Ex Parte Saake et al

Board of Patent Appeals and Interferences

Jun 12, 2012

10468181 (B.P.A.I. Jun. 12, 2012)

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.
10/468,181 02/05/2004 Mark Saake LGTO-102US 1632
30368 7590 06/12/2012
Deanna Santos
EMC Corporation
2831 Mission College Boulevard
Santa Clara, CA 95054
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
06/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK SAAKE, RICHARD RUFF, and
KURT EVERSON
____________________

Appeal 2009-010249
Application 10/468,181
Technology Center 2100
____________________

Before: ST. JOHN COURTENAY III, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010249
Application 10/468,181

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-6, 9-11, and 13-20. Claims 7, 8, and 12 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an object management system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An object management system including a computer
system having a first storage device, wherein the computer
system is configured to:

store an object on the first storage device, the object
having object data;

divide the object into a plurality of partitions, each of the
plurality of partitions including at least a portion of the object
data;

select from the plurality of partitions, based on a
selection criterion, a partition for migration; and

provide a copy of data comprising the selected migration
partition to a second storage device for storage as an individual
stored object, the second storage device being separate from the
computer system;

wherein the partition selected for migration is retained on
the first storage device, after the copy of data comprising the
selected migration partition has been provided to the second
storage device, unless and until the partition is selected for
purge from the first storage device based at least in part on a
purge criterion; the partition selected for migration is a first
partition; and the computer system is further configured to:
Appeal 2009-010249
Application 10/468,181

3

receive a data access request;

use the data access request to select for retrieval
from the second storage device a second partition
comprising data identified in the data access request; and

select for retrieval from the second storage device
a third partition not identified explicitly in the data
access request based on stored data indicating that the
third partition was retrieved in connection with a
previous operation in which the second partition was
retrieved.

(disputed limitations emphasized).

REJECTIONS
1. Claims 1-6, 9, 11, and 13 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over the combination of Kauffman (U.S.
Patent Number 5,857,203, Webber (U.S. Patent Number
5,367,698), Cabrera (U.S. Patent Number 6,269,382 B1), and Celis
(U.S. Patent Number 6,021,405).
2. Claim 10 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Kauffman, Webber, Cabrera,
Celis, and D’Souza (U.S. Patent Application Publication Number.
2004/0221289 A1).
3. Claims 14-18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Kauffman, Webber, Cabrera,
Celis, and Mattis (U.S. Patent Number 6,128,627).
Appeal 2009-010249
Application 10/468,181

4
4. Claims 19 and 20 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Kauffman, Webber, Cabrera,
Celis, and Peng (U.S. Patent Number 6,317,754 B1).

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have
taught or suggested the following disputed limitation:

select for retrieval from the second storage
device a third partition not identified explicitly in
the data access request based on stored data
indicating that the third partition was retrieved in
connection with a previous operation in which the
second partition was retrieved,

within the meaning of independent claim 1, and the
commensurate limitations recited in independent claims 11
and 13?
ANALYSIS
In the principal Brief, Appellants contend that the aforementioned
limitation (see Issue statement) is not taught or suggested by the cited
combination of references, and refer to the Specification for support:
See, e.g., the discussion of “predictive partition retrieval” in
connection with Figure 11, e.g., at paragraph [0063]
corresponding to page 15, line 33-page 16, line 2 of the
application as filed. Nothing in any of the four references
Appeal 2009-010249
Application 10/468,181

5
combined to reject claims 1, 11, and 13 suggests such learned
association of migrated data object partitions, much less
predictive or anticipatory retrieval of partitions that have not yet
been implicated explicitly in a data access request.
(App. Br. 6-7).
Although we decline Appellants’ invitation to read limitations from the
Specification into the claims, in reviewing the record, (including Appellants’
responsive arguments in the Reply Brief), we agree with Appellants that the
evidence the Examiner relies on does not support legal conclusion of
obviousness. Regarding the aforementioned limitation (See Issue
statement), in the rejection of claim 1 (Ans. 4-5), the Examiner specifically
relies on Celis, at column 5, line 66 – column 6, line 13, emphasizing the
first sentence:
Before the search engine generates a plan for a
subproblem, it searches the search data structure for an
existing plan that satisfies the subproblem’s required physical
properties. The search engine compares each context’s
required physical properties with the subproblem's required
physical properties in accordance with a five-fold compatibility
criteria. The criteria includes an incompatible criterion which
eliminates from consideration those contexts whose required
physical properties are incompatible with the requested required
physical properties. Otherwise, if the context’s required
physical properties are compatible but not the same as the
requested required physical properties, each plan associated
with the context is further searched. If no optimal plan exists,
the search engine then proceeds to generate a plan.
(Celis, col. 5, l.66-col. 6, l. 13) (emphasis added).

The Examiner further explains the basis for the rejection in the
“Response to Argument” section of the Answer:
Appeal 2009-010249
Application 10/468,181

6
While Appellant[s] assert[] the argument that Celis does
not disclose the method of “predictively retrieving data object
partitions that are not explicitly implicated by a data retrieval
request,” the Examiner notes that it would be paradoxical to
have something “explicitly implicated,” as something that is
explicitly set forth would not have to be implicated. Instead,
the Examiner turns to the recited claim language of the present
invention which recites the method “for retrieval from the
second storage device a third partition not identified explicitly
in the data access request.” Wherein Celis discloses that
subproblems of an input query are directed to specified
portions (i.e. partitions) of a database according to an
optimized execution plan (i.e. a partition not identified
explicitly in the data access request), it would have been
obvious to one of ordinary skill in the art that Celis indeed
discloses the aforementioned recited claim language.

(Ans. 13-14) (emphasis added).

The Supreme Court guides that “‘[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Here, the Examiner finds that “Celis discloses that subproblems of an
input query are directed to specified portions (i.e. partitions) of a database
according to an optimized execution plan.” (Ans. 13-14). However, we
observe that the portion of Celis relied upon is silent regarding stored object
(data) partitions and instead teaches “recursively partitioning the database
query into one or more smaller subproblems.” (Col. 5, ll. 46-47).
Even if arguendo the Celis query optimization would have taught or
suggested “select[ing] for retrieval from the second storage device a third
Appeal 2009-010249
Application 10/468,181

7
partition not identified explicitly in the data access request” (claim 1), as
proffered by the Examiner (Ans. 13-14), we do not find, and the Examiner
has not established, how Celis, in combination with the other cited
references, would have taught or fairly suggested that the selection for
retrieval is “based on stored data indicating that the third partition was
retrieved in connection with a previous operation in which the second
partition was retrieved,” within the meaning of claim 1.
On this record, we find that speculation would be required to affirm
the Examiner’s obviousness rejection. We decline to engage in speculation.
Moreover, we agree with Appellants’ responsive arguments in the Reply
Brief:
In the Answer, the Examiner asserts at pages 13-14 that
Celis’ teaching “that subproblems of an input query are directed
to specified portions (i.e., partitions) of a database according to
an optimized execution plan (i.e., a partition not identified
explicitly in the data access request)” constitutes “select[ing]
for retrieval from the second storage device a third partition not
identified explicitly in the data access request based on stored
data indicating that the third partition was retrieved in
connection with a previous operation in which the second
partition was retrieved,” as recited in claims 1, 11, and 13. In
doing so, the Examiner appears to equate a “specified portion”
of the database with an explicitly requested “partition” within
the meaning off claims 1, 11, and 13. However, in that case it
would be necessary for the Examiner to find in Celis some
teaching of retrieving a portion of the database that is not
specified, which the Examiner has failed to do. Instead, Celis
merely describes a particular way of processing a query to
retrieve data that has been requested explicitly in the query.
Celis, col. 4, line 55 - col. 5, line 13. No data not explicitly
requested in the query is retrieved. Celis’ teaching that
searching for and using a previously stored solution to a query
“subproblem” merely refers to reusing a previously developed
Appeal 2009-010249
Application 10/468,181

8
way to retrieve the same explicitly requested data and has
nothing to do with predictively retrieving data that has not (yet)
been requested explicitly, based on the fact that the same data
had been associated previously with data that was explicitly
requested. Therefore, the cited combination of Kauffman,
Webber, Cabrera, and Celis does not teach “select[ing] for
retrieval from the second storage device a third partition not
identified explicitly in the data access request based on stored
data indicating that the third partition was retrieved in
connection with a previous operation in which the second
partition was retrieved,” as recited in claims 1, 11, and 13, and
on that basis claims 1, 11, and 13 are believed to be allowable.
(Reply Br. 1-2).

Thus, we agree with Appellants that the Examiner has not established
that aforementioned teachings of Celis, in combination with the other cited
references, would have taught or fairly suggested the specific disputed
limitation recited in claim 1:
select for retrieval from the second storage
device a third partition not identified explicitly in
the data access request based on stored data
indicating that the third partition was retrieved in
connection with a previous operation in which the
second partition was retrieved,
(Claim 1) (emphasis added).

For essentially the same reasons argued by Appellants in the Briefs
(as discussed above), we reverse the obviousness rejection for independent
claim 1, and also for independent claims 11 and 13 which recite
commensurate limitations. For the same reasons, we also reverse the
Examiner’s obviousness rejections for each dependent claim on appeal.

Appeal 2009-010249
Application 10/468,181

9
DECISION
We reverse the Examiner’s §103 rejections of claims 1-6, 9-11, and
13-20.

ORDER
REVERSED

llw