Ex Parte Keeton et al

Board of Patent Appeals and Interferences

Oct 22, 2009

10150595 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIMBERLY KEETON and ERIC ANDERSON
____________

Appeal 2009-003942
Application 10/150,595
Technology Center 2100
____________

Decided: October 22, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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The Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1, 3-9, 11-21, 28-34, 40-42 and 44-53. Claims 2, 10, 22-27, 35-39
and 43 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The Appellants’ invention relates to a disk-based storage system in
which only some of the disk drives in an array may be powered on at any
one time for conserving power and reducing heat generation. The disk
drives may be also used to convert data from one format to another format
(Spec. 2-3).

The Illustrative Claims
Illustrative claims 1, 28, and 46 read as follows:
1. A method of accessing data storage comprising:

forming a schedule of operations based on requests
received from a plurality of storage clients, including
forming groups of the requests to be performed on one or
more disk drives in an array of disk drives;

selectively powering on and off disk drives in the array
of disk drives, at least one of the disk drives being
powered off while one or more disk drives are powered
on; and

accessing one or more disk drives for performing the
groups of requests while powered on in accordance with
the schedule, wherein at least some metadata and its
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associated underlying data are stored on separate disk
drives in the array.

28. A method of format conversion for storing data
comprising:

receiving data from a plurality of client systems, the data
being in a format generated by a client application;

storing the data in an array of disk drives; and

converting a format of a selected portion of the data in
the array from the format generated by the client
application to another format using processing
capabilities of the storage system.

46. A method of accessing data storage comprising:

receiving requests for storage operations from a plurality
of storage clients;

selectively powering on and off disk drives in an array of
disk drives in accordance with a predetermined sequence,
at least one of the disk drives being powered off while
one or more selected disk drives are powered on; and

accessing one or more of the disk drives while powered
on in accordance with the sequence, including
performing pending requests for the one or more disk
drives being powered on, wherein said predetermined
sequence is based at least in part on a determination of
which of said disk drives in said array are required by a
highest number of said pending requests.

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The Rejections
The following rejections are before us for review:
Claims 28-30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Edward.
Claims 1, 3-7, 40-41 and 44-53 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Weinman, Bohrer,
McMillan, and Yashiro.
Claims 8-9, 11-13, 15-21 and 42 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Weinman, Bohrer,
McMillan, Yashiro and Carlson.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Weinman, Bohrer, McMillan, Yashiro,
Carlson and Anderson.
Claims 31-34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Edward and Shaffer.

The References
The Examiner relies the following prior art as evidence in support of
rejections:
McMillan US 5,687,390 Nov. 11, 1997
Yashiro US 5,954,822 Sept. 21, 1999
Shaffer US 6,092,114 Jul. 18, 2000
Weinman US 2001/0047412 A1 Nov. 29, 2001
Carlson US 2003/01356109 A1 Jul. 17, 2003
Anderson US 6,704,838 B2 Mar. 9, 2004
(filed Oct. 7, 1998)
Edward K. Lee and Chandramohan A. Thekkath, Petal: Distributed Virtual
Disks, The Proceedings of the 7th International Conference on Architectural
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Support for Programming Language and Operating Systems (1996)
(hereinafter “Edward”)

II. ISSUES
Have the Appellants shown that the Examiner erred in finding that
Edward discloses “converting a format of a selected portion of the data in
the array from the format generated by the client application to another
format using processing capabilities of the storage system,” as recited in the
independent claim 28?
Have the Appellants shown that the Examiner erred in finding that the
combination of Weinman, Bohrer, McMillan, and Yashiro discloses
“wherein at least some metadata and its associated underlying data are stored
on separate disk drives in the array,” as recited in the independent claim 1?
Have the Appellants shown that the Examiner erred in finding that the
combination of Weinman, Bohrer, McMillan, and Yashiro discloses
“wherein said predetermined sequence is based at least in part on a
determination of which of said disk drives in said array are required by a
highest number of said pending request,” as recited in the independent claim
46?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). Appellant has the opportunity on appeal to the Board of Patent
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Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).

Scope of Claim
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). 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) (internal citations
omitted).

Anticipation
“[A]nticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571 (Fed. Cir. 1986). In rejecting claims under 35 U.S.C. § 102, “[a]
single prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation.” Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation
omitted).
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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
1. Bohrer discloses a scheme of selectively powering on or off one of
two tiers of disk drives based on a single request for accessing a storage unit
([0006], [0019]; Fig. 2).
2. Claim 46 recites “selectively power on or off . . . in accordance
with predetermined determined sequence . . . said predetermined sequence
is based at least in part on a determination of which of said disk drives in
said array are required by a highest number of said pending requests.” The
scope of the limitations is different from that of claim 1.

V. ANALYSIS
The Examiner has explained a prima facie case of obviousness in the
Examiner’s Answer. Therefore, we look to the Appellants’ Brief to show
error in the proffered prima facie case.

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Claims 28-30
With respect to claim 28, the Appellants contend Edward does not
teach or suggest “converting format of a selected portion of the data.” The
Appellants argued that:
Address translation as taught by Edward et al. is not equivalent
to converting a format of data from a format generated by a
client application to another format. This is at least because
addresses merely indicate the locations of the data and
translation of an address does not change the format of the data.
(App. Br. 33).
The Examiner maintains that Edward clearly discloses a virtual-to
physical address module to translate the virtual disk offsets to physical disk
addresses and “how virtual disk addressed used by clients are translated into
physical addresses.” (Ans. 22). We disagree.
Format is “the structure or appearance of a unit of data.” Microsoft
Computer Dictionary 173 (2nd ed. 1994). Converting a format of data to
another format is to change the structure or appearance of the data. We find
the Examiner’s interpretation of converting format is not reasonable to one
who is skilled in the computer art. Changing virtual disk offset to physical
address of a unit data does not change the structure or appearance of the unit
data. Thus, the teaching is not “converting format of selected portion of the
data” as claimed. The Examiner has not shown, and we do not readily find
where Edward discloses the argued limitations in the independent claim 28.
Dependent claims 29-30 contain the same deficiency and fall with the
base claim.
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Accordingly, we cannot sustain the anticipation rejection of claims
28-30.

Claims 1, 3-9, 11-21, 28-34, 40-42 and 44-53
With respect to claim 1, the Appellants contend that Yashiro teaches
parity data stored in separate disk drives. However, the parity data is merely
redundant data, and is not metadata stored in separate disk drives in the array
(App. Br. 19).
The Examiner maintains that “the broader definition of metadata (i.e.
data about data) shows that ‘metadata’ encompasses a greater variety of
instances and allows a wide range of possible choice including ‘parity
data.’” (Ans. 21). We disagree.
Parity is “the quality of sameness or equivalence, parity usually refers
to error-checking procedure in which the number of 1s must always be the
same –either even or odd—for each group of bits transmitted without error.”
Microsoft Computer Dictionary 291 (2nd ed. 1994). Parity bit is “an extra bit
used in checking for errors in groups of data bits transferred within or
between computer systems.” Id. at 292.
According to the above definition, parity data (parity bit) is the data
about a transferring process of a unit of data, i.e., an indicator about errors
when the unit of data transferred from one location to another. In essence,
parity data is data about the transfer of the data. Every transfer of data must
have parity data encompassed, but not necessarily have metadata. Thus,
“metadata” is not included as parity data. Again, we find that the Examiner
interpreted the term “metadata” broadly, but not reasonably to one of skill in
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the computer art. The Examiner has not shown, and we do not readily find
where Edward discloses argued limitations in the independent claim 1.
Accordingly, we cannot sustain the obviousness rejection of claim 1.
With respect to claim 46, the Appellants contend that “Bohrer et al.
does not teach or suggest powering on and off disk drives in an array of disk
drives in accordance with a ‘predetermined sequence’ as is recited in claim
46.” (App. Br. 22). The Appellants further contend that the cited portion of
Bohrer “merely teaches that the second tier disk is powered on in response to
a single request. However, the determination recited in claim 46 is based on
a highest number of pending requests.”
We agree with the Appellants’ contentions. We find that the Bohrer
reference, cited by the Examiner, expressly teaches powering on or off of a
tier of disk drives based on a request of accessing a unit (FF1). Bohrer does
not teach or fairly suggest powering on or off in accordance with a
predetermined sequence, or a highest number of pending requests as claimed
in claim 46.
Furthermore, it is the Examiner who bears the initial burden of
presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We find that the Examiner failed to bear his
initial burden of presenting a prima-facie case of unpatentability of claim 46
by improperly grouping claim 46 with claim 1 that has different scope (FF2),
and by rejecting claims 1, 3-9, 11-21, 28-34, 40-42 and 44-53 (Ans. 4) that
have different scopes without separately addressing the differences in the
claim language.
Accordingly, we cannot sustain the anticipation rejection of
independent claim 46.
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The rejection of dependent claims 3-9, 11-21, 28-34, 40-42, 44-45,
and 47-53 contain the same noted deficiencies.
Because we agree with at least one of the Appellants’ contentions, we
cannot sustain the obviousness rejection of claims 1, 3-9, 11-21, 28-34, 40-
42, and 44-53.

Claims 8-9, 11-21 31-34 and 42
The rejections of dependent claims 8-9, 11-21, 31-34, and 42 contain
the same noted deficiencies. Thus, the dependent claims 8-9, 11-21, 31-34,
and 42 fall with their base claims for the same reason.

VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that Edward discloses “converting a format of a selected portion
of the data in the array from the format generated by the client application to
another format using processing capabilities of the storage system,” as
recited in the independent claim 28.
We conclude that the Appellants have shown that the Examiner erred
in finding that the combination of Weinman, Bohrer, McMillan, and Yashiro
discloses “wherein at least some metadata and its associated underlying data
are stored on separate disk drives in the array,” as recited in the independent
claim 1.
We conclude that the Appellants have shown that the Examiner erred
in finding that the combination of Weinman, Bohrer, McMillan, and Yashiro
discloses “wherein said predetermined sequence is based at least in part on a
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determination of which of said disk drives in said array are required by a
highest number of said pending request,” as recited in the independent claim
46.

VII. DECISION
We reverse the Examiner’s rejections of claims 1, 3-9, 11-21, 28-34,
40-42, and 44-53.

REVERSED

erc

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