Fashchik, Ran et al.

Patent Trials and Appeals Board

Feb 14, 2020

12164446 - (D) (P.T.A.B. Feb. 14, 2020)

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.
12/164,446 06/30/2008 Ran Fashchik TUC1P094/
IL920080001US1
1360
50548 7590 02/14/2020
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
ZELASKIEWICZ, CHRYSTINA E
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/14/2020 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAN FASHCHIK and EYAL GORDON
____________

Appeal 2019-002924
Application 12/164,446
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 4–7, 9–22, and 26–30. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed April 23, 2018) and Reply Brief (“Reply Br.,” filed February 28, 2019),
and the Examiner’s Answer (“Ans.,” mailed December 31, 2018) and Final
Office Action (“Final Act.,” mailed November 24, 2017). Appellant
identifies International Business Machines Corporation as the real party in
interest. Appeal Br. 2.
Appeal 2019-002924
Application 12/164,446

2
CLAIMED INVENTION
Appellant describes that the claimed invention “relates to methods,
systems and computer program products for performing data protection
operations, and more particularly, to a system and method for performing a
data protection operation” (Spec. ¶ 1).
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method for performing a
data protection operation, the method comprising:
[(a)] receiving at a controller a write instruction that is
associated with a writable entity; wherein the write instruction
comprises:
a writable entity identifier; and
data protection metadata indicative of a relevancy
of at least one data protection operation to be applied in
relation to the write instruction; and
[(b)] participating, by the controller, in a write operation,
the write operation comprising writing an information entity to
the writable entity specified by the writable entity identifier;
[(c)] determining whether the at least one data protection
operation is relevant to either or both of:
the write instruction; and
at least one other write instruction; and
[(d)] participating, by the controller, in an execution of
the at least one data protection operation in response to
determining the at least one data protection operation is relevant
to either or both of the write instruction and the at least one other
write instruction; and wherein the at least one data protection
operation comprises a separate action distinct from the write
operation.
Appeal 2019-002924
Application 12/164,446

3
REJECTIONS
Claims 1, 2, 4–7, 9–22, and 26–30 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 7, 11–22, and 28 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention. 2
Claims 11–20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 2, 4–7, 9–22, and 26–30 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 1, 2, 4–7, 9–19, 21, and 26–30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hinrichs et al. (US 2007/0028067 A1,
published Feb. 1, 2007) (“Hinrichs”) and Fuente (US 2006/0139697 A1,
published June 29, 2006).
Claims 20 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hinrichs, Fuente, and Nakashima et al. (US 7,640,388 B2,
issued Dec. 29, 2009) (“Nakashima”).
Alternatively, claim 21 is rejected under 35 U.S.C. § 102(b) as
anticipated by Hinrichs.

2 The Examiner has withdrawn the rejection of claims 1, 2, 4–6, 9, 10, 26,
27, 29, and 30 under 35 U.S.C. § 112, second paragraph, as indefinite.
Appeal 2019-002924
Application 12/164,446

4
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
Independent Claims 1, 11, and 21
The Examiner notes that independent claim 1 recites “determining
whether the at least one data protection operation is relevant to either or both
of: the write instruction; and at least one other write instruction,” and that
independent claims 11 and 21 include substantially similar recitations (Final
Act. 3–4).3 And the Examiner takes the position that the claims are properly
rejected under § 112, first paragraph, because the Specification “fails to
disclose how to determine whether the data protection operation is relevant
to either or both of the write instruction and the other write instruction” (id.
at 3).

