Ex Parte Yang et al

Patent Trial and Appeal Board

Oct 30, 2013

11620461 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/620,461 01/05/2007 Qing Yang 27592-00362-US-8 9298
30678 7590 10/30/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
PULLIAM, CHRISTYANN R
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
10/30/2013 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 QING YANG and JIAN LI
1

____________________
Appeal 2011-005276
Application 11/620,461
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 54-75. Appellants have previously canceled
claims 1-53. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is Board of Governors for Higher Education,
State of Rhode Island, and Providence Plantations. App. Br. 1.
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Application 11/620,461

2
STATEMENT OF THE CASE
2

The Invention
Appellants’ “invention relates to the field of data back-up systems,
and in particular to a real-time online device drivers for a data back-up
system.” Spec. 2:10-11.
Exemplary Claim
Claim 54 is an exemplary claim representing an aspect of the
invention which we reproduce below (emphases added):
54. An article of manufacturing including a computer
readable medium having computing device executable
instructions stored thereon comprising:
instructions for receiving an access command for access
to a local disk by a device driver configured for communication
between at least one disk driver associated with the local disk
and an application program on a host system;
instructions for determining, by the device driver, that the
local disk is inaccessible, wherein the device driver determines
that the local disk is inaccessible by sending a status request to
the at least one disk driver and by receiving a status of the local
disk from the at least one disk driver; and
instructions for transmitting, by the device driver,
independent of an operating system of the host system or the
application program, the access command to a remote backup
system for access to a remote disk including backup of data

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 16, 2010); Reply Brief (“Reply Br.,” filed Jan. 18, 2011); Examiner’s
Answer (“Ans.,” mailed Nov. 26, 2010); Final Office Action (“FOA,”
mailed Mar. 16, 2010); and the original Specification (“Spec.,” filed
Jan. 5, 2007).
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resident on the local disk, wherein the device driver is
configured to selectively process requests to the local disk or
the remote disk on the remote backup system.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Crawford US 5,771,354 June 23, 1998 (effective
filing date: Nov. 4, 1993)
Teague US 5,923,876 Jul. 13, 1999
Wahl US 6,324,654 B1 Nov. 27, 2001
Rejections on Appeal
3

1. Claims 54-56, 58, 59, 61-66, 68-71, and 73-75 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Crawford. Ans. 3.
2. Claims 57 and 72 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Crawford and Wahl. Ans. 19.

3
Although not before us on appeal, if further prosecution of this application
should ensue, we direct the Examiner’s attention to claim 54’s recitation of a
“computer readable medium” to ensure compliance with the statutory
subject matter requirements of 35 U.S.C. § 101. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential) (expanded panel) (holding
recited computer-readable storage medium ineligible under § 101 since it
encompasses transitory media). Here, the recited “computer readable
medium” is not claimed as non-transitory, and Appellants’ disclosure does
not expressly and unambiguously limit that medium to solely non-transitory
forms via a definition or similar limiting language. Therefore, the medium
appears to encompass transitory forms which would be ineligible under
§ 101.
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3. Claims 60 and 67 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Crawford and Teague. Ans. 20.
ISSUE
Appellants argue (App. Br. 15-19; Reply Br. 5-6) that the Examiner’s
rejection of claims 54-56, 58, 59, 61-66, 68-71, and 73-75 under 35 U.S.C.
§ 102(b) as being anticipated by Crawford is in error. These contentions
present us with the following issue:
Did the Examiner err in finding that Crawford discloses a computer
readable medium having computing device executable instructions stored
thereon, including, inter alia:
instructions for receiving an access command for access to a
local disk by a device driver configured for communication
between at least one disk driver associated with the local disk
and an application program on a host system . . . [and]
instructions for transmitting, by the device driver, independent
of an operating system of the host system or the application
program, the access command to a remote backup system for
access to a remote disk including backup of data resident on the
local disk,
as recited in claim 54?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this Decision. Arguments which Appellants could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants state (a) that claims 55-56, 58, 59, and 61 are patentable at
least by virtue of their ultimate dependency upon independent claim 54
(App. Br. 16); (b) Claims 62-66 are patentable for the reasons set forth with
respect to claim 54 (App. Br. 18); (c) Claim 68 is patentable for the reasons
set forth with respect to claim 54 (id.); Claims 69-71 and 73-74 are
patentable for the reasons set forth with respect to claim 54 (App. Br. 19);
and (d) Claim 75 is patentable for the reasons set forth with respect to claim
54. Id.
Accordingly, we find that claim 54 is representative of claims 55, 56,
58, 59, 61-66, 68-71, and 73-75 such that these claims stand or fall with
independent claim 54.
We disagree with Appellants’ conclusions with respect to claim 54,
and 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
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Arguments. However, we highlight and address
specific findings and arguments regarding claim 54 for emphasis as follows.
Appellants contend Crawford does not disclose “instructions for
receiving an access command for access to a local disk by a device driver
configured for communication between at least one disk driver associated
with the local disk and an application program on a host system,” because
Crawford fails to teach or suggest either such instructions or the recited
device driver. App. Br. 15. Appellants assert that Crawford’s “drive
designator” is merely the name of a drive, i.e., a local or virtual drive (id.),
and is not a computer-executable instruction, but instead discloses “that
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commands will be executed by the processor corresponding to the user
selected drive (e.g., C> or E>) chosen by the user.” App. Br. 16.
Appellants further contend Crawford does not disclose “instructions
for transmitting, by the device driver, independent of an operating system of
the host system or the application program, the access command to a remote
backup system for access to a remote disk including backup of data resident
on the local disk.” Id. Appellant asserts, “Crawford’s operating without any
change in operating or application software is fundamentally different,”
from the above-cited recitation of claim 54 which requires operating system
independence. App. Br. 17.
In response, the Examiner finds Crawford’s use of a:
“drive designator” is possible only with execution of a program
that designates labels to drives . . . [and w]ithout such a
program, the Crawford invention could not maintain and track
which labels it designated to which drives . . . [such that t]he
necessity of this program . . . teaches appellants’ claimed
device driver.
Ans. 23. The Examiner further finds Crawford’s disclosure of software to
support virtual disk drives necessarily excludes Crawford’s operating system
because, if Crawford’s changing of software needed to support the virtual
disk drives required a change to its operating system, then Crawford could
not teach accessing virtual disk drives without any change in operating
system. Ans. 24.
The Examiner thereby concludes that “Crawford computer 50
accessing ‘virtual disk drives’ using ‘software needed to support the virtual
disk drives’ does not preclude Crawford from teaching . . . appellants’ claim
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54[’s recitation of] ‘independent of an operating system of the host
system.’” Id.
We note that there is no explicit definition in Appellants’ disclosure of
the meaning of the recitation of “independent of an operating system of the
host system or the application program.” We also note Appellants’
Specification states:
The advantages of this system compared to the current prior art
methods are it is easy to install, the backup is done at device
driver level, it does not require any system changes, and it is
easy to implement and maintain. Because the backup is done at
the device driver level, it is completely transparent to both the
operating system and application programs on the local system.
Spec. 4:15-19 (emphasis added). We therefore find that the phrase
“independent of an operating system of the host system or the application
program” means the backup is accomplished at the driver level, and is
transparent to the operating system or application program, i.e., the backup
does not affect the operating system or an application program.
Based upon this definition, we find Crawford’s disclosure anticipates
the limitation in dispute:
Since the customer computer 50 and its associated operating
system and application software is already conditioned to
efficiently access locally attached physical disk drives, the
customer computer 50 can very easily access the “virtual disk
drives” without any change in operating system or application
software or additional overhead (other than software needed to
support the virtual disk drive).
Crawford col. 18:17-24.
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We therefore agree with the Examiner’s finding cited, supra, that
Crawford discloses Appellants’ claimed article of manufacture, including the
recitation of “instructions for transmitting, by the device driver, independent
of an operating system of the host system or the application program, the
access command to a remote backup system for access to a remote disk
including backup of data resident on the local disk,” as recited in claim 54.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 54.
As Appellants have not provided separate arguments with respect to
independent claims 62, 68, 69, and 75, we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 102(b). Lacking separate
arguments, we also sustain the anticipation rejection of claims 55, 56, 58, 59,
61, 63-66, 70, 71, 73, and 74.
§ 103(a) Rejection of Claims 57 and 72 over Crawford and Wahl
Appellants merely contend claims 57 and 72 are not rendered obvious
over the prior art combination cited by the Examiner for the same reasons as
set forth with respect to independent claims 54 and 69, respectively, which
fall with claim 54. App. Br. 21. Accordingly, lacking separate, substantive
arguments, we sustain the rejection of claims 57 and 72.
§ 103(a) Rejection of Claims 60 and 67 over Crawford and Teague
Appellants merely contend claims 60 and 67 are not rendered obvious
over the prior art combination cited by the Examiner for the same reasons as
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set forth with respect to independent claims 54 and 62, respectively, which
fall with claim 54. App. Br. 22-23. Accordingly, lacking separate,
substantive arguments, we sustain the rejection of claims 60 and 67.
CONCLUSIONS
(1) The Examiner did not err with respect to the anticipation
rejection of claims 54-56, 58, 59, 61-66, 68-71, and 73-75 under 35 U.S.C.
§ 102(b) over Crawford, and the rejection is sustained.
(2) The Examiner did not err with respect to the unpatentability
rejections of claims 57 and 72, and 60 and 67 under 35 U.S.C. § 103(a) over
the combinations of the prior art of record, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 54-75 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) (2011).
AFFIRMED

ELD