American Megatrends, Inc.

Patent Trials and Appeals Board

Feb 10, 2020

14450855 - (D) (P.T.A.B. Feb. 10, 2020)

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.
14/450,855 08/04/2014 Paresh Chatterjee 10140-048US2 1964
96039 7590 02/10/2020
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
02/10/2020 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):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PARESH CHATTERJEE,
VIJAYARANKAN MUTHIRISAVENUGOPAL,
NARAYANASWAMI GANAPATHY, and RAGHAVAN SOWRIRAJAN
____________

Appeal 2019-001195
Application 14/450,855
Technology Center 2400
_____

Before JEREMY J. CURCURI, JAMES B. ARPIN, and
SCOTT RAEVSKY, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the rejection of
claims 2–22. Final Act. 2.2 Claim 1 is cancelled. Appeal Br. 17 (Claims
App.). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as American Megatrends, Inc.
Appeal Br. 3.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
May 29, 2018); the Final Office Action (“Final Act.,” mailed August 28,
2017) and the Examiner’s Answer (“Ans.,” mailed September 20, 2018); and
the originally-filed Specification (“Spec.,” filed August 4, 2014). Rather
than repeat the Examiner’s findings and determinations and Appellant’s
contentions in their entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed subject matter “is directed to technologies for
consolidating client-specific boot data from multiple storage volumes in a
data storage system to a single, high-performance consolidated boot
volume.” Spec. ¶ 19.
As noted above, claims 2–22 stand rejected. Claims 2, 9, and 16 are
independent. Appeal Br. 17 (claim 2), 19 (claim 9), 21 (claim 16) (Claims
App.). Claims 3–8 depend directly or indirectly from claim 2, claims 10–15
depend directly or indirectly from claim 9, and claims 17–22 depend directly
or indirectly from claim 16. Id. at 17–23.
Claim 9 recites “[a] non-transitory computer-readable storage medium
having computer-executable instructions stored thereon that, when executed
by a storage system computer, cause the storage system computer to”
perform functions, substantially as recited in claim 2. Id. at 17, 19.
Claim 16 recites “[a] data storage system comprising: a storage system
computer; a physical storage device operably connected to the storage
system computer; a processing unit associated with the storage system
computer; and a storage process module executing on the processing unit
and configured to” perform functions, substantially as recited in claim 2. Id.
at 17, 21. The Examiner relies on the same references and substantially
similar arguments in rejecting claims 2–22 (Final Act. 2–5), and Appellant
does not contest the rejection of claims 3–22 separately from independent
claim 2 (see Appeal Br. 10, 15). Therefore, we focus our analysis on
independent claim 2.
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Claim 2, reproduced below with disputed elements emphasized, is
representative.
2. A computer-implemented method for booting a client
device using a consolidated boot volume comprising:
receiving, by a storage process module, an I/O operation
for one or more blocks of data of one or more virtual storage
volumes;
checking, by the storage process module, a table for the
one or more virtual storage volumes, to determine if the one or
more blocks of data have been copied to the consolidated boot
volume, wherein the consolidated boot volume comprises client-
specific boot data from the one or more virtual storage volumes,
and wherein the table comprises a plurality of entries for
mapping the client-specific boot data from the one or more
virtual storage volumes to respective locations on the
consolidated boot volume; and
determining, by the storage process module, whether to
execute the I/O operation against the consolidated boot volume
or one of the one or more virtual storage volumes based at least
in part on the determination of whether the one or more blocks
of data have been copied to the consolidated boot volume.
Id. at 17 (emphasis added).
REFERENCE AND REJECTION
The Examiner relies upon the following reference in rejecting the
claims:
Name Number Published Filed
Chang US 2003/0126242 A1 July 3, 2003 Dec. 28, 2001
Specifically, claims 2–22 stand rejected as unpatentable under 35 U.S.C.
§ 102 as anticipated by Chang. Final Act. 2–5.
Appellant contests the anticipation rejection of claims 2–22 and relies
on alleged deficiencies in the rejection of independent claim 2 to overcome
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the rejection of the remaining claims. Appeal Br. 10, 15. Because we
determine that reversal of independent claim 2’s rejection is dispositive,
except for our ultimate decision, we do not discuss the merits of the rejection
of claims 3–22 further herein. We review independent claim 2’s appealed
rejection 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). We address the rejection
of claim 2 below.
ANALYSIS
1. Lack of Anticipation of Claim 2 by Chang
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). The elements must be arranged as required by the claim,
but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832
(Fed. Cir. 1990). Moreover, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.” In re Preda,
401 F.2d 825, 826 (CCPA 1968). Nevertheless,
unless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C.§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
accord In re Arkley, 455 F.2d 586 (CCPA 1972).
The Examiner rejects independent claim 2 as anticipated by Chang.
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Final Act. 2–3. The Examiner finds, and Appellant does not contest, that
Chang discloses the preamble, and the “receiving” and “determining” steps,
as recited in claim 2. Id. (citing Chang, Title, Abstract, ¶¶ 9, 21–35, 37,
Figs. 1, 2). Further, the Examiner finds Chang discloses
checking, by the storage process module, a table for the
one or more virtual storage volumes, to determine if the one or
more blocks of data have been copied to the consolidated boot
volume, wherein the consolidated boot volume comprises client-
specific boot data from the one or more virtual storage volumes,
and wherein the table comprises a plurality of entries for
mapping the client-specific boot data from the one or more
virtual storage volumes to respective locations on the
consolidated boot volume,
as recited in claim 2. Id. at 3 (citing Chang, Abstract, ¶¶ 22–24, 27, 30–35,
Figs. 1, 3).
In particular, Chang’s Figure 2 depicts pooled storage 70 including
client 1 image copy 74 having common operating system (OS) and
application blocks 80 and client 1 specific blocks 82. Chang, Fig. 2; see id.,
Abstract (“Each client image copy includes the base boot image and
information specific to the client. . . . The target is determined for the client
device and a boot volume is selected from a set of client image copies.”);
cf. Spec., Figs. 2A, 2B (depicting aspects of the consolidation of client-
specific boot data from storage volumes provided within a storage system,
including “common boot data” and “client specific boot data”). Further,
referring to Figure 2, Chang discloses
new blocks are allocated and created in the “new” image copy
74, 76, 78 and are shown as client-specific blocks 82 in FIG. 2.
This may be achieved by logging new writes to the image copies
74, 76, 78 and allocating new blocks (sectors) in the new image
copies 74, 76, 78 or alternatively, by storing the common OS and
application blocks 80 to a separate location from the newer and
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updateable client-specific blocks 82.
Chang ¶ 33 (emphasis added). The Examiner finds that “‘logging’ generates
a table” (Final Act. 3 (citing Chang ¶ 33)), “wherein the table comprises a
plurality of entries for mapping the client-specific boot data from the one or
more virtual storage volumes to respective locations on the consolidated
boot volume” (Appeal Br. 17 (Claims App.) (emphasis added)).
Appellant contends the Examiner erred in rejecting claim 2 as
anticipated by Chang because the Examiner allegedly fails to demonstrate
that Chang discloses the “checking” step, as recited in claim 2. Appeal
Br. 9. In particular, Appellant contends Chang fails to disclose the step of
“checking . . . a table” (emphasis added), as recited in claim 2. Id. at 9–15.
For the reasons given below, Appellant persuades us of dispositive Examiner
error.
Appellant contends Chang does not disclose a “table” as that term
properly is understood in claim 2. Appeal Br. 10–11. The Specification’s
Figure 8 is reproduced below.

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As reproduced above, “FIGURE 8 is a data structure diagram illustrating a
start-length table (‘SLT’) generated to map client-specific boot data blocks
copied to a consolidated boot volume, according to embodiments presented
herein.” Spec. ¶ 15; see id. ¶ 46 (describing the use of STL 800). Thus, the
“table” depicted in Figure 8
maps each block of client-specific boot data 206 on the storage
volume 202 to the location on the consolidated boot volume 210
where the client-specific boot data was copied in operation 310.
The storage volume unique data SL T 800 may list the copied
blocks in a run length encoding (“RLE”) scheme and may be
utilized in the boot acceleration mechanism to redirect read I/O
operations targeting the storage volume 202 to the consolidated
boot volume 210 during boot of the client computer 112 . . . .
Id. ¶ 46 (emphases added).
Appellant contends:
Although Chang discloses “logging” of new writes, such
“logging” does not formulate a table comprising a plurality of
entries for mapping client-specific boot data from a virtual
storage volume to respective locations on a consolidated boot
volume, as recited in Applicant’s independent claims. Chang
instead discloses logging of new writes or changes to the client
disk as part of a process for updating the client-specific image
copies 74, 76, 78.
Appeal Br. 14 (emphasis added). Further, Appellant contends,
Chang does not disclose checking the “table” allegedly
formulated by logging of new writes to determine whether a data
block has been copied to a consolidated boot volume. Chang
describes the remainder of the networking booting operations in
paragraph [0035], which include receiving a network boot
request (i.e., Chang’s Fig. 3, Step 112), identifying the target and
logging the client into pooled storage 70 (i.e., Chang’s Fig. 3,
Steps 114-118), and directly and remotely booting off the client-
specific image copies 74, 76, or 78 rather than downloading and
using the base boot image 72 (i.e., Chang’s Fig. 3, Step 120).
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Chang describes “logging” of new writes (which the Final Office
Action alleges results in formulation of a “table”) as part of the
copy-on-write process (i.e., Chang’s Fig. 3, Steps 106-108) to
handle new writes to client disks. Chang, however, does not
disclose using (e.g., checking) this information in latter steps of
the network booting process (i.e., Chang’s Fig. 3, steps 112-120).
Thus, Chang’s alleged “table” is at most used when applying
copy-on-writes but is not used to make a determination of
whether a data block has been copied to a consolidated boot
volume.
Appeal Br. 14–15 (emphasis added). We agree.
Initially, we note the Examiner acknowledges that Chang does not
expressly disclose a “table.” Final Act. 5 (“While Chang did not specifically
implement the word ‘table’, logging [copied] information formulates a
table.”). Nor does the Examiner find that Chang inherently discloses a
“table,” as recited in claim 2. See Final Act. 2–5; Ans. 6–7; see also
Verdegaal Bros., 814 F.2d at 631 (To anticipate, a single reference must
disclose “expressly or inherently” each and every element as set forth in the
claim.).
Instead, the Examiner finds:
Per Chang’s paragraph [0035] the I/O server performs target
discovery and identifies the pooled storage devices, the client
image copy or volume and path to such boot image (Thus
creating a table of information). Based on client address, which
is identified from network registry (e.g., see paragraph [0032]),
the external storage controller can determine/check based on or
from the discovered/identified information (i.e. a table which
comprises information from the discovery) to find the proper
client image copy to boot the client device and the path. The
boot reply then provided the path to the client for use in remote
booting (e.g., see paragraph [0029]).
Ans. 6. At most, this shows that Chang discloses assembling information
about a client in a client image copy, including common and client specific
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blocks, and that a path to these may be identified. See Chang, Abstract,
¶ 35, Fig. 2. This description does not disclose expressly or inherently a
“table,” as understood in view of the Specification’s disclosure and as
recited in claim 2. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.”).
Further, the Examiner interprets the recitation that the “the table
comprises a plurality of entries for mapping the client-specific boot data
from the one or more virtual storage volumes to respective locations on the
consolidated boot volume” (emphasis added) as a mere statement of
intended use. Ans. 7. We disagree.
The claim recites, “checking . . . a table for the one or more virtual
storage volumes, to determine if the one or more blocks of data have been
copied to the consolidated boot volume.” Appeal Br. 17 (Claims App.)
(emphasis added). The claim further recites two elements facilitating this
determination, one of which is that the table contains a plurality of entries
“for mapping” client-specific boot data to respective locations on the
consolidated boot volume. Id. Thus, we are persuaded that this element is
not a mere statement of intended use, but, rather, a description of how the
“checking” step makes the recited determination that the data has been
copied to the consolidated boot volume. Therefore, the Examiner does not
persuade us that Chang expressly or inherently discloses “checking . . . a
table,” as recited in claim 2.
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To show anticipation, the Examiner must demonstrate that Chang
discloses each and every element of the claimed method, as recited in the
claim. The Examiner fails to do so here, and Appellant persuades us that the
Examiner erred in rejecting claim 2, as anticipated by Chang. Consequently,
we do not sustain the anticipation rejection of claim 2.
2. The Remaining Claims
Each of claims 9 and 16 includes substantially similar elements to the
relevant elements of claim 2 discussed above. Appeal Br. 10; see id. at 17,
19, 21 (Claims App.). Each of claims 3–8, 10–15, and 17–22 depends
directly or indirectly from one of independent claims 2, 9, or 16. Id. at 17–
23. As noted above, Appellant challenges the rejection of independent
claims 9 and 16 for the same reasons as claim 2 and of the dependent claims
for the same reasons as their base claims. See Appeal Br. 10, 15. Because
we are persuaded the Examiner erred in the anticipation rejection of claim 2,
we also are persuaded the Examiner erred in the anticipation rejection of
claims 3–22. For this reason, we do not sustain the rejection of those claims.
DECISIONS
1. The Examiner erred in rejecting claims 2–22 as anticipated by Chang.
2. Thus, on this record, claims 2–22 are not shown to be unpatentable.
CONCLUSION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 2–22.

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In summary:
Claims
Rejected
35 U.S.C. § Reference Affirmed Reversed
2–22 102 Chang

2–22

REVERSED