Ex Parte Fashchik et al

Patent Trial and Appeal Board

Jul 13, 2016

12164446 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/164,446 06/30/2008 Ran Fashchik
50548 7590 07115/2016
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
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.
TUC1P094/IL920080001US1 1360
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAN F ASHCHIK and EY AL GORDON
Appeal2014-004143 1
Application 12/164,4462
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 15, 2013) and Reply Brief ("Reply Br.," filed February 10, 2014),
and the Examiner's Answer ("Ans.," mailed December 10, 2013), and Final
Office Action ("Final Act.," mailed June 18, 2013).
2 Appellants identify international Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 12/164,446
CLAIMED INVENTION
Appellants' claimed invention "relates to methods, systems and
computer program products for performing data protection operations, and
more particularly, to a system and method for performing a data protection
operation" (Spec. i-f 1 ).
Claims 1and21, reproduced below, are illustrative of the subject
matter on appeal:
1. A method for performing a data protection
operation, the method comprising:
receiving at a controller a write instruction that is
associated with a writable entity; wherein the write instruction
comprises:
a writable entity identifier; and
data protection metadata indicative of a relevancy
of at least one data protection operation to be applied in
relation to the write instruction; and
participating in an execution of a relevant data protection
operation, if such a relevant data protection operation exists.
21. A storage system comprising:
a memory unit that is adapted to store a write instruction
that is associated with a writable entity; wherein the write
instruction comprises:
a writable entity identifier; and
data protection metadata indicative of a relevancy
of at least one data protection operation to be applied in
relation to the write instruction; and
a controller, coupled to the memory unit, and adapted to
participate in an execution of a relevant data protection
operation, if such a relevant data protection operation exists.
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Application 12/164,446
REJECTIONS
Claims 1-10 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-25 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
Claims 1-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ninose (US 2007/0073986 Al, pub. Mar. 29, 2007) and Boaz
(US 2006/0288183 Al, pub. Dec. 21, 2006).
Claim 21 is rejected, alternatively, under 35 U.S.C. § 102(b) as
anticipated by Ron White, How COMPUTERS WoRK, Que Corporation (1999)
(hereinafter "HCW").
ANALYSIS
Non-Statutory Subject Matter
The Examiner maintains that claims 1-10 are properly rejected under
35 U.S.C. § 101 because the claims fail the machine-or-transformation test,
i.e., the claims are neither tied to a particular machine nor transform the
underlying subject matter to a different state or thing (Final Act. 2-3).
Before the mailing date of the Examiner's Answer, the Supreme Court
held in Bilski v. Kappas, 561 U.S. 593 (2010) that a patent claim's failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. Id. at 604. Because the Examiner relies only on the machine-or-
transformation test, the Examiner has failed to establish a prima facie case of
patent-ineligibility. Therefore, we do not sustain the Examiner's rejection of
claims 1-10 under 35 U.S.C. § 101.
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Application 12/164,446
Indefiniteness
We agree with Appellants that the Examiner erred in rejecting
claims 1-25 under 35 U.S.C. § 112, second paragraph (App. Br. 62---66).
The Examiner takes the position that the phrase "participating in an
execution of a relevant data protection operation," as recited in independent
claim 1, and similarly recited in independent claims 11 and 21, is vague and
indefinite because it is unclear whether the limitation refers "to the
'controller participating' or to the 'write instruction participating"' (Final
Act. 4). The Examiner also maintains that it is unclear whether the
controller or another entity, e.g., the writable entity, is performing the
receiving and determining steps recited in dependent claim 3 (id.).
As an initial matter, there is no requirement that an applicant
explicitly recite "who or what" performs each step of a method claim. And
the lack of such a recitation does not render a claim indefinite.
We also cannot agree with the Examiner that the phrase "first write
instruction," as recited in claim 3, is vague and indefinite because it is
unclear whether the limitation refers to "the write instruction of claim 1, or
to a newly introduced write instruction" (id.). Instead, we agree with
Appellants that a person of ordinary skill in the art would understand from
the claim language that the "first write instruction" recited in claim 3 is
distinct from the write instruction recited in claim 1 (App. Br. 65-66).
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1-25 under 35 U.S.C. § 112, second paragraph.
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Appeal2014-004143
Application 12/164,446
Obviousness
In rejecting independent claims 1, 11, and 21under35 U.S.C.
§ 103(a), the Examiner cites Ninose as disclosing "a write instruction ...
compris[ing] a writable entity identifier," as recited in claim 1, and similarly
recited in claims 11 and 21 (Final Act. 5). More particularly, the Examiner
cites paragraph 56 ofNinose as disclosing a write request (i.e., the claimed
"write instruction") comprising a write section number (i.e., the claimed
"writable entity identifier") (id.).
Appellants argue that the Examiner's rejection cannot be sustained,
inter alia, because Ninose' s write section number, which the Examiner
equates to the claimed "writable entity identifier," is a part ofNinose's count
information, copy information, or bitmap ("BM") marker, not Ninose's write
requests, which the Examiner equates to the claimed "write instruction"
(App. Br. 7-9 (citing Ninose i-f 55 ("The count information 220 includes
count values for the write number and the write section number, as shown in
FIG. 6"), 68 ("As shown in FIG. 11, the copy information 20 ... includes
the ... write section number"), 76 ("As shown in FIG. 12, the BM marker
30 ... includes ... write section number")).
Appellants note that Ninose discloses that, in appropriate
circumstances, i.e., where the write request is to be subject to remote
copying, the controller may generate copy information or a BM marker that
includes a write section number (id. at 9). But Appellants maintain that
"these elements are never a part of write request 10, but rather generated
only after receiving and processing the write request" (id.).
The Examiner offers no substantive response to Appellants' argument
in the Examiner's Answer. Instead, the Examiner simply asserts "Examiner
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Appeal2014-004143
Application 12/164,446
disagrees. Ninose discloses receiving a write instruction (request) that
comprises an identifier (write section number) .... "(Ans. 2).
Appellants, in our view, have raised a substantial and legitimate
question regarding the Ninose disclosure, which ostensibly has gone
ignored, or at least unanswered by the Examiner. In failing to address in any
way the distinction that Appellants have drawn between Ninose and the
subject matter recited in independent claims 1, 11, and 21, the Examiner has
failed to establish a prima facie case of obviousness.
Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 11, and 21under35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2-10, 12-20, and 22-
25, which depend from claims 1, 11, and 21, respectively.
Anticipation
In rejecting claim 21under35 U.S.C. § 102(b), the Examiner finds
that HCW discloses, inter alia:
b. a memory unit (RAM, p 9, 112, 117) that is adapted
to store a write instruction that is associated with a writable entity
(data contained in documents, spreadsheets, graphics, databases,
or any type of file must also be stored in RAM, p 117); wherein
the write instruction (program, p 44---63) comprises:
c. a writable entity identifier; and
d. data protection metadata indicative of a relevancy
of at least one data protection operation to be applied in relation
to the write instruction.
(Final Act. 10).
Appellants assert that the Examiner's position, as set forth in the Final
Office Action, lacks any citation to HCW with respect to the write
instruction comprising a writable entity identifier and data protection
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Application 12/164,446
metadata (App. Br. 58). And Appellants argue that, to the extent that the
Examiner intends to rely on pages 44---63 as disclosing the claim limitation,
"the cited portions ofHCW merely provide a high-level overview of late
twentieth century software for the uninitiated, briefly introducing the
historical impact of software on the emergence of personal computing, id.
at 44--58, and some basic concepts such as operating systems. Id. at 59---63"
(id. at 59---60).
The Examiner offers no substantive response to Appellants' argument
in the Examiner's Answer. In fact, the Examiner does not identify the
§ 102(b) rejection of claim 21 among the grounds of rejection (Ans. 2),
although there is no indication in the record that this rejection has been
withdrawn.
It is unclear from the Final Action Office to what extent, if any, the
Examiner relies on pages 44---63 of HCW as disclosing a write instruction
comprising a writable entity identifier and data protection metadata, as
recited in claim 21. And, to the extent the Examiner relies on this portion of
HCW, the Examiner does not identify any specific disclosure of HCW, or
explain in what way, HCW discloses "a write instruction ... compris[ing] a
writable entity identifier and data protection metadata," as recited in
claim 21.
The rejection does not comply with the minimal notice requirements
of 35 U.S.C. § 132. See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990) (35 U.S.C. § 132 is violated "when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection"). Therefore, we do not sustain the Examiner's
rejection of independent claim 21under35 U.S.C. § 102(b).
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Application 12/164,446
DECISION
The Examiner's rejection of claims 1-10 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejection of claims 1-25 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejection of claims 1-25 under 35 U.S.C. § 103(a) is
reversed.
The Examiner's rejection of claim 21under35 U.S.C. § 102(b) is
reversed.
REVERSED
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