Robert B. Basham et al.

Patent Trials and Appeals Board

Feb 24, 2020

14793706 - (D) (P.T.A.B. Feb. 24, 2020)

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.
14/793,706 07/07/2015 Robert B. Basham IBM1P421/
SJO920150034US1
7024
50548 7590 02/24/2020
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
MERCADO, RAMON A
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. BASHAM, JOSEPH W. DAIN,
EVANGELOS S. ELEFTHERIOU, DEAN HILDEBRAND, STAN LI,
EDWARD H. W. LIN, HAROLD J. ROBERSON,
SLAVISA SARAFIJANOVIC, and THOMAS D. WEIGOLD
Appeal 2019-000156
Application 14/793,706
Technology Center 2100
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–9 and 21–31. Claims 1, 10–14, and
16–20 are canceled, and claim 15 is withdrawn. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to efficiently managing storage in a multi-tiered
storage system. See Spec., Abstr. Claim 2, reproduced below, is illustrative
of the claimed subject matter:
2. A computer program product for efficiently managing
storage in a multi-tiered storage system, the computer program
product comprising a computer readable storage medium
having program instructions embodied therewith, the program
instructions executable by a processor to cause the processor to
perform a method comprising:
receiving, by the processor, a command from an
application, wherein the command is directed to at least one
object;
determining, by the processor, storage for the at least one
object in a multi-tiered storage system based on the command;
and
storing, by the processor, the at least one object in
accordance with the determined storage,
wherein the command includes at least one of collocation
and anti-collocation guidance from the application for the at
least one object.2
REJECTIONS
Claims 2–9, 21–25, 30, and 313 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception. Final
Act. 12.

2 On remand, the Examiner may wish to consider whether the claim is
indefinite. Under the broadest reasonable interpretation, “at least one
object” includes one object, and collocation guidance may not make sense
for a single object.
3 The Examiner withdrew the rejection of claims 26–29 under § 101. Ans. 4.
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Claims 5 and 26 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Id. at 11.
Claims 2–9, 21–26, and 29–31 stand rejected under 35 U.S.C. § 103
as unpatentable over Alatorre (US 2013/0151804 A1, June 13, 2013), Cao
(US 2013/0073783 A1, March 21, 2013), and Corkill (US 2008/0021865
A1, Jan. 24, 2008). Id. at 15.
Claims 27 and 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Alatorre, Cao, Corkill, and Butt (US 2012/0054428 A1,
Mar. 1, 2012). Id. at 26.
ANALYSIS
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).
Arguments not made are waived. 37 C.F.R. § 41.37(c)(1)(iv).

Rejection under § 101
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described
in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
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Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

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II. Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 2 is directed to the abstract idea
of “storing of data in a multi-tiered storage system.” Final Act. 12. The
Examiner determines that claim 2 “recites the steps for sorting information
by the storage device, which is an abstract idea similar to the concepts that
have been identified as abstract by the courts, such as organizing
information through mathematical correlations in Digitech
or data recognition and storage in Content Extraction.” Id. at 13 (case
names italicized); Ans. 7–8. We have determined that concepts like
“organizing information through mathematical correlations” and “data
recognition and storage” are mental processes. Appellant contends claim 2
is not directed to an abstract idea. Appeal Br. 39–40.
We disagree with the Examiner that claim 2 recites an abstract idea
such as “mathematical correlations.” See Final Act. 13. Here, Appellant has
persuaded us that the Examiner has not sufficiently explained why claim 2
recites an abstract idea exception within the groupings of subject matter ((a)
mathematical concepts, (b) certain methods of organizing human activity, (c)
mental processes) identified in the Guidance. See Guidance, 84 Fed. Reg. at
52. Claim 2 is directed to a specific implementation, including receiving a
command, directed to an object, from an application, determining storage for
the object in a multi-tiered storage system, and storing the object. These are
not steps that can practically be performed mentally. Nor do we see how the
claimed invention recites certain methods of organizing human activity or
mathematical concepts.
Based on the record before us, we are persuaded the Examiner erred at
Step 2A, Prong 1 in determining that the claims recite an abstract idea.
Accordingly, we reverse the Examiner’s rejection of claim 2 and its
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dependent claims, as well as similar claim 21 and its dependent claims,
under 35 U.S.C. § 101.

