Ex Parte Adkins et al

Patent Trial and Appeal Board

Oct 31, 2016

13449860 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/449,860 04/18/2012 Janet E. Adkins
50170 7590 10/31/2016
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUS920110018US2 9114
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
MAILDATE DELIVERY MODE
10/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANET E. ADKINS, DAVID J. CRAFT,
THOMAS S. MATHEWS, and FRANKL. NICHOLS III
Appeal2014-003169
Application 13/449,860
Technology Center 2100
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-9, and 21-31. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2014-003169
Application 13/449,860
STATEMENT OF THE CASE
Appellants' claimed invention is directed to "mechanisms for
importing pre-existing data of a prior storage solution into a storage pool for
use with a new storage solution." Spec. i-f 1.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method, in a data processing system, for importing pre-
existing data into a first storage system of the data processing
system utilizing a current storage management system that is
different from an original storage management system used to
create the pre-existing data, the method comprising:
integrating one or more data storage devices into the first
storage system in-place without modification of the pre-existing
data stored on the one or more data storage devices;
creating metadata for the pre-existing data based on a
linear progression of data in the pre-existing data, wherein the
metadata specifies location information for locating portions of
data in the pre-existing data of the one or more data storage
devices based on an assumption of a linear progression of data
in the pre-existing data;
executing read access requests targeting the pre-existing
data using the created metadata; and
executing write access requests targeting the pre-existing
data by redirecting the write access requests to a copy of the
pre-existing data created in another storage location,
wherein the metadata that is created has a configuration,
corresponding to the current storage management system used
to manage storage devices of the first storage system, that is a
different configuration from metadata used by the original
storage management system when creating the pre-existing data
in a second storage system different from the first storage
system.
App. Br. 27 (Claims App'x).
2
Appeal2014-003169
Application 13/449,860
REFERENCES and REJECTIONS
Claims 1--4, 6-9, 21, and 22 stand provisionally rejected on the
ground of non-statutory, obviousness-type double-patenting over claims 10-
13, 15-18, 21, and 22 of co-pending U.S. Patent Application No. 13/100,332
(the "'332 application"). Final Act. 3---6.
Claims 24--31 stand provisionally rejected on the ground of non-
statutory, obviousness-type double-patenting over claims 10-18, 23, and 24
of the '332 application. Final Act. 6-10.
Claims 1, 2, 4, 6, 21-25, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Leroux et al. (US 2009/0193063 Al; July 30,
2009), Watanabe (US 2007 /0260840 Al; Nov. 8, 2007), and Winter et al.
(US 5,778,414; July 7, 1998). Final Act. 10-22.
Claims 3, 7-9, 26, and 29-31 stand rejected under 35 U.S.C. § 103(a)
as obvious over Leroux, Watanabe, Winter, and Murase (US 2010/0082765
Al; Apr. 1, 2010). Final Act. 22-28.
ANALYSIS
Provisional Non-Statutory Obviousness-type Double-Patenting
We decline to rule on the provisional obviousness-type double-
patenting rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
(precedential).
Rejections under 35 USC§ 103
Appellants argue the Examiner errs in finding the combination of
Leroux and Watanabe teaches or suggests "creating metadata for pre-
existing data based on a linear progression of data in the pre-existing data"
as recited in claim 1. App. Br. 14--16; see also Final Act. 10-14.
3
Appeal2014-003169
Application 13/449,860
Appellants contend, contrary to the Examiner's findings, that although
Winter discloses a linear progression, Winter's teachings are directed "to a
memory map for purposes of processing data frames received, i.e. putting the
header of the frame in a first memory and the payload of a frame in a second
memory" and that "[t]he memory map of Winter is not used for mapping
logical volumes to physical addresses of a storage subsystem" by creating
new metadata for the pre-existing data based on a linear progression of data
in the pre-existing data as claimed. App. Br. 15. We agree.
Appellants further contend Winter's teaching of processing streams of
data sent over a network connection using a memory interleaver is
inapposite to the teachings of Leroux. App. Br. 15-16; Reply Br. 6-9. We
again agree. Winter discloses a memory map in which a linear address
space stores part of a data frame in a first memory and part in a second
memory (see Figure 6; col. 4, 1. 62 to col. 5, 1. 14). In other words, Winter
merely teaches the well-known technique of a memory map having a linear
progression of addresses for storing a stream of data.
"[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
All machines are made up of the same elements; rods, pawls,
pitmans, journals, toggles, gears, cams, and the like, all acting
their parts as they always do and always must. All compositions
are made of the same substances, retaining their fixed chemical
properties. But the elements are capable of an infinity of
permutations, and the selection of that group which proves
serviceable to a given need may require a high degree of
originality. It is that act of selection which is the invention ....
B.G. Corp. v. Walter Kidde & Co., Inc., 79 F.2d 20, 21-22 (2d Cir. 1935).
4
Appeal2014-003169
Application 13/449,860
We agree with Appellants that Winter's teachings are unrelated to
creating metadata for pre-existing data as claimed, and that the Examiner
selects language from Winter and combines it with the teachings of Leroux
in a way that inappropriately disregards the actual teachings of Winter and
Leroux. See Reply Br. 6-9; see also App. Br. 9--10, 14--16.
On this record, therefore, we do not sustain the Examiner's rejection
of independent claim 1. For the same reasons we do not sustain the rejection
of claims 23 and 24, which recite commensurate limitations. We also
therefore do not sustain the rejection of the dependent claims 2--4, 6-9, 21,
22, and 25-31.
DECISION
We do not reach a decision regarding the Examiner's provisional
rejection of claims 1--4, 6-9, 21, 22, and 24--31 on the ground ofnon-
statutory, obviousness-type double-patenting.
We reverse the Examiner's rejection of claims 1--4, 6-9, and 21-31 as
obvious under 35 U.S. C. § 103.
REVERSED
5