NetApp, Inc.

Patent Trials and Appeals Board

Jun 23, 2021

2020000832 (P.T.A.B. Jun. 23, 2021)

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.
14/521,053 10/22/2014 William Hetrick P01-10422.01 / 47415.521 5342
112792 7590 06/23/2021
Haynes and Boone, LLP (47415)
Attn: IPDocketing
2323 Victory Avenue, Suite 700
Dallas, TX 75219
EXAMINER
KHAN, MASUD K
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HETRICK, DENNIS JAMES HAHN, and
RUSSELL WINKLER
Appeal 2020-000832
Application 14/521,053
Technology Center 2100
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
CHRISTA P. ZADO, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed October 22, 2014 (“Spec.”); Final
Office Action, mailed November 8, 2018 (“Final Act.”); Appeal Brief, filed
June 19, 2019 (“Appeal Br.”); Examiner’s Answer, mailed September 6,
2019 (“Ans.”); and Reply Brief, filed October 29, 2019 (“Reply Br.”).
2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as NetApp, Inc. Appeal Br. 3.
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2
CLAIMED SUBJECT MATTER
The claims are directed to a data recovery technique for recovering
data from an object store. Spec., Title. Claim 1, reproduced below with
labels added, is illustrative of the claimed subject matter:
1. A method comprising:
[(a)] identifying, by a storage server, a data extent of an
address space of a storage device of the storage server storing
data previously received from a host;
[(b)] encapsulating, by the storage server, the data of the
data extent of the storage device, metadata with respect to the
data of the data extent, and a data object name into a data object;
[(c)] naming, by the storage server, the data object with a
base name representing a logical block address (LBA) of the data
extent;
[(d)(i)] appending, by the storage server, the base name
with a recovery point identifier that identifies a recovery point
associated with the data object, [(d)(ii)] wherein the data object
name includes an identifier including the base name, the recovery
point identifier, and at least one delimiter, and [(d)(iii)] wherein
the recovery point identifier indicates a point in time
corresponding to a backup of the data object; and
[(e)] providing, from the storage server, the data object to
a cloud object storage for backup of the data object.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kushwah US 8,990,162 B1 Mar. 24, 2015
Nguyen US 2006/0010174 A1 Jan. 12, 2006
Stakutis US 2006/0259516 A1 Nov. 16, 2006
Barnes US 2011/0218966 A1 Sept. 8, 2011
Karonde US 2012/0016841 A1 Jan. 19, 2012
Cantwell US 2015/0112939 A1 Apr. 23, 2015

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3
REJECTIONS
Claims 1, 3–5, 9, 11, 12, and 15–17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Cantwell, Nguyen, and Stakutis. Final Act.
3–19.
Claims 2, 10, and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cantwell, Nguyen, Stakutis, and Karonde. Final Act. 19–
21.
Claims 6, 7, 13, 14 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cantwell, Nguyen, Stakutis, and Barnes. Final Act.
21–25.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cantwell, Nguyen, Stakutis, and Kushwah. Final Act. 25–
28.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
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Application 14/521,053
4
Appellant’s Appeal Brief, and concur with the conclusions reached by the
Examiner.

Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds that Cantwell’s incremental block backup system
teaches the identifying limitation (a), the naming limitation (c) and the
providing limitation (e). Final Act. 3–4. The Examiner relies on Nguyen for
the encapsulating limitation (b) and Stakutis for the appending limitation (d).
Final Act. 4–7.
Appellant contends the rejection is improper, presenting the following
contentions of Examiner error.
(i) The combination of Cantwell, Nguyen, and Stakutis is improper.
(ii) The applied references fail to teach or suggest all the limitations of
representative claim 1.

We address each of Appellant’s contentions of error as follows.

1. Whether the combination of Cantwell, Nguyen, and Stakutis is improper
The Examiner determines it would have been obvious to modify
Cantwell’s incremental block backup system in view of Nguyen’s
encapsulating of data principles to “advantageously permit backup and
restore operations” using different vendors. Final Act. 5. The Examiner
determines further that it would have been obvious to modify the Cantwell
and Nguyen combination in view of Stakutis, inter alia, to allow for natural
searches for the data object by its name. Final Act. 6–7.
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5
Appellant presents two arguments contesting the propriety of the
combination of Cantwell, Nguyen, and Stakutis. We address each in turn
below.
a. Appellant’s argument that the combination would render
Cantwell’s system unfit for its intended purpose
The Appellant argues that the combination of Cantwell’s block
address in block storage with Stakutis’ encoding of metadata into filenames
is improper as it would render the Cantwell’s system unfit for its intended
purpose. Appeal Br. 9–10. According to Appellant, substituting Cantwell’s
block address for Stakutis’s user’s filename would not allow users to search
for a particular filename thereby contradicting the Examiner’s reasoning for
making the combination. Id. Furthermore, the combination would result in
Stakutis not encoding filenames and, instead, encoding block addresses per
Cantwell’s disclosure. Id. at 11.
In response, the Examiner finds there is no requirement that filenames
need be encoded. Ans. 6. Instead, Stakutis is relied upon merely for teaching
that the base name is appended with a recovery point identifier using a
delimiter. Id.
Appellant responds, contending the “Examiner’s Answer fails to
provide any explicit reasoning for the combination, especially to explain
how to combine Cantwell with Stakutis, and explicitly admits that the Office
ignored the functionality provided by Stakutis’s encoding file system.”
Reply Br. 6.
Appellant’s contention is unpersuasive of reversible Examiner error.
The Examiner’s reasoning for combining the Cantwell-Nguyen combination
with Stakutis’s teaching of appending a recovering point identifier to a base
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6
name with a delimiter is in order to perform “natural searches for the
[block]name.” Final Act. 7. This resulting combination of the references is
not inapposite because it does not impair or disable Cantwell’s intended use
of searching for an object using a block name. Contrary to Appellant’s
argument, the Examiner does not propose to substitute Stakutis’s file names
for Cantwell’s block address, instead only append the block address (i.e.,
name) with a recovery point identifier using a delimiter.
We note that the test for obviousness does not require bodily
incorporation of the references but, instead, looks to what would have been
suggested to the ordinarily skilled artisan by the combined references. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). The artisan
is not compelled to mechanically 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).
Instead, the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” because the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420–21 (2007). Here, Appellant has not demonstrated
that the Examiner’s proffered combination in support of the conclusion of
obviousness would have been “uniquely challenging or difficult for one of
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Application 14/521,053
7
ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20).
Appellant’s argument that the combination would result in Stakutis no
longer encoding file names of users is unpersuasive because the Examiner
proposes to modify Cantwell by appending Stakutis’s recovery point
identifier, not modifying Stakutis to use Cantwell’s block address. Thus,
Appellant’s argument fails to address the Examiner’s rejection.
b. Appellant’s argument that the proposed combination would require
substantial reconstruction and redesign of the elements
Appellant further argues the proposed combination is improper
because it would require substantial reconstruction and redesign of the
elements to be combined. Appeal Br. 12–13. This argument is unpersuasive
because Appellant provides insufficient evidence or persuasive reasoning in
support of the argument. Attorney argument unsupported by evidence has
little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
For the reasons discussed, we are unpersuaded by Appellant’s
arguments that the combination of Cantwell, Nguyen, and Stakutis is
improper. Therefore, in light of the absence of persuasive evidence to rebut
the Examiner’s findings and conclusion, we determine that the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness.

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2. Whether the applied references fail to teach or suggest the encapsulating
limitation (b), the naming limitation (c) and the appending limitation (d)
Appellant argues that the applied references fail to teach all the
limitation of representative claim 1, under two main contended points. We
address each in turn.

a. Whether the applied references teach or suggest claim element
(d)’s appending the base name with the claimed recovery point identifier
The Examiner finds that Stakutis teaches appending a base name (the
root name 204) with a delimiter 206 and a metadata 214, wherein the
metadata may comprise a time stamp. Final Act. 6. The Examiner asserts
that the timestamp would correspond to a point in time and thus, correspond
to the claim limitation’s “backup of the data object.” Id.
Appellant contends that Stakutis’ time stamp indicates the last time a
file was modified, which differs from a claimed recovery point identifier that
indicates a point in time corresponding to a backup of a file as required by
the claim. Appeal Br. 14. According to Appellant, a time when a file is
modified may be different from a point of time corresponding to the backup
of the file takes place, which may be at a different time than when the file
was modified. Id.
The Examiner responds by noting that Stakutis further discloses that
the timestamp may be, for instance, the number of seconds since 1970 based
on the current system clock, thereby preserving a sort order. Ans. 7, citing
Stakutis ¶ 44. The Examiner further finds that the Specification discloses
that the recovery point identifier may also be a timestamp used for
distinguishing what point in time the copy of the data corresponds to. Id.,
citing Spec. ¶ 16.
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When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would have been interpreted by one of ordinary skill in the
art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“Construing claims broadly during prosecution is not unfair to the applicant
. . . because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage.” Id.
Appellant’s argument is based on an interpretation of the term
“corresponding” as requiring an equivalent relationship between the time
represented by the time stamp and the time the data backup is made. Appeal
Br. 13–14. In contrast, the Examiner adopts a broader meaning of
“corresponding” encompassing a time that an object was saved, i.e., a point
in time related to backup of the data object. Ans. 7–8.
In the absence of a particular meaning ascribed by the Specification,
we find two dictionary definitions of “corresponding,” including (1) “having
or participating in the same relationship (such as kind, degree, position,
correspondence, or function) especially with regard to the same or like
wholes (such as geometric figures or sets)” and, (2) “related,
accompanying.”3 Thus, a time a file is modified is related to a backup of the
file because the modification time represents an earliest time a backup could
be performed. Accordingly, under a broad but reasonable interpretation,
Stakutis’s file modification timestamp corresponds to a backup of a data
object (i.e., the last time the file was saved) and, therefore, teaches or at least

3 MERRIAM WEBSTER COLLEGIATE DICTIONARY 260 (10th ed. 1997).
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10
suggests the disputed recovery point identifier for the reasons set forth by
the Examiner. Final Act. 6; Ans. 7–8.
Furthermore, we note in passing, the content or meaning of the data
stored in the disputed recovery point identifier, i.e., what is indicated by the
identifier, is reasonably considered to constitute nonfunctional descriptive
material. As such, the information content of the data does not distinguish
the data from other data of the same type. In particular, our reviewing court
has held that nonfunctional descriptive material cannot lend patentability to
an invention that would have otherwise been anticipated by the prior art. In
re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983) (noting that when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability); King
Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he
relevant question is whether ‘there exists any new and unobvious functional
relationship between the printed matter and the substrate.”’) (citations
omitted); see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) (“[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process.”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006)
(“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No.
2006-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
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Application 14/521,053
11
been obvious.”). Although we do not disregard any claim limitations and
assess the claimed invention as a whole, we follow the Federal Circuit’s
guidance from the Gulack decision and will “not give patentable weight to
printed matter absent a new and unobvious functional relationship between
the printed matter and the substrate.” In re Lowry, 32 F.3d 1579, 1582 (Fed.
Cir. 1994) (discussing Gulack). Here, we consider that the claimed “point in
time corresponding to a backup of the data object” is directed to
nonfunctional descriptive material that should not be given patentable
weight.
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if it
is “claimed for what it communicates.” Id. at 850. The disputed limitation of
claim 1 (that the point in time corresponding to a backup of the data object)
pertains to how the information associated with the recovery point identifier
is to be interpreted, i.e., the information content. Therefore, the disputed
claim limitation is directed to printed matter. See id. at 848 (A claim
limitation is directed to printed matter “if it claims the content of
information.”).
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. Here, the
claimed point in time corresponding to a backup of the data object is not
interrelated to the structure or functionality recited by the claim (e.g., such as
if subsequently recited providing step (e) was responsive to the recited point
Appeal 2020-000832
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in time (which it is not)). Rather, the point in time corresponding to a backup
of the data object is not functionally distinct from any other information that
is associated with the recovery point identifier. Therefore, we find the
disputed claim limitation constitutes nonfunctional descriptive material and
is not entitled to patentable weight. This is analogous to Curry, where the
type of data was found to be nonfunctional descriptive material when it
“does not functionally change either the data storage system or
communication system used in the method of claim 81.” Ex parte Curry, 84
USPQ2d at 1274.
As recognized in Curry, “if the prior art suggests storing a song on a
disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing the content associated with a
recovery point identifier is no different, in that the content does not alter the
structure or functionality of the claimed method, just how the information is
interpreted.
Because the disputed limitation constitutes nonfunctional descriptive
material, the particular content of information (i.e., a recovery point
identifier that indicates a point in time corresponding to a backup of the data
object) recited in claim 1 is not entitled to patentable weight. Accordingly,
Appellant’s argument is further unpersuasive as not commensurate in scope
with claim 1.
For the reasons discussed above, we are unpersuaded the rejection is
improper based on argument presented in connection with the recitation of
wherein the recovery point identifier indicates a point in time corresponding
to a backup of the data object.
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13

b. Whether the combination of references teaches or suggests the
encapsulating, naming and appending limitations
The Examiner finds the combination of Cantwell’s metadata that
includes a block name (i.e., object name) when encapsulated according to
Nguyen teaches encapsulating limitation (b). Final Act. 4–5. The Examiner
finds Cantwell’s client address that includes a block address teaches naming
limitation (c), the Examiner, applying the block address for teaching a name
of a data object to be backed up. Id. at 4. The Examiner further finds
Stakutis teaches appending limitation (d). Id. at 6.
Appellant contends that the combination is improper because, “the
Office refers to the same claimed data object as representing different and
unrelated elements in each of the references.” Appeal Br. 15. In particular,
Appellant argues (1) Nguyen’s packet is transmitted to the backup server
and unpacked there such that the applied references fail to teach or suggest
“encapsulating elements into Nguyen’s networking packet and naming the
networking packet with a base name representing Cantwell’s logical
business address of a data extent” as recited by claim limitations (b) and (c).
Id. at 16 (emphasis omitted). Appellant further argues (2) combining
Stakutis’s metadata-encoded file (the claimed data object) with Nguyen’s
networking packet would not teach or suggest the encapsulating limitation or
appending limitations. Id. at 16–17.
The Examiner explains that the data object is named with a base name
representing a logical block address, which the Examiner finds is
synonymous with the sequence of block information disclosed by Nguyen.
Ans. 8.
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Appellant’s contentions are unpersuasive because they are based on
an improper attack on the Nguyen and Stakutis references individually when
the rejection is based on the combination of Cantwell, Nguyen, and Stakutis.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d at 425). As the
Examiner finds and we agree, Nguyen discloses that the metadata associated
with the packet may include, “information identifying the contents of the
block of data and information about the data that is backed up.” Final Act. 5,
citing Nguyen ¶ 28. Because this metadata may be included in the
description of the backup, the name would be included in the encapsulated
packet as required by limitation (b).
Additionally, as the Examiner finds, both Nguyen and Stakutis
disclose encapsulating various data into a data object and appending various
elements reasonably teaching or suggesting a data object name. Final Act. 5–
6. We are persuaded that the individual references were used to properly
modify Cantwell to arrive at the disputed combination. As the Examiner
finds, Cantwell is modified with Nguyen to allow for the backing up and
restoration of operations using backup clients and backup servers from
different vendors. Final Act. 5, citing Nguyen ¶ 11.
Consequently, Appellant has not persuaded us of reversible error in
the Examiner’s finding that Stakutis, in combination with Cantwell and
Nguyen teaches the encapsulating (b), the naming (c) and the appending
limitations (d).
In sum, for the reasons discussed above, we disagree with Appellant
that the Examiner erred in finding the combination of Cantwell, Nguyen, and
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Stakutis teaches or suggests the argued limitations of claim 1 or that the
combination is improper. Accordingly, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103 as being together with the rejection of
independent claims 9 and 16, which are argued together with claim 1, and
the rejection of dependent claims 2–8, 10–15, and 17–20, which are not
argued separately with particularity.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3–5, 9, 11, 12, and
15–17 under 35 U.S.C. § 103 over Cantwell, Nguyen, and Stakutis.
We affirm the Examiner’s rejection of claims 2, 10, and 20 under 35
U.S.C. § 103 over Cantwell, Nguyen, Stakutis, and Karonde.
We affirm the Examiner’s rejection of claims 6, 7, 13, 14, and 18
stand rejected under 35 U.S.C. § 103 over Cantwell, Nguyen, Stakutis, and
Barnes.
We affirm the Examiner’s rejection of claims 8 and 19 stand rejected
under 35 U.S.C. § 103 over Cantwell, Nguyen, Stakutis, and Kushwah.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 9,
11, 12, 15–
17
103 Cantwell, Nguyen,
Stakutis
1, 3–5, 9,
11, 12, 15–
17

2, 10, 20 103 Cantwell, Nguyen,
Stakutis, Karonde
2, 10, 20
6, 7, 13, 14,
18
103 Cantwell, Nguyen,
Stakutis, Barnes
6, 7, 13, 14,
18

8, 19 103 Cantwell, Nguyen,
Stakutis, Kushwah
8, 19
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED