Ex Parte Weiss

Patent Trial and Appeal Board

Aug 30, 2016

12701751 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121701,751 02/08/2010
73908 7590 09/01/2016
GRIFFITHS & SEATON PLLC (IBM)
3813 E. Kenwood St.
MESA, AZ 85215
FIRST NAMED INVENTOR
Gary WEISS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUC920090105US1 (0215) 1690
EXAMINER
REYES, MARIELA D
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@gs-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY WEISS
Appeal2015-000297
Application 12/701,751
Technology Center 2100
Before BRUCE R. WINSOR, KEVIN C. TROCK, and
MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest identified by Appellant is International Business
Machines Corporation. App. Br. 2.
Appeal2015-000297
Application 12/701,751
STATEMENT OF THE CASE
Appellant's disclosed invention "relates in general to computers, and
more particularly to ... facilitating information between at least one host
and a storage controller operational in a data storage subsystem." Spec. ,-r 1.
Claim 1, which is representative, reads as follows:
1 An interface between at least one host and a storage
controller operational in a data storage subsystem established
by a processor device, the at least one host comprising a
filesystem manager, and the interface comprising:
a pseudo-volume, mappable to the filesystem manager
in the at least one host and mountable as a virtual filesystem
on the storage controller, wherein the pseudo-volume is
adapted for:
providing, upon request by the host, diagnostic
and statistical data of the data storage subsystem to the at least
one host, wherein the diagnostic and statistical data is
dynamically generated for transient pseudo-storage without
the need for allocating storage in a physical storage volume
and represents a temporary snapshot of the data storage
subsystem,
enabling the at least one host to visualize data
structures in the data storage subsystem as seen through the
storage controller, and
enabling the at least one host to control at least
one parameter of the storage controller.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Husain et al. (US 2003/0120751 Al; June 26, 2003)
("Husain"), Noble et al. (US 2007/0088981 Al; Apr. 19, 2007) ("Noble"),
Peters et al. (US 2008/0256144 A 1; Oct. 16, 2008) ("Peters"), and Bowers et
al. (US 6,570,593 Bl; May 27, 2003) ("Bowers"). See Final Act. 2-7.
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Application 12/701,751
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Mar. 20, 2014; "Reply Br." filed Sept. 24, 2014) and the
Specification ("Spec." filed Feb. 8, 2010) for the positions of Appellant and
the Final Office Action ("Final Act." mailed Sept. 30, 2013) and Answer
("Ans." mailed Aug. 8, 2014) for the reasoning, findings, and conclusions of
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUE
Claims 1-20 are subject to a single ground of rejection. See Final
Act. 2. Appellant argues the patentability of claim 1. See App. Br. 10-13.
Appellant presents no separate arguments for claims 2-20, relying on the
arguments made for claim 1. See App. Br. 13-14. Therefore, we select
claim 1 as the representative claim, pursuant to our authority under
37 C.F.R. § 41.37(c)(l)(iv). The issue presented by Appellant's contentions
is whether the Examiner erred in finding the combination of Husain, Noble,
Peters, and Bowers teaches or suggests "the diagnostic and statistical data is
dynamically generated for transient pseudo-storage without the need for
allocating storage in a physical storage volume," as recited in claim 1.
ANALYSIS
The Examiner finds Bowers, when combined with Husain, Noble, and
Peters, teaches that the "pseudo-storage mountable filesystem is not
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Application 12/701,751
allocated in physical storage [of the physical storage volume]." Final Act. 4.
The Examiner explains as follows:
Bowers teaches wherein [a] mountable filesystem (col. 3 lines
10-13) is resident in only the RAM (col. 3 lines 51-55). This
file system being temporary col. 2 lines 49-51 thus indicating it
is not physically stored [sic]. RAM is temporary storage because
upon reboot or power loss, the file system will be removed col.
2 lines 54-56 which is different from physical disk storage which
retains information after a power loss or reboot.
Ans. 3--4. The Examiner further explains:
[I]n APPLICANT[']S OWN SPECIFICATION in paragraph 36
. . . the pseudo-volume emulator is shown operational in
memory. This would appear to be no different than Bowers['s]
system being resident in Random Access Memory. Additionally
note that Bowers explicitly separates the Random Access
Memory 414 from the disk storage 420 col. 3 lines 32-36.
Ans. 4.
Appellant disagrees with the Examiner's findings "because the RAM
disclosed in Bowers is physical random access memory (RAM)." App. Br.
11. Appellant contends as follows:
[B]ecause [Bowers's] RAM 414 is a physical device, the
disclosure of a "mountable filesystem (col. 3, lines 10-13) is
resident in only the RAM (col. 3, lines 51-55)," as alleged by the
Examiner is not the equivalent of: "wherein the diagnostic and
statistical data is dynamically generated for transient pseudo-
storage without the need for allocating storage in a physical
storage volume," as recited in claim 1 because claim 1 defines
that storage is not allocated in a physical storage volume,
whereas Bowers is clearly disclosing physical RAM.
App. Br. 12. Furthermore, Appellant contends as follows:
[S]killed artisans usually store sets of instructions that are
repeatedly used in non-volatile memory so that the instructions
do not have to be re-saved to memory (i.e., volatile memory)
after each time the computing system is powered OFF, just as
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Application 12/701,751
Bowers has described by keeping their instructions "resident" in
physical RAM. In other words, one skilled in the art, upon
reading the disclosure in Bowers, knows that RAM 414 in
Bowers is non-volatile, physical RAM because storing the
instructions for performing the various methods disclosed in
Bowers in volatile, virtual RAM would be too costly in terms of
time and computing resources, especially in view of the ease of
access to the use of non-volatile, physical RAM.
App. Br. 13.
Appellant further explains that "Appellant's [S]pecification discloses
multiple embodiments, two of which are disclosed in Appellant's paragraph
34." Reply Br. 3. Appellant continues "[t]he first embodiment described in
Appellant's paragraph 34 is consistent with Appellant's claims and is
utilized with virtual memory, whereas the second embodiment disclosed in
Appellant's paragraph 34 is utilized with physical memory and is further
described and referenced by the Examiner in Appellant's paragraph 36." Id.
We are not persuaded of error. Although we agree with Appellant
that Bowers' s RAM is a physical memory device, Appellant's own
Specification indicates that the recited pseudo-volume and pseudo-storage
operate using memory devices. See Spec. i-fi-134--36. As explained by
Appellant, Reply Br. 3, Appellant's Specification describes two
embodiments. Paragraph 34 reads:
In a first exemplary embodiment, the diagnostic and statistical
data may not be stored at all, and may [be] dynamically generated
upon request with the assistance of the storage controller 24. In
this way, no physical storage need be allocated for the diagnostic
and statistical data, as the data represents a snapshot of the
computing environment at any one time.
In other words, the first embodiment utilizes a virtual filesystem in pseudo-
storage in a pseudo-volume, as recited in claim 1. Accord Reply Br. 3. "In
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Application 12/701,751
an additional [second] embodiment, the specialized control files, and other
diagnostic and statistical information may be allocated to physical storage
(e.g., stored on one or more storage devices 70, or elsewhere) as necessary
by the storage controller 24." Spec. i-f 34. In other words, the second
embodiment utilizes a real file system stored in real storage volume. Accord
Reply Br. 3.
Paragraphs 3 5 and 3 6 of Appellant's Specification describe in more
detail the implementation of a "pseudo-volume," maintaining a "virtual
filesystem.," i.e., the first embodiment of described paragraph 34, not, as
asserted by Appellant, the second embodiment. See Reply Br. 3.
Appellant's Specification clearly teaches that the claimed virtual filesystem
79, pseudo-storage, and pseudo-volume 68 are implemented by one or more
processor devices 74 and one or more memory devices 78. Were we to
construe claim 1 to preclude the use of any physical memory device, such as
Bowers' s physical RAM, to implement the recited virtual filesystem,
pseudo-volume, and pseudo-storage, we would read both of the
embodiments of Appellant's paragraph 34 out of the claim. A claim
construction that excludes a preferred embodiment is a result that "is rarely,
if ever, correct." On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer
GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004). Furthermore, such a claim
construction would appear to defy common sense, as Appellant provides no
explanation as to how any of the claimed computer functions can be
performed without the use of physical memory in some form.
Nor are we persuaded by Appellant's argument, unsupported by
evidence, that Bowers's RAM is non-volatile. See App. Br. 13. Mere
lawyer's arguments and conclusory statements that are unsupported by
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Application 12/701,751
factual evidence are entitled to little probative value. Jn re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems to follow from
common experience is just attorney argument and not the kind of factual
evidence that is required to rebut a prima facie case of obviousness."); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We also note that
Appellant appears to contradict this argument when Appellant states "that
data stored to physical RAM (i.e., volatile memory) is typically temporary
and is subject to loss upon power loss or reboot, just as it is disclosed in
Bowers." Reply Br. 2.
Appellant's arguments do not demonstrate that the Examiner erred in
finding that Bowers, when combined with Husain, Noble, and Peters,
teaches that the "pseudo-storage mountable filesystem is not allocated in
physical storage [of the physical storage volume]." Accordingly we sustain
the rejection of representative claim 1 and claims 2-20, which fall with
claim 1.
DECISION
The decision of the Examiner to reject claims 1-20 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)(l). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
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