Rejection under § 112
The Examiner finds the limitation, “wherein the command includes an
XML document that identifies the at least one object,” in claim 5 (and a
similar limitation in claim 26) as lacking written description support. Final
Act. 11–12. The Examiner finds that the Specification merely “discloses
that the command may be provided . . . as an XML document,” not that the
command includes an XML document as claimed. Id. at 11 (citing Spec.
¶ 53) (emphasis added).
Appellant contends that the same Specification disclosure quoted by
the Examiner as not supporting the limitation in fact supports the disputed
limitation. Appeal Br. 63 (citing Spec. ¶¶ 53, 48 (additional supporting
disclosure), 33 (same)). The Examiner responds, “a command formatted as
an XML document is significantly different to a ‘command including an
XML document.’” Ans. 19.
We agree with Appellant that “providing” a command as an XML
document sufficiently supports a command “including” an XML document.
See Spec. ¶ 53. Accordingly, we do not sustain the Examiner’s § 112
rejection of claims 5 and 26.

Rejection under § 103
Independent Claims 2 and 21
Appellant contends that the combination of Alatorre, Cao, and Corkill
fail to teach or suggest the following two limitations of claim 2: (1)
“receiving, by the processor, a command from an application, wherein the
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command is directed to at least one object,” and (2) “wherein the command
includes at least one of collocation and anti-collocation guidance from the
application for the at least one object.” Appeal Br. 55–56. Appellant also
contends the Examiner failed to articulate a rationale for combining the
references. Id. at 56–57. We address each argument in turn.
First, Appellant contends that Cao fails to teach or suggest the
“receiving” limitation. Id. at 55. Specifically, Appellant contends that Cao
“does not actually include ‘receiving, by the processor, a command from an
application.” Id. (citing Cao ¶ 21). The Examiner finds that Cao teaches
this limitation by teaching that a “storage policy module 113 collects data on
. . . each file accessed including the number of accesses and the I/O priority
of processes accessing the file in order to determine a temperature value for
each file.” Final Act. 16 (quoting Cao ¶ 21). In the Answer, the Examiner
makes a new finding that “Cao shows in Fig. 7 the multiple hardware
components (i.e. processors and controllers) that implement and execute the
software resources,” and as such, “Cao clearly teaches an application that
generates commands for storing data.” Ans. 10–11 (citing Cao Figs. 1, 7,
¶ 16).
In the Reply Brief, Appellant asserts that the Answer’s “newly cited
sections of the prior art amount to new grounds which have not been
designated as such . . . and therefore are not part of the rejection and should
not be taken into consideration.” Reply Br. 9. Accordingly, Appellant does
not address the Answer’s new findings. But Appellant overlooks our rule
governing undesignated new grounds, which mandates that such arguments
are waived unless Appellant timely challenged the new grounds by petition
to the Director. Specifically,
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Any request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director
under §1.181 of this title filed within two months from the entry
of the examiner’s answer and before the filing of any reply
brief. Failure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be
designated as a new ground of rejection.
37 C.F.R. § 41.40(a) (emphasis added); see also MPEP § 1207.03(b) (“37
CFR 41.40 sets forth the exclusive procedure for an appellant to request
review of the primary examiner’s failure to designate a rejection as a new
ground of rejection via a petition to the Director under 37 CFR 1.181.”
(emphasis added)).
Our review of Office records finds no petition filed by Appellant
under 37 C.F.R. § 1.181 to challenge the Examiner’s alleged undesignated
new ground(s) of rejection. Accordingly, we treat any potential challenge as
waived, and we will address the merits of the Examiner’s new findings. But
because Appellant does not address the Answer’s new findings in its Reply
Brief, Appellant also waived its arguments on the merits. See Hyatt v.
Dudas, 551, F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat
arguments appellant failed to make for a given ground of rejection as
waived). Accordingly, we find unpersuasive Appellant’s argument that the
cited references fail to teach or suggest claim 2’s “receiving, by the
processor, a command from an application, wherein the command is directed
to at least one object.”
Appellant next contends that Corkill fails to teach or suggest “wherein
the command includes at least one of collocation and anti-collocation
guidance from the application for the at least one object.” Appeal Br. 55–
56. Appellant’s argument appears to argue against the combination, rather
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than against what Corkill teaches. See id. Specifically, Appellant contends
that the rejection relies on paragraph 5 of Corkill, which states: “[i]f a
system utilizes data collocation at a storage group level, then each storage
group may have its own set of tables (e.g., metadata, 4K data table, 32K data
table).” Id. at 55 (citing Corkill ¶ 5, Final Act. 17). Appellant asserts that
“this section of the reference is merely concerned with storing data based on
a size of the data and makes no reference to a temperature of the data at all.”
Id. Appellant then notes that the rejection relies on Cao for the “receiving”
limitation, but that Cao involves determining “a temperature value for each
file.” Id. at 55–56 (citing Cao ¶ 21). Appellant contends that the rejection
has “already relied on a temperature based assessment of files in an attempt
to meet the claimed ‘receiving’” limitation. Id. at 56. In conclusion,
Appellant contends that “[i]t follows that the rejection cannot now broadly
recite a general description of storing data based on a size of the data which
makes no reference to a temperature of the data at all in an attempt to meet
the claimed” wherein clause. Id.
Appellant’s argument is unpersuasive. The Examiner finds that
Corkill teaches or suggests the wherein clause by disclosing that “a system
utilizes data collocation at a storage group level.” Final Act. 17 (citing
Corkill ¶ 5). Appellant does not contest that Corkill actually discloses data
collocation. Rather, Appellant argues that Corkill cannot be combined with
Cao because Corkill “makes no reference to a temperature,” as does Cao.
See Appeal Br. 56. But the test for obviousness is not “that a person of
ordinary skill in the art attempting to solve a problem will be led only to
those prior art elements designed to solve the same problem.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 402 (2007). Rather, “[i]t is common sense
that familiar items may have obvious uses beyond their primary purposes,
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and a person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. Thus, Corkill’s
apparent absence of any reference to temperature is immaterial to whether
one of ordinary skill in the art would have combined Corkill with Cao (and
Alatorre). Accordingly, Appellant’s argument is unpersuasive.
Appellant’s final argument is also against the Examiner’s
combination. See Appeal Br. 56–57. Appellant contends “that the rejection
does not address why a skilled artisan would have a reasonable expectation
of success in modifying and/or combining the references.” Id. at 56.
Appellant further contends, “the instan[t] rejection completely ignores the
third element needed to establish a proper prima facie case of obviousness.”
Id. at 57.
We disagree. The Examiner did articulate rationales to combine the
references. The Examiner first finds it would have been obvious to combine
Cao with Alatorre:
Therefore, it would have been obvious to a person of
ordinary skill in the art, before the effective filing date of the
claimed invention, to monitor the file/object accesses to update
in real-time the access statistics of the file/objects and mark
these file/objects as hot or cold based on the current access
statistics as disclosed in Cao. The combination would have be
obvious because a person of ordinary skill in the art would
know to use a known technique to improve similar devices in
the same way.
Final Act. 16. Then the Examiner finds it would have been obvious to
further combine Corkill with Alatorre and Cao:
Therefore, it would have been obvious to a person of
ordinary skill in the art, before the effective filing date of the
claimed invention, to utilize data collocation as disclosed in
Corkill. The combination would have be obvious because a
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person of ordinary skill in the art would know to use a known
technique to improve similar devices in the same way.
Id. at 17. As Appellant does not address the merits of these arguments and
instead merely asserts the Examiner did not submit a rationale, we do not
find Appellant’s arguments persuasive. Accordingly, we sustain the
Examiner’s rejection of claim 2.
Appellant separately argues independent claim 21, using similar
arguments as above. In addition, Appellant argues that the combination of
Alatorre, Cao, and Corkill fails to teach or suggest claim 21’s “wherein the
command is directed to at least one object of the object-based storage
system.” Appeal Br. 59. Appellant contends that “file-based storage
systems (as included in the cited sections of Cao’s paragraphs 0021 and
0048) manage data as a file hierarchy which is distinct from an ‘object-based
storage system.’” Id. In other words, Appellant distinguishes Cao’s “file-
based storage system” from the claimed “object-based storage system.”
The Examiner finds, and we agree, that Cao discloses this limitation
by teaching “storage policy module 113 collects data on . . . each file
accessed including the number of accesses and the I/O priority of processes
accessing the file in order to determine a temperature value for each file
[¶ 21]; and based on the current temperature the storage policy module
marks the file as hot or cold [¶ 48].” Final Act. 21.
We begin by construing claim 21’s “object-based storage system”
limitation. During prosecution, we give claims their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must
be read in light of the specification, as it would have been interpreted by one
of ordinary skill in the art at the time of the invention. Id. Here, the
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Specification discloses, “[f]urther, the object storage service 434 may
include any service that provides network-based access to the file storage
capabilities of the clusters.” Spec. ¶ 42. The Specification also broadly
discloses, “[a]s used herein, an object may include any discrete unit of
storage in a storage pool.” Id. ¶ 50 (emphasis added). One of ordinary skill
in the art would have considered a file to be a discrete unit of storage. See
MICROSOFT COMPUTER DICTIONARY, 5TH ED., 211 (“A file is the basic unit
of storage that enables a computer to distinguish one set of information from
another.” (emphasis added)) (2002). Taken together, we consider that an
object includes a file (“any discrete unit of storage,” Spec. ¶ 50 (emphasis
added)), and an object-based storage system includes a file-based storage
system. See also id. ¶ 57 (“In another embodiment, collocation guidance
may be provided for grouping objects based on other constructs that a
storage application is aware of. For example, collocation guidance may be
provided when trying to group things by file directory.” (emphasis added)).
Appellant concedes that Cao discloses a “file-based storage system[.]”
See Appeal Br. 59. Accordingly, we find Appellant’s argument that Cao
fails to teach or suggest an “object-based storage system” unpersuasive. We
therefore sustain the Examiner’s rejection of claim 21.
Appellant does not argue separate patentability for the dependent
claims, except claims 9 and 23, which we address below. See Appeal Br.
45–54. We therefore also sustain the Examiner’s rejection of claims 3–8,
22, and 24–31. See 37 C.F.R. § 41.37(c)(1)(iv).

Dependent Claim 9
Appellant contends the combination of Alatorre, Cao, and Corkill fail
to teach or suggest claim 9’s “wherein the storage for the at least one object
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is allocated for the at least one object based on the size of the at least one
object prior to receiving the at least one object.” Appeal Br. 53. Appellant
contends,
the rejection has attempted to meet this limitation by pointing to
paragraph 0070 of Alatorre, while stating “controlling the
allocation of data within one or more storage units of said
storage system.” FOA at 19. However, this excerpt from
Alatorre’s paragraph 0070 does not pertain to “wherein the
storage for the at least one object is allocated for the at least one
object based on the size of the at least one object prior to
receiving the at least one object” . . . as claimed.
Id.
In the Final Action, the Examiner tersely finds that Alatorre ¶ 70
discloses this limitation. Final Act. 19. In the Answer, the Examiner
expands this finding, relying on a dictionary definition of “allocated storage”
as “[p]ortions of storage that are assigned or reserved for . . . data.” Ans. 13
(citing THE AUTHORITATIVE DICTIONARY OF IEEE STANDARD TERMS, 7TH
EDITION, 27 (2000)4). The Examiner further finds,
That is, allocating does not necessarily includes the step of
storing the data; allocation only requires the reservation of the
space needed for storing prior to the step of storing. Thus, a
person of ordinary skill in the art would understand that
allocating implies reserving the space where data is to be
stored; prior to storing the data.
Id. The Examiner then newly finds that Alatorre teaches the disputed
limitation as follows:
Alatorre explicitly teaches control module 204 which is
adapted for controlling the configuration of the storage systems
for controlling the allocation of data within one or more storage
units of said storage system [¶0070]. As such, Alatorre

4 We updated the Examiner’s citation to include proper bracketing, ellipsis,
and pin cite.
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reasonably teaches the reservation of the space needed for the
data (i.e. allocation). Alatorre further teaches that this
allocation is guided by FS-level metadata that includes file size
[¶0033-34]. Hence, a person of ordinary skill in the art would
reasonably understand that Alatorre teaches moving data from a
source to a destination tier; wherein these steps include (i)
reserving the space needed to move the data (i.e. allocating)
based on the file size, and (ii) then moving the file. Therefore,
the combination Alatorre/Cao/Corkill clearly teach the
particular limitation.
Id. at 14.
Appellant fails to rebut these findings in the Reply Brief, contending
similarly as above (see claim 2) that the Examiner’s new findings “amount
to new grounds” that are “not part of the rejection.” Reply Br. 10 (emphasis
omitted). For similar reasons as we set forth above, Appellant’s arguments
are unpersuasive. We, therefore, sustain the Examiner’s rejection of claim 9.

Dependent Claim 23
Appellant contends the combination of Alatorre, Cao, and Corkill fail
to teach or suggest claim 23’s “wherein the command identifies an amount
of time during which the at least one object is not to be accessed.” Appeal
Br. 45–48. Specifically, Appellant contends the Examiner completely
ignores this limitation, “aside from pasting [it] in” the Final Action. Id.
at 47.
The Examiner finds,
Alatorre/Cao/Corkill teach the computer-implemented method
of claim 21, wherein the command identifies an amount of time
during which the at least one object is not to be accessed, and
tags the at least one object as cold [based on the current
temperature the storage policy module marks the file as hot or
cold; ¶0048 in Cao].
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Final Act. 23 (emphasis omitted). In the Answer, the Examiner determines
that the first part of the wherein clause (“the command identifies an amount
of time . . . not to be accessed”) and the second part (“tags the at least one
object as cold”) refer to the same concept, and the Examiner consequently
applies the same teaching in Cao to both parts. Ans. 17–18. The Examiner
cites the following portion of the Specification in support:
In yet another embodiment, the command may tag the at least
one object as cold. For example, where the application intends
for an object to not be accessed for a threshold period of time
(e.g., hours, days, weeks, months, etc.), a command may tag the
object as cold. Accordingly, the storage for the object may then
be determined based on the object being tagged as cold. In
particular, the storage determined for the object may include a
low storage tier (e.g., slow disk, tape, etc.).
Id. at 17 (citing Spec. ¶ 58). Based on this disclosure, the Examiner finds,
“broadly and reasonably speaking, ‘tagging the at least one object as cold’ is
how the claimed invention ‘identifies that an object is not to be accessed for
an amount of time.’” Id. at 17–18 (emphasis omitted). The Examiner then
finds that “Cao explicitly teaches tagging an object (i.e. ‘the file’) as cold;
and hence it follows that it teaches identifying the file as ‘not to be accessed
for an amount of time,’ as claimed.” Id. at 18 (citing Cao ¶¶ 47, 48, Fig. 5)
(emphasis omitted).
In the Reply Brief, Appellant contends, “it appears that the Examiner
has selectively rearranged the words that are actually used to describe the
limitation in question.” Reply Br. 2. Appellant quotes paragraph 48 of Cao,
which discloses “mark[ing] a file cold,” and states, “[i]t is apparent that
nothing in Cao’s paragraph 0048 has anything to do with ‘an amount of time
during which the at least one object is not to be accessed.’” Id. at 3.
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We agree with Appellant. The Examiner has improperly read the
disputed limitation out of the claim. The Specification explains, “[f]or
example, where the application intends for an object to not be accessed for a
threshold period of time (e.g., hours, days, weeks, months, etc.), a command
may tag the object as cold.” Spec. ¶ 58. Inherent in this disclosure are two
separate steps: first, a determination that an object is intended not to be
accessed for a threshold period of time, and second, a resulting command to
tag the object as cold. Likewise, the disputed limitation includes two
steps—identifying an amount of time during which the at least one object is
not to be accessed and tagging the at least one object as cold. The Examiner
only cites Cao as teaching the latter step. Accordingly, we do not sustain the
Examiner’s rejection of claim 23.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2–9, 21–25,
30, 31
101 Patent eligibility 2–9, 21–
25, 30, 31
5, 26 112(a) Written Description 5, 26
2–9, 21–26,
29–31
103 Alatorre, Cao, Corkill 2–9, 21,
22, 24–
26, 29–31
23
27, 28 103 Alatorre, Cao, Corkill,
Butt
27, 28
Overall
Outcome
2–9, 21,
22, 24–31
23
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).
Appeal 2019-000156
Application 14/793,706
18
AFFIRMED IN PART