Ex Parte Brannon et al

Patent Trial and Appeal Board

Sep 24, 2014

11163368 (P.T.A.B. Sep. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KAREN W. BRANNON and YING CHEN
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Appeal 2012–001366
Application 11/163,3681
Technology Center 2100
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3–8, and 15–23. Claims 2, 9–
14, and 24–30 have been canceled. (App. Br. 2.)2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Application filed October 17, 2005. The real party in interest is
International Business Machines Corp.
2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed May 23, 2011; and Reply Brief (“Reply Br.”) filed October 11, 2011.
We also refer to the Examiner’s Answer (“Ans.”) mailed August 11, 2011.
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Appellants’ Invention
The invention at issue on appeal concerns data archiving (storage and
backup) in computer systems, including systems, computer storage media,
and methods for restoring referential integrity between data and metadata by
identifying data update operations (operations since last backup), identifying
referential inconsistencies between data and metadata in the updated data
and/or metadata, and restoring referential integrity between the data and
metadata. (Spec. ¶¶ 1, 2, 12–42; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method comprising:
examining data or metadata logs and identifying only
data operations performed between a last backup and just prior
to a recent failure;
identifying, from said identified updates, a subset of data
and a subset of metadata with one or more referential
inconsistencies;
restoring referential integrity only between said subset of
data and said subset of metadata, and
reducing restoration time by narrowing data and metadata
to be checked to only said subset of metadata.
(App. Br. 16, Claims Appx.)
Rejections on Appeal
1. The Examiner rejects claims 1, 3–6, 8, 15, 22, and 23 under 35
U.S.C. § 102(e) as being anticipated by US Patent No 7,689,599 B1, issued
Mar. 30, 2010 (filed Jan. 31, 2005) (“Shah”).
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2. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Shah and US Patent App. Pub. No 2003/0069902 A1,
published Apr. 10, 2003 (“Narang”).
3. The Examiner rejects claims 16–21 under 35 U.S.C. § 103(a) as
being unpatentable over Shah and US Patent App. Pub. No 2005/0216653
A1, published Sept. 29, 2005 (“Aasheim”).

ISSUE3
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding Shah discloses “identifying, from
said identified updates, a subset of data and a subset of metadata with one or
more referential inconsistencies [and] restoring referential integrity only
between said subset of data and said subset of metadata” (claim 1) within the

3 Appellants assert that the Examiner failed to follow proper procedures
during the examination of the present application. (App. Br. 8–9.) This
issue was not properly raised prior to appeal — see 37 C.F.R. § 1.181 —
and, therefore, has been waived. More importantly, this issue is not an
appealable matter within our jurisdiction. See 35 U.S.C. § 134. Petitionable
matters, as opposed to appealable matters, do not fall under the jurisdiction
of the PTAB and are not properly brought before us. In re Berger, 279 F.3d
975, 984–85 (Fed. Cir. 2002); see also MPEP § 706.01 (“[T]he Board will
not hear or decide issues pertaining to objections and formal matters which
are not properly before the Board.”); MPEP § 1201 (“The Board will not
ordinarily hear a question that should be decided by the Director on petition .
. . .”). Thus, we do not address Appellants’ arguments with respect to this
matter.
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meaning of Appellants’ claim 1 and the commensurate limitations of claims
15 and 23?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed December 22, 2010, as our own, except as to those findings
that we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 9–14), we find Appellants
do not separately argue with particularity the patentability of independent
claims 15 and 23 or dependent claims 3–8 and 16–22. Accordingly, we
select independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1, 3–8, and 15–23. 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 4–6), and (2)
the reasons set forth by the Examiner in the Examiner’s Answer (id. at 14–
19) in response to Appellants’ Appeal Brief. We concur with the findings
and conclusions reached by the Examiner, and we provide the following for
emphasis.
The § 102 Rejection of Claims 1, 3–6, 8, 15, 22, and 23
Appellants contend that Shah does not disclose the disputed features
of claim 1. (App. Br. 9–14; Reply Br. 2–5.) Specifically, Appellants
contend that “Applicants’ independent claims address the problem of
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mismatched metadata and data (i.e., referential inconsistency)” (App. Br.
10), that metadata inconsistency and referential inconsistency are two
different aspects (App. Br. 11–12), and
Shah merely describes evaluating metadata consistencies (NOT
referential inconsistencies) at each checkpoint where data is
stored. Such evaluations of metadata consistencies at various
checkpoints prior to data storage is NOT the same as
identifying a subset of data and subset of metadata with
referential inconsistencies based on data operations performed
between a last backup and just prior to a recent failure
(App. Br. 12).
We focus on the claim terminology, in particular, “referential
inconsistencies.” Appellants broadly describe a “referential inconsistency”
as “mismatched metadata and data” (Spec. ¶ 2). Shah does not explicitly
describe identifying “referential inconsistencies” between a subset of data
and a subset of metadata, but does describe mismatches (inconsistencies)
among data and metadata. As pointed out by the Examiner, Shah describes
data and metadata not being consistent (being inconsistent) (Shah, col. 4, ll.
31–32; col. 7, l. 35; col. 8, ll. 10–12) and making the data and metadata
consistent (Shah, col. 8, ll. 22–23). (Ans. 16–19.) In particular, Shah
describes metadata being inconsistent with data — “metadata inconsistent
with actual data” (col. 4, l. 32) and “data is not metadata consistent” (col. 7.
l. 35). We find, as did the Examiner (Ans. 16–19), that Shah’s descriptions
of metadata being inconsistent with data (and vice versa), as well as
rectifying these inconsistencies, is equivalent to the recited “referential
inconsistencies” and “restoring referential integrity.” Appellants’ argument
that “metadata inconsistencies” and “referential inconsistencies” are
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different (App. Br. 11–12 ; Reply Br. 4) is unpersuasive of Examiner error,
especially in view of Appellants’ own explanation “referential
inconsistency” in the Specification (supra).
Therefore, we find that Shah discloses the disputed limitations of
“identifying . . . a subset of data and a subset of metadata with one or more
referential inconsistencies” and “restoring referential integrity . . . between
said subset of data and said subset of metadata” (claim 1). Accordingly, we
affirm the Examiner’s anticipation rejection of representative claim 1,
independent claims 15 and 23, and dependent claims 3–6, 8, and 22 not
separately argued with particularity (supra).
The § 103 Rejection of Claims 7 and 16–21
Appellants do not separately argue with particularity claims 7 and 16–
21. (App. Br. 14.) Accordingly, for the reasons set forth with respect to
claim 1 (supra), Appellants do not persuade us of error in the Examiner’s
obviousness rejection of claims 7 and 16–21 and we affirm the Examiner’s
obviousness rejection of claims 7 and 16–21.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1, 3–6, 8, 15, 22, and 23 under 35 U.S.C. § 102(e).
Appellants have not shown that the Examiner erred in rejecting claims
7 and 16–21under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1, 3–8, and 15–23.
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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).

AFFIRMED

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