Ex Parte Shatskih et al

Patent Trial and Appeal Board

Jul 30, 2013

11112758 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MAXIM S. SHATSKIH, JAMES KIRBY, and
SCOTT BARNES
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Appeal 2011-001370
Application 11/112,758
Technology Center 2100
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-48, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellants’ invention relates to protecting computer data.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A method of protecting data in a computing file
system, comprising:
defining at least one virtual volume, wherein defining
each of the at least one virtual volumes comprises creating a
virtual volume database configured to appear to an operating
system as a specific target volume;
mounting the at least one virtual volume;
protecting at least a portion of the specific target volume
from modification by preventing at least some target volume
accesses, received from the computing file system and directed
to the specific target volume, from being written on the specific
target volume and redirecting the at least some target volume
accesses to the at least one virtual volume by processing at least
one write access including a write data segment and a write
target pointer to the specific target volume, comprising:
creating a virtual volume record in the virtual
volume database associated with the at least one write
access, comprising:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 15, 2010) and the Examiner’s Answer (“Ans.,” mailed July
16, 2010), and Final Rejection (“Final Rej.,” mailed November 17, 2010).
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creating a target pointer corresponding to the
write target pointer; and
creating a shadow cache pointer
corresponding to a free location of a shadow
cache; and
storing the write data segment at the free location;
committing desired changes to the specific target volume
by processing at least one virtual volume record in the virtual
volume database upon the occurrence of an event of interest,
comprising copying a cache data segment from the shadow
cache at a shadow cache pointer of the at least one virtual
volume record to the specific target volume at a target pointer
of the at least one virtual volume record; and
discarding undesired changes by not copying the cache
data segment from the shadow cache to the specific target
volume upon the occurrence of the event of interest.

REFERENCES
The Examiner relies on the following prior art:
Yamahata US 5,247,639 Sep. 21, 1993
Mosur US 2003/0061450 A1 Mar. 27, 2003
NPL1 (Friedman et al. Windows 2000 Performance Guide, (January 2002)).
NPL2 (Handy, The Cache Memory Book, Academic Press Inc. (1998)).

REJECTIONS
1. Claims 1-2, 4- 5, 7-9, 11, 13-18, 20-21, 23-25, 27, 29-34, 36-
37, 39-41, 43, and 45-48 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over NPL1, NPL2, and Mosur.
2. Claims 3, 6, 10, 12, 19, 22, 26, 28, 35, 38, 42, and 44 stand
rejected under 35 U.S.C. §103(a) as being unpatentable over NPL1, NPL2,
Mosur, and Yamahata.
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ISSUE
Based upon our review of the administrative record, the Appellants’
contentions, and the Examiner’s findings and conclusions, we have
determined that the following issue is dispositive in appeal of claims 1-48:
Under 103, did the Examiner err in finding that the cited references
would have taught or suggested a “virtual volume,” within the meaning of
representative independent claim 1?

ANALYSIS
Virtual Volume
The Appellants contend that the cited references would not have
taught or suggested a “virtual volume” as claimed. (App. Br. 11.) More
particularly, the Appellants content that the Examiner’s construction of the
claimed “volume” as “any grouping of data,” is overly broad and
unreasonable. (App. Br. 12.)
Our reviewing court has further determined that “the specification is
‘the single best guide to the meaning of a disputed term,’ and that the
specification ‘acts as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication.” Phillips v. AWH Corp., 415
F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Appellants’ specification states that a virtual volume 160 “may be a
data construct, which may be mounted by the OS and appear to the OS and
virtual file system 150 as a volume, and may not necessarily be a physical
volume.” (Spec. 8, ¶ [0028] (emphasis added).) The Appellants also urge
that because the specification does not contain a definition of the term
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volume,” the term should be given its customary meaning in the art. (App.
Br. 13.)
We agree with and adopt the Examiner’s finding that the description
of “virtual volume” recited in the specification is open-ended (i.e., “may be
mounted by the OS . . .”). (Ans. 32-33.) Based on the descriptions and
examples of the “virtual volume” recited in the Appellants’ specification, we
find that the Examiner broadly but reasonably construed the claimed phrase
“volume” as a data construct that redirects access requests to the cache or
target volume. (Id.) Therefore, we will not endeavor to read limitations
such as “mountable” into the construction of “volume.”
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). Here, we decline to read the limitation of a volume being
“mountable” into the claims.2
In light of the Examiner’s construction, we agree with the Examiner’s
finding that the cited references, namely NPL1, would have taught or
suggested the “virtual volume” (i.e., virtual memory mapped files), as
claimed. (Ans. 5: NPL1, Fig. 7-5.) According to NPL1, the virtual memory
mapped files redirect requests to either the virtual memory cache of a disk
volume. (Id.) Further, we note that the Appellants failed to file a Reply
Brief to rebut the findings and responsive arguments made by the Examiner
in the Answer.

2 Appellants also present arguments regarding different embodiments of the
present invention. (App. Br. 17-18.) Similar to the discussion supra, we
will not read these limitations into the claim language.
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Based on this record, we conclude that the Examiner did not err in
finding that the cited references would have taught or suggested the “virtual
volume” as claimed.
Unexpected Results
The Appellants contend that the present claims constitute an
unexpected result than the prior art of NPL1, NPL2, and Mosur. (App. Br.
17.) We agree with and adopt the Examiner’s response that the features
argued by Appellants will not be read into the present claims. (Ans. 35.)
The Appellants further argue that the cited references do not teach,
suggest, or mention:
“protecting at least a portion of the specific target volume from
modification by preventing at least some target volume
accesses,” “committing desired changes to the specific target
volume by processing at least one virtual volume record,” and
“discarding undesired changes by not copying the cache data
segment from the shadow cache to the specific target volume
upon the occurrence of the event of interest.”

(App. Br. 18.)
We agree with and adopt the Examiner’s findings with regards to the
above-mentioned limitations. (Ans. 6, 36-37.) Regarding the “protecting”
limitation, the Examiner found that NPL1 would have taught or suggest
“preventing at least some target volume access.” (Ans. 37.) We agree with
the Examiner that this teaching from NPL1 describes the functionality
associated with the limitation of “protecting”. Although the prior art does
not explicitly use the same terms as recited in the claims, it none the less
describes the claimed limitations and therefore is correctly rejected by the
Examiner as being unpatentable. We further find Appellants’ argument
unavailing because it merely recites the claim language and concludes that
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the cited references do not teach or suggest the limitation, without any
further evidence or rationale.3 (App. Br. 18.) The Appellants have not filed
a Reply Brief to rebut the findings and responsive arguments made by the
Examiner in the Answer.

Dependent Claims 2-48
The Appellants did not argue patentability of the dependent claims
with particularity. (App. Br. 18-20.) Therefore, we sustain the Examiner’s
rejection of each dependent claim for the reasons discussed supra.

CONCLUSION
The Examiner did not err in rejecting claims 1-48 under 35 U.S.C.
§ 103(a).

DECISION
To summarize, our decision is as follows.
 The rejections of claims 1-48 under 35 U.S.C. § 103(a) are sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

3 See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).

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AFFIRMED

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