Ex Parte Bornstein et al

Board of Patent Appeals and Interferences

Jan 27, 2012

10937691 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte WILLIAM BORNSTEIN, TIMOTHY ALAN DIETZ, and
ANTHONY CAPPA SPIELBERG
_____________

Appeal 2009-012328
Application 10/937,691
Technology Center 2100
______________

Before, DENISE M. POTHIER, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-2, 6-12, 14, 16-22, and 25-27.
1
We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm the Examiner‟s rejection of these claims.

1
Claims 3-5, 13, 15, 23, and 24 were previously cancelled.
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INVENTION
The invention is directed to a method, system, and machine accessible
medium for backing up a computer system using a hard drive and a portable
data storage device. See Spec. 3-4. Claim 1 is representative of the
invention and is reproduced below:
1. A backup system for a computer system having a primary
hard disk drive, the system comprising:
a portable data storage device, the portable data storage
device being adapted to serve as a cache;
a capture module, the capture module being adapted to
capture any commands to modify data on the primary hard disk
drive;
a cache writing module in communication with the capture
module, the cache writing module being adapted to store
indications of any commands to modify the data captured by
the capture module to a cache on the portable data storage
device while the computer system is not in communication with
a network;
a mirroring module in communication with the capture
module, the mirroring module being adapted to mirror the
primary hard disk drive on to an external data storage device
while the computer system is in communication with the
network;
a network backup module, the network backup module being
adapted to replicate the mirrored copy of the primary hard disk
drive stored on the external data storage device to a remote
storage location via the network; and
a network restore module being adapted to restore the
primary hard disk drive based on the indications of the
commands to modify data stored on the portable data storage
device and on the replicated mirrored copy of the primary hard
disk drive stored at the remote storage location.

REFERENCES
Kekre US 6,912,631 B1 Jun. 28, 2005
(filed Sep. 25, 2002)
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Teicher US 6,922,734 B2 Jul. 26, 2005
(filed Jul. 28, 2003)

Kekre US 6,938,135 B1 Aug. 30, 2005
(filed Oct. 4, 2002)

Zamer US 6,944,733 B2 Sep. 13, 2005
(Dec. 11, 2002)

REJECTIONS AT ISSUE
Claims 1, 2, 8, 12, 14, 17-22, 26, and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kekre (US 6,912,631, hereinafter
referred to as Kekre „631) in view of Teicher and Zamer. Ans. 3-8.
Claims 6, 7, and 9-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the Kekre „631 in view of Teicher, Zamer, Official
Notice, and Applicant‟s Admitted Prior Art (AAPA). Ans. 8-9.
Claims 16 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekre „631 in view of Teicher, Zamer, Official Notice,
AAPA, and Kekre (US 6,938,135, hereinafter referred to as Kekre „135).
Ans. 9-10.
ISSUES
Did the Examiner err in finding that the combination of Kekre „631,
Teicher, and Zamer teach or suggest all of the claim limitations of claim 1?
Did the Examiner err in combining the references?

ANALYSIS
Claim 1 recites “the cache writing module being adapted to store
indications of any commands to modify the data captured by the capture
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module to a cache on the portable storage data storage device while the
computer system is not in communication with a network; [and]…[a]
mirroring module being adapted to mirror the primary hard disk drive on to
an external data storage device while the computer system is in
communication with the network” (emphasis added). Appellants argue that
none of the references teach or suggest each and every limitation found in
claim 1, since: (1) none of the references teach or suggest the recitations
quoted above; (2) Kekre‟s system performs a backup independent of any
network connectivity; and (3) Kekre‟s solution is operating at all times.
App. Br. 7-9; Reply Br. 3. However, the Examiner finds that the broadest
reasonable interpretation of the claim does not preclude both storing on the
portable storage device and copying on the external data storage device
when the network is connected and also when the network is not connected.
Ans. 11. We agree with the Examiner‟s interpretation as we find it to be
reasonable. Subsequently, we agree with the Examiner that Kekre „631
teaches or suggests the disputed limitations.
Additionally, Appellants argue that it would not have been obvious to
combine Kekre „631, Teicher, Zamer, and Official Notice since Kekre „631
teaches away from the use of a portable storage device because it would be
more expensive and its use would only raise the cost and not serve a stated
purpose. App. Br. 9-10. We disagree. The Federal Circuit held that “[t]he
fact that the motivating benefit comes at the expense of another benefit,
however, should not nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another.” Winner Int’l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Here, that the benefit
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gained by using a portable storage device may come at the expense of using
only an attached hard drive as disclosed by Kekre „631, but this expense
should not nullify its use. One of ordinary skill in the art could see a benefit
of using a portable storage device outweighs any expense. In fact, the
Examiner finds that using a portable storage device would provide additional
security and portability. See Ans. 5. Appellants have not addressed the
Examiner‟s specific finding and conclusion. Thus, on balance, we agree
with the Examiner.
Lastly, Appellants argue that the combination of the references is
based upon hindsight reasoning of the Examiner. App. Br. 11; Reply Br. 3.
We disagree and add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant‟s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner‟s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants‟ invention and does not include
knowledge gleaned only from the Appellants‟ disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner‟s Answer. See Ans. 3-5. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
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Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner‟s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 3-5. Thus, we agree with the Examiner‟s
findings and conclusions.
For the reasons stated supra, we sustain the Examiner‟s rejection of
claim 1.
Regarding claims 2, 6-12, 14, 16-22, and 25-27, Appellants argue that
these claims are allowable for the same reasons as claim 1. App. Br. 11-12.
Thus, we sustain the Examiner‟s rejection of claim 2, 6-12, 14, 16-22, and
25-27 for the reasons stated supra with respect to claim 1.

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CONCLUSION
The Examiner did not err in finding that the combination of Kekre
„631, Teicher, and Zamer teach or suggest all of the claim limitations of
claim 1.
The Examiner did not err in combining the references.

SUMMARY
The Examiner‟s decision to reject claims 1-2, 6-12, 14, 16-22, and
25-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).

AFFIRMED

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