PURE STORAGE, INC.

Patent Trials and Appeals Board

Feb 4, 2022

2021000132 (P.T.A.B. Feb. 4, 2022)

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. 15/298,897 10/20/2016 Mark Alexander Hugh Emberson 3504US01 2489 130608 7590 02/04/2022 Pure Storage, Inc. c/o Kennedy Lenart Spraggins LLP 797 Sam Bass Road #2559 ROUND ROCK, TX 78681 EXAMINER MACKES, KRIS E ART UNIT PAPER NUMBER 2153 NOTIFICATION DATE DELIVERY MODE 02/04/2022 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): eofficeaction@appcoll.com kate@klspatents.com office@klspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK ALEXANDER HUGH EMBERSON Appeal 2021-000132 Application 15/298,897 Technology Center 2100 BeforeLARRY J. HUME, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-4 and 7-16, which are all claims pending in the application. Appellant has canceled claims 5 and 6. See Appeal Br. 9 et seq. (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Pure Storage. Appeal Br. 2. Appeal 2021-000132 Application 15/298,897 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to “Data Deduplication Storage System and Process.” See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention “relate to a method for reducing storage of data using deduplication and more particularly to using an intermediary data deduplication device to reduce storage of data objects via a network.” Spec. ¶ 2. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphasis added to contested prior-art limitations): 1. A method to deduplicate file storage, the method comprising: receiving, over a network by an intermediate device from a remote computing device, one or more files; dividing the one or more files into one or more data objects; deduplicating the one or more data objects; and storing, over a network by the intermediate device onto a remote storage system, the one or more deduplicated data objects, wherein the remote storage system is one of a plurality of remote storage systems; and migrating data objects between remote storage systems including replacing a first network address of one of the 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Feb. 14, 2020); Examiner’s Answer (“Ans.,” mailed May 21, 2020); Non- Final Office Action (“Non-Final Act.,” mailed Dec. 31, 2019); and the original Specification (“Spec.,” filed Oct. 20, 2016). Appellant did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner’s Answer. Appeal 2021-000132 Application 15/298,897 3 plurality of remote storage systems with a second network address of another of the plurality of remote storage systems so that data objects are automatically stored on the other of the plurality of remote storage systems. REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Lambright US 2016/0019232 A1 Jan. 21, 2016 Anderson et al. (“Anderson”) US 10,228,959 B1 Mar. 12, 2019 REJECTION Claims 1-4 and 7-16 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Lambright and Anderson. Non-Final Act. 2. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 6 et seq.) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness rejection of claims 1-4 and 7-16 on the basis of representative claim 1.3 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000132 Application 15/298,897 4 ISSUE Appellant argues (Appeal Br. 6-7) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Lambright and Anderson is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method to deduplicate file storage” that includes, inter alia, the step of “migrating data objects between remote storage systems including replacing a first network address of one of the plurality of remote storage systems with a second network address of another of the plurality of remote storage systems so that data objects are automatically stored on the other of the plurality of remote storage systems,” as recited in claim 1? PRINCIPLES OF LAW “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Appeal 2021-000132 Application 15/298,897 5 When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claim 1 and, unless otherwise noted, we incorporate by reference herein and 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 in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appeal 2021-000132 Application 15/298,897 6 The Examiner finds Lambright teaches “dividing the one or more files into one or more data objects (Non-Final Act. 2, citing Lambright ¶ 39 (the data item is broken into data “chunks”)), and relies upon Anderson as teaching “migrating data objects between remote storage systems including replacing a first network address of one of the plurality of remote storage systems with a second network address of another of the plurality of remote storage systems so that data objects are automatically stored on the other of the plurality of remote storage systems (a virtual machine is migrated between systems and a first network address is changed to a second network address.” Non-Final Act. 3 (citing Anderson, claim 1). Appellant contends: Here, Anderson teaches migrating a virtual machine on a virtual network from a first host to a second host. The virtual machine is associated with a “virtual network IP address” which is maintained through the migration. The virtual network IP address of the virtual machine is mapped to a network address of first host prior to the migration. After the migration, the mapping is updated to the network address of the second host. . . . Anderson’s virtual machines are not data objects as claimed. Further, the migration of Anderson’s virtual machine and updating of the network address to the second host effects messaging directed to the virtual machine to be forwarded to the virtual machine executing on the second host - not a data object to be automatically stored on a different remote storage system as claimed. Appeal Br. 7 (emphases added). The Examiner responds by noting Appellant is arguing the references separately, and further clarifies the rejection by explaining: While the Anderson reference was cited, it was mainly cited for migrating by changing one network address to a second Appeal 2021-000132 Application 15/298,897 7 network address. As cited in the rejection, the Lambright reference teaches a file (or data item) being broken into data objects (or data chunks) (paragraph 39). Additionally, the Lambright reference teaches moving the data chunks to various storage devices in the distributed storage system (paragraph 47). Therefore, the combination of references taken together teach all of the limitations of the independent claims. Ans. 4 (emphases added). We further note Appellant did not respond to the Examiner’s clarifications and legal conclusions in the Answer by filing a Reply Brief. Arguments not made are waived. Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 2-4 and 7-16, which fall therewith. See Claim Grouping, supra. CONCLUSION We AFFIRM the Examiner’s rejections. More specifically, Appellant has not persuasively argued that the Examiner erred with respect to the obviousness rejection of claims 1-4 and 7-16 under 35 U.S.C. § 103 over the cited prior art combination of record, and we sustain the rejection. Appeal 2021-000132 Application 15/298,897 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 1-4, 7-16 103 Lambright, Anderson 1-4, 7-16 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED