Ex Parte Cluff et al

Patent Trial and Appeal Board

Apr 29, 2016

13294077 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/294,077 11/10/2011
27299 7590 04/29/2016
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
FIRST NAMED INVENTOR
Scott A. Cluff
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SEARCHP.035C1Cl 7689
EXAMINER
CHU, GABRIELL
ART UNIT PAPER NUMBER
2114
MAILDATE DELIVERY MODE
04/29/2016 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 SCOTT A. CLUFF and RAYMOND W. THORN
Appeal2014-007208 1
Application 13/294,077
Technology Center 2100
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
HOMERE, 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 Rejection of claims 9-24, and 33--40, which consist all of
the claims pending in this appeal. Claims 1-8, and 25-32 have been
canceled. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' Invention
1 Appellants identify the real party in interest as Micron Technology, Inc.
App. Br. 1. This Appeal relates to Appeal no. 2014-007214 (13/612,096)
being decided herewith.
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Application 13/294,077
Appellants' invention is directed to a method and system for allowing
a network node (14, 16, 18), which has experienced a fault to recover
therefrom by accessing backup data stored at a remote backup storage device
(20). Spec. i-fi-12, 15, Fig. 1. In particular, upon determining that the node
has experienced a failure during a boot session, an operating system (134) of
the node sets to an active state a fail flag (204) in the main hard disk drive
(24) thereon, and instructs the user to reboot the node. Id. i-fi-127, 28, Figs. 1-
3. In a subsequent boot session, upon detecting that the fail flag is already
set, a BIOS routine in the operating system (134) accesses a backup storage
device (22) at the node to cause a backup routine (26) to access
corresponding node data in the remote backup storage system (20) to thereby
download an image of the drive (30, 32, 34) in the affected node (14, 16,
18). Id. i-fi-f 28-29.
Illustrative Claim
Independent claim 9 is illustrative, and reads as follows:
9. A system comprising: an interface to a network;
a first operational element comprising an operating
system executable by a processor, and at least one software
application configured to exchange data with the processor, said
first operational element configured to perform one or more
tasks in the system;
a storage element containing an indication of whether a
fault has occurred with the first operational element, said fault
occurring during a post-boost session of said operating system,
where the indication is set in the storage element during said
post-boot session; and backup apparatus configured to:
enable access of the network through the interface based
at least in part on said indication; and
effect recovery of the system, at least in part by
communicating data related to said first operational element
over the network;
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Application 13/294,077
wherein said data exchange with said processor is
effected via said operating system; and wherein said data
exchange with said processor is effected via said operating
system; and wherein said effected recovery is initialized at least
in part during said post-boot session.
Rejections on Appeal
Appellants request review of the following Examiner's rejections:
Claims 9-24 and 33--40 stand provisionally rejected under
nonstatutory obviousness-type double patenting as being unpatentable over
claims 9-28 of co-pending application No. 13/612,096 taken in combination
with Tallam (US 6,948,099 B 1, issued Sept. 20, 2005), Maffezzoni (US
6,901,493 Bl, issued May 31, 2005), and Brown (US 6,738,928 Bl, issued
May 18, 2004).2
Claim 39 stands rejected under 35 U.S.C. § l 12(a) first paragraph as
failing to comply with the written description requirement.
Claims 9, 11, 33, and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tallam and Dellacona (US
6,799,224 Bl, issued Sept. 28, 2004).
Claims 10, 12-17, and 34--38 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Tallam, Dellacona,
and Maffezzoni.
Claims 18-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tallam, Dellacona, and Maffezzoni.
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tallam, Dellacona, and Brown.
2 Because Appellants have not presented any rebuttal arguments against this
rejection, we summarily affirm the double patenting rejection.
3
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Application 13/294,077
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 4--1O. 3
Obviousness Rejections
Appellants argue the combination of Tallam and Dellacona does not
teach or suggest "a storage element containing an indication of whether a
fault has occurred with the first operational element, said fault occurring
during a post boot session of said operating system, where the indication is
set in the storage element during said post boot session," as recited in claim
9. App. Br. 5---6. In particular, Appellants argue Tallam teaches detecting,
during a boot process, a previous corruption of an operating system, as
stored. Id. at 5 (citing Tallam 1 :37-39). According to Appellants, Tallam
discloses the occurrence of the fault corrupting the operating system and the
storage of an indication thereof happen during different periods, and not in
the same boot session as required by the claim. Id. This argument is not
persuasive.
At the outset, we note although the claim requires that the occurrence
of a fault, and the storage of an indication thereof happen during a post boot
session, Appellants' Specification is silent as to when the fault actually
occurred, let alone that such a fault occurred during the post boot session.
Likewise, Appellants' Specification does not detail that the storage of an
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Feb. 3, 2014), and the Answer (mailed Apr.
9, 2014) for their respective details. We have considered in this Decision
only those arguments Appellants actually raised in the Brief. Any other
arguments Appellants could have made but chose not to make in the Brief
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 13/294,077
indication that the fault occurred take place during the same boot session as
the occurrence of the fault itself. Instead, the Specification merely indicates,
upon determining that a node has experienced a fault, the operating system
sets a fail flag (in the main hard disk drive) to an active state. Spec. i-f 27.
