Ex Parte Borthakur et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10195679 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DHRUBAJYOTI BORTHAKUR and SRIDHARA LANKA
____________________

Appeal 2008-003374
Application 10/195,679
Technology Center 2100
____________________

Decided:1 June 1, 2009
____________________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20, 22, and 24-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
We also enter new grounds of rejection against claims 22 and 24
under the provisions of 37 C.F.R. § 41.50(b).

Introduction
According to Appellants, the invention relates to a method
implemented in a network with first and second nodes coupled to each other
via a first communication link and via a second communication link that also
couples a peripheral data storage device (Abstract and App. Br. 3, ll. 1-5).

Exemplary Claim(s)
Claims 1 and 13 are exemplary claims and are reproduced below:
1. In a network comprising first and second nodes coupled to
each other via a first communication link, and a peripheral data
storage device coupled to the first and second nodes via a second
communication link, a method comprising:
the first node receiving data;
the first node transmitting a first message to the second node
via the first communication link in response to the first
node receiving the data;
a single node file system, executing on the second node,
allocating storage memory of the peripheral data storage
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device for the data received by the first node in response
to the second node receiving the first message; and
the first node writing the data to the allocated storage memory
via the second communication link;
wherein the first node writes the data to the allocated storage
memory without the data first transmitting through the
first communication link.

13. A computer readable memory comprising instructions
executable by a first computer system to implement a method in
response to the first computer system receiving data, the method
comprising:
the first computer system transmitting a first message to a
second computer system via a first communication link
in response to the first computer system receiving the
data;
the first computer system writing the data to a storage memory
block of a peripheral data storage device via a second
communication link in response to the first computer
system receiving a second message from the second
computer system via the first communication link; and
wherein the first computer system receives the second message
after the first computer system transmits the first
message; and
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wherein the first computer system writes the data to the storage
memory block without the data first transmitting through
the first communication link.

Prior Art
The Examiner relies upon Appellants’ Admitted Prior Art as set forth
in Appellants’ Specification.

Rejections
The Examiner rejected claims 1-20, 22, and 24-26 under 35 U.S.C.
§ 102(b) as being anticipated by Applicants’ Admitted Prior Art.2

GROUPING OF CLAIMS

Appellants argue the rejection of claims 1-12 under 35 U.S.C.
§ 102(b) as being anticipated by Applicants’ Admitted Prior Art as a group
based on the arguments presented with respect to independent claim 1. We
will, therefore, treat dependent claims 2-12 as standing or falling with claim
1.
Appellants argue the rejection of claims 13-19 under 35 U.S.C.
§ 102(b) as being anticipated by Applicants’ Admitted Prior Art as a group

2 Claims 21 and 23 were cancelled. Appellants filed an Amendment on
March 29, 2006 cancelling claims 20, 22, and 24-26; however, this
Amendment was not entered and thus, we consider claims 20, 22, and 24-26
in this Appeal. Additionally, we have reviewed and considered Appellants’
Substitute Appeal Brief filed November 30, 2006, the Examiner’s Answer of
January 22, 2007, and Appellants’ Reply Brief of September 28, 2007.
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based on the arguments presented with respect to independent claim 13. We
will therefore treat dependent claims 14-19 as standing or falling with claim
13.
Appellants separately argue the rejection of independent claim 20
under 35 U.S.C. § 102(b) as being anticipated by Appellants’ Admitted Prior
Art.
Appellants separately argue the rejections of claims 22 and 24-25
under 35 U.S.C. § 102(b) as being anticipated by Appellants’ Admitted Prior
Art as a group based on the arguments presented with respect to independent
claims 22 and 24. We will therefore treat claim 25 as standing or falling
with claim 24.
Appellants separately argue the rejection of independent claim 26
under 35 U.S.C. § 102(b) as being anticipated by Appellants’ Admitted Prior
Art.
See 37 C.F.R. § 41.37(c)(1)(vii) (“Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately.”)

ISSUES
35 U.S.C. § 102(b): claims 1, 20, 22, and 24
Appellants contend the Examiner has combined unrelated portions to
allegedly show the first node receives the data and writes the data to
allocated storage memory (App. Br. 8, ll. 1-5 and Reply Br. 3, ll. 15-20).
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Further, Appellants assert the Admitted Prior Art does not describe the first
node transmits a first message to the second node over the first
communication link in response to the first node receiving the data (App. Br.
10, ll. 20). Appellants also assert Appellants’ Admitted Prior Art does not
disclose the first node writes the data it receives to allocated storage memory
without the data first being transmitted through the first communication link
(Reply Br. 3, l. 17 to 4, l. 10). Moreover, Appellants assert claims 20, 22,
and 24 recite inventions not anticipated by Appellants’ Admitted Prior Art
based on the same contentions asserted for claim 1 (App. Br. 11, l. 30 to 13,
l. 4).
The Examiner finds the Admitted Prior Art discloses the first node
receives the data and writes the data to storage memory allocated by the
second (Ans. 23-24, ¶ (B)). Specifically, the Examiner indicates the first
node 12b transmits the write request to the server (second) node 12a via the
first (LAN) communication link (Ans. 24, ¶ (C)). The Examiner continues
that the server node executes the request to allocate storage memory within
the storage memory and writes the data to the allocated storage memory
(id.). Additionally, the Examiner contends the first node 12b writes data to a
storage memory allocated to a file address without being transmitted through
the first (LAN) communication link (id.) Thus, the Examiner finds claims 1-
20, 22, and 24-26 are anticipated by Appellants’ Admitted Prior Art (Ans.
25, ¶ (C)).
Issue 1: Have Appellants met the burden of showing the Examiner
erred in finding the Admitted Prior Art describes the first node writes the
data it receives to allocated storage memory without the data first being
transmitted through the first communication link?
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35 U.S.C. § 102(b): claim 13
Appellants argue the Examiner has ignored their assertion that the first
computer system writes the data in response to the first computer system
receiving a second message from the second computer system (Reply Br. 4,
ll. 11-16).
Issue 2: Have Appellants met the burden of showing the Examiner
erred in failing to identify the first computer system writes the data in
response to the first computer system receiving a second message from the
second computer system?

35 U.S.C. § 102(b): claim 26
Appellants argue the invention as recited in claim 26 requires a single
node file system that executes on the second node and allocates storage
memory for data received by the first node (App. Br. 13). Additionally,
Appellants argue the first node writes the data it receives to allocated storage
(id.). Thus, Appellants argue, the Examiner has not shown that the node that
receives the data is the same node that writes the data (id.).
The Examiner finds that the Admitted Prior Art discloses the node
receiving the data is the same node that writes the data to storage memory
(Ans. 23). The Examiner further finds the first node transmits a first
message to the second node via a first communication link in response to
receiving the data (Ans. 24-25).
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Issue 3: Have Appellants shown the Examiner erred in finding the
Admitted Prior Art discloses a first node receives data, writes the data to
allocated storage memory and transmits a message to a second node via a
first communication link and a second node that allocates storage memory
for the data received by the first node?

FINDINGS OF FACT (FF)
Appellants’ Admitted Prior Art
(1) Appellants’ system is a multi-node system coupled to a storage
area network (SAN) (Spec. 1, [001]). The nodes can read or write data to a
storage system via a SAN communication link and can communicate with
each other via a local area network (LAN) communication link (Spec. 1,
[002]). The system includes a server node or computer system and client
nodes or computer systems (Spec. 1, [002]).
(2) One of the nodes is a server node and the others are client nodes
(Spec. 1, [003]). All of the nodes include a file system driver filter that can
communicate to each other over the LAN communication link and a meta
data memory that stores memory (Spec. 1, [003] and Spec. 2, [005]).
(3) The server node additionally includes a single node file system
to create and manage files (Spec. 2, [004]). The server node also allocates
storage memory within data storage system to the files (Spec. 2, [005]).
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(4) In general, when a client node receives a request to write data to
a file having file address(es), the client node writes data to a storage memory
allocated to the file address(es) (Spec. 2, [006] and Figure 2).
(5) More specifically, when a write request is received, the client
node checks if it has a valid copy of the meta data for the file and if not, the
client node will send a request over the LAN communication link to the
server node (Spec. 2-3, [007] and Figure 2, steps 44 and 46). The server
node replies via the LAN communication link with valid meta data for the
file which the client node uses to overwrite its meta data (Spec. 3, [008] and
[009] and Fig. 2, steps 50 and 52).
(6) The client node determines whether storage memory has been
allocated for the data of the write request (Spec. 4, [010] and Fig. 2, step 54).
If storage memory has been allocated, the client node writes the data to the
allocated storage memory over the SAN communication link (Spec. 2, [002]
and Fig. 2, steps 54 and 56).
(7) If storage memory has not been allocated, the client node
transmits the write request and data to the server node over the LAN
communication link and the server node then allocates storage memory to
the file (Spec. 4, [012] and Fig. 2, steps 60 and 62).
(8) The server node updates the meta data and writes the data to
storage memory allocated for the write request over the SAN
communication link (or second communication link) (Spec. 2, [002], Spec.
4, [012] and Fig. 2, steps 64 and 66).
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PRINCIPLES OF LAW
Claim Construction
Unless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one. Interactive Gift Express, Inc. v.
CompuServe, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). See also Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71 (Fed. Cir. 2003) (district
court erred in claim construction by reading a step order from the written
description into the claims).

Anticipation
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed.Cir.1997). According to the single
source rule, all the claim's limitations must be contained in a single
reference, see, e.g., Brown v. 3M, 265 F.3d 1349, 1351 (Fed.Cir.2001), and
the reference "must describe the patented subject matter with sufficient
clarity and detail to establish that the subject matter existed in the prior art
and that such existence would be recognized by persons of ordinary skill in
the field of the invention," Crown Operations Int'l, Ltd. v. Solutia Inc., 289
F.3d 1367, 1375 (Fed.Cir.2002). Anticipation, unlike claim construction, is a
question of fact, and it requires proof by clear and convincing evidence.
Hazani v. U.S. Int'l Trade Comm'n, 126 F.3d 1473, 1477 (Fed.Cir.1997).

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ANALYSIS
Issue 1:
35 U.S.C. § 102(b): claim 1
Appellants’ Admitted Prior Art sets forth a method that follows a
particular sequence (Spec. 2, [007] – Spec 4, [013] and Fig. 2). In this
sequence, when the first node receives a write data request, the first node
checks if it has a valid copy of the file E meta data (FF 5). If it does not, the
first node will transmit a message to get a valid copy (FF 5). Next, the client
node, through its filter, checks to determine whether storage memory has
been allocated for all the data of the write request (FF 6). If it has, the first
node, the client node, writes the data to the allocated storage memory (FF 6).
If the storage memory has not been allocated, the first or client node will
then transmit the write data request along with the data over the LAN (or
first) communication link to the server node and the server or second node
will allocate the memory and write the data to the memory over the SAN
communication link (FF 7 and FF 8). Thus, we find that Appellants’
Admitted Prior Art sets forth a particular sequence of steps that is set forth in
both the Specification (Spec. 2, [007] – Spec. 4, [013]) and Figure 2 and
therefore, actually recites an order.
We additionally find Appellants’ claimed invention requires a
particular sequence of steps as set forth in the claims and supported by the
Specification (Spec. 8, [028] – Spec. 13, [045]) and Figure 4 and therefore,
claim 1 also actually recites an order of steps. Since this particular sequence
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of steps is required by the method set forth in claim 1, we find Appellants’
Admitted Prior Art does not describe the second node allocating storage
memory and the first node writing the data to the allocated storage memory
without transmitting the data through the first communication link. Instead,
we find Appellants’ Admitted Prior Art discloses that if the first node
requires storage memory to be allocated, the second node receives the data
over the first communication link and writes the data to the storage memory
over the second communication link.
Accordingly, we find Appellants met the burden of showing the
Examiner erred in finding the Admitted Prior Art describes the first node
writes the data it receives to allocated storage memory without the data first
being transmitted through the first communication link.
Since claims 2-12 depend directly or indirectly from claim 1, we
further find claims 2-12 stand with claim 1 and thus, are not anticipated by
Appellants’ Admitted Prior Art.

35 U.S.C. § 102(b): claim 20
Claim 20 recites the first computer system writes data to the storage
memory block via the SAN communication link without the data first
transmitting through the LAN communication link. In contrast, Appellants’
Admitted Prior Art discloses the second computer system writes the data to
the storage memory block via the SAN communication link.
Therefore, we find Appellants have met the burden of showing the
Examiner erred in finding the Admitted Prior Art describes the first
computer system transmits a first message which represents a request for the
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second computer system to allocate the data storage device storage memory
for the data received by the first computer.

35 U.S.C. § 102(b): claims 22 and 24
Claim 22 recites a network system in the preamble comprising a first
node that implements a method. Claim 24 recites a network system
comprising a data storage device and nodes where the first node implements
a method. Both claims recite an apparatus and a method. Our reviewing
court has determined that a claim directed to a system and a method for
using that system is indefinite. See IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). See also S3 Inc. v. NVIDIA
Corp., 259 F.3d 1364, 1372 ( Fed. Cir. 2001) (“When the claims become so
ambiguous that one of ordinary skill in the art cannot determine their scope
absent speculation, such claims are invalid for indefiniteness.”) (citing In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962)).
Here, we conclude claims 22 and 24 do not reasonably apprise those
skilled in the art of its scope. Therefore, we pro forma reverse the
Examiner’s rejection of claims 22 and 24 and introduce new grounds of
rejection below. Since claim 25 depends from claim 24, we find claim 25 is
also indefinite.

Issue 2:
35 U.S.C. § 102(b): claim 13
Claim 13 recites that a first computer transmits a first message to a
second computer system and receives back a second message. The first
computer system writes data to a storage device in response. The second
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message is received after the first message is sent and the data is written by
the first computer system without transmitting it through the first
communication link.
During prosecution, we must give claims their “broadest reasonable
interpretation.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Using the broadest
interpretation, we find Appellants’ Admitted Prior Art describes the
invention as recited in claim 13. More specifically, when the first computer
receives the data, the first computer system transmits a first message to the
second computer system over the LAN requesting file E meta data (FF 5,
and Fig. 2, step 46). Once the second computer system receives the first
message, it transmits a second message back to the first computer system
(FF 5 and Fig. 2, step 50). The first computer system receives this second
message after transmitting the first message (FF 5 and Fig. 2, steps 46 and
50). Once this second message is received, the first computer system writes
the data to the storage memory block over the SAN communication link – it
does not first send the data over the LAN communication link (FF 6 and Fig.
2, step 56).
Accordingly, we find Appellants’ Admitted Prior Art discloses the
argued limitations of claim 13. Appellants thus have not met the burden of
showing the Examiner erred in finding that Applicants’ Admitted Prior Art
the first computer system writes the data in response to the first computer
system receiving a second message from the second computer system.
Appellants have not separately argued claims 14-19. Accordingly,
Appellants have not met the burden of showing the Examiner erred in
rejecting claims 13-19 for anticipation over Appellants’ Admitted Prior Art.
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Issue 3
35 U.S.C. § 102(b): claim 26
Appellants’ Admitted Prior Art discloses a first node 12b receives
data (FF 5) and writes the data to the allocated storage memory 20 via the
second communication link 24 (FF 6 and Fig. 1). Thus, we find Appellants’
Admitted Prior Art discloses the first node writes the data it received to the
allocated storage memory without the received data passing through the
second node. Appellants’ Admitted Prior Art also describes a second node
12a that allocates storage memory 20 (FF 7 and Fig. 1, element 30). Further,
the system of Appellants’ Admitted Prior Art discloses the node that
receives the data is the same node that writes the data since the first node
will, in the case of the storage memory having been allocated, write the
received data directly to the allocated storage memory (FF 5, FF 6, and Fig.
2, steps 40, 50, 54, and 56). Therefore, Appellants have not shown the
Examiner erred in finding the Admitted Prior Art discloses a first node
receives data, writes the data to allocated storage memory and transmits a
message to a second node via a first communication link and a second node
that allocates storage memory for the data received by the first node.

CONCLUSION
Based on the findings of facts and analysis above, Appellants have not
met the burden of showing the Examiner erred in rejecting independent
claims 13 and 26 for anticipation by Appellants’ Admitted Prior Art. Since
claims 14-19 depend directly from claim 13 and these claims were not
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separately argued, Appellants have not met the burden of showing the
Examiner erred in rejecting claims 14-19 for anticipation by Appellants’
Admitted Prior Art.
Appellants have, however, met the burden of showing the Examiner
erred in rejecting claims 1-12 and 20 for anticipation by Appellants’
Admitted Prior Art.

NEW GROUND OF REJECTION
35 U.S.C. § 112, second paragraph
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 22
and 24 under 35 U.S.C. § 112, second paragraph as being indefinite. Claims
22 and 24 recite both an apparatus and a method of using that apparatus.
Therefore, we cannot determine their scope absent speculation. Since claim
25 depends from claim 24 and thus, also recites both an apparatus and a
method of using that apparatus, claim 25 is also rejected as being indefinite.

DECISION
We reverse the Examiner’s rejection of claims 1-12 and 20 under 35
U.S.C. §102 for anticipation by Appellants’ Admitted Prior Art.
We affirm the Examiner’s rejection of claims 13-19 under 35 U.S.C.
§102 for anticipation by Appellants’ Admitted Prior Art.
We affirm the Examiner’s rejection of claim 26 under 35 U.S.C. §102
for anticipation by Appellants’ Admitted Prior Art.
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains a new ground of rejection pursuant to 37
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C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”

37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.…

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.…

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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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-IN-PART

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