Ex Parte Jain

Patent Trial and Appeal Board

Jun 17, 2014

10995746 (P.T.A.B. Jun. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MANMOHAN JAIN
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Appeal 2011-009103
Application 10/995,7461
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 5-17, and 22-24. The Examiner indicates that
claims 4 and 18 would be allowable if rewritten in independent form (Final
Office Action 3). See n.3 infra. Appellant has previously canceled claims
19-21 and 25-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Computer Associates Think, Inc. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellant’s invention relates to a systems and methods of information
backup. Title.
Exemplary Claim
Claims 1 and 3, reproduced below, are representative of the subject
matter on appeal (emphasis added to contested limitations):
1. A system for backing up and restoring information,
comprising:
at least one computer system including information to be
backed up and restored;
a plurality of storage devices for receiving at least part of
the information to be backed up and for storing and backing up
the information; and
a controller including a scheduling system for allowing a
user to input into a job queue, a master job indicating one or
more portions of the information of the at least one computer
system to be backed up or restored, and
a job control system for:
identifying all of the storage devices that are not
currently running a job, wherein all of the storage
devices that are not currently running a job include at
least two storage devices;

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Jan. 10, 2011); Reply Brief (“Reply Br.,” filed May 9, 2011); Examiner’s
Answer (“Ans.,” mailed Mar. 9, 2011); Final Office Action (“Final Act.,”
mailed Sept. 15, 2010); and the original Specification (“Spec.,” filed
Nov. 22, 2004).
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in response to identifying all of the storage devices
not currently running a job, splitting the master job into a
number of smaller jobs by creating a plurality of parallel
streams and inputting the number of smaller jobs into the
job queue, wherein the number of smaller jobs is equal to
all of the storage devices that are not currently running a
job; and
concurrently starting the plurality of smaller jobs
for the at least two storage devices that were not
currently running a job.
3. The system as recited in claim 1, wherein
each of the plurality of smaller jobs correspond to
backup or restore of a single source entity.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Andrews US 4,644,496 Feb. 17, 1987
Langseth US 6,662,195 B1 Dec. 9, 2003
Taylor US 2007/0124349 A1 May 31, 2007
Rejections on Appeal3
Claims 1-3, 5-17, and 22-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Taylor, Langseth and
Andrews. Ans. 3.

3 We note “[c]laims 4 and 18 are objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims.” Final Act. 3. Accordingly, claims 4 and 18 are not before us on
appeal.
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GROUPING OF CLAIMS
Based on Appellant’s arguments (App. Br. 12-18), we decide the
appeal of the single rejection on the basis of the following claim groupings:
Group A: Claims 1, 2, 5-16, and 22-24 on the basis of
representative claim 1; and
Group B: Claim 3 and 17, on the basis of representative claim 3.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s arguments with respect to claims 1-3, 5-
17, and 22-24, and we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and
(2) the reasons and rebuttals set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Arguments. However, we highlight and
address specific findings and arguments regarding claims 1 and 3 for
emphasis as follows.
1. Rejection of Claims 1, 2, 5-16 and 22-24
Appellant argues (App. Br. 12-17; Reply Br. 2-6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Taylor, Langseth and Andrews is in error. These contentions
present us with the following issues:
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Issue 1
Did the Examiner err in finding:
(a) The cited prior art combination of Taylor, Langseth, and Andrews
is properly combinable because Taylor purportedly teaches away from the
invention claimed in claim 1, and because the modification suggested by the
Examiner would impermissibly change Taylor’s principle of operation?
(b) The cited prior art combination teaches or suggests the limitations
of “identifying all of the storage devices that are not currently running a
job,” and “splitting the master job into a number of smaller jobs by creating
a plurality of parallel streams and inputting the number of smaller jobs into
the job queue, wherein the number of smaller jobs is equal to all of the
storage devices that are not currently running a job,” as recited in claim 1?
Analysis
(a)
Appellant contends:
Even if the proposed Taylor-Langseth-Andrews
combination discloses each and every element of Appellant’s
claims (a fact expressly disputed below), Appellant respectfully
submits that one of ordinary skill in the art at the time of
Appellant’s invention would not have been motivated to
combine the disclosure of Taylor with the disclosure of
Langseth.
App. Br. 12. Further, Appellant contends the Examiner admits that Taylor
does not disclose claim limitations relating to splitting a large job into a
plurality of smaller jobs by the use of parallel streams, but instead relies
upon Langseth for this teaching. App. Br. 13. Still further, Appellant
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argues, “even to the extent that Langseth discloses such elements (a fact that
Appellant does not concede), Taylor teaches away from parallel data
streams.” Taylor purportedly teaches away from the claimed combination
because, according to Appellant, Taylor only generally describes processes
being run in parallel, “but then discloses that such methods are not
advantageous since ‘the implementations may be proprietary and are not
necessarily adaptable for import to another DBMS.’” App. Br. 13-14.
“Thus, Taylor actually teaches away from parallel streams since such
systems require ‘a dedicated disk or dedicated tape’ for each parallel
stream.” App. Br. 14 (citing Taylor ¶ 10). Finally, Appellant contends,
“such a modification of Taylor would impermissibly change the principle of
operation of the system disclosed in Taylor.” App. Br. 14.
We note, “‘[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.’” Ricoh Co., Ltd. v.
Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations
omitted). A reference does not teach away if it merely expresses a general
preference for an alternative invention from amongst options available to the
ordinarily skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Teaching an alternative or equivalent method, however,
does not teach away from the use of a claimed method. See In re Dunn, 349
F.2d 433, 438 (CCPA 1965).
Further, common sense teaches that familiar items may have obvious
uses beyond their primary purposes, and persons of ordinary skill can often
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fit the teachings of multiple patents together like pieces of a puzzle. KSR
Int’l Co. v. Teleflex Inc, 550 U.S. 398, 420 (2007). Thus, it is not necessary
that the references be physically combinable, without change, to render
obvious the invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983). The criterion instead is what these references would have meant
to a person of ordinary skill in the field of the invention. In re Gorman, 933
F.2d 982, 986 (Fed. Cir. 1991).
In the instant case on appeal, one of ordinary skill in the art would
recognize that combining the teachings and suggestions of Langseth’s use of
parallel data streams would be an alternative to Taylor’s “round robin”
scheme; the selection of either method amounting to an obvious matter of
engineering design choice depending on the application. We do not find
Taylor’s preference for piping data into one temporary data store at a time
rises to the level of discrediting or disparaging “splitting the master job into
a number of smaller jobs by creating a plurality of parallel streams”
(Claim 1), i.e., parallel processing as claimed by Appellants, or stream
processing as taught by Langseth.
Finally, Appellant has provided no evidence that combining such
teachings was “uniquely challenging or difficult for one of ordinary skill in
the art,” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007), nor has Appellant presented evidence that this
incorporation yielded more than expected results. We note attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
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1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).4
In the absence of persuasive evidence to the contrary, we fail to find
that Taylor teaches away from parallel processing as claimed by Appellants
(Claim 1). In particular, we fail to find Taylor teaches away from the
recitation in claim 1 of “splitting the master job into a number of smaller
jobs by creating a plurality of parallel streams,” as argued and claimed by
Appellant. (Id.)
(b)
Appellant contends the suggested combination of prior art does not
teach or suggest the steps of, “identifying all of the storage devices that are
not currently running a job” and, “in response to identifying all of the
storage devices not currently running a job, splitting the master job into a
number of smaller jobs by creating a plurality of parallel streams and
inputting the number of smaller jobs into the job queue, wherein the number
of smaller jobs is equal to all of the storage devices that are not currently
running a job,” as recited in claim 1.
In response to the Examiner’s reliance upon Langseth for the recited
“identifying” and “splitting” limitations, Appellant argues, “Langseth only
generally discloses splitting a sub-service ‘into many separate jobs, which it
then sends to the various data distribution servers 62.’” App. Br. 16 (citing
Langseth, col. 16, ll. 31-36). Further in this regard, Appellant contends,
“Langseth discloses identifying the devices that are ‘provided’ rather than

4 “Argument in the brief does not take the place of evidence in the record.”
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
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identifying all of the distribution servers that are not currently running a sub-
service and then sending the sub-service to only those distribution servers
that are not running a subservice.” App. Br. 16 (emphasis omitted).
Appellant further reiterates, “Langseth discloses sending a sub-service to
each distribution server of the system rather than identifying the distribution
servers that are not currently running a job and then splitting among these
storage devices.” Id.
In response, the Examiner finds (Ans. 15), and we agree, Langseth
teaches:
Data distribution control system 60 then splits this sub-service
into many separate jobs, which it then sends to the various data
distribution servers 62. If five data distribution servers 62 are
provided, then each sub-service may be split into five jobs. It is
also possible to split a sub-service into more or fewer jobs than
the number of data distribution servers 62.
Langseth col. 16, ll. 33-39. We agree with the Examiner’s finding that this
portion of Langseth teaches or at least suggests “splitting the master job into
a number of smaller jobs by creating a plurality of parallel streams and
inputting the number of smaller jobs into the job queue, wherein the number
of smaller jobs is equal to all of the storage devices that are not currently
running a job,” as recited in claim 1. Ans. 15.
With respect to Appellant’s argument that Langseth only discloses
devices that are “provided” rather than identifying all the distribution servers
that are not currently running a service and then sending the thereto (App.
Br. 16), we disagree. We disagree with Appellant because the Examiner
finds:
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One ordinary skill in the art, would easily conclude that
identifying and assigning a job to the available data distribution
server is same “identifying server that are not currently running
a job” as claimed.
Furthermore, Langseth discloses the load balancing and
fault tolerance process which clearly indentify [sic] the server
that can handle the load (not currently running the job) and the
server (standby not currently running the job) to be used in a
fail-over process when an active server goes down.
Ans. 15.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1. As Appellant has
not provided separate arguments with respect to independent claims 8
and 14, or dependent claims 2, 5-7, 9-13, 15, 16, and 22-24, rejected on the
same basis as claim 1, we similarly sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 103(a).
2. Rejection of Claims 3 and 17
Issue 2
Did the Examiner err in finding the cited prior art combination teaches
or suggests the disputed limitation of claim 3?
Analysis
Appellant contends (App. Br. 18) paragraph 10 of Taylor, cited by the
Examiner, merely discusses the “large amount of time it takes to perform
backups” by existing methods. To partially alleviate this problem, Appellant
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contends “Taylor discloses ‘segmenting export/backup files, and running
several processes in parallel.’” App. Br. 18 (citing Taylor ¶ 10). From this
disclosure, Appellant asserts “Taylor merely discloses that a file may be
broken into multiple segments that may then be streamed in parallel to
reduce the amount of time required to perform the backup.” App. Br. 18.
Appellant further contends, even if Taylor discloses multiple file segments
backed-up in parallel, the reference specifically indicates that the multiple
segments are related to a file, and therefore purportedly does not teach or
suggest ‘“each of the plurality of smaller jobs correspond to backup or
restore of a single source entity,’ as recited in Claim 3.” Id. Finally,
Appellant contends,
Taylor indicates that data from an ‘output data stream’ is
distributed into multiple data stores. As such[,] this portion of
Taylor also fails to disclose, teach, or suggest that ‘each of the
plurality of smaller jobs correspond to backup or restore of a
single source entity,’ as recited in Claim 3.
Id. (emphasis omitted).
During examination, a claim must be given its broadest reasonable
interpretation consistent with the Specification, as it would be interpreted by
one of ordinary skill in the art. Because the applicant has the opportunity to
amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.”).
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In response to Appellant’s contentions, the Examiner finds, according
to Appellant’s Specification, a “single source entity” as claimed (claim 3) is
supported by a file system or database. Ans. 16 (citing Spec. ¶ 78 and
particularly ¶ 84).5 The Examiner further finds, and we agree, this reading
of a “single source entity” (claim 3) is taught or at least suggested by Taylor.
Ans. 16 (citing Taylor ¶¶ 10-11, 18, and 24).6
Therefore, as a matter of claim construction, we agree with the
Examiner’s broad, but reasonable interpretation of the phrase “single source
entity,” and find the cited portions of Taylor teach or at least suggest this
limitation.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of dependent claims 3 and 17, argued
together by Appellant.

5 We note Appellant’s Specification discloses, “[i]n Step S8, the system
splits the master job into multiple smaller slave jobs, with each slave job
corresponding to a backup/restore of a single source entity (file system,
database, etc.). Spec. 26, ll. 6-7 (cited as ¶ 84 by the Examiner) (emphasis
added).
6 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
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REPLY BRIEF
We have considered arguments presented in the Reply Brief, but note
Appellant essentially repeats arguments presented in the Appeal Brief,
which we find not to be persuasive, for the reasons discussed, supra.
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 2-7) not in response to a shift in the Examiner’s position in the
Answer, we note that “[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived.” Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n
issue not raised by an appellant in its opening brief . . . is waived.” (citations
and quotation marks omitted)).
CONCLUSION
The Examiner did not err with respect to the unpatentability rejection
of claims 1-3, 5-17, and 22-24 under 35 U.S.C. § 103(a) over the
combination of the prior art of record, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1-3, 5-17,
and 22-24.
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

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