Ex Parte Kishi et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10972929 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY T. KISHI, MARK A. NORMAN, and
JONATHAN W. PEAKE
____________

Appeal 2009-008852
Application 10/972,929
Technology Center 2100
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-10, 12-30, and 32-54. Claims
11, 31, and 55 have been canceled. The Appellant appeals therefrom under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
The invention at issue on appeal relates generally to data storage in
data processing with the efficient data management with in a hierarchical
data storage system. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 11, which further illustrates the invention, follows.
1. A data storage system comprising:
a processor;
a host interface coupled to said processor; and
a memory unit coupled to said processor, wherein said
memory unit comprises: a storage management engine; and a
policy based migration engine configured to: determine whether
data stored on a first removable storage media satisfies a
migration condition of a reclamation migration policy,
wherein said reclamation migration policy comprises a
policy to be used to copy data from one or more of said first
removable storage media to one or more of said second
removable storage media and reclaim said one or more first
removable storage media;

1 The claims in the Appendix to both Appeal Briefs are incorrect and do not
reflect the amendments entered on Oct. 3, 2007.
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and, if said migration condition is satisfied, cause said
data to be migrated to a second removable storage media.

C. REFERENCES
The Examiner relies on the following references as evidence:
Bish US 6,463,513 B1 Oct. 8, 2002
Gibble US 2004/0044845 A1 March 4, 2004

D. REJECTIONS
Claims 1-4, 9, 10, 12-16, 18, 21-26, 30, 32-36, 42-46, and 52-
54 stand rejected under 35 U.S.C. § 102 over Bish.
Claims 5-8, 17, 19, 20, 27-29, 37-41, and 47-51 stand rejected
under 35 U.S.C. § 103 over Bish in view of Gibble.

PRINCIPLES OF LAW
35 U.S.C. §102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
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it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.

Obviousness under §103
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a patent . . .
unless more ingenuity and skill were required in making or
applying the said improvement than are possessed by an
ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute
the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v.
Greenwood, 52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

ANALYSIS
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
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With respect to claims 1-4, 9, 10, 12-16, 18, 21-26, 30, 32, 32-36, 42-
46, and 52-54, Appellants do not set forth separate arguments for
patentability of each of the claims. Therefore, we select independent claim 1
as the representative claim and will address Appellants arguments thereto.
Appellants argue that the migration policy of Bish is with respect to
the high-speed cache and backing storage in libraries 14 and 15 (App. Br. 4),
but independent claim 1 recites a "reclamation migration policy" that
comprises a policy to be used to copy data from one or more of a first
removable storage media to one or more of a second removable storage
media and to reclaim the one or more first removable storage media. (Id.)
We find Appellants’ argument to be unpersuasive since It does not
distinguish the language of independent claim 1 from the teachings of the
Bish reference as applied by the Examiner.
Bish discloses that:
storage is made available by migrating all but one of the
redundant copies of the data volume having identically updated
synchronization tokens to backing storage on a high priority
basis. Thus, while only one of the libraries maintains the data
volume in its cache storage on the low migration priority basis,
the other library(s) migrate the data volume to the backing
storage and employ the freed cache storage for other data
volumes. The high priority migration is switched among the
libraries so that each has different non-migrated data in cache
storage which is quickly accessible. As the result of the early
migration, the cache storage of each of the libraries is no longer
nearly identical, but rather, a substantial portion of the cache
storage of each library is employed for non-migrated data,
effectively increasing the availability of cache storage for the
attached hosts and directors.

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(Col. 7, ll. 15-29). Clearly, the "freed cache storage" has been reclaimed for
subsequent use. Bish further discloses that:

In response to its selection as a primary library, the library
controller 30 of the data storage library 14-15 places the data
volume in the cache storage 40 at a low priority of the
predetermined sequence, so that the data volume is maintained
in cache storage and is migrated only on a low priority basis.

(Col. 7, ll. 41-46). Bish further discloses:

Thus, referring additionally to FIG. 2, each data storage library
comprises a "virtual" library which includes a non-volatile
cache storage 40, such as a disk drive and/or an electronic non-
volatile storage such as "flash" memory, for maintaining the
data volumes that have been recently accessed, and includes a
backing storage, such as removable data storage media having
data volumes 18, for storing data 45 volumes for infrequent
access.

(Col. 4, ll. 38-45). We find that both the disk drive and electronic
nonvolatile storage disclosed by Bish are types of removable memory
media.

We disagree with Appellants’ contention and find that independent
claim 1 does not recite any of the specifics of the "removable storage media"
which may be magnetic tape, optical or magnetic disks, semiconductor
memory/chips or any other type of known media. We further note that each
type of storage media has different characteristics with respect to the
removability of the storage media. We further find that the "removable"
limitation in independent claim 1 is merely nonfunctional descriptive
material with respect to the memory media where the limitation provides no
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function in the claimed "data storage system." Since we find that the
memory media of the cache memory of Bish is a type of removable storage
media and Bish discloses various priorities for data migration, we therefore
agree with the Examiner that Bish teaches the claimed "reclamation
migration policy comprises a policy to be used to copy data from one or
more of said first removable storage media to one or more of a second
removable storage media and to reclaim the one or more first removable
storage media" (App. Br. 4).
Appellants argue that "Bish teaches away from Applicants' claimed
invention of a migration policy to migrate data from a first removal storage
media to a second removable storage media to reclaim the first removable
storage media." (App. Br. 5). We find Appellants’ argument to be
unpersuasive of error in the Examiner's showing of anticipation of
representative claim 1. “‘[T]eaching away’ is irrelevant to anticipation.”
Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008)
(citation omitted).
With respect to the dependent claims, Appellants further contend that
"neither Bish or Gibble, taken alone or in combination, disclose or suggest a
policy based migration engine…." (App. Br. 5). We disagree with
Appellants sweeping argument since the Examiner's rejection is based
merely upon anticipation and the Gibble reference is not applied.
Furthermore, Appellants' argument merely reiterates the language of the
claim and does not provide substantive arguments for patentability. See 37
C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“we
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hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). We find the varied priorities of Bish to be pools
along with the primary and secondary storage libraries as relied upon by the
Examiner. (Ans. 4). Therefore, we find Appellants argument to be
unpersuasive of error in the Examiner's showing of anticipation.

Obviousness
With respect to claims 5-8, 17, 19, 21, 27-29, 37-41, and 47-51,
Appellants argue that Gibble also teaches away from applicants claimed
invention as discussed with respect to the Bish reference under anticipation.
The Examiner identifies that Appellants have not made a proper showing of
a teaching away (Ans. 13-14). We agree with the Examiner that Appellants
have not shown Bish or Gibble “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.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (citation and internal quotation marks
omitted). Therefore, we find Appellants’ argument to be unpersuasive of
error in the Examiner's showing of obviousness. Appellants merely reiterate
the language asserted to be lacking with respect to the anticipation rejection
(Ans. 6) and provide no substantive argument to distinguish the prior art
teachings as applied by the Examiner. Since we found no error in the
Examiner's showing of anticipation, we similarly find Appellants’ argument
to be unpersuasive of error in the Examiner's showing of obviousness.
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CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner's showing of (1) anticipation of independent claim 1, and (2)
obviousness for claims 5-8, 17, 19, 21, 27-29, 37-41, and 47-51.

VII. ORDER
We affirm the anticipation rejection of claims 1-4, 9, 10, 12-16, 18,
21-26, 30, 32-36, 42-46, and 52-54; and the obviousness rejections of claims
5-8, 17, 19, 20, 27-29, 37-41, and 47-51.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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