International Business Machines Corporation

Patent Trials and Appeals Board

Apr 27, 2021

2019005126 (P.T.A.B. Apr. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/848,137 12/20/2017 Jason K. Resch CS01629 5583
89322 7590 04/27/2021
Garlick & Markison (PST)
100 Congress Avenue, Suite 2000
Austin, TX 78701
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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 JASON K. RESCH, WESLEY B. LEGGETTE,
RAVI V. KHADIWALA, RANDY DEAN PFEIFER, BRUNO HENNIG
CABRAL, ILYA VOLVOVSKI, and JOSEPH M. KACZMAREK
____________________

Appeal 2019-005126
Application 15/848,1371
Technology Center 2100
____________________

Before JASON V. MORGAN, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
International Business Machines Corporation. Appeal Br. 1.
2 Our Decision refers to the Specification (“Spec.”) filed December 20,
2017; the Final Office Action (“Final Act.”) mailed October 12, 2018; the
Advisory Action (“Adv. Act.”) mailed December 20, 2018; the Appeal Brief
(“Appeal Br.”) filed March 4, 2019; the Examiner’s Answer (“Ans.”) mailed
April 17, 2019; and the Reply Brief (“Reply Br.”) filed June 17, 2019.
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Application 15/848,137

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CLAIMED INVENTION
The claims relate to a processing module determining a level of access
requests in a dispersed storage network (DSN). Spec. Abstract. When the
level of access requests exceeds a predetermined threshold, the processing
module transitions from first to second (i.e., overdrive) operational mode.
Id. When the level of access requests is below the predetermined threshold,
the processing module transitions back to the first operational mode. Id.
Claims 1, 11, and 19 are independent. Claim 1 is directed to a
method; claim 11 to a computer readable storage medium; and claim 19 to a
computing device. Claims 2 to 10 depend, directly or indirectly, from claim
1. Claims 12 to 18 depend, directly or indirectly, from claim 11. Claims 20
depends directly from claim 19.
Claim 1, reproduced below, is representative of the claimed subject
matter. Argued claim limitations are shown in underline:
1. A method for execution by one or more processing modules
of one or more computing devices of a dispersed storage
network (DSN), the method comprises:
receiving, by the one or more processing modules, an
access request for a set of encoded data slices (EDSs),
wherein a data segment is encoded using an error coding
dispersal storage function to produce the set of EDSs,
determining, by the one or more processing modules,
whether a level of access requests for the DSN meets a
predetermined threshold;
in response to determining that the level of access
requests for the DSN meets the predetermined threshold,
transitioning, by the one or more processing modules, from a
first operational mode to a second operational mode;
determining, by the one or more processing modules,
whether the level of access requests for the DSN is below
the predetermined threshold; and
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Application 15/848,137

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in response to determining that the level of access
requests for the DSN is below the predetermined threshold,
transitioning, by the one or more processing modules, from
the second operational mode to the first operational mode.
Appeal Br. 9 (Claims App.).

REJECTIONS3
Claims 1–4, 6, 9, 11–14, 16–17, and 19–20 stand rejected under
35 U.S.C. § 103 based on Motwani (US 2012/0117351 A1, published May
10, 2012) and Watanabe (US 2013/0073820 A1, published March 21, 2013).
Final Act. 12–25.
Claims 5, 7, and 15 stand rejected under 35 U.S.C. § 103 based on
Motwani, Watanabe, and Byom (US 2011/0235434 A1, published
September 29, 2011). Final Act. 25–29.

ANALYSIS
Standard of Review
We undertake a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).

3 The Examiner withdrew the rejections of claims 10 and 18 under 35 U.S.C.
§§ 112(a) and 112(b), and claims 7 and 8 under 35 U.S.C. § 112(b). Final
Act. 2; Adv. Act. 1. Accordingly, we do not address these rejections further.
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§ 103 Rejection
A. Legal Principles Concerning Obviousness
Title 35, section 103, provides
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.
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;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
B. Claims 1–4, 6, 9, 11–14, 16–17, and 19–20
Appellant argues claims 1–4, 6, 9, 11–14, 16–17, and 19–20 together
as one group. See Appeal Br. 4–7. Accordingly, we select claim 1 as
representative of the argued group of claims and unless otherwise indicated
will restrict our analysis to this claim only. 37 C.F.R. § 41.37(c)(1)(iv)
(“When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.”).
The Examiner’s rejection relies on each of Motwani and Watanabe as
teaching the argued language of claim 1 shown in emphasis above. Final
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Act. 13–18 (citing Motwani ¶¶ 55, 120–23; Watanabe ¶ 13, Figs. 7A–D).
We analyze the teachings of Motwani and Watanabe below.
1. Motwani
Motwani is aimed at load balancing of memory devices in a dispersed
storage network (DSN). Motwani, code (57). A processing module
migrates encoded data slices between memory devices when an available
memory imbalance exists. Id. Motwani teaches that the processing module
may determine parameters for storing or retrieving data based on the number
of queued write or retrieval requests. Id. ¶¶ 120–123.
2. Watanabe
Watanabe addresses processing of write or read commands issued
during data migration processing. Watanabe, code (57). Watanabe teaches
that a copy control part selects an asynchronous copy process when the
number of write accesses is equal to or less than a prescribed access
threshold, and a synchronous copy process when the number of write access
exceeds the prescribed access threshold. Id. ¶¶ 13, 47.
3. Appellant’s Argument
Appellant argues that “the singular issue on appeal is whether the
hypothetical combination of Motwani and Watanabe teach (in response to an
access request) determining a level of access requests for the DSN.” Reply
Br. 3 (emphasis omitted). Appellant argues Motwani or Watanabe teach
movement of data between memory elements, but that neither reference
determines the access requests for an entire network. Appeal Br. 6.
4. Analysis
Appellant’s argument assumes that “determining a level of access
requests for the DSN” in claim 1 is for all access requests occurring in the
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entire DSN network. Appeal Br. 6. Claim 1, however, does not recite that
the access requests are for an entire network, nor does it recite that the
access requests are between multiple modules and devices in the DSN.
Consequently, Appellant’s argument is not commensurate in scope with the
claim as recited. Limitations not appearing in the claim cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
“[T]he PTO is obligated to give claims their broadest reasonable
interpretation during examination.” In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004). The Examiner finds that any access
request occurring in a DSN is an access request “for the DSN.” Adv. Act. 1.
In other words, any access request concerns, relates to, or serves the purpose
of, the DSN.4 Under broadest reasonable interpretation of claim 1, access
requests “for the DSN” may be carried out by a single processing module of
a single computing device moving data between memory elements. In this
scenario, the recited “determining [a] level of access requests for the DSN”
in claim 1 reads on Motwani’s processing module determining the number
of write or read requests (¶¶ 120, 123), and on Watanabe’s copy control part
determining whether a number of write accesses is equal to or less than, or
exceeds, a prescribed access threshold (¶¶ 13, 47).
To summarize, we are not persuaded by Appellant’s argument that
claim 1 determines a level of accesses requests for the entire DSN, as this is
not recited in the claim. Nor do we find any language in Motwani or
Watanabe that precludes determining the number of requests or accesses for
an entire DSN. Furthermore, the Examiner finds that any access request is

4 See Merriam-Webster.com/dictionary, definition of “for” 1a–c (purpose,
goal, or object) and 7 (concerning) (last viewed Apr. 19, 2021).
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“for the DSN” so Motwani’s and Watanabe’s mention of a module or device
determining the number of access requests teaches the argued claim
limitation. Appellant does not show error in these findings. Accordingly,
we sustain the Examiner’s rejection.
C. Claims 5, 7, and 15
No separate arguments were presented for claims 5, 7, and 15. Appeal
Br. 7–8. Consequently, we sustain the Examiner’s rejection of these claims
for the reasons stated above.

CONCLUSION
The Examiner’s rejections of claims 1–7, 9, 11–17, and 19–20 under
35 U.S.C. § 103 are affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 9,
11–14, 16–
17, 19–20
103 Motwani,
Watanabe
1–4, 6, 9,
11–14, 16–
17, 19–20

5, 7, 15 103 Motwani,
Watanabe,
Byom
5, 7, 15
Overall
Outcome
1–7, 9, 11–
17, 19–20

AFFIRMED