Ex Parte Curran et al

Board of Patent Appeals and Interferences

Nov 24, 2010

10730508 (B.P.A.I. Nov. 24, 2010)

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.
10/730,508 12/08/2003 Robert J. Curran POU920030196US1 2326
82519 7590 12/02/2010
Heslin Rothenberg Farley & Mesiti P.C.
5 Columbia Circle
Albany, NY 12203
EXAMINER
MADAMBA, GLENFORD J
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
12/02/2010 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. CURRAN, RADHA R. KANDADAI, IRIT LOY, and
JOHN M. MARBERG
____________________

Appeal 2009-007810
Application 10/730,5081
Technology Center 2400
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY, III, and DEBRA K.
STEPHENS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed December 8, 2003. The real party in interest is IBM
Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 20 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejections.

Appellants’ invention relates to a method for managing data
movement with greater efficiency. (See Spec. ¶¶ [0001] and [0042].) In the
words of Appellants:
Data residing in [a] cluster is organized in files
arranged according to a file system. Since the
computing environment is set up in a parallel
arrangement to allow data processing to be
conducted in parallel, it follows that a parallel file
system that can handle one or more operating
platforms has to be employed in such an
environment. A parallel file system can be
described as a hierarchical collection of files and
file directories that are stored on disk or other
medium and have an identified root and a
predefined interface.
(Spec. ¶ [0027]).
The following illustrates the claims on appeal:
Claim 1:
1. A method of managing data movement,
comprising:

establishing a processing environment in a
cluster of nodes having common access to data
residing in one or more data storage units;

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initiating a data management application
(DM) in said environment;

assigning a node of said cluster as a
coordinating node for managing data movement;

receiving an event by the coordinating node
requesting movement of data;

posting a worker thread to one or more of
the nodes to perform data movement in response to
the event.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barnhouse3 US 6,518,461 Jul. 09, 2002
Moore US 2004/0249904 A1 Dec. 09, 2004
(filed Apr. 16, 2003)
Dugan US 2006/0165223 A1 Jul. 27, 2006
(continuation of various applications dating to Dec. 19, 2001)

REJECTION
The Examiner rejects the claims as follows:

R1: Claims 1 to 4 and 9 to 20 stand rejected under 35 U.S.C. § 102(e) for
being anticipated by Moore.
R2: Claims 5 to 8 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Moore in view of Dugan.

3 The Examiner points to column 14, lines 32 to 45, of the Barnhouse
reference, which is incorporated by reference by Dugan (Ans. 25, middle to
bottom).
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We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). The issue
specifically turns on whether Moore and Dugan teach or render obvious
Appellants’ claimed “coordinating node,” the claimed “event” and the
method step of “posting a worker thread to one or more of the nodes to
perform data movement in response to the event” (claim 1).

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method and system for managing data
movement in the context of a high-speed storage area network (SAN) (claim
1; Spec. ¶¶ [0003]; [0008]; and [0009]). Appellants’ claimed method
includes a process environment with a cluster of nodes having common
access to data and initiation of a data management application (claim 1).
The method further comprises assigning one of the cluster nodes as a
coordinating node to manage data movement; receiving an event by the
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coordinating node; and posting a worker thread to one or more of the nodes
to move data (id.).

Moore
2. The Moore reference teaches a method of managing data movement in
a storage area network (SAN) environment (¶¶ [0005] and [0008]). The
U.S. patent application publication teaches a cluster of nodes connected by
high-speed fiber channel switches. (See Abstract; Fig. 2.) Moore teaches
using an industry standard storage management protocol called data
migration application programming interface (DMAPI), typically used in the
context of storage area networks (¶ [0008]). Moore further teaches choosing
a leader node for data retrieval and recovery (see ¶ [0091]); receiving a
request to manage data (see ¶ [0076]); and dispatching a worker thread to
one or more nodes for purposes of moving data. (See ¶ [0117].)

PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Argument with respect to the
Inventors’ Affidavit submitted under 37 C.F.R. § 1.131

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37 C.F.R. § 1.131 (2008) provides in pertinent part:

(b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained. (emphasis added).

Appellants attempt to swear behind the filing date of the Moore
reference, claiming an actual reduction to practice date that would render
Moore invalid as prior art. (See “Affidavit Submitted under 37 CFR 1.131”
(hereafter “Affidavit”) filed Nov. 15, 2007.)
We have thoroughly considered the inventors’ signed affidavit.
However, we find a clear lack of evidence supporting the assertion that the
actual reduction to practice date of the claimed invention antedates Moore’s
filing date. Rather, we observe that Appellants have merely repeated the
claim language (see “Affidavit,” page 1 et seq.), providing no proof
substantiating their claim. Nor have Appellants explained the absence of
evidence in the form of original exhibits of drawings, records, photocopies,
and the like. Thus, we find Appellants’ assertion of actual reduction to
practice amounts to a mere pleading that is unsupported by proof or a
showing of facts of sufficient character and weight to establish prior
invention. See In re Borokowski, 505 F.2d 713, 718 (CCPA 1974).
Accordingly, we find no reversible error in the Examiner’s finding
that the affidavit submitted under 37 C.F.R. § 1.131 is defective and thus
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fails to establish actual reduction to practice before the effective filing date
of the Moore reference.