3 Independent claim 11 requires “determining [whether] one or more data
protection operations are relevant to the write operation”; independent
claim 21 similarly requires “determining, based on the data protection
metadata, [whether] the at least one data protection operation is relevant to
the write instruction.”
Appeal 2019-002924
Application 12/164,446

5
The Specification describes in paragraphs 42–49 that the claimed
method includes determining if one or more data protection operations
should be executed in relation to an information entity, and further describes
that the determination can be responsive to data protection metadata that are
included in the currently received write instruction or in a previously
received write instruction (see Spec. ¶ 43). The Specification, thus, explains
that a write instruction’s inclusion of data protection metadata is “indicative
of a relevancy of at least one data protection operation to be applied in
relation to the write instruction” (id. ¶ 44).
Based on this disclosure, we agree with Appellant that the
Specification provides the requisite written description support such that a
person skilled in the art would understand that Appellant was in possession
of the claimed invention, including determining whether the data protection
operation is relevant to a write instruction, at the time the application was
filed (Appeal Br. 6–7; see also id. at 11–13). More specifically, we find that
the Specification provides sufficient evidence that the inventors were in
possession of the claimed functionality at the time of filing. See Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015)
(“The more telling question is whether the specification shows possession by
the inventor of how [the claimed function] is achieved.”). In particular, a
person of ordinary skill in the art, on reviewing the Specification, would
understand that the inventors were in possession of determining the
relevancy of data protection to a write operation by evaluating data
protection metadata included with the write instruction and/or a previous
write instruction.
Appeal 2019-002924
Application 12/164,446

6
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 11, and 21, and claims 2, 4–7, 9, 10, 12–20, 22, and
26–30, which depend therefrom, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement on this basis.
Dependent Claim 26
Claim 26 depends from claim 1, and recites that the method of claim 1
comprises “associating a portion of a memory volume with a data protection
scheme characterized by high resource consumption” and “associating a
second portion of the memory volume with a second data protection scheme
characterized by less resource consumption than the data protection
scheme.”
In rejecting claim 26 under 35 U.S.C. § 112, first paragraph, the
Examiner finds that the claim fails to comply with the written description
requirement because the Specification fails to disclose how the “associating”
operations are performed (Final Act. 4–5).
We agree with Appellant that a person of ordinary skill in the art
would understand at least from paragraphs 19 and 20 of the Specification
that Appellant was in possession of the claimed invention, including the
association operations, recited in claim 26, at the time the application was
filed (Appeal Br. 8–10). There, the Specification discloses that data
protection metadata may be used to match the data protection scheme to
various storage system constraints; thus, data protection operations may be
dynamically assigned to different portions of a single volume, i.e., a portion
of the memory volume may be associated with a data protection scheme,
based on the storage constraints applicable to a particular writable entity.
Appeal 2019-002924
Application 12/164,446

7
Accordingly, we do not sustain the Examiner’s rejection of claim 26
under 35 U.S.C. § 112, first paragraph.
Dependent Claim 27
Claim 27 depends from claim 1, and recites that “participating in the
execution of the relevant data protection operation, if such the relevant data
protection operation exists, and . . . not participating in the execution of the
relevant data protection operation, if such the relevant data protection
operation does not exist, reduces resource consumption associated with data
protection within a data storage system to which the write instruction
applies.”
The Examiner finds that claim 27 fails to comply with the written
description requirement because the Specification “does not disclose how to
perform this limitation and one of ordinary skill in the art would not know
how to reduce resource consumption” (Final Act. 5).
We agree with Appellant that a person of ordinary skill in the art
would understand, from the claim language, when read in light of the
Specification how resource consumption is reduced (Appeal Br. 10). That
is, by selectively applying data protection only to write instructions where
data protection metadata indicate such protection (i.e., when the data
protection operation is relevant to either or both of the write instructions, as
recited in claim 1), resource consumption is reduced as compared to a
default condition where data protection is applied to all write instructions
(id. at 10–11). Accordingly, we do not sustain the Examiner’s rejection of
claim 27 under 35 U.S.C. § 112, first paragraph.
Appeal 2019-002924
Application 12/164,446

8
Indefiniteness
Dependent Claim 7
Claim 7 depends from dependent claim 4, which depends, in turn,
from independent claim 1. Claim 7 recites, in pertinent part, that
“determining whether the at least one data protection operation is relevant to
the at least one other write instruction” comprises “evaluating a relevancy
metadata field of the write instruction” and “in response to determining the
relevancy metadata field indicates some or all of the data protection
operations are relevant to the other write instruction(s), determining which
of the other write instruction(s) relate to the writable entity.”
In rejecting claim 7 under 35 U.S.C. § 112, second paragraph, the
Examiner takes the position that claim 7 is indefinite because there is lack of
antecedent basis for “the data protection operations” and further because it is
unclear whether Appellant “intends the singular or plural versions” of “write
instruction” and “data protection operation” (Final Act. 7).
Appellant maintains, and we agree, that a person of ordinary skill in
the art would understand from the claim language, including specifically the
recitation of “at least one data protection operation” and “at least one other
write instruction,” that the claim encompasses possible plural data protection
operations and plural write instructions (Appeal Br. 18–19). As such, we
agree with Appellant that a person of ordinary skill in the art would
understand what is claimed when claim 7 is read in light of the
Specification, specifically including the claim language.
Therefore, we do not sustain the Examiner’s rejection of claim 7
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
Appeal 2019-002924
Application 12/164,446

9
definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”).
Independent Claims 11 and 21 and Dependent Claims 12–16, 18–20, and 22
In rejecting claim 11 under 35 U.S.C. § 112, second paragraph, the
Examiner takes the positon that the phrase “in response to determining one
or more data protection operations are relevant to the write operation”
renders claim 11 vague and indefinite because “there are no prior limitations
regarding determining the one or more data protection operations are
relevant to the write operation” (Final Act. 7). Claim 21 includes language
substantially similar to the language of claim 11, and stands rejected under
§ 112, second paragraph, based on substantially the same rationale applied
with respect to claim 11 (id.).
We agree with Appellant that a person of skill in the art would
understand what is claimed when these claims are read in light of the
Specification, including the claim language itself, i.e., that a determination is
made regarding whether one or more of the data protection operations are
relevant to the write operation, and that one or more of the data protection
operations are executed in response to the determination.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 112, second paragraph, of independent claims 11 and 21. We also do not
sustain the rejection of dependent claims 12–16, 18–20, and 22, which are
rejected based on their dependence from independent claims 11 and 21.
Appeal 2019-002924
Application 12/164,446

10
Dependent Claim 17
Claim 17 depends from claim 11, and recites that “the data protection
metadata is indicative of either or both of: at least one continuous data
protection operation; and at least one copy service operation.”
In rejecting claim 17 under 35 U.S.C. § 112, second paragraph, the
Examiner takes the position that claim 17 is vague and indefinite because
“continuous data protection operation” is not a term of art (Final Act. 8).
Appellant argues, and we agree, that a person of ordinary skill in the
art would understand what is claimed when claim 17 is read in light of the
Specification, namely that “continuous,” as recited in claim 17, means that
the data protection operation is “ongoing and without interruption” (Appeal
Br. 21).
Therefore, we do not sustain the Examiner’s rejection of clam 17
under 35 U.S.C. § 112, second paragraph.
Dependent Claim 28
Claim 28 depends from independent claim 1, and recites, inter alia,
that “the data protection metadata indicate a plurality of the data protection
operation(s) to be applied to the write instruction.” The Examiner rejected
claim 28 based on substantially the same rationale described above with
respect to claim 7 (Final Act. 8). Therefore, for the same reasons, we do not
sustain the Examiner’s rejection of claim 28 under 35 U.S.C. § 112, second
paragraph.
Patent Ineligible Subject Matter
Independent Claim 1 and Dependent Claims 2, 4–7, 9, 10, and 26–30
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
Appeal 2019-002924
Application 12/164,446

11
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
Appeal 2019-002924
Application 12/164,446

12
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.4,5
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,

4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
superseded USPTO guidance.
5 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the 2019
Revised Guidance in response to comments solicited from the public.
Appeal 2019-002924
Application 12/164,446

