Gary W. Grube et al.

Patent Trials and Appeals Board

Sep 16, 2020

12850606 - (D) (P.T.A.B. Sep. 16, 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.
12/850,606 08/04/2010 GARY W. GRUBE CS00187 1165
89322 7590 09/16/2020
Garlick & Markison (PST)
100 Congress Avenue, Suite 2000
Austin, TX 78701
EXAMINER
GUYTON, PHILIP A
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
MMURDOCK@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY W. GRUBE and TIMOTHY W. MARKISON
____________

Appeal 2018-008923
Application 12/850,606
Technology Center 2100
____________

Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.

JIVANI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–6 and 11–16,2 which are all the
claims pending in the present application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 2.
2 Claims 7–10 and 17–20 are cancelled. Appeal Br. 16, 18.
Appeal 2018-008923
Application 12/850,606

2
STATEMENT OF THE CASE
The present application relates to data storage solutions. Spec. 1:15.
Claim 1 is illustrative and reproduced below with disputed limitations
emphasized.
1. A method for execution by a processing module of
a computing device, the method comprises:
generating data for storage;
selecting a plurality of dispersed storage (DS) units
as target DS units, wherein the plurality of DS units
selected as target DS units is limited to a subset of
available DS units estimated to meet requirements
associated with a current storage sequence;
transmitting a solicitation message to the target DS
units, the solicitation message soliciting the target DS
units to store encoded data slices of the data;
receiving favorable responses from at least some of
target DS units;
selecting DS units from the at least some of the
target DS units providing a favorable response to produce
a set of selected DS units;
determining an error coding dispersal storage
function for the set of selected DS units;
encoding a data segment of the data in accordance
with the error coding dispersal storage function to produce
a plurality of encoded data slices; and
outputting the plurality of encoded data slices to the
set of selected DS units for storage therein.

Appeal 2018-008923
Application 12/850,606

3
The Rejections
Claims 1–5 and 11–15 stand rejected under 35 U.S.C. § 103(a) over
Ejiri et al. (US 2006/0036820 A1; publ. Feb. 16, 2006), Gladwin et al.
(US 2007/0079083 A1; publ. Apr. 5, 2007), and Wu et al. (US
2007/0250604 A1; publ. Oct. 25, 2007).
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) over Ejiri,
Gladwin, Wu, and de la Torre et al. (US 7,636,724 B2; issued Dec. 22,
2009).
ANALYSIS
Independent claim 1 states, in relevant part, wherein the plurality of
DS units is limited to a subset of available DS units estimated to meet
requirements associated with a current storage sequence. Appeal Br. 14.
Independent claim 11 recites a commensurate limitation.3 Id. at 16. The
Examiner relies on the combination of Wu and Ejiri as teaching this
limitation because “Ejiri teaches selecting target units according to a storage
size requirement, and Wu teaches selecting a subset of available memory
nodes according to a proximity requirement.” Ans. 4. We understand the
Examiner to rely on Ejiri for selecting target units according to a storage size
requirement (i.e., requirements associated with a current storage sequence)
and Wu for selecting a subset of available memory nodes according to a
proximity requirement (i.e., a subset of available DS units estimated to meet
requirements). Id. (citing Ejiri ¶¶ 58–59, 78–79; Wu ¶ 10).
Appellant contends the Examiner errs because “Ejiri does not disclose
selecting ‘target units’, but instead discloses broadcasting a solicitation

3 Based on Appellants’ arguments, we decide the appeal on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).
Appeal 2018-008923
Application 12/850,606

4
message to the network, and making a final selection of which storage unit
to use based on responses to the broadcast.” Reply Br. 4 (citing Ejiri ¶¶ 13–
14). Appellant continues, “at best, Ejiri’s disclosure corresponds to
[Appellant’s] final selection of storage units based on responses to
solicitation messages—not the selection of target DS units.” Id. at 5.
We agree with Appellant. The plain language of claim 1 requires that
only those available units estimated to meet the requirements associated with
a current storage sequence may be selected as target DS units. The claimed
solicitation message is then transmitted to these selected target DS units.
The cited disclosure of Ejiri, however, is directed to transmitting the
solicitation message as a broadcast to all units, not the initial selection of
units to receive the solicitation based on their estimated ability to meet
requirements. Ejiri ¶ 79 (“[a]t first, when the user broadcasts target search
information, the search response unit in each target receives the target search
information and decides whether the relevant data is possible to save in the
own data storage unit.”). The Examiner, thus, has not shown in the record
before us how Ejiri teaches selecting “as target DS units . . . a subset of
available DS units estimated to meet requirements associated with a current
storage sequence” before sending these the solicitation message, as claimed.
Accordingly, based on the record before us, we reverse the
Examiner’s rejections of independent claims 1 and 11, and their dependent
claims 2–6 and 12–16.

Appeal 2018-008923
Application 12/850,606

5
DECISION
We reverse the Examiner’s decisions rejecting claims 1–6 and 11–16.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 11–15 103 Ejiri, Gladwin, Wu 1–5, 11–15
6, 16 103 Ejiri, Gladwin,
Wu, de la Torre
6, 16
Overall
Outcome
1–6, 11–16

REVERSED