Theresa M. Brown et al.

Patent Trials and Appeals Board

Nov 18, 2019

13759935 - (D) (P.T.A.B. Nov. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/759,935 02/05/2013 Theresa M. Brown TUC920120085US1 1693
46917 7590 11/18/2019
KONRAD, RAYNES, DAVDA & VICTOR LLP
ATTN: IBMTUC
350 SOUTH BEVERLY DRIVE, SUITE 360
BEVERLY HILLS, CA 90212
EXAMINER
FAYE, HANNAH A
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
11/18/2019 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):
krvuspto@ipmatters.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THERES M. BROWN, NEDLAYA Y. FRANCISCO,
SUGUANG LI, and BETH A. PETERSON
____________

Appeal 2018-008636
Application 13/759,935
Technology Center 2100
____________

Before JOHNNY A. KUMAR, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 7, 8, 13, 14, 19, 20, 27–29, and 35–40, i.e., all pending
claims. Claims 1–6, 9–12, 15–18, 21–26, and 30–34 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant has filed a related Appeal in copending U.S. Patent Application
No. 14/071,529. App. Br. 3.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as
International Business Machines Corporation. App. Br. 2.
Appeal 2018-008636
Application 13/759,935

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STATEMENT OF THE CASE
The Invention
The invention concerns “performing point in time copy operations
from source volumes to space efficient target volumes in two stages via a
non-volatile storage.” Spec. ¶ 1.3
Representative Claims
Independent claims 7, 13, and 19 exemplify the subject matter of the
claims under consideration and read as follows:
7. A system, comprising:
a memory; and
a processor coupled to the memory, wherein the processor
performs operations, the operations comprising:
in response to receiving a request from a host to perform a
point in time copy operation from a source volume to a space
efficient target volume, performing a first set of operations, the
first set of operations comprising:
updating a bitmap metadata to indicate tracks to be copied
for the point in time copy operation, and in response to updating
the bitmap metadata sending an indication to the host that the
point in time copy operation is complete even though a
corresponding physical point in time copy of data stored in the
tracks has not committed;
and
in response to updating the bitmap metadata, copying, by
using the bitmap metadata, data stored in the tracks indicated in

3 This decision employs the following abbreviations: “Spec.” for the
Specification, filed February 5, 2013; “Final Act.” for the Final Office
Action, mailed July 27, 2017; “App. Br.” for the Appeal Brief, filed March
6, 2018; “Ans.” for the Examiner’s Answer, mailed July 2, 2018; and “Reply
Br.” for the Reply Brief, filed September 4, 2018.
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Application 13/759,935

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the bitmap metadata, from the source volume to a non-volatile
storage to preserve the point in time copy operation; and
subsequent to completion of the first set of operations,
performing a second set operations, comprising asynchronously
copying, via a background process, the data copied in the first set
of operations to the non-volatile storage, from the non-volatile
storage to the space efficient target volume to perform a commit
of the physical point in time copy of the data from the source
volume to the space efficient target volume, wherein the copying
of the data from the source volume to the non-volatile storage
takes less time in comparison to directly copying the data from
the source volume to the space efficient target volume, and
wherein the asynchronous copying of the data via the
background process takes more time than the copying of the data
from the source volume to the non-volatile storage.
13. A computer program product, the computer program
product comprising a non-transitory computer readable storage
medium having computer readable program code embodied
therewith, the computer readable program code configured to
perform operations on a controller, the operations comprising:
in response to receiving, by the controller, a request from
a host to perform a point in time copy operation from a source
volume to a space efficient target volume, performing a first set
of operations, the first set of operations comprising:
updating a bitmap metadata to indicate tracks to be copied
for the point in time copy operation, and in response to updating
the bitmap metadata sending an indication to the host that the
point in time copy operation is complete even though a
corresponding physical point in time copy of data stored in the
tracks has not committed; and
in response to updating the bitmap metadata, copying, via
the controller, by using the bitmap metadata, data stored in the
tracks indicated in the bitmap metadata, from the source volume
to a non-volatile storage to preserve the point in time copy
operation; and
subsequent to completion of the first set of operations,
performing a second set operations, comprising asynchronously
Appeal 2018-008636
Application 13/759,935

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copying, via a background process, the data copied in the first set
of operations to the non-volatile storage, from the non-volatile
storage to the space efficient target volume to perform a commit
of the physical point in time copy of the data from the source
volume to the space efficient target volume, wherein the copying
of the data from the source volume to the non-volatile storage
takes less time in comparison to directly copying the data from
the source volume to the space efficient target volume, and
wherein the asynchronous copying of the data via the
background process takes more time than the copying of the data
from the source volume to the non-volatile storage.

