Owen Martin et al.Download PDFPatent Trials and Appeals BoardOct 10, 201914134521 - (D) (P.T.A.B. Oct. 10, 2019) Copy Citation 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. 14/134,521 12/19/2013 Owen Martin 130-123; EMC-13-0759 5006 81435 7590 10/10/2019 Anderson Gorecki LLP 2 Dundee Park, Suite 301A Andover, MA 01810 EXAMINER ALLEN, BRITTANY N ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 10/10/2019 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): handerson@andersongorecki.com jgorecki@andersongorecki.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OWEN MARTIN, GABI BENHANOKH, and ARIEH DON Appeal 2019-000157 Application 14/134,521 Technology Center 2100 Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–16, all the pending claims in this case. See Appeal Br. 18–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as EMC IP Holding Company LLC. Appeal Br. 2. Appeal 2019-000157 Application 14/134,521 2 CLAIMED SUBJECT MATTER The claims are directed to data deduplication. See Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: data storage in which duplicated data sets are replaced with pointers to corresponding single instances of the data sets; a deduplication library in which the single instances are maintained, the library comprising a first storage media and a second storage media, the first storage media having a first write endurance and the second storage media having a second write endurance, wherein the first write endurance is greater than the second write endurance; and computer-readable program code on non-transitory memory which selects one of the first storage media and the second storage media on which to locate a selected single instance data set based on the first write endurance, the second write endurance, and a total number of pointers to the selected single instance data set. REJECTIONS Claims 1–16 stand rejected under 35 U.S.C. § 101 as directed to an abstract idea. Ans. 4. Claims 1–3, 6, 7, 9–11, 14, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Emmert (US 8,280,854 B1, Oct. 2, 2012) and Horn (US 2013/0132638 A1, May 23, 2013). Final Act. 3. Claims 4, 5, 12, and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Emmert, Horn, and Prahlad (US 2010/0332401 A1, Dec. 30, 2010). Id. at 5. Claims 8 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Emmert, Horn, and Rub (US 2012/0023144 A1, Jan. 26, 2012). Id. at 7. Appeal 2019-000157 Application 14/134,521 3 We review 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). ANALYSIS Rejections under § 101 I. Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and Appeal 2019-000157 Application 14/134,521 4 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221. “A claim that recites an Appeal 2019-000157 Application 14/134,521 5 abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The U.S. Patent and Trademark Office (“PTO”) recently published revised guidance on the application of § 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. Appeal 2019-000157 Application 14/134,521 6 II. Step 2A, Prong One (Judicial Exception) The Examiner determines that claim 12 is directed to the abstract idea of “selecting a storage location based on certain variables,” which the Examiner appears to conclude is directed to mathematical concepts. Ans. 4 (referring to “organizing and manipulating information through mathematical correlations”). Appellant points to the Specification as describing “an improvement over data storage systems that place frequently overwritten data on low endurance drives.” Reply Br. 10–11 (citing Spec. ¶ 25). Appellant, therefore, contends that the claims are directed to improvements in computer functionality or other technology and are therefore not abstract. Id. at 11 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). Appellant’s Specification discloses, “[d]eduplication is a procedure by which multiple copies of a data set are replaced with pointers to a single instance of that data set, thereby achieving a reduction in storage capacity requirements.” Spec. ¶ 25. These pointers “may be hashes or other signatures which are associated with particular strings, e.g., via a hash function.” Id. In addition, The number of occurrences of an individual pointer corresponds to the number of times the string associated with that pointer occurs in the deduplicated data. . . . Generally, a greater number of occurrences correlates to decreased likelihood of 2 Appellant argues claims 1–16 as a group. See Reply Br. 10–12. We select independent claim 1 as representative of claims 1–16. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000157 Application 14/134,521 7 being overwritten. Further, greater age correlates to decreased likelihood of being overwritten. Id. at 8. An “indication of the likelihood of the string being overwritten . . . is used to help select an EFD [enterprise flash drive] sub-type on which to locate individual strings.” Id. “For example, strings with greater relative likelihood of being overwritten may be stored on a higher endurance EFD sub-type, and strings with lesser relative likelihood of being overwritten may be stored on a lower endurance EFD sub-type.” Id. Claim 1 recites, in particular, selecting “one of the first storage media and the second storage media on which to locate a selected single instance data set based on the first write endurance, the second write endurance, and a total number of pointers to the selected single instance data set” (emphasis added). The Examiner determines that this selection represents the organization and manipulation of “information through mathematical correlations.” Ans. 4 (citing Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). The patent-ineligible invention in Digitech, however, merely organized existing data into a new form. 758 F.3d at 1351. The recited location selection, in contrast, is part of the replacement of “duplicated data sets . . . with pointers to corresponding single instances of the data sets.” That is, rather than merely organizing existing data into a new form, the claimed selection is part of the transformation of data (i.e., the replacement of multiple copies of data with a single copy at the selected location). Therefore, the Examiner’s determinations do not show that claim 1 recites mathematical concepts. Appeal 2019-000157 Application 14/134,521 8 Furthermore, the Examiner’s determinations do not show that claim 1 recites certain methods of organizing human activities or mental processes. See Guidance, 84 Fed. Reg. at 52. As such, based on the record before us, we are persuaded the Examiner erred in determining that claim 1 recites an abstract idea. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims 2–16, which are similarly rejected and which have similar recitations. Rejections under § 103 Claims 1 and 9 Appellant argues that one of ordinary skill in the art would not have combined Horn with Emmert to produce the invention of claim 1. Appeal Br. 10–14; Reply Br. 13–19. The Examiner relies on Horn to teach or suggest the following limitations of claim 1: the first storage media having a first write endurance and the second storage media having a second write endurance, wherein the first write endurance is greater than the second write endurance . . . , [and] computer-readable program code on non-transitory memory which selects one of the first storage media and the second storage media on which to locate a selected single instance data set based on the first write endurance, [and] the second write endurance. Final Act. 4 (citing Horn ¶ 14). The Examiner finds the combination would have been obvious “to have included the first storage media having greater Appeal 2019-000157 Application 14/134,521 9 write endurance than the second storage media because it can be the most efficient and more reliable form of storage for data.” Id. (citing Horn ¶ 12). Appellant contends, “Emmert teaches that the data that is most likely to be used for restoration should be placed on the highest performance drives, i.e. the drives with the best IOPS [(input-output operations per second)] capability (the fastest drives).” Appeal Br. 11 (citing Emmert 4:56–5:3). Appellant then contends, “[i]f Emmert were to select the drives with highest write endurance to store likely restoration data then those drives would have lower IOPS performance, and thus provide slower restorations.” Id. According to Appellant, the combination would “negate the only apparent advantage of Emmert’s invention”—“drive performance.” Reply Br. 19. Thus, Appellant asserts, modifying Emmert with Horn would change the principle of operation in Emmert or render Emmert unsatisfactory for “its intended purpose of providing faster restorations.” Id. at 12–13. For similar reasons, Appellant asserts the combination “would require a substantial reconstruction and redesign of the elements shown in Emmert.” Reply Br. 17. Appellant also asserts that “higher performing (faster) drives have relatively lower write endurance.” Reply Br. 16. Further, Appellant argues that drive “reliability is not equivalent to write endurance” because “[d]rives fail for a wide variety of reasons.” Id. Consequently, Appellant asserts, “[w]hen selecting a drive, the storage system can maximize either performance or write endurance, but not both. The rejection attempts to combine independent and irreconcilable drive characteristics to arrive at the presently recited invention.” Id.; Appeal Br. 13. Appeal 2019-000157 Application 14/134,521 10 The Examiner finds that “Emmert is not required to discuss drives that are the most efficient (even though he does . . .).” Final Act. 8 (citing Emmert 11:37–39, 1:34–37). The Examiner further finds, “Horn teaches the benefits of selecting a device based on its write endurance,” and thus the combination would provide the benefits of “better performance, while also providing better endurance to store frequently written data.” Id. at 9 (citing Horn ¶ 14). The Examiner further finds, “[m]odifying Emmert would not change the selection of deduplication data sets for transfer based on their reference count.” Ans. 10. The Examiner also “is not arguing that a device can simultaneously be the fastest and have the greatest write endurance, but that Emmert shows data can be moved to the most appropriate type of storage device based on reference counts.” Id. (citing Emmert 10:62–11:15). Appellant’s arguments are unpersuasive. Appellant relies heavily on Emmert placing a priority on high performance, citing Emmert 4:56–5:3. E.g., Appeal Br. 11. However, in that passage, Emmert states “[s]ome embodiments of this disclosure may place deduplicated data with a relatively high probability of being restored on a device with high performance . . . to improve restoration efficiency of the deduplicated data.” Emmert 4:56–5:3 (emphasis added). Emmert’s non-limiting language (“some” and “may”) suggest that Emmert’s disclosure is not limited to this high performance goal. Moreover, Emmert specifically discloses placing critical files on “more reliable . . . devices.” Emmert 1:15–17. Thus, contrary to Appellant’s contentions, we find that a one of ordinary skill in the art would not have viewed Emmert as having a sole purpose of “providing faster restorations.” See Appeal Br. 12–13. It follows that one of ordinary skill in the art would not have viewed the combination of Horn with Emmert as Appeal 2019-000157 Application 14/134,521 11 impermissibly changing the principle of operation in Emmert, rendering Emmert unsatisfactory for its intended purpose, or a substantial reconstruction of Emmert. Yet even if Emmert were directed solely to providing faster restorations, Appellant’s assertions largely consist of attorney argument, unsupported by citations to the references or any declaration evidence. For example, Appellant’s assertions that “higher performing devices have relatively lower write endurance” (Appeal Br. 12), that “reliability is not equivalent to write endurance” (Reply Br. 16), and that “[w]hen selecting a drive, the storage system can maximize either performance or write endurance, but not both” (id.) have no evidentiary basis in the appeal record. Appellant points to no declaration evidence or to any statements in Emmert or Horn in support of these and related assertions. Attorney argument is not evidence (In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)) and “cannot take the place of evidence lacking in the record” (Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)). Accordingly, we sustain the Examiner’s rejection of claim 1. Appellant’s arguments regarding the rejection of independent claim 9 rely on the same arguments as for claim 1. See Appeal Br. 12. Appellant does not argue separate patentability for dependent claims 2, 3, 6–8, 11, and 14– 16. We therefore also sustain the Examiner’s rejection of claims 2, 3, 6–9, 11, and 14–16. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 2 With respect to dependent claim 2, Appellant contends Emmert “fails to teach or suggest that a data set with relatively fewer pointers is located on Appeal 2019-000157 Application 14/134,521 12 storage media having greater write endurance.” Appeal Br. 14 (citing Emmert 11:51–67). Appellant further contends, “[t]he cited passage states that data units with the highest reference counts are selected for relocation.” Id. Moreover, Appellant asserts, “Emmert repeatedly emphasizes that the relocation is based on drive performance, i.e. to increase restoration speed.” Id. The Examiner finds, and we agree, “Emmert in view of Horn teaches the apparatus of claim 1,” along with the added limitation of claim 2. Final Act. 4. While Appellant attacks Emmert for not disclosing storage on media “having greater write endurance,” the Examiner cited Horn for the underlying limitation of claim 1 related to write endurance. Id. Appellant’s arguments attacking Emmert and Horn in isolation do not persuasively rebut the underlying factual findings made by the Examiner, which are based upon the combined teachings and suggestions of the cited references. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, the Examiner finds, and we agree, that “[e]ach data unit in the set [in Emmert] is analyzed for determining references that point to it, so there must be units that have ‘a lesser total number of pointers relative to other single instance data sets.’” Ans. 11–12. Specifically, Emmert discloses, “determin[ing] how many deduplication references . . . point to each data unit in the set of data units.” Emmert 11:64–67. Emmert also discloses “identify[ing] data units with relatively low reference counts for relocation to the second device.” Id. at 11:12–14. Further, we are not persuaded an ordinarily skilled artisan would find it uniquely challenging or Appeal 2019-000157 Application 14/134,521 13 an unobvious modification of Emmert’s system to include fewer pointers to one data unit than to other data units. A skilled artisan is “a person of ordinary creativity, not an automaton.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007). Accordingly, we are not persuaded the Examiner erred in finding claim 2 taught or suggested by Emmert and Horn. Claim 3 Appellant also contends Emmert fails to teach or suggest “wherein the selected single instance data set has a greater total number of pointers relative to other single instance data sets and the selected single instance data set is located on the second storage media,” as recited in claim 3. Appeal Br. 15. Appellant argues that Emmert “fails to teach or suggest that a data set with relatively more pointers is located on storage media having greater write endurance” and that Emmert “does not describe any sort of selection of a data set based on number of pointers.” Id. The Examiner finds, and we agree, “Emmert in view of Horn teaches the apparatus of claim 1,” along with the limitation of claim 3. Final Act. 5. While Appellant attacks Emmert for not disclosing storage on media “having greater write endurance,” the Examiner cited Horn for the underlying limitation of claim 1 related to write endurance. Id. at 4. Thus, as with claim 2, Appellant’s arguments attacking Emmert and Horn in isolation do not persuasively rebut the underlying factual findings made by the Examiner. Further, the Examiner finds, and we agree, “Emmert teaches that data units with the highest reference counts can be stored on a device.” Ans. 12 (citing Emmert 11:4–6). Emmert states, “[s]election module 108 may select data units with the highest reference count for relocation to Appeal 2019-000157 Application 14/134,521 14 another device in the multi-device storage system.” Emmert 11:4–6. Accordingly, we are not persuaded the Examiner erred in finding claim 3 taught or suggested by Emmert and Horn. Claims 4, 5, 12, and 13 Finally, Appellant contends Emmert, Horn, and Prahlad fail to teach or suggest the concept of “ranking pointers according to age as recited in claims 4 and 12” and “selecting storage media based on write endurance and data age as recited in claims 12 and 13.” Appeal Br. 15–16. Appellant asserts the cited paragraph of Prahlad (¶ 66) “provides only a general description of storage policy and lacks any of the specific features recited in the claims.” Id. at 15. Appellant further asserts that contrary to the Examiner’s finding that “Prahlad teaches that the age of data can be used to select a storage tier,” such teachings are not equivalent to “ranking pointers according to age.” Id. at 15–16. The Examiner finds, [w]hile Prahlad does disclose a general description of a storage policy, it discloses that certain data is to be stored on the storage device and retained for a specified period of time before being aged to another tier of secondary storage (Prahlad, pa 0066), showing that this is a common method for determining which data items to transfer. Ans. 13. The Examiner further finds that the “common storage policy of Prahlad would have been an obvious method to apply to the selection process of Emmert.” Id. at 14. We agree with Appellant. Claim 4, for example, recites, “wherein first and second single instance data sets having equal total numbers of pointers are ranked according to age.” Prahlad teaches, “a storage policy Appeal 2019-000157 Application 14/134,521 15 may indicate that certain data is to be . . . retained for a specified period of time before being aged to another tier of secondary storage.” Prahlad ¶ 66. We agree with Appellant that this teaching provides only a general description of storage policy and does not teach or suggest “pointers are ranked according to age,” as recited in claim 4. See Appeal Br. 15–16. For similar reasons, we agree with Appellant that Prahlad does not teach or suggest claim 12’s recitation of “ranking the first and second single instance data sets according to age.” We, therefore, do not sustain the Examiner’s rejections of claims 4 and 12. We also do not sustain the Examiner’s rejections of claims 5 and 13, which depend from claims 4 and 12, respectively. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–16 101 1–16 1–3, 6, 7, 9– 11, 14, 15 103 Emmert, Horn 1–3, 6, 7, 9– 11, 14, 15 4, 5, 12, 13 103 Emmert, Horn, Prahlad 4, 5, 12, 13 8, 16 103 Emmert, Horn, Rub 8, 16 Overall Outcome 1–3, 6–11, 14–16 4, 5, 12, 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation