Ex Parte Wilkes

Patent Trial and Appeal Board

Jan 29, 2013

11240871 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN WILKES
____________________

Appeal 2010-008204
Application 11/240,871
Technology Center 2100
____________________

Before: DAVID M. KOHUT, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008204
Application 11/240,871

2
STATEMENT OF CASE
Claims 2-28 and 30-40 have been finally rejected. See FOA 1
(“Office Action Summary”); accord Ans. 2. Appellant appeals under 35
U.S.C. § 134(a) from a final rejection of claims 2, 17, 30, 34, 39 and 40.
App. Br. 5. Claims 1 and 29 have been cancelled. The rejections of claims 3-
16, 18-18, 31-33, and 35-38 are not argued.
1
We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

The claims are directed to a system for and method of retrieval-based
data redundancy. Claim 2, reproduced below, is illustrative of the claimed
subject matter:
2. A method of managing a storage system having first and
second storage subsystems, the method comprising:
performing a first write operation on a data object at the
first storage subsystem to form a first version of the data object,
the data object being included among a plurality of data objects
of primary data;
sending an identification of the data object, together with
a version indicator of the first version of the data object, from
the first storage subsystem to the second storage subsystem;
using the identification of the data object received by the
second storage subsystem to retrieve the data object from the
first storage subsystem; and

1
Although Appellant’s Notice of Appeal lists claims 2-28 and 30-40, the
Appeal Brief indicates that only claims 2, 17, 30, 34, 39 and 40 are appealed
and Appellant neither argues nor includes in the Claims Appendix claims 3-
16, 18-18, 31-33, and 35-38. Therefore Appellant has waived any arguments
rebutting the rejections of the claims omitted from the Appeal Brief.
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applying the retrieved data object to secondary data at the
secondary storage subsystem, the secondary data being
redundant of the primary data.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gomola
Mohan
Howard
Chiu
Bradley
US 4,215,406
US 5,327,556
US 6,098,079
US 6,181,336 B1
US 6,665,780 B1
Jul. 29, 1980
Jul. 5, 1994
Aug. 1, 2000
Jan. 30, 2001
Dec. 16, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 2, 8 - 10, 12, 30 and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bradley and Mohan. Ans. 3.
Claims 3 -7, 17 - 28, 31, 32, 34 - 38 and 40 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bradley, Mohan, and Howard.
Ans. 6.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bradley, Mohan, and Gomola. Ans. 14.
Claims 13 - 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bradley, Mohan, and Chiu. Ans. 15.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bradley, Mohan, Howard and Gomola. Ans. 17.

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APPELLANT’S CONTENTIONS
1. With respect to all argued claims, the Examiner “fails to set forth
any plausible explanation why one of skill in the art in possession of Bradley
and Mohan would have combined these references in the same manner that
the claimed invention does.” App. Br. 13, 15, 16.
2. Also with respect to independent claims 17, 34 and 40, the
modification of “Bradley's system in view of Howard to determine whether
a second write operation was performed on the data object” is improper
because the modification “is . . . unnecessary, as such a determination is not
needed due to Bradley's consistency bits set 212 indicating whether a
particular file or data is invalid or not.” App. Br. 18-20.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 11-20)
and Reply Brief (Reply Br. 1-3), the issue presented on appeal is whether the
Examiner properly combined the applied references in rejecting the disputed
claims.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We disagree with Appellant’s conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal
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Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.

Rejection of Claims 2, 30 and 39 under 35 U.S.C. § 103(a)
over Bradley and Mohan

In connection with contention 1, Appellant argues that the Examiner
“fails to set forth any plausible explanation why one of skill in the art in
possession of Bradley and Mohan would have combined these references in
the same manner that the claimed invention does.” App. Br. 13, 15, 16. We
disagree. In combining the references the Examiner finds that:
It would have been obvious to one of ordinary skill to
have sent a version number as described by Mohan with the
invention of Bradley because Mohan teaches that the described
method allows a system to compare a version number received
with a current version number to see if a new version is
required (column 5, lines 34 - 42). Furthermore, it would have
been obvious because a person of ordinary skill has good
reason to pursue the known options within his or her technical
grasp.

Ans. 5.
Appellant argues that the Examiner’s reason for combining the
references is deficient because it would be redundant and unnecessary to
send a version number according to Mohan together with the consistency bit
map of Bradley. App. Br. 14. The Examiner responds that Mohan teaches
an alternative method of comparing files by sending a version indicator
instead of a bitmap. Ans. 20.
We find that Appellant’s argument against combining Bradley and
Mohan is not persuasive. We note that all of the features of the secondary
reference need not be bodily incorporated into the primary reference, but
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consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art (see In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment (see Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). We agree with the
Examiner that “one of ordinary skill in the art would realize that Bradley, as
described, would require some identification to be sent in order to make
comparisons and initiate copying.” Id. We further find that the Examiner
has provided sufficient articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. Since Appellant has failed to
provide sufficient evidence or argument that the combination of Bradley and
Mohan is improper, we find Appellant’s contention 1 to be unpersuasive of
Examiner error.
Furthermore we find that the bit maps of Bradley alone without
Mohan meet the requirement for the claimed version indicator. Appellant’s
Specification does not provide a definition of a version indicator but
discloses that it may be a hash value of or a timestamp associated with a data
object. Spec. [0021]. Appellants also disclose that “[w]hile [the example of
Figure 2] shows three data objects with up to four versions, other examples
may have a greater or lesser number of data objects and versions.” Spec.
[0019] (emphasis added). By comparison, Bradley discloses a binary “M”
bit in consistency bitmap 212 indicating whether file 1 206 has been
modified. Since, during examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
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specification,
2
we find that Bradley’s consistency bitmap also meets the
requirement for the claimed version indicator.
For the reasons discussed supra, we sustain the rejection of claims 2,
30 and 39 under 35 U.S.C. § 103(a) as being unpatentable over Bradley and
Mohan together with the rejections of claims 3-16 and 31-33 not separately
argued.
Rejection of Claims 17, 34 and 40 under 35 U.S.C. § 103(a)
over Bradley, Mohan, and Howard

In connection with contention 1 as applied to claims 17, 34 and 40, we
find Appellant’s arguments unpersuasive of Examiner error for the reasons
discussed supra. In particular, we have found that the Examiner has
provided articulated reasoning with rational underpinning to support the
legal conclusion of obviousness which Appellant has failed to sufficiently
rebut. Furthermore, we have found that the bit maps of Bradley alone
without Mohan meet the requirement for the claimed version indicator.
In connection with contention 2, Appellant argues that the
combination of Bradley and Howard is improper because “modifying
Bradley's system in view of Howard to determine whether a second write
operation was performed on the data object is . . . unnecessary, as such a
determination is not needed due to Bradley's consistency bits set 212
indicating whether a particular file or data is invalid or not.” App. Br. 18-
20. We are not persuaded that the Examiner has improperly combined the
references based on this argument.
The Examiner finds that:

2
See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004).
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It would have been obvious to one of ordinary skill in the
art at the time of the invention to have determined if a file has
been overwritten as described by Howard with the invention of
Bradley in view of Mohan because Howard teaches an
improved method of reconciling different file storage sites
which can determine a current version of a file (column 3, lines
25 - 40).
Ans. 7.
Appellant’s argument does not persuade us that the combination is
improper. As discussed supra, all of the features of the secondary reference
need not be bodily incorporated into the primary reference, but consideration
should be given to what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. The
Examiner explains (Ans. 10) that it would have been obvious to incorporate
Howard into the method taught and/or suggested by Bradley and Mohan
because the combination would result in improved reconciliation of file
storage sites which can determine a current version of a file. Ans. 7. We
agree with the Examiner’s analysis.
For the reasons discussed supra, we find that Appellant has failed to
provide sufficient evidence or argument to persuade us that that the
combination of Bradley, Mohan and Howard is improper. Therefore we
sustain the rejection of claims 17, 34 and 40 under 35 U.S.C. § 103(a) as
being unpatentable over Bradley, Mohan, and Howard together with the
rejections of claims 18-28 and 35-38 not separately argued.

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CONCLUSIONS
On the record before us, we conclude that the Examiner did not err in
rejecting claims 2-16, 30-33 and 39 under 35 U.S.C. § 103(a) over Bradley
and Mohan or in rejecting claims 17-28, 34-38 and 40 under 35 U.S.C.
§ 103(a) over Bradley, Mohan, and Howard.

DECISION
The decision of the Examiner to reject claims 2-28 and 30-40 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

ELD