COMPELLENT TECHNOLOGIES

Patent Trials and Appeals Board

Aug 17, 2021

2020003376 (P.T.A.B. Aug. 17, 2021)

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.
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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.
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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.
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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
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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).
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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
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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.
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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
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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
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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.
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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.
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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