Ex Parte Venkatesh et al

Board of Patent Appeals and Interferences

Apr 6, 2007

10308445 (B.P.A.I. Apr. 6, 2007)

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for publication and is not binding precedent of the Board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 DINESH VENKATESH, XIAOYE JIANG,
JIANNAN ZHENG, and URESH VAHALIA
____________________

Appeal 2007-0398
Application 10/308,445
Technology Center 2100
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Decided: April 6, 2007
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Before: JOSEPH F. RUGGIERO, JOSEPH L. DIXON, and ALLEN R.
MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

REVERSED
Appeal 2007-0398
Application 10/308,445

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 11-13, 16-18, 20-21, 23-24, 27, 29-30, and 36-43. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants invented a client-server protocol method and server for
directory access of snapshot file storage systems (Specification 13:11-12).
Exemplary independent claim 11 under appeal reads as follows:
11. A method of configuring a network file server for access to 8
a group of related snapshot file systems in data storage of the 9
network file server, each of the related snapshot file systems 10
being the state of a production file system at a respective point 11
in time, the network file server having a client-server protocol 12
layer of programming for client access to file system objects in 13
the data storage of the network file server, said method 14
comprising: configuring each of the related snapshot file 15
systems to have a common internal file identifier (fid') and a 16
different respective internal file system identifier (fsid'); and 17
programming the network file server for interchanging the 18
common internal file identifier (fid') with the different 19
respective internal file system identifier (fsid') of each related 20
snapshot file system for access using the client-server protocol 21
layer to said each related snapshot file system. 22
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The Examiner rejected claims 11-13, 16-18, 20-21, 23-24, 27, 29-30,
and 36-43 under 35 U.S.C. § 103(a) (2004).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
DeKoning US 5,790,773 Aug. 4, 1998
Patel US 6,643,654 Nov. 4, 2003
Chen US 2003/0182253 Sep. 25, 2003

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Appellants contend that the claimed subject matter would not have
been obvious. More specifically, Appellants contend that:
(1) as to claims 11, 16, and 29, even if combined the reference
disclosures do not result in “decoding of the pathnames . . . for the
group of related snapshot systems” (Br. 31); and
(2) as to claims 20, 27, 36, and 38, improper hindsight has been used
as the references fail to show a production file system configured to
have related snapshot file systems (Br. 44, 47, and 50).
The Examiner contends that claims 11, 16, and 29 do not recite “decoding
the pathnames” (Answer 49) and any hindsight reasoning has been proper
(Answer 53-56).
We reverse.
ISSUES
Has Appellant shown that the Examiner has failed to establish one
skilled in the art would have combined Chen and DeKoning to provide
access to “a group of related snapshot file systems . . . ” as required by
claims 11, 16, and 29?
Has Appellant shown that the Examiner has failed to establish one
skilled in the art would have combined Chen and DeKoning and Patel to
provide a server for operating “related snapshot file systems . . . ” as
required by claims 20, 27, 36, and 38?

FINDINGS OF FACT
Appellants invented a client-server protocol method and server for
directory access of snapshot file storage systems (Specification 13:11-12).
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Appellants’ method and server for directory access of snapshot file
storage systems may operate with plural “related snapshot file systems” or
“a snapshot file system” (Specification 30:15).
DeKoning describes having “a snapshot” (singular) (col. 2, l. 29) in
the mirror (see col. 5, ll. 38-57).
All claims before us require plural related snapshot systems which are
configured according to claimed file structure.

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection. Appellant may
sustain this burden by showing that, where the Examiner relies on a
combination of disclosures, the Examiner failed to provide sufficient
evidence to show that one having ordinary skill in the art would have done
what Appellant did. United States v. Adams, 383 U.S. 39, 148 USPQ 479
(1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006).

ANALYSIS
The Examiner correctly shows where at least one of each of the
claimed elements appears in the Chen, DeKoning, and Patel prior art
references. Further, the Examiner correctly combines first the Chen and
DeKoning and then the Chen, DeKoning, and Patel prior art references with
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respect to a single snapshot file system. We conclude that the Examiner is
correct as to a method or server with a single snapshot file system.
However, Appellants correctly point out the claims before us require
plural “related snapshot file systems.” We find nothing, in the references or
rejection, which describes or suggests stretching the teachings of DeKoning,
to include plural related snapshot file systems.
Accordingly, we determine that the Examiner has not given any
reason why one skilled in the art would have combined the prior art elements
to make Appellants’ claimed invention. It follows that the Examiner erred in
rejecting Claims 11, 16, 20, 27, 29, 36, and 39 under § 103(a). Since the
remaining dependent claims are narrower than the independent claims from
which they depend, it also follows that those claims were not properly
rejected under § 103(a) over Chen, DeKoning, and Patel.

CONCLUSION OF LAW
On the record before us, Appellants have shown that the Examiner has
not given any reason why one skilled in the art would have combined Chen
and DeKoning to provide access to “a group of related snapshot file systems
. . . ” as required by claims 11, 16, and 29; and Appellants have shown that
the Examiner has failed to establish one skilled in the art would have
combined Chen and DeKoning and Patel to provide a server for operating
“related snapshot file systems . . . ” as required by claims 20, 27, 36, and 38.

DECISION
The Examiner's rejection of claims 11-13, 16-18, 20-21, 23-24, 27,
29-30, and 36-43 is Reversed.
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REVERSED

ELD

RICHARD AUCHTERLONIE
NOVAK DRUCE & QUIGG, LLP
1000 LOUISIANA
53RD FLOOR
HOUSTON TX 77002
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