Therefore, the Examiner reasonably inferred from the Specification that
upon discovering the occurrence of a fault in a node, the operating system
records an indication thereof (i.e. within a same booting session). Ans. 27-
28. Additionally, we similarly agree with the Examiner's finding that
Tallam's disclosure of performing a checksum analysis of the operating
system during a boot session to determine whether it is corrupted, and
setting a recovery bit in memory if the stored operating system is corrupted
teaches that the discovery of the operating system corruption and the storage
of an indication thereof happen during the same boot session. Id. (citing
Tallam 4: 18-26). Although the cited portion of Tallam does not particularly
specify when the corruption of the operating system occurred, as in
Appellants' Specification, one of ordinary skill in the art would have readily
ascertained from Tallam's disclosure that the occurrence of such fault can be
approximated to the discovery time thereof, as proffered by the Examiner.
Ans. 28.
Second, Appellants argue Dellacona' s disclosure of marking of a
failed portion as unavailable would not comport with Tallam's disclosure of
storing a recovery bit in memory to indicate the occurrence of a failure at a
node such that it can trigger a recovery in a subsequent boot session, because
there would be nothing to correct. App. Br. 6 (citing Tallam 4:7-10, and
Dellacona 2: 1-9.) This argument is not persuasive.
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As noted by the Examiner, Dellacona is only relied upon to teach that
post boot session detection is known in the art. Ans. 29. Accordingly,
because Tallam teaches the fault occurrence and the recording of an
indication thereof happen during a same boot session, we agree with the
Examiner that Tallam teaches or suggests the disputed limitations. It
follows Appellants have not shown error in the Examiner's rejection of
claim 9 over the combination of Tallam and Dellacona.
Regarding the rejection of claims 10-24, 33-38 and 40, because
Appellants have either not presented separate patentability arguments or
have reiterated substantially the same arguments as those previously
discussed for patentability of claim 9 above, claims 10-24, 33-38, and 40
fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Regarding the rejection of claim 39, Appellants argue that Brown
does not cure the deficiencies in the Tallam and Dellacona combination as
discussed with respect to claim 9 above. App. Br. 8. As discussed above,
we find no such deficiencies in the Tallam-Dellacona combination for
Brown to cure. Further, Appellants argue although Brown's disclosure of
copying operating system information into a dump file upon detecting a fault
is suggestive of using the file to perform repairs , the dump file itself is not
suggestive of the required recovery operation. Id. This argument is not
persuasive. As noted by the Examiner, Brown was relied upon to explicitly
teach an operating system detecting a fault, whereas Tallam was relied upon
to teach the required recovery operation. Ans. 26, 30. It follows Appellants
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have not shown error in the Examiner's rejection of claim 39 over the
combination of Tallam, Dellacona, and Brown.
Written Description Rejection
Appellants argue the Examiner erred in finding that the recitation
"required recovery operation," as recited in claim 39, is not supported by
Appellants' original written description. App. Br. 9-10. In particular,
Appellants argue the following:
[ w ]hile Applicant's specification as filed does not explicitly use the
term "required", a person of ordinary skill in the art would recognize
and reasonably conclude that since predetermined faults trigger a fail
flag to be set to trigger a recovery process via the backup routine, as
discussed above, such predetermined faults must be deemed to require
a recovery operation to be performed. If not, such triggering would be
entirely unnecessary if a predetermined fault did not require the
recovery operation as disclosed in Applicant's specification.
Applicant notes that there is no optional or discretionary aspect of the
foregoing exemplary embodiment, if the stated condition( s) occur,
recovery must (aka, is required to) be invoked.
Id. at 10 (emphasis in original) (citing Spec. i-f 27). This argument is not
persuasive. The Court of Appeals for the Federal Circuit has held that "[t]o
fulfill the written description requirement, the patent specification must
describe an invention in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented what is claimed." Kao Corp. v. Unilever
U.S., Inc., 441 F.3d 963, 967-968 (Fed. Cir. 2006) (quoting Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003)). Our reviewing
court has cautioned, however, that "[t]he disclosure as originally filed does
not ... have to provide in haec verba support for the claimed subject matter
at issue." Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d at 1364 (internal
citation omitted). "Although [the applicant] does not have to describe
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exactly the subject matter claimed, ... the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed." In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(citations omitted). Put another way, "the applicant must ... convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention." Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis in original).
We agree with the Examiner that Appellants' original written
description does not support that the recovery operation is required. Ans.
30-31. As correctly noted by the Examiner, although paragraph 27 of
Appellants' Specification discusses performing a failure recovery process at
one of the nodes when the node has experienced a fault, it does not describe
such recovery as being required. Id. (citing Spec. i-f 27). Instead,
Appellants' Specification discusses performing the recovery operation as an
alternative when a fault is encountered (i.e. a fail flag is set), and a user
request to recover is made. Spec. i-f 29 (discussing Fig. 3, step 218).
Accordingly, Appellants have not shown error in the Examiner's written
description rejection of claim 39.
We affirm the Examiner's rejections of claims 9-24, and 33--40 as set
forth above. No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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