Ex Parte Aguren

Board of Patent Appeals and Interferences

Aug 28, 2009

10669822 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY G. AGUREN
____________

Appeal 2009-002725
Application 10/669,8221
Technology Center 2100
____________

Decided: August 28, 2009
____________

Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and
STEPHEN C. SIU, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 24, 2003. The real party in interest is
Hewlett-Packard Development Company.
Appeal 2009-002725
Application 10/669,822

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 15-18 mailed October 19, 2007. Claims 1-3, 5-14, and 19-25 are
indicated by the Examiner as allowable, and claim 4 is canceled. Thus, only
claims 15-18 are the subject of this appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

A. INVENTION
In essence, Appellant invented a system for implementing storage
strategies for a file. (See Claim 15.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 15-18, as all other pending claims are
allowed. Claim 15 is the only independent claim before us. Claim 15
follows:
15. A system comprising:
a client computer;
a server coupled to the client computer;
a first storage device coupled to the server having a
storage attribute;
a second storage device coupled to the server having a
storage attribute;
wherein the server is configured to accept files in a user
namespace and in a user file structure; and
wherein the server stores the file on at least one of the
first and second storage devices in a global namespace different than
the user namespace, the selection of the storage location made by the
Appeal 2009-002725
Application 10/669,822

3
server based on the attributes of the storage devices and storage
preferences for the file.
C. REFERENCE
The sole reference relied upon by the Examiner as evidence in
rejecting the claims on appeal is as follows:
Mikesell US 2004/0153479 A1 Aug. 5, 2004
(Provisional Filed Nov. 14, 2002)

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 15-18 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Mikesell.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Mikesell
1. Mikesell discloses “[t]he forward allocator module 110 receives
statistics from the other smart storage units that use the intelligent distributed
file system, and uses those statistics to decide where the best location is to
put new incoming data.” (¶ [0096].)
2. Mikesell discloses that “[t]he Local File System Layer handles
metadata data structure lookup and management. . . . a single file may have
many different names, a single file may be accessed via different paths, and
new files may be copied over old files in the VFS namespace without
overwriting the actual file data . . . .” (¶ [0076].)
Appeal 2009-002725
Application 10/669,822

4
3. In Mikesell, “the word module refers to logic embodied in
hardware or firmware, or to a collection of software instructions, . . . The
modules described herein are preferably implemented as software modules.”
(¶ [0081].)

III. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

IV. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 15, 17, and 18 as a group (App.
Br. 10-13). For claims 17 and 18, Appellant repeats the same argument
made for claim 15. We will, therefore, treat claims 17 and 18 as standing or
falling with claim 15.
Appeal 2009-002725
Application 10/669,822

5
Appellant separately argues claim 16. See 37 C.F.R.
§ 41.37(c)(1)(vii); See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
The Anticipation Rejection
We now consider the Examiner’s rejection of the claims under 35
U.S.C. § 102(b) as being anticipated by Mikesell.

Claims 15, 17, and 18
Appellant contends that “[i]f the Answer relies on the combination of
the server 120 and distributed file system 110 to be the claimed server, then
the Answer fails to make a prima facie case of anticipation for failing to
disclose the separated claimed first and second storage devices.” (Reply Br.
2.) Appellant further contends that “if the Answer relies on the server alone
for the claimed server, then the Answer fails to make a prima facie case of
anticipation because it is the smart storage units 114 of the distributed file
system 110, not the server 120, that make decisions regarding where files are
stored.” (Id.)
The Examiner found that “[t]he Server 120 including intelligent
distributed file system 110 corresponds to Applicant’s server and paragraphs
[0076-0101] of Mikesell discloses the above limitation.” (Ans. 6.)
Issue: Has Appellant shown that the Examiner erred in finding that
Mikesell discloses the selection of the storage location made by the server
based on attributes of the storage devices and storage preferences for the
file?

