Ex Parte Henze et al

Patent Trial and Appeal Board

Jun 20, 2016

11065690 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/065,690 0212412005 Richard H. Henze
56436 7590 06/22/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82196204 2165
EXAMINER
CY GIEL, GARY W
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD H. HENZE,
PADMANABHA I. VENKITAKRISHNAN,
SCOTT MAROVICH, P ANKAJ MEHRA, and
SAMUEL A. FINEBERG
Appeal2014-009702
Application 11/065,690
Technology Center 2100
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009702
Application 11/065,690
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a Examiner's Final
Rejection of claims 1, 2, 4-14, 16-18, 21-29, 55, and 56. We have
jurisdiction under 35 U.S.C. § 6(b ). There was a prior decision, dated
August 10, 2011, which affirmed the Examiner's anticipation and
obviousness rejections. Claims 3, 15, 19, 20 have been canceled and claims
30-54 have been withdrawn from consideration pursuant to an election and
restriction requirement, filed May 28, 2007. We further note that Appellants
indicated "[a]pplicants have herein also canceled claims 30--54 without
prejudice or disclaimer." (Election 9). As a result, the Examiner should
cancel claims 30-54. 2
We affirm.
The claims are directed to a data retention system with a plurality of
access protocols. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for data retention with a plurality of access
protocols, comprising
a memory store accessible through a virtual address space,
a controller communicatively coupled to the memory
store, said controller to implement a memory access protocol for
accessing at least a first portion of the virtual address space and
a secondary storage protocol for accessing at least a second
portion of the virtual address space, and
1 Appellants identify that the real party in interest is Hewlett-Packard
Development Company, LP. (App. Br. 3).
2 See 37 C.F.R. 41.33(b)(l).
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an interface communicatively coupled to the controller,
and able to be communicatively coupled to a communications
link,
wherein a region of the virtual address space comprises
metadata for describing at least a selected region of the virtual
address space, and the controller is to convert an accessibility of
the selected region from a first access protocol to a second access
protocol based on use of different protocols, using the metadata.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Miyamoto et al. US 5,845,061 Dec. 1, 1998
(hereinafter "Miyamoto")
Amirisetty et al. US 2003/0018832 Al Jan.23,2003
(hereinafter "Amirisetty")
Pawlowski et al. US 7,055,014 Bl May 30, 2006
(hereinafter "Pawlowski")
REJECTIONS
The Examiner made the following rejections:
Claims 1, 6-14, 16-18, 21-29, 55, and 56 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pawlowski in view of
Amirisetty.
Claims 2, 4, 5, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pawlowski in view of Amirisetty and further in
view of Miyamoto.
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ANALYSIS
With respect to independent claims 23 and 55, Appellants contend
that the claims contain similar features to independent claim 1 and rely on
the same arguments directed to independent claim 1. (App. Br. 16-17).
Consequently, we select independent claim 1 as the representative claim for
the group and address Appellants' arguments thereto. 37 C.F.R.
§ 41.37(c)(iv).
With respect to independent claim 1, Appellants contend:
Pawlowski in view of Amirisetty does not teach or suggest
(wherein a region of the virtual address space comprises
metadata for describing at least a selected region of the virtual
address space, the controller is to convert an accessibility of the
selected region from a first access protocol to a second access
protocol based on use of different protocols, using the metadata).
(App. Br. 8).
The Examiner finds:
Pawlowski states, and the examiner has previously cited,
that the on-disk data structures (Pawlowski:Fig 4) both store
metadata that describes a region of the virtual address space
(Pawlowski:Col 11 :15-16, metadata section of each inode
describes the file.) and are located in the virtual address space
(Pawlowski :Col 8:16-19, storage space of disks is virtualized.).
Since metadata is stored in a disk structure and the storage space
of the disk structures is virtualized (i.e., a virtual address space),
Pawlowski clearly and unambiguously teaches "a virtual address
space having a region that includes metadata that describes a
selected region of the virtual address space."
(Ans. 2). The Examiner further finds:
[R ]ejection relies on a modified system of Pawlowski to
teach this feature. The examiner notes that Pawlowski is silent
with respect to where metadata relating to the protocol is stored
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within the system. However, as noted in the rejection,
Pawlowski does expressly disclose storing other types of
metadata on disk structures in the virtual address space. Given
the ubiquitous nature of virtual addressing and the virtualization
of storage, it would have been extremely obvious to a person of
ordinary skill in the art to store the protocol metadata in the
virtual address space for at least the reasons cited in the rejection.
Additionally, the appellant does not appear to address the
obviousness of the modified system of Pawlowski.
(Ans. 3). Additionally, the Examiner finds:
The appellant argues that the cited references fail to teach
wherein "the controller is to convert an accessibility of the
selected region from a first access protocol to a second access
protocol based on the use of different protocols, using the
metadata." The appellant additionally acknowledges that
"Amirisetty may be considered to teach modification of any
metadata disclosed by Pawlowski" (REMARKS: Page 15:Lines
5-6). The appellant then argues that the metadata relating to the
protocol use, in the virtual address space of the modified system
of Pawlowski is excepted from the reach of Amirisetty. The
appellant gives no rationale as to why Amirisetty may be
considered to change any metadata disclosed by Pawlowski, but
would be incapable of changing the metadata of the modified
system of Pawlowski. The examiner asserts that the combination
of the modified system of Pawlowski and Amirisetty teaches
wherin [wherein] the controller is to convert an accessibility of
the selected region from a first access protocol to a second access
protocol based on the use of different protocols, using the
metadata for at least the reasons cited in the rejection.
(Ans. 3-4).
In the Reply Brief, Appellants discuss the portions of the Pawlowski
reference relied upon by the Examiner in the response to arguments section
of the Examiner's Answer, and Appellants conclude that the Pawlowski
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reference clearly do not disclose the "wherein ... "limitation. (Reply Br. 5-
12). We disagree with Appellants' general contention. We further find that
Appellants' arguments are directed to the method of use of the system rather
than the claimed "system for data retention with a plurality of access
protocols." We agree with the Examiner that the Pawlowski reference
teaches and suggests plural access protocols and uses of metadata to identify
the areas for various protocols.
Additionally, as a matter of claim construction, we conclude a
question arises as to whether the contested functional limitations recited in
the "wherein" clause limit the scope of claim 1, because the contested
functional limitations do not further limit the structure of the apparatus of
claim 1.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). As addressed by the court
in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (2009),
The problem with construing "displaying real-time data" as used
in the claims of the '759 patent to preclude "contextually
meaningful delay" is that such a construction injects a use
limitation into a claim written in structural terms. "[A ]pparatus
claims cover what a device is, not what a device does." Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
(Fed.Cir.1990).
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Absent an express limitation to the contrary, any use of a device
that meets all of the limitations of an apparatus claim written in
structural terms infringes that apparatus claim . . . see also
Roberts v. Ryer, 91 U.S. 150, 157, 23 L.Ed. 267 (1875) ("The
inventor of a machine is entitled to the benefit of all the uses
to which it can be put, no matter whether he had conceived
the idea of the use or not."). Construing a non-functional
term in an apparatus claim in a way that makes direct
infringement tum on the use to which an accused apparatus
is later put confuses rather than clarifies, frustrates the ability
of both the patentee and potential infringers to ascertain
the propriety of particular activities, and is inconsistent
with the notice function central to the patent system.
Id. at 1091.
MPEP §2111,04 provides further guidance regarding the patentable
weight to be given to '"wherein'' clauses:
Claim scope is not limited by cfaim language that suggests or
makes optional but does not require steps to be performed, or by
clain1 language that does not lirnit a claim to a particular
structure. Hcn.vever, examples of claim language, although not
exhaustive, that may raise a question as to the 1irnHir1g effect of
the language in a claim are:
(A) ""adapted to" or '"adapted fr1r" clauses:
(ff) '"wherein" c la.uses: and
(C) "'whereby" clauses.
(fv1PEP § 211 L04 Ninth Edition, Rev. 7, Nov. 2015 emphasis added).
Dependent Claim 56
With respect to dependent claim 56, Appellants contend:
However, an address is not necessarily an offset from a base
address, in that, an address can include a base address.
Moreover, claim 1 does not merely recite an address being offset
from a base address, but instead recites the memory range of the
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virtual address space being determined from an incremental
address or offset from a base address of the memory range, and
further, the memory range of the virtual address space being
determined from an incremental address or offset from a base
address of the virtual address space.
(App. Br. 18). Appellants generally contend that the relied upon portion of
the Pawlowski reference does not teach the totality of the claimed invention.
(App. Br. 18-19).
The Examiner finds:
[T]he claim does not require that the address include a base
address and the claim is directed to referencing a memory range.
Any access to a disk or volume, such as the virtualized
disks/volumes shown in Pawlowski: Fig 1, requires referencing
a memory range of the virtual address space since, by definition,
the virtualized disks/volumes are within the memory range of the
virtual address space. In the broadest sense, when the memory
range spans the entire virtual address space, it is necessarily
defined as being determined from an offset from a base address
of the virtual address space.
(Ans. 4). When a claim covers several alternatives, the claim may be
unpatentable if any of the alternatives within the scope of the claim are
taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
2001 ). Appellants maintain that the Examiner presents the same arguments
as in the Final Rejection, and Appellants rely upon the arguments advanced
in the Appeal Brief at pages 17-19. (Reply Br. 14-15).
We agree with the Examiner that one of the alternatives is taught or
suggested by the Pawlowski reference. As a result, Appellants' argument
does not show error in the Examiner's legal conclusion of obviousness.
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Dependent claims 2, 4, 5, and 24
With respect to claims 2, 4, 5, and 24, Appellants rely upon the
arguments advanced with respect to independent claims 1 and 23. (App. Br.
19; Reply Br. 15). Because we found in no error in the Examiner's findings
and conclusion with respect to representative independent claim 1, we
similarly find Appellants' argument unavailing. As a result, we sustain the
rejection of claims 2, 4, 5, and 24.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4-14, 16-18, 21-29,
55, and 56 based upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1, 2, 4-14, 16-18, 21-29, 55, and 56.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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