COMPELLENT TECHNOLOGIESDownload PDFPatent Trials and Appeals BoardAug 17, 20212020003376 (P.T.A.B. Aug. 17, 2021) Copy Citation 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. 13/769,453 02/18/2013 Ryan Hankins 16043.88.21.US.U1 1830 94740 7590 08/17/2021 Winthrop & Weinstine, P.A. Capella Tower, Suite 3500 225 South Sixth Street Minneapolis, MN 55402 EXAMINER HEFFERN, JAMES E ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 08/17/2021 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): Winthropdocketing@cpaglobal.com patent@winthrop.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN HANKINS Appeal 2020-003376 Application 13/769,453 Technology Center 2100 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JENNIFER L. McKEOWN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1–20, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Dell International, LLC. Appeal Br. 1. Appeal 2020-003376 Application 13/769,453 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to a system and method for facilitating electronic discovery. See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention “relate[] to systems and methods for efficiently facilitating discovery of electronically stored data in a generally non-disruptive, bandwidth efficient manner, and which may performed [sic] over insecure networks while maintaining data security.” Id. ¶ 1. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphasis and formatting added to contested prior-art limitation): 1. A method for facilitating discovery of electronic data stored in a data storage system without substantially disrupting read and write access to the electronic data, the method comprising: receiving at least one of a discovery request for electronic data and an order to place electronic data on legal hold; in response to the at least one of the discovery request and legal hold, generating a snapshot of the electronic data, the snapshot comprising a record of the data as of a point in time that the snapshot is generated, wherein the snapshot permits read-only access to the data, such that the snapshot data is immutable; 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Sept. 30, 2019); Examiner’s Answer (“Ans.,” mailed Jan. 15, 2020); Final Office Action (“Final Act.,” mailed Dec. 10, 2018); and the original Specification (“Spec.,” filed Feb. 18, 2013). Appellant did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner’s Answer. Appeal 2020-003376 Application 13/769,453 3 receiving a write request with respect to the data; in response to the write request, performing a copy-on- write technique by writing a portion of the data to a new location, wherein the portion written to a new location is editable, such that input/output (I/O) operations with respect to the data can be performed without interruption and without altering original data; and providing read access to the snapshot of the electronic data to an analysis computer system. REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Richards et al. (“Richards”) US 2010/0250538 A1 Sept. 30, 2010 Moffat et al. (“Moffat”) US 2011/0283113 A1 Nov. 17, 2011 Srivas et al. (“Srivas”) US 2012/0101991 A1 Apr. 26, 2012 Mizrahi et al. (“Mizrahi”) US 2014/0109086 A1 Apr. 17, 2014 REJECTIONS3 R1. Claims 1–6 and 8–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Richards, Srivas, and Mizrahi. Final Act. 8. R2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Richards, Srivas, Mizrahi, and Moffat. Final Act. 23. 3 We note the Examiner withdrew the statutory subject matter rejection of claims 1–20 under 35 U.S.C. § 101. Ans. 3. Appeal 2020-003376 Application 13/769,453 4 CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 21–27) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1–6 and 8–20 on the basis of representative claim 1. We address the appeal of obviousness Rejection R2 of claim 7, infra.4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claims 1–20 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments.5 We 4 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 5 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did Appeal 2020-003376 Application 13/769,453 5 highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. § 103(a) Rejection R1 of Claims 1–6 and 8–20 Issue 1 Appellant argues (Appeal Br. 21–25) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Richards, Srivas, and Mizrahi is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method for facilitating discovery of electronic data stored in a data storage system without substantially disrupting read and write access to the electronic data” that includes, inter alia, the step of “in response to the write request, performing a copy-on-write technique by writing a portion of the data to a new location,” “wherein the portion written to a new location is editable, such that input/output (I/O) operations with respect to the data can be performed without interruption and without altering original data,” as recited in claim 1 (emphasis added)? Principles of Law “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2020-003376 Application 13/769,453 6 bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. at 425. In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the Appeal 2020-003376 Application 13/769,453 7 words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Analysis The Examiner finds the combination of Richards, Srivas, and Mizrahi teaches or suggests the limitations of claim 1. Final Act. 8–12. In particular, the Examiner finds that Srivas teaches or suggests the disputed step recited in claim 1 of “performing a copy-on-write technique by writing a portion of the data to a new location” (Final Act. 10–11 (citing Srivas ¶¶ 71, 114, 119)), and Mizrahi teaches or suggests “wherein the portion written to a new location is editable, such that input/output (I/O) operations with respect to the data can be performed without interruption and without altering original data.” Final Act. 11–12 (citing Mizrahi ¶ 44). Appellant argues Richards “does not provide uninterrupted access without altering the original data” (Appeal Br. 22), but instead, “in Richards, the user is permitted to interact with, i.e., manipulate or change or edit, the data. Accordingly, Richards does not teach providing read-only access to the data, such that the snapshot data is immutable. Furthermore, Richards does not disclose writing a portion of the data to a new location, wherein the data written to the new location is editable . . . without altering original data.” Id. at 23. We note the Examiner did not rely upon Richards for teaching or suggesting these cited claim limitations. Appeal 2020-003376 Application 13/769,453 8 In acknowledging the Examiner’s citation to Srivas for these limitations, Appellant contends, “Srivas does not relate to e-discovery or legal holds, and is instead directed to a map-reduce compatible distributed file system for avoiding data loss. Moreover, Srivas does not cure the many shortcomings of Richards, and appears to disclose little more than a generic copy-on-write technique for use with storage containers of a file system.” Appeal Br. 23. “Srivas also fails to teach or disclose continued preservation of an immutable read-only copy of preserved data alongside an editable version of any portion of that same data.” Id. With respect to the teachings of Mizrahi relied upon by the Examiner cited above, Appellant generally alleges “Mizrahi does not cure the deficiencies of Richards and Srivas” (Appeal Br. 24), and contends “Mizrahi has been misconstrued and mischaracterized by the Office” because, more specifically, “Mizrahi again only appears to disclose a generic copy-on-write functionality that does not relate to the functionality claimed in the context of a discovery request or legal hold as in the instant application” (id.), and “Mizrahi teaches storing the changes which is in sharp contrast to editing the stored data, as claimed in Applicant’s application.” Id. “Mizrahi simply teaches storing and reading the data that differs from the original, which is in sharp contrast to storing and editing the data as claimed and described in the instant application.” Id. at 25. With respect to Appellant’s arguments concerning Srivas, the Examiner responds, “[c]reating a read-only version of the snapshot would meet the limitations of the claim language when describing snapshot data that is immutable, meaning that the snapshot data cannot be changed. The examiner would also point out that Srivas does not meet the claim Appeal 2020-003376 Application 13/769,453 9 limitations alone but in combination, in Richards as modified by Srivas and Mizrahi.” Ans. 5. Concerning Appellant’s arguments against the Examiner’s reliance on Mizrahi, the Examiner reiterates that Mizrahi in paragraph 44 teaches: [An] image can be used to store the changes to another disk image without actually affecting the contents of the original image. The image, known as a copy-on-write image, looks like a standalone image to the user, but most of its data is obtained from the original image. Only the blocks of data that differ from the original image may be stored in the copy-on-write image file itself. The copy-on-write image contains the path to the original disk image, and an image header gives the location of the path string within the file or object”, show that to “store the changes” would be the equivalent of “where the portion written to a new location is editable”. This would meet the limitations of the claim language as it is currently presented. Ans. 7. We agree with the Examiner that Appellant’s arguments are not responsive to the rejection as articulated, which relies upon the combination of Richards, Srivas, and Mizrahi. Appellant briefly argues, without supporting analysis that the Examiner relied upon impermissible hindsight in setting forth the rejection. See Appeal Br. 25. The entirety of Appellant’s argument concerning the impermissible hindsight allegedly relied upon by the Examiner is quoted below: Applicant submits that the asserted combination of Richards, Srivas, and Mizrahi in rejecting independent claims 1 and 13 appears to be based on hindsight derived solely from the Applicant’s disclosure. Surely, this is not permitted. It is further established that “impermissible hindsight must be avoided and Appeal 2020-003376 Application 13/769,453 10 the legal conclusion must be reached on the basis of the facts gleaned from the prior art.” It has been widely recognized that “decomposing an invention into its constituent elements, finding each element in the prior art, and then claiming that it is easy to reassemble these elements into the invention, is a forbidden ex post analysis.” Appeal Br. 25. We are not persuaded by Appellant’s unsupported allegation of impermissible hindsight or improper motivation to combine,6 particularly in light of the Examiner’s response in the Answer: The examiner disagrees and would point out the appellant has made accusations of impermissible hindsight, but has not made an argument that pointed to any specific examples on the record that demonstrate the “impermissible hindsight” occurred. Also, the examiner would argue that it would have been obvious to one of ordinary skill in the art at the time the invention was made having the teachings of Richards as modified by Srivas and Mizrahi, which deal with creating backup snapshots of data in working environments, to have combined them by incorporating conventional systems that install a dedicated file system that is optimized for managing disk images onto storage devices (Mizrahi) with the Containers which provide the fundamental basis for data replication, relocation and transactional updates and improvements in electronic discovery that allow for electronic discovery to be efficiently and cost-effectively employed across a diverse enterprise (Richards as modified by Srivas). The motivation to combine is to provide greater optimization related to storage 6 Appellant alleges the rejection is improper because only the Richards reference is directed to electronic discovery, while Srivas and Mizrahi are directed to other data processing concepts. Appeal Br. 23, 24. However, we are not persuaded that this argument, which appears to suggest an allegation of non-analogous art, because Appellant is arguing the references separately. See Keller, 642 F.2d at 426. Appeal 2020-003376 Application 13/769,453 11 management, and more specifically to storage management of virtual disk images (Mizrahi [0001]. Ans. 8. We note Appellant did not file a Reply Brief to rebut the Examiner’s further findings, clarifications, and legal conclusions in the Answer. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 2–6 and 8–20 which fall therewith. See Claim Grouping, supra. 2. § 103(a) Rejection R2 of Claim 7 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claim 7 under § 103 (see Appeal Br. 26), we sustain the Examiner’s rejection of these claims. Arguments not made are waived.7 7 Appellant merely argues, even if the Moffat reference teaches or suggests that for which the Examiner offers it, “Moffat still does not teach providing read-only access to the data, such that the snapshot data is immutable,” and “this combination does not disclose writing a portion of the data to a new location, wherein the data written to the new location is editable . . . without altering original data,” as recited in claim 1. Appeal Br. 26. Appeal 2020-003376 Application 13/769,453 12 CONCLUSIONS We AFFIRM the Examiner’s rejections. More specifically, Appellant has not persuasively argued that the Examiner erred with respect to obviousness Rejections R1 and R2 of claims 1–20 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–20 103(a) Richards, Srivas, Mizrahi 1–6, 8–20 7 103(a) Richards, Srivas, Mizrahi, Moffat 7 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE 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). AFFIRMED Copy with citationCopy as parenthetical citation