Ex Parte Wu et al

Patent Trial and Appeal Board

Feb 26, 2018

12730185 (P.T.A.B. Feb. 26, 2018)

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.
12/730,185 03/23/2010 David Tze-Si Wu RIV-0906-2 8627
87555 7590 02/28/2018
Riverbed Technology Inc. - PVFD
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 Fifth Street
EXAMINER
CONYERS, DAWAUNE A
Davis, CA 95618 ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
02/28/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j eannie @parklegal. com
wendy@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID TZE-SI WU, STEVEN McCANNE,
MICHAEL J. DEMMER, and NITIN GUPTA
Appeal 2016-008319
Application 12/730,185
Technology Center 2100
Before ERIC S. FRAHM, TERRENCE W. McMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 10, 11, and 17-21. Claims 3-9, 12-16, and 22-28 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Accordingly to Appellants, Riverbed Technology, Inc. is the real party in
interest. App. Br. 1.
Appeal 2016-008319
Application 12/730,185
Exemplary Claim on Appeal
Independent claim 1 is exemplary, and reads as follows (with the
disputed portion of the claim emphasized and bracketed lettering added):
1. A method of optimizing a block storage protocol read
access to a block storage device via a wide area network, the
method comprising:
selecting a first file system entity from a set of file
system entities, wherein the first file system entity is associated
with a first storage block that was previously requested, and
wherein the first file system entity is a file, a directory, or a file
system node;
[A] analyzing the first file system entity to identify a file,
a directory, or a file system node that is referenced in the first
file system entity and that is likely to be associated with at least
one future request;
identifying at least a second storage block corresponding
to the identified file, directory, or file system node;
retrieving the second storage block from a data storage
connected with the wide area network at a first network
location;
communicating via the wide area network the second
storage block from the data storage to a storage block cache at a
second network location; and
storing the second storage block in the storage block
cache.
Examiner’s Rejections
(1) The Examiner rejected claims 1,2, 10, 11, and 17-21 under
35 U.S.C. § 112, second pargraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention, namely the clause “that is likely to be
associated with at least one future request” recited in each of independent
claims 1,10, and 17. Final Act. 2-3. This rejection has been withdrawn by
the Examiner (Ans. 2), and is therefore not before us on appeal.
2
Appeal 2016-008319
Application 12/730,185
Accordingly, we do not address Appellants’ arguments (App. Br. 12-13) in
this regard herein.
(2) The Examiner rejected claims 1,2, 10, 11, 17, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Enko (US 2005/0102290 Al;
May 12, 2005) and Idei (US 2004/0117398 Al; published Jun. 17, 2004).2
Final Act. 3-14; Ans. 3-5.
(2) The Examiner rejected claims 19-21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Enko, Idei, and Vermeulen (US
2008/0313318 Al; published Dec. 18,2008). Final Act. 14-16.
2 Separate patentability is not argued for claims 1,2, 10, 11, 17, and 18, and
Appellants rely upon the arguments presented as to the “independent claims”
(see App. Br. 18, 19), i.e. claims 1,10, and 17, for the patentability of (i)
claims 2, 11, and 18 rejected as being obvious over Enko and Idei (see App.
Br. 13-19); and (ii) claims 19-21 as being obvious over Enko, Idei, and
Vermeulen (see App. Br. 15-18). Independent claims 1, 10, and 17 each
recited “analyzing [an] . . . entity to identify” a file, directory, or file system
(claim 1), database table or database system node (claim 10), or a file,
directory, file system node, database table, or database system node (claim
17) “that is referenced in the ... entity and that is likely to be associated
with at least one future request” (claims 1, 10, 17 (emphasis added)). We
select claim 1 as representative of claims 1, 2, 10, 11, 17, and 18. Because
Appellants rely on similar arguments as presented for the independent
claims for the patentability of dependent claims 19-21, we decide the appeal
of claims 19-21 on the same basis as we decide the appeal of claim 17 from
which claims 19-21 each depend.
3
Appeal 2016-008319
Application 12/730,185
Appellants ’ Contentions
Appellants primarily contend (App. Br. 15) that the Examiner erred in
rejecting the independent claims under 35 U.S.C. § 103(a) because the base
combination of Enko and Idei, and specifically Enko’s Figure 2 and/or
paragraphs 46 through 48, “do[es] not disclose the ‘analyzing. feature in
the independent claims” (i.e., limitation [A] recited in representative claim
I)-3
Issue on Appeal
Based on Appellants’ arguments in the Briefs (App. Br. 13-20; Reply
Br. 4-9), the following principal issue is presented on appeal:
Did the Examiner err in rejecting claims 1,2, 10, 11, and 17-21 as
being obvious because Enko, and thus the combination of Enko and Idei,
fails to teach or suggest limitation [A] recited in representative claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Rej. 3-16) in light
of Appellants’ arguments (App. Br. 13-19; Reply Br. 4-9) that the Examiner
has erred.
3 Notably, Appellants’ arguments in the briefs are focused on the language
of independent claim 1 (which recites operating on “a first file system
entity”), are not commensurate in scope with the language of independent
claims 10 and 17 (which recite operating on “a first database entity” (claim
10) and operating on “a first high level data structure entity” (claim 17)). In
addition, “the first file system entity” recited in claim 10 lacks antecedent
basis and also fails to further limit the “first database entity” (claim 10). For
these additional reasons, we select claim 1 as the representative claim.
4
Appeal 2016-008319
Application 12/730,185
Although Appellants’ Specification describes prefetching (as recited
in claim 1) as including at least two specific types of prefetching (Spec. ^ 40,
describing “reactive prefetching” and “policy-based prefetching”), claim l’s
recitation of identifying information “that is likely to be associated with at
least one future request” encompasses Enko’s rule based prefetching
technique shown in Figures 1, 2, and 4 and described in paragraphs 45^18,
53-56, and 69. We agree with the Examiner (Final Act. 4-7; Ans. 3-5) that
Enko’s disclosure of a prefetching process using prefetch rule table 112
shown in Figure 4, under the broadest reasonable interpretation of
Appellants’ claim 1 in light of the Specification, meets analyzing limitation
(limitation [A]) recited in claim 1 on appeal.
Our review of Appellants’ disclosed invention reveals that Appellants
disclose and claim prefetching generally (see Fig. 2A, step 230; Fig. 2B, step
265; 48, 52, 53, 60, 61, 63; see also App. Br. 6, 7, 9 citing Figure 2B and
]fl|61-64 as supporting the subject matter recited in limitation [A] of claim
1). Appellants’ Specification describes (i) Figures 2A and 2B as generally
showing prefetching methods (Spec. ^ 43); (ii) Figure 2A as showing a
method 200 of performing reactive prefetching (Spec. ^ 43); and (iii) Figure
2B as showing a method 255 of performing policy-based prefetching (Spec.
^ 60). Appellants’ claim 1 does not limit the analyzing and identifying a file
system entity “that is likely to be associated with at least one future request”
(claim 1, i.e., prefetching) to reactive prefetching and/or policy-based
prefetching. Instead, Appellants’ process “employ[s] a number of different
techniques to predict which additional storage blocks are likely to be
requested” (Spec. ^ 40). And, claim 1 does not even recite “prefetching.”
5
Appeal 2016-008319
Application 12/730,185
Appellants’ arguments (App. Br. 15-18) that Enko’s prefetching using
prefetch rule table 112 (see Enko, Fig. 4) does not “predict” that another file
is likely to be requested in the future are not persuasive, inasmuch as claim 1
merely recites identifying “that is likely to be associated with at least one
future request” (claim 1 (emphasis added)). See In reHiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts ... are not
commensurate with the claim scope and are therefore unpersuasive.”).
While the specification can be examined for proper context of a claim term,
limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. Apply Your self, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005). In the instant case on appeal, while Appellants’ Specification may
limit claim 1 to prefetching to identify files likely to be associated with a
future request (see Figs. 2A, step 230, Fig. 2B, step 265; 43, 48, 52, 53
and 43, 60, 61, 63), the method steps of analyzing and identifying a file
system entity “that is likely to be associated with at least one future request”
(claim 1, i.e., prefetching) are not limited to reactive prefetching and/or
policy-based prefetching as described in Appellants’ Specification (Spec. ^
40). Appellants’ disclosed reactive prefetching and policy-based
prefetching, and Enko’s disclosed rule based prefetching, are all types of
prefetching (analyzing and identifying a file system entity likely to be
associated with a future request as recited in claim 1), any of which are
encompassed by the process broadly set forth in claim 1 (which does not
even use the term “prefetching”).
Any new arguments in the Reply Brief not presented in the Appeal
Brief will not be considered absent a showing of good why the arguments
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
6
Appeal 2016-008319
Application 12/730,185
USPQ2d 1473, 1477 (BPAI 2010) (informative); see, e.g., Advanced
Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817, 833 (Fed.
Cir. 2010)) (stating that arguments made for the first time in a reply brief are
waived); see also Optivus Tech., Inc. v. Ion Beam AppTns. S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief... is waived.”) (citation omitted). For the first time in the
Reply Brief, Appellants argue (Reply Br. 5-6) that Enko’s meta-data is a
block, and not a file system entity (e.g., a file, directory, or file system node)
as claimed (see e.g., claim 1), thus searching a block is based on a file name
as taught by Enko is not the same as identifying a file in a file system entity
“that is likely to be associated with at least one future request” as claimed.
We consider such arguments to be untimely and not necessitated by any new
findings or determinations in the Answer.
In view of all of the foregoing, Appellants have not sufficiently shown
the Examiner erred in rejecting claim 1 for obviousness, and Appellants’
contentions that Enko fails to disclose, teach, or suggest limitation [A] are
not persuasive. Accordingly, we sustain the Examiner’s obviousness
rejection of representative claim 1, and claims 2, 10, 11, 17, and 18 grouped
therewith. For similar reasons, we also sustain the Examiner’s obviousness
rejection of claims 19-21 which are based on the same underlying
combination of Enko and Idei.
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting
representative claim 1 as being unpatentable under 35 U.S.C. § 103(a) over
the combination of Enko and Idei.
7
Appeal 2016-008319
Application 12/730,185
DECISION
The Examiner’s rejections of claims 1, 2, 10, 11, and 17-21 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8