International Business Machines Corporation

Patent Trials and Appeals Board

Jul 14, 2020

2019003050 (P.T.A.B. Jul. 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.
14/022,537 09/10/2013 Hans-Guenter Kraemer DE920120037US1 1015
54858 7590 07/14/2020
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
445 CRESTOVER CIRCLE
RICHARDSON, TX 75080
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
07/14/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-GUENTR KRAEMER, PETER MUENCH, ROLF
SCHAEFER, NORBERT J. SCHULD

Appeal 2019-003050
Application 14/022,537
Technology Center 2100
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–9, 11, 12, and 15–19. 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 the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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Application 14/022,537

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to file handling in a
hierarchical storage system. Spec. ¶ 1. The Specification explains a scenario
where one user saves thousands of files over a period of time, and those files
are then backed up across many storage tapes such that retrieving the files is
cumbersome. Id. ¶ 3. To address this issue, Appellant discloses moving files
to different containers based on a rule or metadata. Id. ¶ 10. Claim 1 is
illustrative, and we reproduce it below with emphasis added to key
recitations:
1. A method for file handling in a hierarchical storage
system comprising:
implementing a user virtual file system for each a plurality of
users, the user virtual file system comprising a user interface, a set of
data containers, and a control unit, wherein the user virtual file
system scans, reads, and analyzes data associated with a plurality
of files and user behavior associated with the plurality of files to
create or modify a set of rules for handling the plurality of files
and to create or modify a set of metadata for handling the plurality of
files;
identifying logical or temporal relationships between subsets of
files in the plurality of files based on the set of rules and the set of
metadata;
grouping a subset of flies that are identified as having a logical
or temporal relationship based on the set of rules and the set of
metadata in at least one data container;

2 In this Decision, we refer to the Final Office Action dated April 4, 2018
(“Final Act.”), the Appeal Brief filed August 30, 2018 (“Appeal Br.”), the
Examiner’s Answer dated January 7, 2019 (“Ans.”), and the Reply Brief
filed March 7, 2019 (“Reply Br.”).
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Application 14/022,537

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moving the at least one data container containing the subset of
files to a different tier of storage based on the set of rules and the set
of metadata that caused the subset of files that are identified as having
the logical or temporal relationship to be grouped; and
analyzing and predicting individual user behavior and the
system status, wherein the at least one data container of corresponding
grouped files is moved entirely to a primary tier of storage if
oncoming usage of the grouped files within a certain time range is
predicted.
Appeal Br. 19 (Claims App.). Claims 7 and 15 are directed to a computer
system and computer program product respectively, and each of these claims
include recitations similar to the recitation we emphasize above.

REJECTION AND REFERENCES
The Examiner maintains (Ans. 3) the following rejections on appeal:
claims 1–5, 7–9, 11, 12, and 15–19 under 35 U.S.C. § 103 as obvious over
Bone et al., US 2008/0091739 A1, Apr. 17, 2008 (“Bone”) in view of
Faibish et al., US 8,006,111 B1, Aug. 23, 2011 (“Faibish”) and Xu et al., US
8,949,208 B1, Feb. 3, 2015 (“Xu”). Final Act. 2–3.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
The Examiner rejects independent claims 1, 7, and 15 as obvious over
Bone in view of Faibish and Xu. To resolve the issues before us on appeal,
we focus on the Examiner’s findings and determinations that relate to the
error Appellant identifies.
The Examiner finds that Bone teaches a virtual file system that scans,
reads, and analyzes data associated with files to create or modify a set of
rules for handling the files. Final Act. 3. The Examiner also finds that
Faibish and Xu teach creating or modifying metadata. Ans. 10.
We begin our analysis with claim construction. Claim 1 recites a
method that requires “implementing a user virtual file system.” Based on
claim 1’s plain language, claim 1 requires that the implemented virtual file
system have certain characteristics. In particular, the system must “scan[],
read[], and analyze[] data associated with a plurality of files . . . to create or
modify a set of rules for handling the plurality of files.” Then, when claim 1
later refers to “the set of rules,” it refers back to the rules that the virtual file
system created or modified based upon the virtual file system’s scanning,
reading, and analyzing of the plurality of files. See also Spec. ¶ 29 (referring
to virtual file system 10 which comprises system optimizer unit 450 which
“scans, reads and analyses [sic] data or user behavior to create or modify at
least one rule”). Claims 7 and 15 similarly require a processor or software,
respectively, capable of implementing a virtual file system that “scans,
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reads, and analyzes data associated with a plurality of files . . . to create or
modify a set of rules for handling the plurality of rules.”
Appellant argues that Bone does not teach or suggest that its rules are
created or modified by a virtual file system scanning, reading, and analyzing
file data. Appeal Br. 6–9. We agree with Appellant that the Examiner has
not provided adequate findings and explanation to establish this point. Bone
teaches that its rules base 404 includes a rules set 500 that contains one or
more rules 502a–502n. Bone Fig. 5, ¶ 74. Bone states that “[a] pattern and
an action can define each rule.” Id. ¶ 74. Bone explains that a pattern 504
could be, for example, “metadata associated with the file.” Id.
While Bone indicates that its rules are defined by patterns, Bone also
teaches that its rules engine 402 “determines which, if any, of the rules in
programmable rules base 404 specify a pattern.” Id. ¶ 72. The Examiner
does not cite evidence to establish that rules engine 402 or any other
component of Bone’s system scans, reads, and analyzes file data to create or
modify rules. See Ans. 9–10 (relying on Bone Figure 5 and paragraph 74 to
address this recitation). We also note that while the Examiner finds that
Faibish and Xu teach file management based on user action, the Examiner
does not expressly rely on Faibish or Xu as teaching scanning, reading, and
analyzing data associated with files to create or modify a set of rules for
handling the files. Id. at 10–11.
For the reasons above, we do not sustain the Examiner’s rejection of
independent claims 1, 7, or 15. Because the Examiner’s treatment of the
dependent claims does not cure this error, we also do not sustain the
Examiner’s rejection of the dependent claims on appeal.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
11, 12, 15–
19
103 Bone, Faibish, Xu 1–5, 7–9,
11, 12, 15–
19

REVERSED