Ex Parte Fan et al

Board of Patent Appeals and Interferences

Apr 13, 2009

10188626 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHENGGONG FAN, SRINIVAS M. AJI,
and JEHOSHUA BRUCK
____________

Appeal 2008-4160
Application 10/188,626
Technology Center 2400
____________

Decided:1 April 14, 2009
____________

Before JOHN C. MARTIN, JOSEPH L. DIXON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/188,626

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-27 and 29-35. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

Invention
The invention at issue on appeal relates to a network data storage
manager that can reconfigure network storage devices in a manner that a
client machine of the network can access a data file using the same file
pathname after the data file has been moved from one storage location to
another storage location. (Spec. 7.) In addition, the network data storage
manager can pause any data movement that is occurring on one data file and
provides a client machine access to the data file, such as, a read or a write
operation. (Fig. 19, boxes 1960 and 1970; Spec. 43.)
ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method of processing requests relating to data
movement for network storage devices, the method comprising:
receiving file movement instructions to move a first data file
from a first network storage device to a second network storage
device;
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moving the first data file from a first location at the first
network storage device to a second location at the second network
storage device, said moving comprising providing access to the first
data file by a client machine during said moving; and
automatically mapping the first location at the first network
storage device to the second location at the second network storage
device so that a client machine can access the first data file using a
data file pathname that does not change when the data file is moved
from the first location to the second location to thereby render the data
file move transparent to the client machine.

REFERENCES
The Examiner relies on the following references as evidence:
Manczak US 2002/0161855 A1 Oct. 31, 2002
(filed Dec. 05, 2000)
Aziz US 6,779,016 B1 Aug. 17, 2004
(filed Feb. 11, 2000)
Coates US 6,952,737 B1 Oct. 04, 2005
(filed Dec. 29, 2000)

REJECTIONS
The Examiner makes the following rejections.
Claims 1-14, 16-27, and 29-35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Coates in view of Manczak.
Claim 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coates in view of Manczak and further in view of Aziz

II. ISSUES
Has the Examiner set forth a sufficient initial showing of obviousness
of the claimed invention? The issue regarding claim 1 turns on whether
Appellants have shown the Examiner erred by failing to identify a teaching
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of “said moving comprising providing access to the first data file by a client
machine during said moving” in the prior art, as recited in claim 1.
Has the Examiner set forth a sufficient initial showing of obviousness
of the claimed invention in rejecting clam 26?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the
opportunity on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Scope of Claim
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).

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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
The name of the game is the claim. In re Hiniker Co., 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). All words in a claim must be considered in
judging the patentability of that claim against the prior art. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970). If an independent claim is nonobvious
under 35 U.S.C. § 103, then any claim depending therefrom is nonobvious.
In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

IV. FINDINGS OF FACT
1. Appellants filed an amendment on July 25, 2006, which contains
the added limitations “said moving comprising providing access to the first
data file by a client machine during said moving…” in claim 1 and claim 31
(page 2 and page 8) and similar added limitations in other independent
claims. Claim 11 contains the added limitation “during and after movement
of the data file” (page 4). Claim 33 contains the added limitation “said
moving comprising providing access to the data file during movement of the
data file from the first location to the second location” (page 9). Claim 35
contains the limitation “provides the client machine with uninterrupted
access to the data files during the data movement transaction.” (Page 10).
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2. All limitations mentioned in FF 1 are supported by the
Specification (Fig. 19, boxes 1960-1970; pages 43-44).
3. The limitation of claim 1,“automatically mapping the first location
at the first network storage device to the second location at the second
network storage device so that a client machine can access the first data file
using a data file pathname that does not change when the data file is moved
from the first location to the second location to thereby render the data file
move transparent to the client machine,” is supported by the Appellants’
Specification (at pages 7 and 37).
4. The Examiner stated in the Advisory action, mailed on Dec 21,
2006, that “Examiner agrees with applicant that Manczak does teach
accessing the data ‘transparently.’ The specification defines accessing the
data whiles it is moves as transparent on page 7 lines 10-15.”
5. The Examiner in his Examiner Answer, mailed on Aug 8, 2007,
compared the content of Manczak to Appellants’ Specification. The
Examiner found that “Manczak discusses mapping (paragraph 39) and
transparency (paragraph 37), which is are [sic] the same features the
appellant is arguing, the process that Manczak uses is the same process as
appellant has described in the specification and allows for access while the
file is being moved” (Ans. 9) and
Manczak (paragraph 39) like Appellant's specification (page 37
lines 7-11, take[n] from appellant's summary) discloses
mapping files for access, which allows access during the move.
Appellant tries to argue that there is a difference from Manczak,
but both the Manczak and the present invention discuss the
same process of mapping and accessing the fails [sic, files]
during the time the file is moved allowing the file to be
accessed during its movement.
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. . . [T]he similarities between the prior art and the
present invention make it clear that both the prior art and in the
present invention operate in the same manner and therefore
make the present invention unpatentable.
(Ans. 10).
6. Claims 26-27 and 29-30 contain limitations different from the
limitations of claim 1 (see App. Br. claim appendix, page 19 and 23-24).
Claim 26 contains limitations directed to a distributed network data storage
system that includes a distributed storage manager application and wherein
the data which is being moved from one network storage location to another
is available to network clients. Claim 26, on which claims 27, 29, and 30
depend, is reproduced below;
26. A distributed network data storage system for a computer network,
the system comprising:

a network interface that permits communication between one or
more network client machines that request data files and network
storage devices at which the data files are stored, such that network
requests for data files can be received and processed; and

a distributed storage manager application that accesses data
files, specified in a data request, that are stored at the network storage
devices using a network file mapping interface of the network storage
devices, wherein the network file mapping is dynamically determined
to provide the correct mapping,

and such that the data stored on the network storage devices or
which is being moved to a network storage device is available to
network clients and servers in a single virtual volume, the distributed
file manager translating a file location in the virtual volume to a file
location on a physical volume in an operation that is transparent to the
network clients and servers.

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7. In the Final Rejection at page 6, mailed on September 6, 2006, the
Examiner states that the “the supporting rationale of the rejection to claims
1-10 applies equally as well to claims 11-35” (overlooking the fact that
claim 15 is separately rejected and claim 28 has been canceled).

V. ANALYSIS
From our review of the Examiner’s stated rejections, we find that the
Examiner appears to have set forth a detailed explanation of the prima facie
case for obviousness. Therefore, we look to Appellants' Briefs to show error
in the Examiner’s initial showing of obviousness.
With respect to independent claim 1, Appellants contend that
independent claim 1 has two separate and distinct limitations: 1) moving a
data file and providing access to the data file during the moving (hereafter
limitation 1); and 2) a client machine of the network can access a data file
using same file pathname after the data file has been moved from one
storage location to another storage location to render the data file move
transparent to the client machine (hereafter limitation 2). (App. Br. 16,
Reply Br. 5, 9). Appellants further contend that the Examiner has
misconstrued the claim 1 by failing to consider all claim limitations,
specifically limitation 1. Thus, the Examiner’s reliance upon Manczak’s
teaching to reject the two separate claim limitations is improper because
Manczak does not disclose limitation 1 of claim 1 (App. Br. 15, Reply Br. 4-
5).
We agree with Appellants. Appellants amended claim 1 and other
independent claims in the amendment to overcome Examiner’s non-final
rejection by adding the express language of limitation 1 in claim 1. (FF 1).
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The claim limitations (limitation 1 and limitation 2) in question are distinct
and supported by Appellants’ Specification (FF 2 and FF 3). A person of
ordinary skill in the art at the time of the invention would recognize that
accessing the moved data transparently or even moving data transparently is
different from providing access to the data during the movement of the data.
Furthermore, we find that the Examiner’s reliance upon paragraphs 37 and
39 of Manczak to reject limitation 1 of the claim 1 is not well founded since
those portions of Manczak discuss data structures shown in Figures 6A to
6D that are “used to enable this transparency and symmetry, and to maintain
correspondence between file identifiers known by clients, and file locations
that are transparent to clients...”([0037]), of which Figure 6B “illustrates
another example of data structures that can be used to implement a portion
of the metadata maintained by MDS 315” ([0039]). None of these
paragraphs expressly discloses or fairly suggests limitation 1 of claim 1.
We further take a close look at the paragraph [0009] of Manczak that
the Examiner has merely cited in the Answer to reject the limitation 1 of
claim 1 in the statement of the rejection. Since neither the Examiner nor
Appellants provide further argument concerning this paragraph, we are left
to speculate as to its relevance. We find the relevant portion in paragraph
[0009] is “[t]his approach also enables transparent ‘vertical’ scalability of
the storage architecture. . . . The migration of data is entirely transparent
and automatic (on-demand upon a request to read or write to a file, or
asynchronously whenever a file is being migrated to tertiary storage).” Our
view is that first, the content within parentheses is merely exemplary to
either “automatic” or the preceding quoted sentence, which does not on its
face clearly teach limitation 1. In addition, even if, arguendo, we interpret
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the paragraph [0009] broadly, i.e., the entire data moving process is
transparent and automatic, there is still no express teaching of the claimed
language “providing access . . . during said moving.” Hence, we find that
the Examiner failed to produce a sufficient factual basis for his rejection
with respect to limitation 1 of claim 1 for showing the initial burden of
presenting a prima facie case of unpatentability.
Appellants further contend that the Examiner has improperly based
the rejections on Appellants’ Specification rather than the claim language.
(App. Br. 15-16, Reply Br. 5-7).
We agree with Appellants that the Examiner’s rejection is not well
founded in the facts taught by the prior art references. The Examiner,
initially in his Advisory action (FF 4), asserted that “Examiner agrees with
applicant that Manczak does teach accessing the data ’transparently.’ The
specification defines accessing the data whiles it is moves as transparent on
page 7 lines 10-15,” and then, in the Examiner’s Answer (FF 5), asserted
that
Manczak (paragraph 39) like Appellant's specification (page 37
lines 7-11, take from appellant's summary) discloses mapping
files for access, which allows access during the move.
Appellant tries to argue that there is a difference from Manczak,
but both the Manczak and the present invention discuss the
same process of mapping and accessing the fails [sic, files]
during the time the file is moved allowing the file to be
accessed during its movement.
. . . [T]he similarities between the prior art and the
present invention make it clear that both the prior art and in the
present invention operate in the same manner and therefore
make the present invention unpatentable.

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The Examiner’s determination of similarities between the language of
Appellants’ Specification concerning the use of the term “transparent” and
the content of the prior art Manczak reference do not necessarily teach or
fairly suggest that the terms are used in the same context. Furthermore, we
cannot agree with the Examiner that the use of “file locations that are
transparent to clients” in paragraph [0037] of Manczak necessarily teaches
or fairly suggests that the data is available during the movement of the data.
In addition, we do not find either in the portions relied upon by the Examiner
or in the remainder of the disclosure of Manczak the teaching the Examiner
alleged, “allowing the file to be accessed during its movement.” Hence, we
find that the Examiner has not made a clear showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combination of teachings of Coates and Manczak.
Therefore, we agree with Appellants to the extent that the Examiner
failed to clearly show that the combination of Coates and Manczak teaches
the argued feature attributed to the references; i.e., providing access to the
data file that is being moved during the moving. The rejection of the
dependent claims 2-10 contains the same deficiency. Appellants thus have
demonstrated error in the Examiner’s prima facie case for obviousness of the
subject matter of claims 1-10. Each of the other independent claims except
claim 262 and their respective dependent claims on appeal contain similar

2 As already noted, the scope of claim 26 is different from the scope of the
other independent claims (FF 6). The data “which is being moved . . . is
available” to a network client, such as for viewing, may not necessarily
provide the “access” recited in independent claim 1 by the client machine,
such as the ability to read or write the data while it is being moved.
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limitations to those of claim 1 for which the rejection has been shown to be
deficient.
With respect to claim 26, the one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d at 1445. Here, we find that the Examiner failed to bear his
initial burden of presenting a prima-facie case of unpatentability of claim 26
by improperly grouping claims 26-27 and 29-30 with other claims having
different scopes and applying the rejection of claims 1-10 to claims 26-27
and 29-30 that have different scopes (FF 7) without separately addressing
the differences in the claim language.
Additionally, the Examiner has not identified how the combination of
teachings of Coates and Manczak teach or fairly suggest the invention as
recited in claim 26. The rejection on the dependent claims 27 and 29-30
contains the same deficiency.
We, therefore, cannot sustain the rejection of claims 1-14, 16-27, and
29-35 under 35 U.S.C. § 103 over Coates and Manczak.
With respect to dependent claim 15, the Examiner has not identified
how the teachings of Aziz remedy the above noted deficiency. Therefore,
we similarly cannot sustain the rejection of claim 15 under 35 U.S.C. § 103
over Coates, Manczak, and Aziz.

VI. CONCLUSION
For the aforementioned reasons, we conclude that Appellants have
shown the Examiner erred by failing to identify a teaching of “said moving
comprising providing access to the first data file by a client machine during
said moving” in the prior art, as recited in claim 1.
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We also conclude that the Examiner has not set forth a sufficient
initial showing of obviousness for claim 26.

VII. ORDER
We reverse the obviousness rejections of claims 1-27 and 29-35.

REVERSED

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