Ex Parte Liu et al

Board of Patent Appeals and Interferences

Feb 2, 2012

11343012 (B.P.A.I. Feb. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________________

Ex parte WEI LIU and SANJAY JAIN

Appeal 2009-013783
Application 11/343,0121
Technology Center 2100
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Before MAHSHID D. SAADAT, ERIC B. CHEN, and MICHAEL R. ZECHER,
Administrative Patent Judges

ZECHER, Administrative Patent Judge

DECISION ON APPEAL

1 Filed on January 30, 2006. The real party in interest is EMC Corp. App. Br. 2.
Appeal 2009-013783
Application 11/343,012

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection
of claims 1-20, all the claims pending in the application. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse.
Appellants’ Invention
Appellants invented a method, system, and article of manufacturer directed
to a virtual provider with shadow copy functionality. According to Appellants, the
claimed invention enhances the shadow copy functionality by decoupling a copy
coordinator from multiple providers that support various logical units. See Spec.
¶ 0013.
Illustrative Claim
1. A method, comprising:

receiving a request from a requestor coupled to a coordinator
to create a shadow copy of a data volume on first and second
logical units, where the first logical unit is supported by a first
provider and the second logical unit is supported by a second
provider; and

creating the shadow copy by a virtual provider coupled to
the first and second providers and to the coordinator, wherein
the virtual provider appears as a provider to the coordinator.

Prior Art Relied Upon
Berkowitz US 2005/0004979 A1 Jan. 6, 2005

Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Berkowitz. Ans. 3-7.
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Appellants’ Contentions
Appellants contend that Berkowitz’s disclosure of a mapping module, which
is part of the point-in-time copy interface, cannot describe both “a coordinator” and
“a virtual provider,” as recited in independent claims 1, 12, and 17. App. Br. 7-11.
In response to the Answer, Appellants argue that the Examiner’s position that the
claimed “virtual provider” is not of the real world is incorrect. In particular,
Appellants allege that the claimed “virtual provider” is clearly a real-world
provider that supports data volume copies when more than one provider supports
the logical units of a volume. Reply Br. 4-6.
Examiner’s Findings and Conclusions
The Examiner finds that Berkowitz’s disclosure of a provider that receives
instructions from the point-in-time copy interface and communicates with the
storage subsystem amounts to the “virtual provider,” as recited in independent
claims 1, 12, and 17. In particular, the Examiner finds that since the claimed
“providers” (i.e., first, second, and virtual) are used interchangeably, they all
merely refer to providers. Moreover, using a dictionary from a Google website,
the Examiner finds that the claimed “virtual provider” means an image that is of
the imagination; not of the real world provider. Therefore, the Examiner finds that
an ordinarily skilled artisan would have understood that Berkowitz’s disclosure of
a first and second provider represents the claimed “virtual provider.” Ans. 8-9.

II. ISSUE
Did the Examiner err in finding that Berkowitz describes “…a virtual
provider coupled to the first and second providers and to the coordinator,” as
recited in independent claims 1 and 17, and similarly recited in independent claim
12?
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III. FINDINGS OF FACT (“FF”)
Berkowitz
FF 1. Berkowitz’s figure 3 illustrates one or more providers (306), which
may constitute hardware or software, located between a point-in-time copy
interface (304) and storage subsystem (308). Figure 3; ¶¶ [0045]-[0046].
FF 2. Berkowitz discloses that the point-in-time copy interface (304)
coordinates requests from a requestor (302) to access data from storage subsystem
(308) via such providers (306). ¶¶ [0042] and [0044].

IV. ANALYSIS
Claims 1, 12, and 17
We find error in the Examiner’s anticipation rejection of independent claims
1, 12, and 17. Independent claims 1 and 17 recite, inter alia, “…a virtual provider
coupled to the first and second providers and to the coordinator.”
At best, we find that Berkowitz discloses multiple hardware or software
providers directly coupled to a coordinator (i.e., the point-in-time copy interface).
FF 1. Therefore, we agree with Appellants that Berkowitz fails to describe an
intermediary virtual provider, as required by independent claims 1, 12, and 17. See
App. Br. 7-11; Reply Br. 4-6. Moreover, we note that while an ordinarily skilled
artisan may have understood that Berkowitz’s multiple hardware or software
providers not only represent the claimed “first and second providers,” but also
represent the claimed “virtual provider,” such a finding is insufficient for
anticipation. Further, under the principles of inherency, if a prior art device, in its
normal and usual operation, would necessarily perform the method claimed, then
the method claimed will be considered to be anticipated by the prior art. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). However, we find that the normal and
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usual operation of Berkowitz is to coordinate requests directly with multiple
hardware or software providers (FF 2) without the use of an intermediary virtual
provider. Consequently, we find that the Examiner improperly relied upon
Berkowitz to describe the disputed claim limitation.
Since Appellants have shown at least one error in the rejection of
independent claims 1, 12, and 17, we need not reach the merits of Appellants’
other arguments. It follows that the Examiner has erred in finding that Berkowitz
anticipates independent claims 1, 12, and 17.
Claims 2-11, 13-16, and 18-20
Since dependent claims 2-11, 13-16, and 18-20 incorporate by reference
either the same or a similar claim limitation as discussed supra, we find that the
Examiner has also erred in rejecting these claims for the same reasons set forth in
our discussion of independent claims 1, 12, and 17.

V. CONCLUSION OF LAW
The Examiner has erred in rejecting claims 1-20 as being anticipated under
35 U.S.C. § 102(b).
VI. DECISION

We reverse the Examiner’s decision to reject claims 1-20.

REVERSED

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