Ex Parte Yochai

Patent Trial and Appeal Board

Feb 19, 2014

11726831 (P.T.A.B. Feb. 19, 2014)

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.
11/726,831 03/23/2007 Yechiel Yochai EMS-147US 9675
52427 7590 02/20/2014
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY, SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
NGUYEN, LOAN T
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
02/20/2014 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 YECHIEL YOCHAI
1

____________________

Appeal 2011-007857
Application 11/726,831
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, 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 Non-
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1
The Real Party in Interest is EMC Corporation. App. Br. 2.
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2
STATEMENT OF THE CASE
2

The Invention
Appellant’s invention relates to computer storage devices and, more
particularly, to managing data stored on a computer storage device. Spec.
p. 1, ll. 5-6 (“TECHNICAL FIELD”).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method for managing data, comprising:
providing at least one first device having a first table of
information that maps sections of the first device to allocated
sections of at least one storage area among a plurality of storage
areas;
providing at least one second device, the second device
being a logical device and having a second table of information
that: (i) maps sections of the second device to the sections of
the first device that map the allocated sections of the at least
one storage area and (ii) identifies unallocated sections of the
plurality of storage areas;
evaluating characteristics of data associated with at least
one of the sections of the first device;
moving the data associated with the at least one of the
sections of the first device from the at least one storage area to

2
Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 27, 2010); Reply Brief (“Reply Br.,” filed Apr. 5, 2011); Examiner’s
Answer (“Ans.,” mailed Feb. 3, 2011); Non-Final Office Action (“NFOA,”
mailed July 21, 2010); and the original Specification (“Spec.,” filed
Mar. 23, 2007).
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another of the plurality of storage areas according to a policy
and based on the characteristics of the data; and
updating the first table of information and the second
table of information according to the movement of the data
among the plurality of storage areas.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ananthanarayanan US 7,085,909 B2 Aug. 1, 2006
Nishikawa US 7,506,012 B2 Mar. 17, 2009
Rejection on Appeal
3

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nishikawa and Ananthanarayanan.
Ans. 3.
ISSUE
Appellant argues (App. Br. 9-15; Reply Br. 3-10) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Nishikawa and Ananthanarayanan is in error. These
contentions present us with the following issue:

3
In the event of further prosecution, we direct the Examiner’s attention to a
recent precedential Board decision concerning “computer-readable storage
medium” to determine whether claims 11-19 are directed to statutory subject
matter under § 101. Under our jurisprudence, the scope of the recited
“computer-readable storage medium” appears to encompass transitory media
such as signals or carrier waves. See Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media).
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Did the Examiner err in finding that the cited prior art combination
would have taught or suggested a second, logical device with an associated
table of information that maps sections of the second device to the first
device and which identifies unallocated sections of a plurality of storage
areas, as required by claim 1?
ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s arguments with respect to claim 1, 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
Appellant’s Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Discussion of “Thin Provisioning” and “Thin Device”
Appellant contends their claims “recite features that provide for
automated life-cycle management of data using thin provisioning . . .
[which] is suitable for use with the technique of thin provisioning.” App.
Br. 10. Appellant repeatedly relies upon the purported differences and
beneficial characteristics of “thin provisioning” and “thin devices” to
distinguish over the prior art combination cited by the Examiner. See App.
Br. 11 et seq.; Reply Br. 3 et seq. However, we find Appellant’s arguments
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unpersuasive because they are premised on limitations not recited in claim 1,
i.e., “automated life-cycle management of data,” “thin provisioning,” and/or
a “thin device.”
Though understanding the claim language may be aided
by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a
part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994)). Further, “although the specification often describes
very specific embodiments of the invention,” Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005), our reviewing court, the U.S. Court of
Appeals for the Federal Circuit, “ha[s] repeatedly warned against confining
the claims to those embodiments." Id.
In the Reply, Appellant, for the first time, appears to offer a separate
argument for patentability of dependent claim 9 which recites, in pertinent
part, “wherein the second device includes a thin device and the first device
includes a data device.” Reply Br. 4 and 7. Appellant has not explained
why, nor is it apparent a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation necessitated this
argument. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(“informative”) (absent a showing of good cause, the Board is not required
to address argument in Reply Brief that could have been presented in the
principal Brief). Therefore, we decline to consider Appellant’s arguments
concerning claim 9.
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Further, the doctrine of claim differentiation informs us “the presence
of a dependent claim that adds a particular limitation raises a presumption
that the limitation in question is not found in the independent claim.”
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004).
“When different words or phrases are used in separate claims, a difference in
meaning is presumed.” Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143
(Fed. Cir. 2005). Under the doctrine of claim differentiation, “the presence
of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.” Phillips v. AWH Corp, 415 F.3d 1303, 1315 (Fed. Cir. 2005). This
presumption is “especially strong when the limitation in dispute is the only
meaningful difference between an independent and dependent claim, and
one party is urging that the limitation in the dependent claim should be read
into the independent claim.” SunRace Roots Enterprise Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
On the record before us, the presumption that claim 1 is not limited to
an invention including elements or steps related to “thin provisioning” or a
“thin device” (as in dependent claim 9) is unrebutted by Appellant.
Accordingly, as a matter of claim interpretation, we find claim 1 is not
limited to Appellant’s repeatedly argued “thin provisioning” embodiments
disclosed in Appellant’s Specification. See Spec. p. 3 and 9-11.
4

4
Appellant also argues (App. Br. 15) the Examiner’s stated basis for
motivation to combine Nishikawa with Ananthanarayanan is deficient
because these references “appear to have nothing to do [with] the concept
and features of managing data using thin provisioning . . . .” We are
unpersuaded by this argument, for the reasons discussed, supra.
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Discussion of “Second [Logical] Device”
The Examiner modified his positions in the non-final rejection and the
Answer with respect to the explicit teachings of Nishikawa and
Ananthanarayanan. See NFOA, 3; Ans. 3-4. In particular, The Examiner
found (Ans. 3-4) Nishikawa teaches or suggests the recited:
providing at least one second device, the second device being a
logical device and having a second table of information that: (i)
maps sections of the second device to the sections of the first
device that map the allocated sections of the at least one storage
area and (ii) identifies unallocated sections of the plurality of
storage areas.
Claim 1. We find Appellant had a fair and full opportunity to respond to the
Examiner’s revised analysis in the Reply, which he did. See Reply Br. 6-10.
In response to the Examiner’s findings cited above, Appellant
contends:
At best, for purposes of argument, the logical devices
(LD 1-7) of Nishikawa might be considered to relate to features
akin to Appellant’s recited first device (e.g., a data device) that
maps to allocated sections of the physical storage (e.g.,
Nishikawa's disk groups (DG) composed of storage disks).
However, nowhere in the cited prior art is there a discussion or
disclosure of features of a second logical device (e.g., a thin
device) that maps to the sections of the first device that map to
allocated sections of the physical storage and that identifies
unallocated sections of the plurality of storage areas, as is
recited by Appellant and provided and discussed in connection
with the concept of thin provisioning. Additionally, as noted
above, Nishikawa’s disk groups (DG) are explicitly identified
by Nishikawa as composed of storage disks and appear to
correspond to physical storage areas. The disk groups are not
logical devices functioning like that recited by Appellant nor
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having the recited tables of information like that recited by
Appellant.
Reply Br. 7. However, we disagree with Appellant’s contentions regarding
the prior art’s teaching of the recited second logical device, as well as the
arguments directed to a “thin device,” and agree with the Examiner’s
findings (Ans. 3-4 and 9-10), for the reasons discussed below.
We agree with the Examiner’s finding cited above because the
claimed “second [logical] device” reads on Nishikawa’s teaching of logical
devices LD1, LD2, etc., with tables of information T1 and T2 that map
logical drive sections to sections of the first device, i.e., DG1 and storage
devices 36. See Nishikawa Figs. 2 (DG1, storage devices 36) and 9 (map
information 140); col. 9, ll. 10-16. As for the limitation “(ii) identifies
unallocated sections of the plurality of storage areas,” the Examiner finds,
and we agree, Nishikawa also teaches or suggests this portion of the
limitation. See id., and Ans. 4 and 10.
Although not dispositive to our Decision, but in further support of the
Examiner’s position, we find identification of unallocated sections of a
storage area to be a routine and necessary function performed by a logical
volume manager, such as the logical volume manager taught by Nishikawa.
See Nishikawa, Fig. 2 (“logical volume manager layer”); col. 4, ll. 36-43;
col. 5, ll. 60-64 (cited by the Examiner, Ans. 3); col. 8, ll. 57-66. In view of
Nishikawa’s teachings, we find creating a logical volume in response to a
data allocation instruction necessarily involves identification of unallocated
sections of a storage area.
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Updating Tabular Information According to Data Movement
In the Answer, the Examiner relies upon Ananthanarayanan for
teaching or suggesting the limitation “updating the first table of information
and the second table of information according to the movement of the data
among the plurality of storage areas,” as recited in claim 1. Ans. 5 (citing
Ananthanarayanan, col. 7, ll. 60-62). This is a different position from that
taken by the Examiner in the non-final office action. See, NFOA, 4.
Appellant had a full and fair opportunity to respond to the Examiner’s
revised analysis in the Reply Brief, as discussed below.
Ananthanarayanan states:
For a “data movement” type of application, wherein file data is
to be physically moved from one portion of a storage unit to
another portion, the original physical block number could be
freed upon updating the read mapping table with the new
physical block address number from the write mapping table.
Ananthanarayanan, col. 7, ll. 56-62. In the Reply, Appellant argues:
Appellant submits that, like Nishikawa, Ananthanarayanan’s
system has nothing to do with, and features of, thin
provisioning and does not disclose the features therefor that are
recited by Appellant. In particular, the read mapping tables and
write mapping tables of Ananthanarayanan do not satisfy the
features of first and second tables like that recited by Appellant.
. . . [E]ach of Ananthanarayanan’s tables perform different
functions in connection with reading or writing virtual blocks of
data to/from physical blocks of storage. The read mapping
tables and write mapping tables do not have, nor would it
appear to make sense in Ananthanarayanan for them to have,
one of the tables mapping to the sections mapped in connection
with the other device or to identify unallocated sections of the
plurality of storage areas.
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Reply Br. 9. However, we disagree with Appellant because Appellant is
attacking the references separately, in addition to again arguing features not
found in claim 1, i.e., “thin provisioning.”
We specifically note Appellant’s challenge to the references
individually is not convincing of error in the Examiner’s position because 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 (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)).
In this case, and as noted above, the Examiner cited Nishikawa as
teaching or suggesting recited:
providing at least one second device, the second device being a
logical device and having a second table of information that: (i)
maps sections of the second device to the sections of the first
device that map the allocated sections of the at least one storage
area and (ii) identifies unallocated sections of the plurality of
storage areas.
Claim 1. Ananthanarayanan is merely relied upon by the Examiner as
teaching or suggesting updating tables in response to the movement of data
in a file system management system. Therefore, we find Appellant’s
arguments that Ananthanarayanan does not teach the recited first and second
tables to be misplaced.
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We therefore find the limitation, “updating the first table of
information and the second table of information according to the movement
of the data among the plurality of storage areas” reasonably reads on
Ananthanarayanan at column 7, lines 56-62, as cited by the Examiner.
Ans. 10.
Therefore, based upon the findings above, and on the record before us,
we are not persuaded of error in the Examiner’s reliance on the combination
of Nishikawa and Ananthanarayanan to teach or suggest the disputed
limitations of claim 1, nor do we find error in the Examiner’s resulting legal
conclusion of obviousness. As Appellant has not provided separate
arguments with respect to independent claims 11 and 20, or dependent
claims 2-10 and 12-19, rejected on the same basis as independent claim 1,
we similarly sustain the Examiner’s rejection of these claims under 35
U.S.C. § 103(a).
CONCLUSION
The Examiner did not err with respect to the unpatentability rejection
of claims 1-20 under 35 U.S.C. § 103(a) over the combination of Nishikawa
and Ananthanarayanan, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1-20.
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