13920736 - (D) (P.T.A.B. Aug. 23, 2019)

Thomas J. Rogers

Patent Trials and Appeals BoardAug 23, 2019

13920736 - (D) (P.T.A.B. Aug. 23, 2019)

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. 13/920,736 06/18/2013 Thomas J. Rogers BPCUR0024TR (I-77) 2244 27939 7590 08/23/2019 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER PYO, MONICA M ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 08/23/2019 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 THOMAS J. ROGERS ____________________ Appeal 2018-008284 Application 13/920,7361 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION, pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellant’s Brief (“App. Br.”) identifies Vecima Networks, Inc. as the real party in interest. App. Br. 2. Appeal 2018-008284 Application 13/920,736 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to storing data more efficiently by having multiple file entries in a file allocation table index the same clusters on a storage medium. Spec. ¶ 23. For example, in a digital media environment, a user may record an episode of a television program. Id. In accordance with the disclosed embodiment, the episode is given a file entry (e.g., a filename) in a file allocation table, and the episode is written to a set of clusters on the storage media. Id. When subsequent users record that same episode, a new file entry is created for the new copy of the episode that has been recorded. Id. However, the newly recorded episode is not written to a different set of clusters. Id. Rather, the new file entry in the file allocation table indexes the same set of clusters as the previously recorded episode. Id. Thus, storage savings is realized because only a single set of data clusters on the storage medium is used to store multiple copies of the same episode. Id. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system, comprising: a storage server comprising a memory and a control circuit operable with the memory, the storage server in communication across a network with one or more client devices, the control circuit to: create a file allocation table to organize clusters of a computer readable medium; the file allocation table comprising a plurality of distinguishable file entries, each of the distinguishable file entries indexing clusters of the computer readable medium; at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium. App. Br. 24 (Claims Appendix). Appeal 2018-008284 Application 13/920,736 3 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Huang et al. US 2010/0023491 Al Jan. 28, 2010 Reddy et al. US 8,005,861 B2 Aug. 23, 2011 Mann et al. US 8,019,941 B2 Sep. 13, 2011 Choi et al. US 2012/0131146 A1 May 24, 2012 Rynson Lau et al., VideoMAP: A Generic Framework for Video Management and Application Processing, Proceedings of the 33rd Hawaii International Conference on System Sciences 2000, IEEE (2000). REJECTIONS2 Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Non-Final Act. 2. Claims 1–3, 5, 9–17 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reddy and Mann. Non-Final Act. 6–9. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Reddy, Mann and Choi. Non-Final Act. 9–10. Claims 6–8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reddy, Mann and Hua. Non-Final Act. 10–11. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reddy, Mann and Huang. Non-Final Act. 11–12. REJECTION UNDER 35 U.S.C. § 101 Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in 2 The rejection of claim 3 under 35 U.S.C. § 112(b) has been withdrawn. Ans. 2. Appeal 2018-008284 Application 13/920,736 4 Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). The Court instructs us to “first determine whether the claims at issue are directed to a patent- ineligible concept,” Id. at 2355, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes the second step as 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. (quoting Mayo, 566 U.S. at 72–73). The USPTO has published revised guidance on the application of § 101 consistent with Alice and subsequent Federal Circuit decisions. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: Appeal 2018-008284 Application 13/920,736 5 (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 52. Examiner’s Determinations and Conclusion In the first step of the Alice inquiry, the Examiner determines the claims are directed to the “general concept of collecting data, normalizing the data, and releasing the data.” Final Act. 3. The Examiner further determines the claims are directed to an abstract idea because they recite “steps [which] describe the general concept of collecting data, normalizing the data, and releasing the data which correspond to concept identified as abstract ideas by the courts, such as the Federal Circuit decision in the case [Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)].” Non-Final Act. 3. In the second step of the Alice inquiry, the Examiner finds that the claims do not provide an inventive concept. More specifically, the Examiner finds “the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea” because the “limitations relate[] to generic computer components and amount to mere instruction to implement the abstract idea on a computer.” Non-Final Act. 3. Appellant’s Contentions Appellant argues the Examiner has erred because the claims are not directed to an abstract idea. App. Br. 12–14. More specifically, Appellant contends: Appeal 2018-008284 Application 13/920,736 6 Claims 1 and 12 are directed to technical improvements in a memory of a storage server. Specifically, a control circuit of the storage server creates a file allocation table to organize clusters within the server. The file allocation table includes a plurality of distinguishable file entries, each of which indexes clusters within the server. At least two file entries index selfsame clusters. App. Br. 12. Appellant further asserts that the Examiner’s reliance on Electric Power Group is improper because “[t]here is no explanation in the Office Action regarding how referencing self-same clusters in a server storage system is at all related to electric grid monitoring and associated data analysis.” Revised Guidance, Step 2A, Prong One 3 The Judicial Exception Applying the guidance set forth in the Memorandum, we are persuaded of Examiner error. The Memorandum instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Claim 1 recites a the following limitations: (1) “a storage server comprising a memory,” (2) “a control circuit operable with the memory,” (3) “the storage server in communication across a network with one or more client devices,” (4) “the control circuit to” (5) “create a file allocation table to organize clusters of a computer readable medium,” (6) “the file allocation table comprising a plurality of distinguishable file entries,” (7) “each of the 3 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-008284 Application 13/920,736 7 distinguishable file entries indexing clusters of the computer readable medium,” and (8) “at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium.” App. Br. 24 (Claims Appendix). None of these limitations recite subject matter that falls within any of the three groupings. For example, none of the limitations recites any mathematical formula or concept, as they each relate to computer hardware and storage configuration. Similarly, none of the limitations of the claim can be reasonably characterized as a “certain method of organizing human activity,” as they involve only the operation of a computing device and have no bearing on human behavior or activity. The recited limitations also do not recite any mental process, as none of the limitations recite operations which can reasonably be performed by a human in their mind or with the aid of pen and paper. Accordingly, we conclude claim 1 does not recite a judicial exception. Independent claim 12 recites a process that includes limitations similar to those recited in claim 1. For the same reasons, we conclude claim 12 does not recite a judicial exception. Because we have concluded that neither of independent claims 1 and 12 recite a judicial exception, our inquiry proceeds no further under the guidance, and we reverse the Examiner’s rejection under 35 U.S.C. § 101. REJECTIONS UNDER 35 U.S.C. § 103(a) The Examiner concludes independent claims 1 and 12 are rendered obvious by the combined teachings of Mann and Reddy. Non-Final Act. 6–9. In rejecting claim 1, the Examiner finds Mann teaches the general environment of a file system with a file allocation table that organizes Appeal 2018-008284 Application 13/920,736 8 clusters on a physical storage medium. Non-Final Act. 6–7. The Examiner further finds that Reddy teaches a storage system “comprising a plurality of distinguishable file entries” and “each of the distinguishable file entries indexing clusters of the computer readable medium.” Non-Final Act. 6 (citing Reddy, col. 1, ll. 38–61, col. 3, ll. 21–36). The Examiner also finds Reddy teaches the recited “at least two of the plurality of distinguishable file entries indexing selfsame clusters” because it teaches “storing different subsegments in more than one node of the same cluster.” Non-Final Act. 6 (citing Reddy, col. 3, ll. 37–51); see also Ans. 6–7 (citing Reddy, Fig. 2). The Examiner further explains that Reddy’s use of multiple matching nodes on the same storage device teaches “distinguishable file entries indexing selfsame clusters.” Ans. 7 (citing Reddy, col 6, ll. 17–18). The Examiner concludes that it would have been obvious to combine Reddy’s matching node storage scheme into a file systems as taught by Mann it would “to enhance the subsegment storage scheme by utilizing the FAT file system enhancing the efficiency of the storage system.” Non-Final Act. 7. Appellant contends the Examiner has erred because the cited portions of Reddy do not teach or suggest “at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium.” App. Br. 16–18. More specifically, Appellant argues the “cluster” described in Reddy is not a cluster in a file system, but instead refers to a cluster of nodes—multiple hardware devices that store information. App. Br. 16. Appellant asserts that the invention recited in the claims relates to selfsame references of data clusters in a storage server and not to clusters of nodes. App. Br. 16–17. According to Appellant, Reddy Appeal 2018-008284 Application 13/920,736 9 merely teaches “storing redundant files on redundant hardware devices.” Reply Br. 10. We are persuaded by Appellant’s arguments. The cited passages in Reddy do not describe having different file entries (such as filenames in a file allocation table) which point to the same clusters on a storage medium. Instead, we agree with Appellant that the cited portions of Reddy describe deleting a file entry on a one hardware device when the same file is stored on multiple devices. We further agree with Appellant that Mann does not cure this deficiency. As such, we are persuaded the Examiner has not shown the cited portions of Reddy teach or suggest the “at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium,” and we do not sustain the rejection of claim 1, and also claim 12 which recites a similar limitation. Remaining Claims Because we do not sustain the rejections of independent claims 1 and 12, we also do not sustain the rejections of the remaining dependent claims 2–11 and 13–20, which variously depend therefrom. NEW GROUND OF REJECTION Claims 1 and 12 Pursuant to our authority under 37 C.F.R. § 41.50(b), claims 1 and 12 are newly rejected under 35 U.S.C. § 103(a) as being obvious over admitted prior art (“APA”) as set forth at paragraphs 24–32 and Figures 1 and 2 of the Specification in view of Reddy. In the Specification, Appellant describes “a prior art network digital video recording system 100.” Spec. ¶ 24. Appellant further describes that this prior art system 100 “includes a storage server 110 that is in communication with one or more client devices Appeal 2018-008284 Application 13/920,736 10 106, 107, 108 belonging to one or more users 103, 104, 105.” Spec. ¶ 24. Thus, APA teaches the limitation of “a storage server comprising a memory and a control circuit operable with the memory, the storage server in communication across a network with one or more client devices.” APA further describes the prior art storage server as “record[ing] data corresponding to the content 109 on one or more clusters 130 of the computer readable medium 138” and that “[w]hen . . . a user 103, records content, the storage server 110 creates a file 120 for the content 109.” Spec. ¶ 25, 26. Appellant’s Figure 1 shows that file 120 is included in a table of “FILE DIRECTORY ENTRIES” which points to the data clusters 130. Thus, the APA also teaches “create a file allocation table to organize clusters of a computer readable medium.” APA also shows an example in Figure 2 which is also depicted as “PRIOR ART” and includes a table of file directory entries having multiple files indexing clusters of a computer readable medium: Appeal 2018-008284 Application 13/920,736 11 Thus, APA teaches the limitations “the file allocation table comprising a plurality of distinguishable file entries,” and “each of the distinguishable file entries indexing clusters of the computer readable medium.” APA does not teach “at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium.” However, Reddy recognizes the benefit of “optimiz[ing] storage by eliminating redundant copies of stored data.” Reddy col. 1, ll. 30–31. Reddy teaches that deduplication may be used to achieve this benefit: Some storage systems optimize storage by eliminating redundant copies of stored data which is known as deduplication. In some cases, stored data is divided into segments. A new segment that is desired to be stored is first compared against those segments already stored. If the segment is already stored on the system, a reference is stored in place of the new segment instead of the entire segment. This form of deduplication is referred to as identity compression. Reddy col. 1, ll. 30–37. Thus, Reddy demonstrates that it was known in the prior art to determine whether a data segment is already stored on a system, and if so, store only a reference (i.e., a pointer) to that data (which is stored elsewhere) instead of the storing a new copy of the same data. A person of ordinary skill in the art, possessing the teachings of APA and Reddy, would have understood that the APA would be improved by having distinguishable file entries indexing selfsame clusters of the computer readable medium, as taught by Reddy, as doing so would optimize the use of the storage medium. Because we conclude APA and Reddy teach, suggest, or otherwise render obvious each and every limitation in claim 1, we newly reject claim 1 under 35 U.S.C. § 103(a). We also reject independent claim 12 for the same reasons. Appeal 2018-008284 Application 13/920,736 12 Status of Remaining Claims We leave it to the Examiner in the first instance to consider whether the remaining claims are rendered obvious by the prior art of record in light of the rejection of claims 1 and 12 above. DECISION We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C. §§ 101, 103(a).. We set forth a new ground of rejection of claims 1 and 12 under 35 U.S.C. § 103(a). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.4 4 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note Appeal 2018-008284 Application 13/920,736 13 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). See 37 C.F.R. § 41.50(f). REVERSED 37 C.F.R. § 41.50(b) MPEP § 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. 41.50(b)(2).” If for any reason Appellants desire to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. §114 will remove the application from the jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen prosecution before the Examiner.