Ex Parte Chang et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10648064 (B.P.A.I. Jan. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN R. CHANG, KIRBY GRANT DAHMAN, ERIKA
MARIANNA DAWSON, STANLEY MARK KISSINGER, GAVIN
STUART JOHNSON, JON ARTHUR LYNDS, MICHAEL RAY NOEL,
and LINDA JEAN SCHILTZ
____________
Appeal 2009-013592
Application 10/648,0641
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on August 26, 2003. The real party in interest is International
Business Machines Corp. App. Br. 2.
Appeal 2009-013592
Application 10/648,064

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1, 4, 5, 7, 10, and 12-24. Claims 2, 3, 6, 8, 9,
and 11 have been cancelled. App. Br. 2-3. We have jurisdiction under 35
U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented an apparatus, system, and computer readable
storage medium for scaling tape storage devices in order to improve data
access performance. Spec. ¶¶ [0001] and [0012].
Illustrative Claim
1. An apparatus for selecting storage media scaling to
improve data access performance, the apparatus comprising:
a reception module implemented in software stored on a
memory device for execution on a processor and configured to
receive a dataset for storage on a magnetic tape storage medium
with a storage instruction that does not direct that the dataset is
stored with scaling;
an identification module implemented in software stored
on the memory device for execution on the processor and
configured to identify storage characteristics of the dataset,
wherein the storage characteristics comprise compaction,
expiration dates, and media interchange specifications; and
a scaling module implemented in software stored on the
memory device for execution on the processor and configured
to select a scaling storage instruction in response to storage
criteria applied to the storage characteristics that indicate
scaling is beneficial and communicate the selected scaling
storage instruction to a storage controller, wherein the scaling
storage instruction comprises an instruction to scale the
magnetic tape storage medium to a predefined capacity for
optimal data access performance and the storage controller
Appeal 2009-013592
Application 10/648,064

3
stores the dataset on a magnetic tape storage device in response
to the scaling storage instruction.

Prior Art Relied Upon
Gelb US 5,018,060 May 21, 1991
Basham US 5,757,571 May 26, 1998
Mehlberg US 2003/0120379 A1 June 26, 2003
Stickler US 2003/0193994 A1 Oct. 16, 2003
(filed Mar. 21, 2002)
Bergsten US 2003/0204672 A1 Oct. 30, 2003
(filed Apr. 30, 2002)

Erik Riedel et al., “Active Storage for Large-Scale Data Mining and
Multimedia,” Proceedings of the 24th International Conference on Very
Large Databases (1998) (hereinafter “Riedel”).

Rejections on Appeal
Claims 1, 4, 5, 15-21, and 23 stand rejected under 35 U.S.C. § 103(a)
over the combination of Gelb, Basham, and Stickler. Ans. 5-15.
Claims 7, 10, 12, and 22 stand rejected under 35 U.S.C. § 103(a) over
the combination of Gelb, Basham, Stickler, and Bergsten. Id. at 15-18.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) over the
combination of Gelb, Basham, Stickler, Bergsten, and Riedel. Id. at 18-20.
Claim 24 stands rejected under 35 U.S.C. § 103(a) over the
combination of Gelb, Basham, Stickler, Bergsten, and Mehlberg. Id. at 20-
21.
Appellants’ Contentions
Appellants contend that Gelb’s disclosure of allocating a dataset to a
non-storage management system (“SMS”) portion of a data processing
system does not teach or suggest receiving “a storage instruction that does
Appeal 2009-013592
Application 10/648,064

4
not direct that the dataset is stored with scaling,” as recited in independent
claim 1, and similarly recited independent claims 7 and 15. In particular,
Appellants argue that Gelb’s disclosure of the SMS managed status of data
does not teach or suggest determining whether such data is stored with
scaling. Appellants also allege that since Gelb is silent with regards to
scaling, Gelb cannot teach or suggest the negative limitation. Br. 12-16;
Reply Br. 6-9.
Further, Appellants contend that the combination of Gelb, Basham,
and Stickler does not teach or suggest “select[ing] a scaling storage
instruction in response to storage criteria applied to the storage
characteristics that indicate scaling is beneficial,” as recited in independent
claim 1. In particular, Appellants argue that since Gelb is silent with regards
to scaling, and Basham only discloses storage instructions that direct scaling,
neither Gelb nor Basham teaches or suggests that “scaling is beneficial,” as
claimed. App. Br. 14-15; Reply Br. 8-9.
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 4, 5, 10-14, and 16-24. See
Br. 16-20; Reply Br. 6-11. Therefore, we select independent claim 1 as the
representative claim of these aforementioned claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Examiner’s Findings and Conclusions
The Examiner finds that Gelb’s disclosure of directing a dataset to the
non-SMS managed portion of the data processing system teaches or suggests
“a storage instruction that does not direct that the dataset is stored with
scaling,” as recited in independent claim 1. That is, the Examiner finds that
Gelb’s step of /*EXCLUDE SYSTEM DATA SETS THAT SHOULD NOT
Appeal 2009-013592
Application 10/648,064

5
BE SMS-MANAGED*/ within the STORAGE CLASS ACS ROUTINE
teaches or suggests determining that the dataset selected is not stored with
scaling. Ans. 5-6, 22-23.
Additionally, the Examiner finds that since Gelb addresses the
concept of scanning a group of storage volumes in order to find the best
suitable storage volume, Gelb teaches or suggests that “scaling is
beneficial,” as recited independent claim 1. Moreover, the Examiner finds
that Basham’s disclosure of a controller that relies upon user input to create
variable-sized and fixed-sized partitions teaches or suggests a scaling
module “configured to select a scaling storage instruction in response to
storage criteria applied to the storage characteristics,” as claimed.
Therefore, the Examiner finds that it would have been obvious to an
ordinarily skilled artisan to combine the teachings and suggestion of both
Gelb and Basham to render obvious “select[ing] a scaling storage instruction
in response to storage criteria applied to the storage characteristics that
indicate scaling is beneficial,” as claimed. Id. at 7-9 and 23-24.

II. ISSUE
Did the Examiner err in concluding that the combination of Gelb,
Basham, and Stickler renders independent claim 1 unpatentable? In
particular, the issue turns on whether the proffered combination teaches or
suggests the following claim limitations recited in independent claim 1, and
similarly recited in independent claims 7 and 15:
(a) “a storage instruction that does not direct that the dataset is
stored with scaling[;]” and
Appeal 2009-013592
Application 10/648,064

6
(b) “select[ing] a scaling storage instruction in response to storage
criteria applied to the storage characteristics that indicate scaling is
beneficial.”

III. FINDINGS OF FACT (“FF”)
Gelb
FF 1. Gelb discloses a storage class routine wherein a particular step
serves to exclude aspects of a dataset. See Table—STORAGE CLASS
ACS ROUTINE, col. 13, ll. 19-21.
FF 2. Gelb discloses dataset attributes that include a scaling factor
(“AVGREC”) for data storage space, wherein the variable AVGREC stores
an undefined scaling factor (“U”). See Table—TABLE OF DATA SETS,
col. 7, ll. 29-40.
FF 3. According to Gelb, the prior art does not address the problem of
scanning a group of storage volumes in order to find the best suitable storage
volume for storing a dataset. Col. 4, ll. 3-6. In order to address this
problem, Gelb discloses that it is desirable to insulate application
programmers from the current requirement that their respective programs
have some information pertaining to physical parameters of the peripheral
data storage. Gelb also discloses that it is desirable to remove all allocation
and controls of peripheral storage from direct intervention by an application
programmer. Col. 1, ll. 30-34 and 65-68.
Basham
FF 4. Basham discloses storing future data on a tape by creating
additional partitions, whereby each partition has a variable size appropriate
to the amount of data stored, a fixed size, or an assorted size. Col. 3, ll. 58-
Appeal 2009-013592
Application 10/648,064

7
61; col. 11, ll. 17-34. Further, Basham discloses that user input determines
partition sizes. Col. 11, ll. 17-36.
FF 5. Basham discloses a controller that manages data storage and
handles tasks such as data compaction. Col. 5, ll. 55-60.

IV. ANALYSIS
Claims 1, 7, and 15
We do not find error in the Examiner’s obviousness rejection of
independent claims 1, 7, and 15. In particular, independent claim 1 recites,
inter alia: 1) “a storage instruction that does not direct that the dataset is
stored with scaling[;]” and 2) “select[ing] a scaling storage instruction in
response to storage criteria applied to the storage characteristics that indicate
scaling is beneficial.”
We begin our analysis by noting that since independent claim 1 recites
“a storage instruction that does not direct that the dataset is stored with
scaling,” independent claim 1 includes a negative limitation. Although
permissible,2 a negative limitation merely recites what a claim lacks and,
therefore, is broad by its very nature. Consequently, the scope and breadth of
independent claim 1 is fully met by a storage instruction that does not
otherwise include the feature recited in the negative limitation—namely a
storage instruction that indicates that the dataset should be stored with
scaling. Alternatively, the scope and breadth of independent claim 1 is also
fully met by a storage instruction that includes the negative limitation—

2 See generally Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 923
(Fed. Cir. 1991) (“The use of a negative limitation to define the metes and
bounds of the claimed subject matter is a permissible form of expression.”)
(citation omitted).
Appeal 2009-013592
Application 10/648,064

8
namely a storage instruction that indicates that the dataset should not be
stored with scaling.
With these two plausible claim constructions in mind, we turn to the
merits of the Examiner’s obviousness determination. At the outset,
Appellants contend that Gelb’s disclosure of allocating a dataset to either the
SMS managed or non-SMS managed portion of the data processing system
does not teach or suggest determining whether such dataset is stored with
scaling. App. Br. 14-15; Reply Br. 7. Gelb discloses a storage class routine
for excluding a dataset based on an aspect. FF 1. In particular, we find that
Gelb’s storage class routine is silent with respect to whether the aspect
provides an indication to allocate the dataset to a non-SMS managed portion
of that data processing system that directs the dataset to be stored with
scaling. Put another way, we find that the aspect or storage instruction does
not include an indication that the dataset should be stored with scaling and,
therefore, is tantamount to “a storage instruction that does not direct that the
dataset is stored with scaling,” as recited in independent claim 1.
Alternatively, to the extent that Appellants’ argument is predicated on
the notion that Gelb is silent with respect to scaling (Reply Br. 7-8), we are
not persuaded. Gelb discloses dataset attributes that include a scaling factor.
FF 2. In particular, Gelb discloses associating an undefined scaling factor
(i.e., U) with a dataset. Id. Therefore, contrary to Appellants’ argument,
Gelb does teach or suggest scaling. Moreover, we find that an ordinarily
skilled artisan would have understood that Gelb’s disclosure of a dataset
attribute that does not define scaling amounts to “a storage instruction that
does not direct that the dataset is stored with scaling,” as claimed.
Appeal 2009-013592
Application 10/648,064

9
Next, we find that Gelb discloses that the prior art fails to address the
problem of scanning a group of storage volumes in order to find the optimal
storage volume for storing a dataset. FF 3. However, Gelb does propose a
solution to such problem, namely freeing application programmers of
constraints imposed by peripheral storage. Id. Based on this solution, we
find that an ordinarily skilled artisan would have understood that Gelb at
least suggests providing an application programmer with the opportunity to
indicate that scaling is beneficial.
Further, Basham discloses that, in response to user input, a controller
can select a scaling storage instruction (e.g., to compact the data). FFs 4 and
5. Consequently, we agree with the Examiner that an ordinarily skilled
artisan would have understood that Gelb’s suggestion of an application
programmer indicating that scaling is beneficial (FF 3), in conjunction with
Basham’s controller that relies upon user input to select a scaling storage
instruction (FFs 4 and 5), teaches or suggests a controller or module
configured to select a storage instruction in response to storage criteria
provided by the user that indicates scaling is beneficial. See Ans. 5-10 and
23-24. Thus, we find that the combination of Gelb and Basham teaches or
suggests “select[ing] a scaling storage instruction in response to storage
criteria applied to the storage characteristics that indicate scaling is
beneficial,” as recited in independent claim 1. It follows that the Examiner
has not erred in concluding that the combination of Gelb, Basham, and
Stickler renders independent claim 1 unpatentable.

Appeal 2009-013592
Application 10/648,064

10
V. CONCLUSION OF LAW
The Examiner has not erred in rejecting claims 1, 4, 5, 7, 10, and 12-
24 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 1, 4, 5, 7, 10, and
12-24.
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

msc