13
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that independent claims 1, 11, and 21 are directed to “receiving
data and analyzing said data, which is an idea of itself,” and, therefore, an
abstract idea (Final Act. 10) (citing Elec. Power Grp., LLC v. Alstom, S.A.,
830 F.3d 1350 (Fed. Cir. 2016)). The Examiner also determined that the
claims do not include additional elements that are sufficient to amount to
significantly more than the abstract idea itself, and that the dependent claims
fail to cure this deficiency (id. at 12–13).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Appeal 2019-002924
Application 12/164,446

14
Here, the Specification is titled “SYSTEM, METHOD AND
COMPUTER PROGRAM PRODUCT FOR PERFORMING A DATA
PROTECTION OPERATION,” and describes, in the Background section,
that, during the last decade, “[t]he importance of data has increased . . .
while the cost of data storage medium has decreased, thus motivating data
storage vendors to provide data protection schemes that are based upon
duplication of data” (Spec. ¶ 2). The Specification discloses that various
prior art methods and systems define mapping between address ranges and
data protection operations such that when information is written to a target
address, the applicable data protection scheme is determined by that target
address (id. ¶ 3). The Specification, however, explains that “[t]his [fixed]
mapping does not necessarily address dynamically changing needs and
storage limitations” (id. ¶ 4). Therefore, there is “a growing need to provide
a dynamic system, method and computer program product for data
protection” (id. ¶ 5).
The claimed invention is ostensibly intended to address this need by
providing a method for selectively applying data protection only to write
instructions where a relevant data protection operation exists (id. ¶¶ 6–9).
The Specification describes that data protection metadata, for determining
which data protection operation to execute, is associated with one or more
write instructions, and can be changed over time to facilitate a dynamically
changing data protection scheme (id. ¶ 16). The Specification, thus,
explains that by using “data protection metadata . . . to match the data
protection scheme to the information that is written,” data protection
operations may be dynamically assigned based on the type of data and/or the
Appeal 2019-002924
Application 12/164,446

15
storage system constraints applicable to the particular writable entity (id.
¶ 19).
Consistent with this disclosure, claim 1 recites a computer-
implemented method for performing a data protection operation comprising:
(1) receiving a write instruction, including a writable entity identifier and
data protection metadata, and writing an information entity to the writable
entity specified by the writable entity identifier, i.e.,
receiving at a controller a write instruction that is
associated with a writable entity; wherein the write instruction
comprises:
a writable entity identifier; and
data protection metadata indicative of a relevancy
of at least one data protection operation to be applied in
relation to the write instruction; and
participating, by the controller, in a write operation, the
write operation comprising writing an information entity to the
writable entity specified by the writable entity identifier
(steps (a) and (b)); (2) determining whether one or more data protection
operations should be executed by checking whether the currently received
write instruction, or a previously received write instruction, includes data
protection metadata, i.e., “determining whether the at least one data
protection operation is relevant to either or both of: the write instruction; and
at least one other write instruction” (step (c)); and (3) executing the at least
one data protection operation in response to the determination, i.e.,
participating, by the controller, in an execution of the at
least one data protection operation in response to determining the
at least one data protection operation is relevant to either or both
of the write instruction and the at least one other write
instruction; and wherein the at least one data protection operation
comprises a separate action distinct from the write operation
Appeal 2019-002924
Application 12/164,446

16
(step (d)). Applying the 2019 Revised Guidance, we are persuaded that,
even if claim 1 recites an abstract idea, the Examiner has not sufficiently
established that the claim fails to improve an existing technology, i.e., data
storage systems implementing data protection (and, therefore, in the context
of the 2019 Revised Guidance, that the claim fails to integrate the abstract
idea into a practical application) or that the claim otherwise fails to recite
significantly more than an abstract idea.
The Examiner determined here, as described above, that the pending
claims are directed to “receiving data and analyzing said data.” Yet, the
method of claim 1 goes beyond merely receiving and analyzing data. Using
data protection metadata, the claimed method also selectively applies data
protection to write instructions where data protection metadata indicate such
protection is relevant to the write instruction.
Appellant asserts that by avoiding unnecessary data protection
operations, the claimed invention reduces overhead (i.e., the computational
cost of performing data protection where such protection is not relevant to
the write instruction) and facilitates more efficient resource (i.e., storage)
consumption, and, thus, improves the functionality of the data storage
system as compared to conventional data protection approaches (Appeal
Br. 29–30). Appellant also maintains that “the presently claimed data
protection, through use of data protection metadata, enables more efficient
protection of data and improves the precision of data protection” (id. at 32;
see also id. at 35 (asserting that “the claimed subject matter improves data
storage systems implementing data protection via improving computational
efficiency/resource consumption in the process of protecting data, without
sacrificing [the] quality of the ultimate data protection result”)).
Appeal 2019-002924
Application 12/164,446

17
Responding to Appellant’s arguments, the Examiner asserts in the
Answer, “[t]here is no improvement to protection schemes; only the
application of metadata to determine whether a data protection operation
should execute (Ans. 10–11). The Examiner also opines, “[a]pplying
metadata does not result in more efficient resource consumption” (id. at 11).
But, the Examiner provides no persuasive argument or technical reasoning to
support this position; nor does the Examiner otherwise explain why
Appellant’s contrary position is unreasonable or unsupported.
The Examiner has not adequately addressed whether the claimed
invention, viewed in light of Appellant’s Specification, entails an
improvement in data storage systems implementing data protection. And, as
such, the Examiner has not sufficiently established that claim 1 is directed to
patent-ineligible subject matter. Therefore, we do not sustain the
Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101. For the
same reasons, we also do not sustain the Examiner’s rejection of claims 2,
4–7, 9, 10, and 26–30, which depend therefrom.
Independent Claim 21 and Dependent Claim 22
Claim 21 includes language substantially similar to the language of
claim 1, and stands rejected based on the same rationale applied with respect
to claim 1 (Final Act. 10–13). Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 101 of claim 21, and claim 22, which depends
therefrom, for the same reasons set forth above with respect to claim 1.
Independent Claim 11 and Dependent Claims 12–20
We are not persuaded that the Examiner erred in rejecting independent
claim 11 under 35 U.S.C. § 101 as directed to non-statutory subject matter,
i.e., to a signal per se (which does not fall within any of the four categories
Appeal 2019-002924
Application 12/164,446

18
of patent eligible subject matter — process, machine, manufacture, or
composition of matter). Instead, we agree with the Examiner that the phrase
“computer usable medium,” when given its broadest reasonable
interpretation, includes signals. See Ex parte Mewherter, 107 USPQ2d
1857, 1862 (PTAB 2013) (precedential) (finding a machine readable storage
medium non-statutory under § 101).
Referencing paragraphs 55 and 56, Appellant asserts that the
“computer usable medium” of claims 11–20 is described in the Specification
as a “tangible computer usable medium” (Appeal Br. 23–24). And
Appellant argues that the “disclosure, which sets forth only tangible
examples of computer usable/readable media, and omits any reference or
suggestion to intangible examples (e.g.[,] signals) provides some
constraining impact on the broadest reasonable interpretation of a ‘computer
usable medium’ in the context of the claims” (id. at 24). Yet, paragraphs 55
and 56 merely describe what the “computer usable medium” can be; they do
not preclude transitory signals. Appellant also acknowledges that
“claims 11–20 do not expressly limit the claimed ‘computer usable medium’
to the described ‘tangible computer usable medium’” (id.).
In the absence of any express intent to exclude transitory signals in
either the claim language or the written disclosure, we are not persuaded of
Examiner error. Therefore, we sustain the Examiner’s rejection of
claims 11–20 under 35 U.S.C. § 101.
Appeal 2019-002924
Application 12/164,446

19
Obviousness
Independent Claim 1 and Dependent Claims 2, 4–7, 9, 10, and 26–30
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because Hinrichs, on which the Examiner
relies, fails to disclose or suggest
participating, by the controller, in an execution of the at least one
data protection operation in response to determining the at least
one data protection operation is relevant to either or both of the
write instruction and the at least one other write instruction; and
wherein the at least one data protection operation comprises a
separate action distinct from the write operation[,]
i.e., limitation (d), as recited in claim 1 (Appeal Br. 40–49).
Hinrichs is directed to an apparatus, system, and method for utilizing
data protection by a storage device to minimize loss of sensitive data on a
storage medium (Hinrichs, Abstract). Hinrichs discloses that the protection
apparatus protects an allocated area of data on a storage medium by
preventing unauthorized write-type commands to the protected area (id.
¶ 72). Thus, in one embodiment, the protection apparatus defines a base
key, and access to the protected area is granted to the host computer (for
performing a write operation) only if a passkey supplied by the host matches
the base key (id. ¶¶ 73, 74).
The Examiner cites paragraph 74 of Hinrichs as disclosing the argued
limitation (Final Act. 15). However, we agree with Appellant that there is
nothing in paragraph 74 of Hinrichs that discloses or suggests “participating
. . . in an execution of the at least one data protection operation in response
to determining the at least one data protection operation is relevant to either
or both of the write instruction and the at least one other write instruction,”
as recited in claim 1 (Appeal Br. 40–41). Instead, Hinrichs merely discloses
Appeal 2019-002924
Application 12/164,446

20
providing access to a protected area so that data may be written to the area
based on a comparison of a passkey to a base key, i.e., “participation in a
write operation, not participation in a separate and distinct data protection
operation as required by claim 1” (id. at 41).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2, 4–7, 9, 10, and 26–
30. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious”).
Independent Claims 11 and 21 and Dependent Claims 12–19
Independent claims 11 and 21 include language substantially similar
to the language of claim 1, and stand rejected based on the same rationale
applied with respect to claim 1 (Final Act. 17, 19–20). Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent
claims 11 and 21, and claims 12–19, which depend from claim 11, for the
same reasons set forth above with respect to claim 1.
Dependent Claims 20 and 22
Claims 20 and 22 depend from claims 11 and 21, respectively. The
rejection of these dependent claims does not cure the deficiency in the
rejection of claims 11 and 21. Therefore, we do not sustain the Examiner’s
rejection of claims 20 and 22 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to the independent claims.
Anticipation
The law is well settled that to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as
Appeal 2019-002924
Application 12/164,446

21
required by the claim, must be found in a single prior art reference, either
expressly or under principles of inherency. See, e.g., Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677–78 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
As described above with respect to Examiner’s obviousness rejection,
Hinrichs does not disclose
a controller, communicatively coupled to the memory unit and
the writable entity to participate in an execution of . . . the at least
one data protection operation, in response to determining, based
on the data protection metadata, the at least one data protection
operation is relevant to the write instruction[,]
as recited in claim 21. Therefore, we do not sustain the Examiner’s rejection
of claim 21 under 35 U.S.C. § 102(b) as anticipated by Hinrichs.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
9–22, 26–
30
112, first
paragraph
Written
Description
1, 2, 4–7,
9–22, 26–
30
7, 11–22,
28
112, second
paragraph
Indefiniteness 7, 11–22,
28
1, 2, 4–7,
9–22, 26–
30
101 Eligibility 11–20 1, 2, 4–7,
9, 10, 21,
22, 26–30
1, 2, 4–7,
9–19, 21,
26–30
103(a) Hinrichs, Fuente 1, 2, 4–7,
9–19, 21,
26–30
Appeal 2019-002924
Application 12/164,446

22
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20, 22 103(a) Hinrichs, Fuente,
Nakashima
20, 22
21 102(b) Hinrichs 21
Overall
Outcome
11–20 1, 2, 4–7,
9, 10, 21,
22, 26–30
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART