Ex Parte GRUBE et al

Patent Trials and Appeals Board

Mar 29, 2019

12850607 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/850,607 08/04/2010
89322 7590 04/02/2019
Garlick & Markison (IBM)
100 Congress A venue, Suite 2000
Austin, TX 78701
FIRST NAMED INVENTOR
GARY W. GRUBE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CS00l94/END920l65786US6 1169
EXAMINER
SAVLA,ARPANP
ART UNIT PAPER NUMBER
2138
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
MMURDOCK@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY W. GRUBE and TIMOTHY W. MARKISON
Appeal2018-002243
Application 12/850,607 1
Technology Center 2100
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
STACEY G. WHITE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4 and 11-14. Claims 5 and 15 are canceled and claims 6-10 and
16-20 have been withdrawn. App. Br. Claims App'x. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM and enter a NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b).
Technology
The application relates to data storage solutions in computing systems.
Spec. 1.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2018-002243
Application 12/850,607
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A method for execution by one or more processing
modules, the method comprises:
obtaining data for storage;
encoding the data in accordance with an error coding
dispersal storage function to produce a plurality of sets of
encoded data slices, wherein a decode threshold number of
encoded data slices of a set of the plurality of sets of encoded
data slices is required to recover a data segment of the data
wherein an individual encoded data slice of the set of encoded
data slices yields substantially no information regarding the data
segment;
determining a proxy unit, wherein the proxy unit is one of
a plurality of dispersed storage (DS) units and wherein a DS unit
of the plurality of DS units includes a processing module and
memory;
transmitting the plurality of sets of encoded data slices to
the proxy unit; and
retransmitting, by a processing module of the proxy unit,
at least some encoded data slices of the set of encoded data slices
to different DS units of the plurality of DS units for storage
therein, wherein the proxy unit does not store the at least some
of the encoded data s !ices.
Rejections2
Claims 1--4 and 11-14 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2-3.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief filed June 23,
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Appeal2018-002243
Application 12/850,607
Claim 1--4 and 11-14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Zuckerman et al. (US 2010/0094956 Al; published Apr.
15, 2010) ("Zuckerman") and Brunner et al. (US 2010/0214970 Al;
published Aug. 26, 2010) ("Brunner"). Final Act. 4--7.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
This appeal turns on the construction of "does not store," which
appears in independent claims 1 and 11. Specifically, in the limitation at
issue, a proxy unit retransmits, without storing, at least some encoded data
slices.
The Merriam-Webster online dictionary3 defines "store" as follows:
1) lay away, accumulate; 2) furnish, supply; 3) to place or leave in a location
(such as a warehouse, library, or computer memory) for preservation or later
use or disposal; and 4) to provide storage room for; hold. We determine that
one of ordinary skill in the art would have understood "store" to have the
meaning set out in definition three, because it most closely aligns with the
concepts and issues discussed in the Specification. Thus, we find that "does
2017 ("App. Br."), as well as the following documents for their respective
details: the Final Action mailed January 6, 2017 ("Final Act."), the
Examiner's Answer mailed October 27, 2017 ("Ans."), and Appellants'
Reply Brief filed December 21, 2017 ("Reply Br.").
3 https://www.merriam-webster.com/dictionary/store
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Appeal2018-002243
Application 12/850,607
not store" means "does not place or leave in a location (such as ... computer
memory) for preservation or later use or disposal."
This construction is consistent with Appellants' Specification.
Specifically, Appellants disclose that "processing module 50 may have an
associated memory and/or memory element, which may be ... any device
that stores digital information."). See, e.g., Spec. 12, 25-30. Thus, any
information placed in a memory element of the processing module, even for
later use or disposal, would constitute storage and negate "does not store."
The Examiner finds Appellants' Specification "does not support the
limitation 'wherein the proxy unit does not store the at least some of the
encoded data slices."' Final Act. 3. We have reviewed the portions of
Appellants' Specification that Appellants cite as support for this limitation
and are not persuaded of error in the Examiners' finding. See App. Br. 5---6
(citing Spec. p. 31, 11. 14--16; p. 30, 11. 19-28); Reply Br. 2-7 (additionally
citing Spec. Figs. 1-5, 10, 11, 14; p. 39, 11. 23-29).
In particular, we do not find support in the Specification for how the
"processing module of the proxy unit" can retransmit "at least some encoded
data slices of the set of encoded data slices to different DS units of the
plurality of DS units for storage therein" while "the proxy unit does not store
the at least some of the encoded data slices." Storage by the proxy unit
would encompass any placement of the encoded data slices into a memory
element, even if for later use (i.e., retransmission) or disposal (i.e., not
transmitting). For the proxy unit to "not store" would require the data slices
bypassing all memory elements of the processing module while being
retransmitted. Because the Specification does not describe retransmission
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Appeal2018-002243
Application 12/850,607
without storing, we affirm the Examiner's rejection based on lack of written
description.
Moreover, it is not clear from the disclosures of the Specification how
retransmission while not storing is possible according to the disclosed
embodiment. Based on the record before us, we are unable to discern a
construction of "retransmitting, by a processing module of the proxy unit, at
least some encoded data slices ... , wherein the proxy unit does not store the
at least some of the encoded data slices" that would allow for examination of
the claimed subject matter without resorting to speculation as to the scope of
the claims. Accordingly, we enter a new ground of rejection under 35
U.S.C. § 112, second paragraph, because the claims are indefinite.
Specifically, the claims are inherently contradictory in that the recited proxy
unit is seemingly incapable of retransmitting without storing-"place or
leave in a location (such as ... computer memory) for preservation or later
use or disposal"-the data slices. 4
4 We note that Appellants imply that the limitation at issue should be
construed as "does not store the at least some of the encoded data slices after
retransmission," (see Reply Br. 11 ("However, of the encoded data slices
that are retransmitted, none of them are stored by the proxy unit after
retransmission.")). In other words, we understand Appellants' preferred
construction of the limitation at issue is deletion (i.e., non-retention) of the
data slices immediately after retransmission. "After retransmission" does
not appear in the claim and we decline to so narrow the construction (In re
Zletz, 893 F.2d 319,321, (Fed. Cir. 1989) ("During patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow.")). Appellants have the opportunity to amend the claims during
prosecution, so giving a claim its broadest reasonable interpretation will
reduce the possibility that the claim, once issued, will be interpreted more
broadly than is justified. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
Cir. 1984). We do not decide whether "does not store after retransmission"
5
Appeal2018-002243
Application 12/850,607
As to the subject matter rejection, we do not sustain the rejection of
claims 1--4 and 11-14 under 35 U.S.C. § 103(a) (Final Act. 4--7) because to
do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862---63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims).
During examination, an applicant must "clearly and precisely set out the
metes and bounds of the claimed [subject matter]." Ex parte Miyazaki, 89
USPQ2d 1207, 1211-13 (BPAI 2008) (precedential). Our reviewing court
instructs us that an applicant "is in the best position to resolve the ambiguity
in the patent claims, and it is highly desirable that patent examiners demand
that applicants do so in appropriate circumstances so that the patent can be
amended during prosecution rather than attempting to resolve the ambiguity
in litigation." Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1--4 and 11-14 under 35 U.S.C. § 112, first paragraph and we reverse
the Examiner's rejection of the claims under 35 U.S.C. § 103. 5
is supported by the Specification or whether "does not store after
retransmission" reads on the prior art because those issues are not before us.
5 Our decision regarding the rejection under 35 U.S.C. § 103(a) is based
solely on the indefiniteness of the claims. We emphasize that our decision
does not address whether the claims, when interpreted as argued by
6
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Application 12/850,607
In a new ground of rejection, we reject claims 1--4 and 11-14 under
35 U.S.C. § 112, second paragraph.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Appellants or otherwise, are anticipated by or are obvious over the prior art
of record. Rather, we leave the patentability determination of these claims
to the Examiner. See MPEP § 1213.02.
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Application 12/850,607
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED
37 C.F.R. § 41.50(B)
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