Ex Parte Todd et al

Patent Trial and Appeal Board

Mar 28, 2013

10024796 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHEN TODD, MICHEL FISHER, PAUL M. BOBER, and
STEVEN M. BLUMENAU
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Appeal 2010-009029
Application 10/024,7961
Technology Center 2100
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Before MARC S. HOFF, JEFFREY S. SMITH, and JOHN A. EVANS,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is EMC CORPORATION.
Appeal 2010-009029
Application 10/024,796

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Appellants’ invention is a method and apparatus for managing
workflows in a service provider environment in which a service provider
provides data storage resources to a customer. A customer is provided with a
list of types of work order requests based on a permission level associated
with the customer. The types of work order requests include at least one of
creating a mirror and restoring remote mirroring. A selection of type of work
order request is received from a customer. A database object is created based
on the work order request, and stored in a database (Spec. 2, 11).
Claim 1 is exemplary of the claims on appeal:
1. A method of managing workflows in a service provider
environment in which a service provider provides data storage resources to a
customer, comprising:
providing the customer with a list of work order requests to
select work to be performed based on a permission level defining a level of
access to the data storage resources allowed to the customer, the work order
requests comprising requests to manage configuration of the data storage
resources provided to the customer, wherein the list of the types of work
order requests comprises at least one of requests to:
create a mirror; or
restore remote mirroring;
receiving a selection of a type of work order request from the
customer prior to performance of work associated with the selection;
enabling the customer to generate a work order request of the selected
type in a work order request submission;
creating a database object based on the work order request; and
storing the database object in a database.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Peter US 5,884,284 Mar. 16, 1999
Bromley US 7,099,900 B1 Aug. 29, 2006

Appeal 2010-009029
Application 10/024,796

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Claims 1-22 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Peters.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peters in view of Bromley.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed May 18, 2009), the Reply Brief (“Reply Br.,” filed Sept.
11, 2009), and the Examiner’s Answer (“Ans.,” mailed Sept. 2, 2009) for
their respective details.

ISSUE
Appellants argue, inter alia, that Peters does not teach that the list of
types of work order requests includes at least one of creating a mirror and
restoring remote mirroring (App. Br. 5-9).
Appellants’ contentions present us with the following issues:
Does Peters teach including, among its list of types of work order
requests, at least one of creating a mirror and restoring remote mirroring?

PRINCIPLES OF LAW
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 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.
Appeal 2010-009029
Application 10/024,796

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ANALYSIS
CLAIMS 1-22
Claims 1 and 22 are the pending independent claims, and each recites
that a list of the types of work order requests “comprises at least one of
requests to: create a mirror; or restore remote mirroring.”
In order to determine whether Peters anticipates the subject matter of
the claims, we must construe the claim terms “mirror” and “mirroring.” The
Specification does not define the terms. Appellants’ invention, however, is a
“Workflow Database for Scalable Storage Service,” and the first sentence of
the Specification indicates that the invention “relates generally to
management of data storage resources” (Spec. 1). Given that context, we
agree with Appellants that the definition of “mirroring” cited in the
Microsoft Computer Dictionary is pertinent (App. Br. 8). We agree with
Appellants’ suggested definition of “mirroring” as “[i]n a network, a means
of protecting data on a network by duplicating it, in its entirety, on a second
disk” (App. Br. 8; Microsoft Computer Dictionary, Fourth Edition, p. 293).
Interpreting claim 1 in view of that definition, we find error in the
Examiner’s finding (Ans. 4) that Peters teaches the claimed mirroring. The
Examiner cites to several sections of Peters, but we find that none are
concerned with mirroring, i.e., duplicating data, in its entirety on a second
disk. Peters, column 10, lines 22-29 (Ans. 4), discloses customer service
functions not involving duplicating data on a second disk. Peters, column 6,
lines 32-37 (Ans. 10), is concerned with databases maintained for each CCI
office. Data duplication is not mentioned. Peters, column 3, lines 59-65
(Ans. 10), teaches that each CCI office has its own computer and each
computer has its own database. Mirroring is not disclosed. Peters, column 8,
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Application 10/024,796

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line 66 to column 9, line 4 (Ans. 10), is concerned with a print function and
the various items that may be printed. However, “printing a duplicate
invoice” does not correspond to duplicating data in its entirety on a second
disk. Peters, column 15, lines 1-7 (Ans. 10), discloses the printing of work
orders or service orders, but contains no teaching of disk data duplication.
We find that Peters does not teach any list of the types of work order
requests comprising at least one of creating a mirror or restoring remote
mirroring, as claims 1 and 22 require. We find as a result that Peters does not
teach all the limitations of claims 1-22. We will not sustain the Examiner’s
§ 102 rejection over Peters.

CLAIM 23
Claim 23 depends from independent claim 22. We find supra that
Peters does not teach all the limitations of claim 22. We have reviewed
Bromley, and we find that it does not remedy the noted deficiencies of
Peters.
We therefore find that Peters in combination with Bromley fails to
teach all the limitations of claim 23. We will not sustain the Examiner’s §
103 rejection.

CONCLUSIONS
Peters does not teach including, among its list of types of work order
requests, at least one of creating a mirror and restoring remote mirroring.

Appeal 2010-009029
Application 10/024,796

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ORDER
The Examiner’s rejection of claims 1-23 is reversed.

REVERSED

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