Arguments with respect to the rejection
of claims 1 to 4 and 9 to 20
under 35 U.S.C. § 102(e) [R1]

The Examiner has rejected the noted claims for being anticipated by
Moore, pages 4 to 8 of the Examiner’s Answer.
We first address what Appellants cite as their strongest argument
against anticipation, i.e., Appellants’ claimed method step for “posting” is
novel because the event processing for data migration can be done in parallel
fashion, unlike the prior art reference Moore (App. Br. 9, middle).
We disagree with Appellants’ argument for the following reasons.
We find that Appellants have invented a method and system for managing
data movement in the context of a high-speed storage area network (SAN)
(FF#1). Appellants’ claimed method includes a process environment with a
cluster of nodes having common access to data and initiation of a data
management application (id.). The method further comprises assigning one
of the cluster nodes as a coordinating node to manage data movement;
receiving an event by the coordinating node; and posting a worker thread to
one or more of the nodes to move data (id.).
The Moore reference teaches a method of managing data movement in
a storage area network (SAN) environment (FF#2). The U.S. patent
application publication teaches a cluster of nodes connected by high-speed
fiber channel switches (id.) Moore teaches using an industry standard
storage management protocol called data migration application
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programming interface (DMAPI), typically used in the context of storage
area networks. (id.). Moore further teaches choosing a leader node for data
retrieval and recovery; receiving a request to manage data; and dispatching a
worker thread to one or more nodes for purposes of moving data. (id.).
With respect to Appellants’ argument for the claimed “posting” step,
we find that the argument is not commensurate with the scope of the claim
language. That is, nowhere does the language of claim 1 require data
migration be accomplished “in parallel fashion.” Instead, the claim merely
recites “posting a worker thread to one or more of the nodes to perform data
movement.” (Claim 1). The “or” language of claim 1 ensures that just one
worker thread need only be dispatched (i.e., the claimed “posting”) to a
single node to perform data movement in order for the claim limitation to be
met by the prior art. Indeed, Moore’s disclosure meets the limitation where
Moore describes dispatching threads to nodes for purposes of recovery and
relocation of data (i.e., the claimed “data movement”). (See ¶¶ [0117] and
[0118].)
Appellants then argue that since the Moore reference teaches two
types of nodes and the claimed invention requires no such dichotomy, claim
1 is allowable (App. Br. 9, top).
We disagree with Appellants. The mere fact that the Moore reference
teaches various types of nodes does not obviate the fact that “a cluster of
nodes” (claim 1) is taught in the prior art. Accordingly, we find Appellants
have not demonstrated error in this regard.
Next, it is Appellants’ contention that Moore fails to disclose a single
event being processed in a “parallel fashion.” (App. Br. 9, top). While we
acknowledge that Appellants’ Specification discloses advantages of parallel
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processing (see ¶ [0027]), we find no such recitation of processing in a
“parallel fashion” in the claim language. Since Appellants chose not to
recite the argued “parallel fashion” language, we find Appellants have not
demonstrated error in the rejection.
Appellants contend that the term “coordinating node” is taken out of
context in comparison with Appellants’ disclosure since Moore refers to a
“leader node” under a section of the reference entitled “Relocation and
Recovery.”
We do not agree. The Moore reference discloses that “request(s) will
be sent to the node in the leader state 206. If there is no existing leader,
conventional techniques are used to elect a leader and that node transitions
to the leader state 206.” (¶ [0091]). Moore’s disclosure of choosing a
“leader state,” which is categorized under “Recovery and Relocation,” is all
in the context of a storage area network and the migration and relocation of
data. (See Abstract; ¶¶ [0008] and [0089].) We interpret Appellants’
claimed “coordinating node” as reading on the reference’s “leader state
206,” as both oversee data movement operations. The mere fact that Moore
discloses that a node has failed and another node is chosen as a “leader”
does not preclude the fact that a “coordinating node,” as claimed is taught by
the reference. We thus find Appellants have not shown error in this regard.
Finally, with respect to the rejection R1, Appellants argue that the
claimed “receiving” step (claim 1) is not similar to Moore’s Data
Management Application Protocol Interface (DMAPI) events.
We disagree. We find that a comparison of the examples of
Appellants’ claimed “events” found in the disclosure (see ¶ [0036]) are no
different from the “DMAPI events” disclosed in Moore at paragraph [0076].
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According to the disclosure, “events” include “a task processing request. “In
an environment having a DMAPI, the operating system informs the
particular data management application . . . to read a certain area of a file.”
In comparison, Moore discloses that events include “read, write, and
truncate.” Thus, “events” as claimed are synonymous with Moore’s
“DMAPI events.” Accordingly, we find Appellants have not demonstrated
error in the rejection R1.

Arguments with respect to the rejection
of claims 5 to 8
under 35 U.S.C. § 103(a) [R2]

The Examiner has rejected the noted claims for being rendered
obvious by Moore and Dugan, pages 8 to 12 of the Examiner’s Answer.
Appellants argue that the claimed “session” was taken out of context
in the Examiner’s rejection.
We carefully reviewed Briefs, the Answer, the Moore and Dugan
references, as well as the Barnhouse reference incorporated by reference in
Dugan and cited by the Examiner as evidentiary proof of Appellants’
claimed “session.”
We agree with and adopt the Examiner’s findings with regard to the
rejection of claims 5 to 8 (Ans. 24 to 25). We refer Appellants to the
“Response to Arguments” section of the Answer for further details (id.).
Accordingly, we affirm the rejection R2.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1 to
20.

DECISION
We affirm the Examiner’s rejections R1 and R2 of claims 1 to 20.

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

erc

Heslin Rothenberg Farley & Mesiti P.C.
5 Columbia Circle
Albany NY 12203