Although Appellant gives alternative arguments, it is clear that the
Examiner is relying on a combination of units to establish the claimed
Appeal 2009-002725
Application 10/669,822

6
“server”. For example, the Examiner found that the claimed server and its
corresponding functions read on the combination of Mikesell’s server 120
and the intelligent distributed file system 110 (Ans. 6). Appellant admits
that Mikesell’s smart storage units 114, which are incorporated in the
intelligent distributed file system 110 (see Mikesell’s Fig. 1), makes
decisions regarding where to store files (Reply Br. 2), but argues that the
first and second storage devices are separate devices (id.). Given that
Appellant admits that Mikesell discloses a smart storage unit that makes
decisions on where to store files, the only question that remains is whether
this storage unit can be combined with Mikesell’s server 120, as noted by
the Examiner.
Claim 15 recites, inter alia, that the first and second storage devices
are coupled to the server, and does not require that the storage devices be
separate/distinct units from the server. One of ordinary skill in the art would
recognize that a “coupling” merely signifies some type of link. Thus,
contrary to Appellant’s arguments, the claimed first and second storage
devices are only required to be linked to the server, not separate devices
from the server. Further, we note that Mikesell discloses that its intelligent
distributed system uses statistics from smart storage units to decide where
the best location is to put new incoming data (FF 1). Thus, Mikesell’s
selection of the storage locations is made by the “server” based on
statistics/attributes of the storage devices.
As such, we find reasonable the Examiner findings that the claimed
“server” reads on Mikesell’s combined server 120 and intelligent distributed
file system 110.

Appeal 2009-002725
Application 10/669,822

7
Appellant further contends that “Mikesell still fails to expressly or
inherently teach that the smart storage unit 114 could or should ‘accept files
in a user namespace and in a user file structure.’” (App. Br. 13.)
The Examiner found that Mikesell “accept files in a user namespace
(hierarchical naming) and in a user file structure (metadata data structure).”
(Ans. 7.)
Issue: Has Appellant shown that the Examiner erred in finding that
Mikesell discloses that the server is configured to accept files in a user
namespace and in a user file structure?
In the Answer, the Examiner noted that Mikesell’s disclosure of
hierarchical naming and a metadata data structure shows a user namespace
and a user file structure, respectively (Ans. 7). Specifically, Mikesell
discloses that handling metadata data structure lookup and management and
a VFS namespace (FF 2). The Reply Brief fails to contest the responsive
arguments of the Examiner. Thus, we find that Appellant has not shown that
the Examiner erred in finding that Mikesell discloses accepting files in a
user namespace and in a user file structure.
Appellant has not persuaded us of error in the Examiner’s conclusion
of anticipation for representative claim 15. Therefore, we affirm the
Examiner’s § 102 rejection of independent claim 15. Appellant has elected
to group dependent claims 17 and 18 with independent claim 15. (App. Br.
10.) Therefore, these claims fall with claim 15.

Claim 16
Appellant contends that “Mikesell still fails to expressly or inherently
teach a software agent on the server 120 could or should ‘decide[] on which
Appeal 2009-002725
Application 10/669,822

8
of the first and second storage devices to store the file based on the attributes
of the storage devices and the storage preference for the file.’” (App. Br.
14.)
The Examiner found that the software agent “corresponds to Mikesell
smart storage unit 114, Figure 1 which includes different modules such as
block allocation manager module and forward allocator module.” (Ans. 7-
8.)
Issue: Has Appellant shown that the Examiner erred in finding that
Mikesell discloses a software agent that executes on the server?
As noted supra, Mikesell discloses a server 120 and an intelligent
distributed file system 110 that act together to form the claimed “server”
which decides on which of the first and second storage devices to store the
incoming files. The Examiner found that Mikesell’s smart storage unit 114
includes several modules that interface with the client computer and act as
software agents (Ans. 7-8). Further, Mikesell expressly discloses that the
modules are implemented as software modules (FF 3). Again, the Reply
Brief fails to contest these responsive arguments of the Examiner. Thus, we
find that Appellant has not shown that the Examiner erred in finding that
Mikesell discloses a software agent that executes on the server.
Appellant has not persuaded us of error in the Examiner’s conclusion
of anticipation for claim 16. Therefore, we affirm the Examiner’s § 102
rejection of dependent claim 16.

V. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 15-18.
Appeal 2009-002725
Application 10/669,822

9
Thus, claims 15-18 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 15-18.
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) (2007).

AFFIRMED

erc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS CO 80528