Ex Parte Haze et al

Patent Trial and Appeal Board

Apr 17, 2017

13654179 (P.T.A.B. Apr. 17, 2017)

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.
13/654,179 10/17/2012 Michael Haze 102450.00027 1023
108431 7590 04/17/2017
Dell e/n Taeksinn Walker T T P
EXAMINER
100 Congress Avenue
Suite 1100
JACOBS, EDWARD
Austin, TX 78701 ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
04/17/2017 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HAZE and TODD NIX
Appeal 2015-004266
Application 13/654,1791
Technology Center 2100
Before CARL W. WHITEHEAD JR., SHARON FENICK, and
AARON W. MOORE, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.
Invention
Appellants’ invention relates to an information handling system for
migrating digital assets from a source system to a target system. For digital
assets identified as having duplicates, the migration is performed such that
1 Appellants identify Dell Products, L.P. as the real party in interest.
(Appeal Br. 2.)
Appeal 2015-004266
Application 13/654,179
fewer instances of the digital asset are associated with the target system than
were associated with the source system. (Spec. Abstract.)
Exemplary Claims
Claims 1 and 4, reproduced below, are exemplary:
1. An information handling system for migrating digital
assets, comprising:
a non-transitory storage medium configured to store
information regarding digital assets to be migrated from a
source system to a target system; and
a processor configured to:
for each of one or more digital assets associated
with the source system, identify whether the digital asset
is duplicated; and
for each digital asset identified as having a
duplicate, migrate the digital asset to the target system
such that fewer instances of the digital asset are
associated with the target system than were associated
with the source system.
4. The information handling system of Claim 1, wherein
migrating the digital asset from the source system comprises,
responsive to a user desire to store the digital asset on the cloud
storage provider but not the target system:
if an instance of the digital asset is not already present on
the cloud service provider, transferring one instance of the
digital asset to the cloud service provider from the source
system; and
if an instance of the digital asset is already present on the
cloud service provider, then initiating no transfer of the digital
asset from the source system to the cloud service provider.
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Application 13/654,179
Rejection
The Examiner rejects claims 1—21 under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Prahlad et al. (US 2010/0333116 Al; Dec. 30, 2010)
(“Prahlad”). (Final Action 8—23.)
Issues
I. Did the Examiner err in finding that Prahlad discloses migrating
digital assets from a target system to a source system “such that fewer
instances of the digital asset are associated with the target system than were
associated with the source system,” as recited in claim 1?
II. Did the Examiner err in finding that Prahlad discloses the
migration of digital assets to a target system, as recited in claim 1?
ANALYSIS
(I) migrating digital assets “such that fewer instances of the
digital asset are associated with the target system than were
associated with the source system ”
The Examiner finds Prahlad discloses migrating assets “such that
fewer instances of the digital asset are associated with the target system than
were associated with the source system” (henceforth the “fewer instances
limitation”) in its disclosure of deduplication during asset migration. (Final
Action 9; Answer 4—5.)
Appellants argue “Prahlad does not teach or disclose that the
deduplication module checks to determine if fewer instances of the digital
asset are associated with a target system than were associated with a source
system . . . prior to transferring the data object to a target system.” (Appeal
Br. 6.) Appellants further argue that Prahlad does perform “[cjhecking to
see if a copy or sufficient number of copies or instances of a data object are
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Application 13/654,179
stored on a cloud storage site before transferring a data object” but that this
checking, “is not the same as determining if fewer instances of the digital
asset are associated with the target system than were associated with a
source system for each digital asset identified as having a duplicate.” {Id. at
6-7.)
We find the claim limitation at issue does not require that any
checking occur prior to a data asset transfer or at all, only that the migration
of a digital asset occur “such that fewer instances of the digital asset are
associated with the target system than were associated with the source
system.” (Claim 1.) Insofar as Appellants argue that a certain check must
be performed that is not disclosed by Prahlad, this argument is not
commensurate with the scope of the claim. We find the fewer instances
limitation requires only that the end result of migration be fewer instances of
a duplicate digital asset associated with the target system.
As the Examiner finds, Prahlad discloses deduplication in a data
migration, and that the deduplication identifies duplicates among the digital
assets and causes fewer copies of the migrated asset to be associated with the
target system than are associated with the source system. (Final Action 9,
citing Prahlad 1 99, which describes “storing in secondary storage one or
more instances, but fewer than the total number of instances, of each data
block (or data object or data subobject) in a set of data (e.g., primary data).”)
Thus, we are not convinced of error in the Examiner’s finding with
respect to the disputed limitation.
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(II) migrating assets to a target system, cloud storage
Appellants contend the Examiner has erred in mapping Prahlad’s
cloud storage to the claimed “target system,” while the Specification and
dependent claims include cloud storage in a different context. (Appeal Br.
7—9; Reply Br. 2—6.) Appellants argue that, by doing this, the “Examiner
ignores a long-standing principle of patent law that different claim terms are
to be given different meanings.” (Appeal Br. 7.)
Appellants’ arguments hinge on the contention that the rejections are
based on Examiner’s “equating] the term ‘target system’ to ‘cloud storage
system.’” (Appeal Br. 7.) Appellants cite the Examiner’s remark in the
response section of the Final Action that “the specification presents the
‘target system’ as functionally equivalent to a ‘cloud storage system’” {id.,
citing Final Action 4), and contend that the secondary storage 165 in Prahlad
is disclosed as connected to clients 130 via a network (Reply Br. 3—5).
However, no claim limitation restricts the connection between the source
system and the target system. In the rejection at issue, the Examiner maps
Prahlad’s secondary storage computing device 165 and its local storage 115
as the target system. (Final Action 8—9; Answer 4—5.) Cloud storage (e.g.,
Prahlad’s 115 A, 115B, 115C) is not mapped to any element of claim 1, and
we agree with the Examiner that the cited local storage element 115 cited by
the Examiner in the rejection is disclosed in Prahlad as local to the target
system (secondary storage computing device 165.) (Final Action 4.) We
therefore agree with the Examiner that “arguments concerning functional
equivalence are moot because ... the Office action consistently maps ‘cloud
storage provider’ as a different claim term from ‘target system.’” (Answer
5.)
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Appellants argue and cite cases relating to situations where two
different claim terms are being considered. (Appeal Br. 7—8; Reply Br. 2—
3.) These cases instruct that, in such instances, claim terms are presumed to
have different meanings. However, claim 1 does not include the claim term
“cloud storage.” Contrary to Appellants’ argument, the situation here is not
one in which two claim terms are being conflated, thus these cases are
inapposite.
Appellants next argue the presence of cloud storage in other contexts
in the Specification and claims contradicts the Examiner’s findings with
respect to Prahlad’s cloud storage. (Appeal Br. 8—9; Reply Br. 3—6.) It is
certainly true that, as Appellants argue, their Specification and certain
dependent claims, such as claim 3, include cloud storage. These arguments
are again based on a contention that the Examiner maps Prahlad’s cloud
storage to some element of claim 1, which, as discussed supra, is
counterfactual.
With respect to the dependent claims, Appellants further note that
claim 3 recites that digital assets associated with the source system include
“digital assets stored remotely from the source system on a cloud storage
provider” and argue that, if the target system is a cloud storage provider, this
compels a reading in which no migration is required. (Appeal Br. 8—9;
Reply Br. 5.) However, nothing in claim 3 requires that the target system of
claim 1 not utilize cloud storage merely because the source system is
claimed to do so. In fact, the claim confirms that assets “associated” with a
given system according to the claim language may in fact be stored on cloud
storage rather than locally to the system, and thus bolsters, rather than
contradicts, the disclosure in Prahlad regarding cloud storage for assets
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associated with the claimed target system, used by the Examiner in the
rejections of other dependent claims (e.g., Appeal Br. 10-13). Additionally,
nothing in claim 3 requires a cloud storage provider used by a source system
to be the only cloud storage provider included in or used with the
information handling system of claim 3, and, thus, the presence of source
system cloud storage does not mean no migration would occur in the case of
target systems using cloud storage.
Appellants also cite the limitations of claims 4 through 62 as support
for their contention that the Examiner erred. (Appeal Br. 9; Reply Br. 3.)
These arguments are based again on the false premise that the Examiner has
mapped the cloud storage device of Prahlad to the target system. As the
Examiner finds, Prahlad discloses a target system which may have a storage
policy specifying that data be stored in cloud storage sites. (Final Action
10-11.) We are not persuaded that any of the findings with respect to the
rejection of dependent claims contradicts or in any way shows error in the
findings with respect to claim 1.
Therefore, we are not convinced of error in the Examiner’s rejection
of claim 1.
While Appellants assert that “[t]he claims argued separately below do
not stand or fall together” (Appeal Br. 4) we do not find any separate
arguments presented for dependent claims. Appellants refer to the rejection
2 We note with reference to claims 4—6, depending from claim 1, that the
claim term “the cloud storage provider” has no antecedent basis, and it is
unclear whether it is intended to refer to a cloud storage provider used for
storage of digital assets associated with a source system (such as that recited
in claim 3) or otherwise. In case of further prosecution, the Examiner may
consider whether this ambiguity requires further action.
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of dependent claims, but do not present any argument with respect to the
substance of the rejections of these claims. Rather, they are presented in
order to bolster the argument of Examiner error with respect to the rejection
of claim 1. To the extent any separate arguments have been presented in the
Appeal Brief regarding the dependent claims, these arguments depend solely
on the alleged mapping by the Examiner of “cloud storage provider” (in
Prahlad) to the claimed “target system,” addressed supra, and we are not
persuaded of error in the rejection of these dependent claims.
While Appellants make an additional argument with respect to claims
5, 12, and 19 in the Reply Brief (at 5—6), this argument is not timely, as it is
not presented in response to new findings or rejections by the Examiner. A
reply brief may not contain any new factual or legal arguments to rebut
Examiner rejections that could have been made in the principal appeal brief.
37 C.F.R. § 41.41(b)(1) (2012); Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative).
Therefore, we sustain the obviousness rejection of claims 1—21.
DECISION
The Examiner’s 35 U.S.C. § 102(b) rejection of claims 1—21 is
affirmed.
Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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