRINCIPLES OF LAW
"'[T]he main purpose of the examination, to which every application is
subjected, is to try to make sure that what each claim defines is patentable.
[T]he name of the game is the claim. . . .'" In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich, The
Extent of the Protection and Interpretation of Claims -- American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499, 501
(1990)). "[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)
(quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d
1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)).

V. ANALYSIS
Here, contrary to the premise of the Appellants' argument, claim 21
does not require logically grouping two elements held by a storage device.
Moreover, we agree with the Examiner that the representative claim makes
"no mention of grouping [of] any kind." (Answer 17.) Because the premise
is faulty, we are unpersuaded by the argument based thereon. Therefore, we
affirm the rejection of claim 21 and of claims 1-4, 6-10, 12-16, 18, 20, 22,
23, 25-29, 31-35, 37-41, 43-46 and 48-50, which fall therewith.

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Rather than arguing the rejections of claims 5, 11, 17, 19, 24, 30, 36,
42, 47 and 51 separately, the Appellants rely on their aforementioned
argument. (Br. 15-17.) Unpersuaded by these arguments, we also affirm the
rejections of these claims.

Assuming arguendo that the representative claim did require logically
grouping two elements held by a storage device, we agree with the
Examiner's finding that Sicola "instruct[s] a first data replication facility of a
first electronic device in the storage network to logically associate a first
data structure and a second data structure held by a locally accessible storage
device, wherein the logical association defines a group (see abstract and
column 20, lines 38-55. . . ." (Id. 4.) More specifically, "[a]s shown in
FIG. 17, at step 1700 [of the reference], the logical unit members S1 through
Sn (where 'n' can be any number) of an association set 'S' are established by
a system user." (Col. 20, ll. 40-43.) Sicola explains that "[a]n association
set is a group of logical units (a set of one more remote copy sets) on a local
or remote pair of array controllers with attributes for logging and failover
that are selectable by a system user." (Col. 19, ll. 58-61.) As noted by the
Examiner, the reference explains that logical units are the "same as volumes,
see column 8, line 53. . . ." (Answer 19.) Because the logical units of data
that are grouped into association sets are on the same local array controllers
or on the same remote array controllers, we find that Sicola logically groups
two elements held by a storage device.

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VI. ORDER
In summary, the rejection of claims 1-4, 6-10, 12-16, 18, 20-23,
25-29, 31-35, 37-41, 43-46, and 48-50 under § 102(e) is affirmed. The
rejections of claims 5, 11, 17, 19, 24, 30, 36, 42, 47, and 51 under § 103(a)
are also affirmed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
brief. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362,
1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board.")

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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