Ex Parte Tormasov

Board of Patent Appeals and Interferences

Sep 28, 2010

10293196 (B.P.A.I. Sep. 28, 2010)

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.
10/293,196 11/13/2002 Alexander Tormasov 2230.0350002/MBR/GSB 6066
54089 7590 09/28/2010
BARDMESSER LAW GROUP, P.C.
1025 CONNECTICUT AVENUE, N.W.
SUITE 1000
WASHINGTON, DC 20006
EXAMINER
GILLIS, BRIAN J
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
09/28/2010 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 ALEXANDER TORMASOV
____________________

Appeal 2009-012490
Application 10/293,196
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and THU A.
DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012490
Application 10/293,196

2
I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 16-51
and 55-67 under 35 U.S.C. § 134 (2002). Claims 1-15 and 52-54 have been
canceled. An oral hearing was conducted on September 22, 2010.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

A. INVENTION
According to Appellant, the invention relates to a distributed
transactional network data storage system, and more particularly, to highly
scalable distributed transactional network storage of information or data in a
computer network with a common namespace, guaranteed access level and
no dedicated server (Spec. 2, ll. ¶ [0002]).

B. ILLUSTRATIVE CLAIMS
Claim 16 is exemplary and is reproduced below:
16. A system of distributed file storage, comprising:

a plurality of servers providing distributed file storage to
a plurality of client computers;

the servers organized into a plurality of groups, wherein
the servers in each group are neighbors and wherein at least
some of the servers have neighbors from more than one group;

server-side software to enable delivery of files from the
servers to clients; and

Appeal 2009-012490
Application 10/293,196

3
a common file namespace corresponding to a tree,
wherein the files include directory files and common data files
within the common file namespace,

wherein access to the files stored in the distributed file
storage requires access to a predetermined number of servers N
from a subset of servers K to which data relating to the files has
been distributed in equal-sized pieces, the pieces generated
from the files using an (N,K) algorithm, such that the files can
be recovered from any N out of the K servers.

C. PRIOR ART
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Smolik US 6,119,005 Sep. 12, 2000
Lister US 6,167,447 Dec. 26, 2000
Douceur US 2003/0037094 A1 Feb. 20, 2003
Emens US 6,606,643 B1 Aug. 12, 2003
Sipple US 6,662,307 B1 Dec. 09, 2003
Kronenberg US 2004/0030778 A1 Feb. 12, 2004
Dutta US 6,789,076 B1 Sep. 07, 2004
Toombs US 2005/0132137 A1 Jun. 16, 2005
Coates US 6,952,737 B1 Oct. 04, 2005
Cia US 7,065,537 B2 Jun. 20, 2006

Rabin, “Efficient Dispersal of Information for Security, Load
Balancing, and Fault Tolerance,” 36(2) J. of Ass’n for Computing
Machinery 335-348 (April 1989).

Appeal 2009-012490
Application 10/293,196

4
D. REJECTION
Claims 16, 26, 28-30, 37, 50 and 51 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Coates in view of Rabin.
Claims 17, 22, 38-40, 44-47, 49, 58-61 and 63 stand rejected under 35
U.S.C. § 103(a) over the teachings of Coates in view of Rabin and Sipple.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Coates in view of Rabin, Sipple and Kronenberg.
Claim 21 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Coates in view of Rabin, Sipple and Toombs.
Claim 23 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Coates in view of Rabin, Sipple and Dutta.
Claims 24, 25, 31, 32, and 36 stand rejected under 35 U.S.C. § 103(a)
over the teachings of Coates in view of Rabin and Emens.
Claims 27 and 55-57 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Coates in view of Rabin and Douceur.
Claims 33-35 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Coates in view of Rabin, Emens, Sipple and Lister.
Claims 41-43 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Coates in view of Rabin and Lister.
Claim 62 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Coates in view of Rabin and Smolik.
Claim 48 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Coates in view of Rabin.
Appeal 2009-012490
Application 10/293,196

5
Claims 64, 65, and 67 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Coates in view of Rabin, Sipple, and Cha.
Claim 66 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Coates in view of Rabin, Sipple and Smolik.

E. SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection as permitted by 37
C.F.R. § 41.50(b).

II. ISSUE
The issue before us is whether instant claims particularly point out
and distinctly claim the subject matter which Applicants regard as the
invention.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Specification
1. Claim 1 as originally filed recites “said plurality of functionally
equal network servers organized into a plurality of groups where each said
server can participate in a couple of different groups and said servers inside
each said group are considered neighbors” (Spec. 23).
Appeal 2009-012490
Application 10/293,196

6
2. The Specification does not otherwise define “neighbors” (Spec. 1-
32).

IV. ANALYSIS
Appellant contends that “[t]he DOSM in Coates are not neighbors”
(App. Br. 21, emphasis omitted) and that “[d]escribing the DOSMs as
‘neighbors’ is meaningless semantics – there is no functionality behind such
a label” (id.). In particular, Appellant contends that “one DOSM does not
interact with any other DOSM” and “[t]he DOSMs are not aware of each
other” but instead “interact with all the intelligent storage nodes” (App. Br.
22). Thus, Appellant summarizes that “all of the nodes inside one storage
cluster might be considered ‘neighbors’ – but there is no intelligent storage
node belonging to more than one storage cluster, or to more than one
‘group,’ or not belonging to any group” (id.).
We reverse the outstanding rejection of the claims under 35 U.S.C.
§ 103(a), pro forma, because we conclude that at least independent claims
16, 23, and 30 are indefinite under 35 U.S.C. § 112, second paragraph, as
detailed under new grounds of rejection, infra. That is, the claims on appeal
must be reasonably understood without resorting to speculation to thereby
prevent the rejections of the claims over prior art from being based on
speculation and assumptions as to the scope of the claims. See In re Steele,
305 F.2d 859, 862 (CCPA 1962). Presently, the claims on appeal do not
adequately reflect what the disclosed invention is. We are therefore
Appeal 2009-012490
Application 10/293,196

7
declining from utilizing speculation and conjecture in an attempt to ascertain
the scope of the claims.
New Ground of Rejection
35 U.S.C. §112, Second Paragraph
We find that independent claims 16, 23, and 30 on appeal are so
abstract in recitation that the claims are deemed indefinite. That is, we
cannot determine the metes and bounds of the claims as required to ascertain
the scope of the respective claim. In particular, we are unclear as to what the
phrase “the servers in each group are neighbors and wherein at least some of
the servers have neighbors from more than one group” is to include, mean or
represent. Though a claim is read in view of the Specification, Appellant’s
Specification does not shed any light as to the meaning of the phrase. In
fact, we are unclear as to whether “neighbors” are in a group or not in a
group. That is, the Specification provides no definition for the term
“neighbors” (FF 2) except claim 1 of the Specification as originally filed
recites that “said servers inside each said group are considered neighbors”
(FF 1). Thus, we are unclear as to how “the servers have neighbors from
more than one group” (claim 16) when the Specification describes
“neighbors” as “servers inside each of said group” (FF 1-2).
Therefore, we find it unclear as to what the language of claims 16, 23
and 30 is directed. When the claims become so ambiguous that one of
ordinary skill in the art cannot determine their scope absent speculation,
such claims are invalid for indefiniteness. In re Steele, 305 F.2d at 862-63.
Appeal 2009-012490
Application 10/293,196

8
Here, we conclude that each of claims 16, 23, and 30 do not
reasonably apprise those skilled in the art of its scope. Because we conclude
that there are significant ambiguities with respect to the independent claims
and thus to each of the claims depending therefrom, we enter a new ground
of rejection under 35 U.S.C. § 112, second paragraph, against claims 16, 23,
and 30 and their dependent claims on appeal, pursuant to our authority under
37 C.F.R. § 41.50(b).
35 U.S.C. §112, First Paragraph
We also enter a new ground of rejection under 35 U.S.C. § 112, first
paragraph, against claims 16-51 and 55-67 for failing to comply with the
written description requirement because we find that the original disclosure
fails to describe the claimed invention such that a person with ordinary skill
in the art would have understood the Appellant was in possession of the
claimed invention.
In order to comply with the written description requirement, it must be
demonstrated that the patentee was in possession of the invention that is
claimed. Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The
Specification as originally filed describes that “said servers inside each said
group are considered neighbors” (FF 1). There is no description as to “the
servers have neighbors from more than one group” as recited in independent
claims 16, 23, and 30. As such, a person with ordinary skill in the art would
not have understood that the Appellant was in possession of the claimed
Appeal 2009-012490
Application 10/293,196

9
invention. Rather, we find this limitation to be new matter because it is not
described by the Specification as originally filed (FF 2).

VI. CONCLUSION OF LAW
We conclude that claims 16-51 and 55-67 are indefinite under 35
U.S.C. § 112, second paragraph and therefore reverse, pro forma, the §
103(a) rejection of those claims. We also conclude that claims 16-51 and
55-67 fail to comply with the written description requirement under 35
U.S.C. § 112, first paragraph.

VII. DECISION
We reverse, pro forma, the Examiner's rejection of claims 16-51 and
55-67 under 35 U.S.C. § 103(a).
In a new ground of rejection, we reject claims 16-51 and 55-67 under
35 U.S.C. § 112, second paragraph as being indefinite, and reject claims 16-
51 and 55-67 under 35 U.S.C. § 112, first paragraph for failing to comply
with the written description requirement.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2009). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
Appeal 2009-012490
Application 10/293,196

10
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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).

REVERSED -- 37 C.F.R. § 41.50(b)

peb

BARDMESSER LAW GROUP, P.C.
1025 CONNECTICUT AVENUE, N.W.
SUITE 1000
WASHINGTON, DC 20006