19. A storage controller controlling a source volume and a
space efficient target volume, wherein the storage controller is
coupled to a host, the storage controller, comprising:
a non-volatile storage;
a processor coupled to the non-volatile storage, wherein
the processor performs operations, the operations comprising:
in response to receiving a request from a host to perform a
point in time copy operation from the source volume to the space
efficient target volume, performing a first set of operations, the
first set of operations comprising:
updating a bitmap metadata to indicate tracks to be copied
for the point in time copy operation, and in response to updating
the bitmap metadata sending an indication to the host that the
point in time copy operation is complete even though a
corresponding physical point in time copy of data stored in the
tracks has not committed; and
in response to updating the bitmap metadata, copying by
using the bitmap metadata, data stored in the tracks indicated in
the bitmap metadata, from the source volume to a non-volatile
storage to preserve the point in time copy operation; and
subsequent to completion of the first set of operations,
performing a second set operations, comprising asynchronously
copying, via a background process, the data copied in the first set
of operations to the non-volatile storage, from the non-volatile
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Application 13/759,935

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storage to the space efficient target volume to perform a commit
of the physical point in time copy of the data from the source
volume to the space efficient target volume, wherein the copying
of the data from the source volume to the non-volatile storage
takes less time in comparison to directly copying the data from
the source volume to the space efficient target volume, and
wherein the asynchronous copying of the data via the
background process takes more time than the copying of the data
from the source volume to the non-volatile storage.
App. Br. 23–26 (Claims App.).
The Rejections on Appeal
1. Claims 7, 13, 19, 27–29, and 35–40 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Burton et al. (US
Patent Application 2005/0251634 A1) and in view of Lorenz et
al. (US Patent Application 2008/0077629 A1).
2. Claims 8, 14, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Burton and Lorenz in view
of Kislev (US Patent 8,001,085 B1)
ANALYSIS
We have reviewed the rejection of the pending claims in light of
Appellant’s arguments that the Examiner erred. In doing so, we have
evaluated only the arguments that Appellant actually makes on appeal.
Independent Claims 7, 13, and 19
Claims 7, 13, and 19 recite a two-step method where the first set of
operations require, inter alia, “copying . . . data stored in the tracks indicated
in the bitmap metadata, from the source volume to a non-volatile storage to
preserve the point in time copy operation” (step 1); and the second set of
operations require, inter alia, “asynchronously copying, via a background
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process, the data copied in the first set of operations to the non-volatile
storage” (step 2); and “wherein the asynchronous copying of the data via the
background process takes more time than the copying of the data from the
source volume to the non-volatile storage” (disputed limitation). App.
Br. 23–26 (Claims App.).
The Examiner finds that Burton discloses the disputed limitation of
claims 7, 13, and 19. Final Act. 3–4 (citing Burton ¶ 3).
Paragraph 3 of Burton discloses:
Point in time copying is as of a point in time, unlike synchronous
mirroring which is a continuous process of copying data as it
updated, but which prevents any updating from occurring by
failing to complete the updating storage transaction for the data
at a source until after that updating data has also been stored at a
target. Asynchronous mirroring also is continuous, but may
appear to be quicker, and is a complex process that requires that
the updating data is first stored by the source data storage, and
requires that safeguards are in place to assure that it will
ultimately be stored at the target data storage.
Among other things, Appellant argues that Paragraph 3 of Burton
does not teach the disputed limitation, i.e., “wherein the asynchronous
copying of the data via the background process takes more time than the
copying of the data from the source volume to the non-volatile storage”
Reply Br. 3–4 (emphasis ours). In particular, Appellant argues that
“[p]aragraph 3 of the cited Burton appears to be comparing asynchronous
mirroring to synchronous mirroring, and seems to be indicating that
asynchronous mirroring may appear to be quicker than synchronous
mirroring.” Id. at 4 (citing Burton, ¶ 3).
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We agree with Appellant that the Examiner has not adequately
explained how Burton teaches the disputed limitation of claims 7, 13,
and 19.
Accordingly, we find that the Examiner has failed to show that Burton
teaches that the asynchronous copying of the data via the background
process takes more time than the copying of the data from the source volume
to the non-volatile storage as required by the claims.
Based on the record before us, we do not sustain the obviousness
rejection of claims 7, 13, and 19 based on Burton and Lorenz. Because this
determination resolves the appeal with respect to these claims, we need not
address Appellant’s other arguments regarding Examiner error.
Dependent Claims 8, 14, 20, 27–29, and 35–40
Claims 8, 14, 20, 27–29 and 35–40 depend directly or indirectly from
claims 7, 13, and 19. App. Br. 21–23 (Claims App.). For the reasons
discussed regarding independent claims 7, 13, and 19, we do not sustain the
obviousness rejections of these dependent claims.

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Application 13/759,935

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CONCLUSION4
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 13, 19, 27–
29, 35–40
103 Burton, Lorenz 7, 13, 19,
27–29, 35–
40
8, 14, 20 103 Burton, Lorenz,
and Kislev
8, 14, 20
Overall
Outcome

7, 8, 13,
14, 19, 20,
27–29, 35–
40

REVERSED

4 We note claims 7, 13, and 19 recite wherein the asynchronous copying of
the data via the background process (step 2) takes more time than the
copying of the data from the source volume to the non-volatile storage (step
1). Our reviewing court guides: where “the problem is known, the possible
approaches to solving the problem are known and finite, and the solution is
predictable through use of a known option,” a solution that is obvious to try
may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351
(Fed. Cir. 2008) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007)). Applying this reasoning here, we note the limited, finite set of three
possibilities—the steps may occur such that (1) step 1 takes more time than
step 2; (2) step 2 takes more time than step 1; or (3) step 1 and step 2 take
the same time. Therefore, in the event of further prosecution the Examiner
should ascertain whether modifying Burton (1) would have merely been a
predictable result and (2) would have been obvious to try, and thus claims 7,
13, and 19 should be rejected under 35 U.S.C. § 103.