Ex Parte Kilian et al

Patent Trial and Appeal BoardMay 12, 2014

10731790 (P.T.A.B. May. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL KILIAN, MARK AVERY, STEPHEN TODD, TOM TEUGELS, FRANCIS MARTENS, and JAN BRUYNDONCKX ____________________ Appeal 2012-001046 Application 10/731,790 Technology Center 2100 ____________________ Before CAROLYN D. THOMAS, HUNG H. BUI, and DANIEL N. FISHMAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 65-78.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.3 1 The real party of interest is EMC Corporation. 2 Claims 1-64 have been cancelled and are not on appeal. 3 Our decision refers to Appellants’ Appeal Brief filed June 8, 2011 (“App. Br.”); Reply Brief filed October 17, 2011 (“Reply Br.”); Examiner’s Answer mailed August 15, 2011 (“Ans.”); Final Office Action mailed December 13, Appeal 2012-001046 Application 10/731,790 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to a method and apparatus for data retention in a data storage system. Abstract. Conventional storage systems allow users to unintentionally, or perhaps maliciously, delete data, causing irreparable loss of data, often in violation of data retention policies or regulations, such as, for example, Securities and Exchange Commission (SEC) Rule 17a-4 which requires that companies preserve certain financial records for a period of six years. Spec. 1:18-26. Accordingly, Appellants’ invention provides such a data storage system with a retention period that indicates a period of time in which data may not be deleted and, therefore, ensures data will be stored in an unmodified state for a full retention period. Abstract. Consequently, when a request to delete data is received, the data storage system first determines if the retention period associated with that data has expired, and if the retention period has not expired, denies the request to delete the data. Id. Claims on Appeal Claims 65, 70, and 75 are the independent claims on appeal. Claim 65 is illustrative of Appellants’ invention and is reproduced below with disputed limitations emphasized: 65. A method for use in a computer system comprising at least one host and at least one storage system, the method comprising acts of: 2010 (“Final Rej.”); and the original Specification filed December 9, 2003 (“Spec.”). Appeal 2012-001046 Application 10/731,790 3 (A) receiving a request, from the host, to delete a unit of content stored on the storage system, wherein a previously- defined retention period for the unit of content is stored in the unit of content, wherein the request identifies the unit of content using a content address generated, at least in part, from at least a portion of the content of the unit of content, and wherein the at least the portion of the content of the unit of content includes the previously-defined retention period and at least some other content in the unit of content; (B) determining whether the previously-defined retention period for the unit of content has expired; (C) when it is determined in the act (B) that the retention period for the unit of content has not expired, denying the request to delete the unit of content; and (D) when it is determined in the act (B) that the retention period for the unit of content has expired, directly deleting the unit of content in response to the request. Evidence Considered Stuart et al. US 2005/0055519 A1 March 10, 2005 McGovern et al. US 2005/0097260 A1 May 5, 2005 Examiner’s Rejection Claims 65-78 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuart and McGovern. Ans. 5-12. Issues on Appeal Based on Appellants’ arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 65-78 under 35 U.S.C. § 103(a) as being unpatentable over Stuart and McGovern. In particular, the appeal turns on: (1) Whether the Examiner’s combination of Stuart and McGovern discloses a method for use in a computer system Appeal 2012-001046 Application 10/731,790 4 which includes receiving a request, from a host, to delete a unit of content stored on a storage system, wherein the request identifies the unit of content using a content address generated from at least a portion of the content of the unit of content, and the at least a portion of the content of the unit of content includes a previously-defined retention period. App. Br. 7-11; Reply Br. 5-7. (2) Whether the Examiner has articulated reasoning with some rational underpinning to combine Stuart and McGovern to arrive at Appellants’ claimed invention. App. Br. 11-13; Reply Br. 8. ANALYSIS With respect to independent claim 65, and similarly, independent claims 70 and 75, the Examiner finds Stuart discloses a method for use in a computer system comprising at least one host and at least one storage system having all the claimed limitations, except for the wherein clauses “[W]herein a previously-defined retention period for the unit of content is stored in the unit of content, wherein the request identifies the unit of content using a content address generated, at least in part, from at least a portion of the content of the unit of content and wherein the at least a portion of the content of the unit of content includes the previously-defined retention period and at least some other content in the unit of content.” Ans. 5-6 (citing Stuart, ¶¶ [0019]-[0020], [0093]-[0094], FIG. 4 and FIG. 9) (emphasis added). The Examiner then cites McGovern for disclosing features of the wherein clauses missing from Stuart. Ans. 6 (citing McGovern, ¶¶ [0017] and [0020]). Paragraph [0017] of McGovern discloses: WORM storage system utilizes, so-called “Content Addressable Storage,” (CAS) for management of stored records. CAS relies Appeal 2012-001046 Application 10/731,790 5 on computing digital signatures, using an algorithm such as an MD5 hash, of the contents of any WORM-stored records to create a unique key (of “content address”) for each and every record. A representation of the digital signature of a record is used as the “key,” or “content address,” with which any future reference to the stored object must be made. (Emphasis added). Paragraph [0020] of McGovern discloses: This invention overcomes the disadvantages of the prior art by providing a specified retention date within a data set that is locked against deletion or modification within a WORM storage implementation. This retention date scheme . . . employs native functionality within conventional file (or other data containers, data sets or block-based logical unit numbers) properties available in commonly used operating systems. In an illustrative embodiment, the retention date/time is calculated by querying the file’s last-modified time prior to commit, adding the retention period to this value and thereby deriving a retention date after which the file can be released from WORM. Prior to commit, the computed retention date is stored in the file’s “last access time” property/attribute field, or another metadata field (typically open protocol-based) that remains permanently is associated with the file and that, in being used for retention date, does not interfere with file management in a WORM state. . . . Once stored, the retention date in this field is locked against modification. Where extension (never reduction) of a retention period is desired, the last access time field be updated, wherein the retention period extension is added to the existing last access time value to derive a new, later retention date for the file. Upon expiry of the retention date, the system allows deletion of the expired WORM file/data set. (Emphasis added). Appeal 2012-001046 Application 10/731,790 6 Based on such factual findings from Stuart and McGovern in the same field of endeavors, the Examiner concludes that: [I]t would have been obvious . . . to combine Stuart and McGovern in order to protect data files such that only unnecessary data can be deleted. Using the file identifier generated from the content of the file would prevent accidentally deleting files based on similar filenames. Ans. 6 (emphasis added). Appellants do not dispute the Examiner’s factual findings regarding Stuart. Instead, Appellants dispute the Examiner’s findings regarding McGovern and the Examiner’s rationale for combining Stuart and McGovern. App. Br. 7-15; Reply Br. 5-9. In particular, Appellants acknowledge McGovern teaches storing a retention period for a file (i.e., unit of content) in metadata associated with the file. App. Br. 7 (citing McGovern, ¶¶ [0018], [0020], and [0094]-[0095]). Nevertheless, Appellants argue McGovern’s content address for the file is not generated based on the retention period. Id. In particular, Appellants contend McGovern does not disclose “a content address generated using a retention period.” App. Br. 8- 11; Reply Br. 5-7 (emphasis omitted). According to Appellants, McGovern does not disclose that: (1) the retention period is stored as part of the content of a content unit (id. at 9); and (2) a content address of a file generated from content that “includes the previously-defined retention period” (id. at 9-11). In addition, Appellants also contend there is no reason to combine Stuart and McGovern. App. Br. 11-13; Reply Br. 8. According to Appellants, Stuart discloses two embodiments of a data storage system that is capable of specifying retention data. The first embodiment discloses the retention period is available through a directory structure created to store files, Appeal 2012-001046 Application 10/731,790 7 whereas the second embodiment discloses information pertaining to the retention period is stored in metadata associated with each record or directory. Id. at 12 (citing Stuart, ¶ [0047]). Consequently, there is no reason to store retention data in the “‘last access time’” field of McGovern since both Stuart and McGovern discuss parallel solutions to the same problem. Id. at 12. Appellants further argue the Examiner has not explained how features of Stuart and McGovern are combined to meet all limitations of the claims, i.e., a “content address generated . . . includes the previously- defined retention period.” Id. at 13. The Examiner responds in part that Appellants’ arguments are not commensurate with the scope of claims 65, 70, and 75 because these claims do not recite the disputed limitation “content address generated using a retention period.” Ans. 13. According to the Examiner, these claims only require that a “‘content address generated, at least in part, from at least a portion of the content of the unit of content’” but “‘a part’” of a “portion of the content” is undefined, and may or may not include “the previously- defined retention period.” Id. at 16. We do not agree with the Examiner. At the outset, we note that claim terms are given their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). However, the broadest-construction rubric does not give the Examiner an unfettered license to ignore or misinterpret claim terms and replace therefore with a different meaning. In re Suitco Surface Inc., 94 USPQ2d 1640, 1644 (Fed. Cir. 2010). Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) Appeal 2012-001046 Application 10/731,790 8 (“The claims of a patent are always to be read or interpreted in light of its specifications.” (Citation omitted)). Claims 65, 70, and 75 recite, in part, “a content address generated, at least in part, from at least a portion of the content of the unit of content” and that “portion of the content of the unit of content includes [A] the previously-defined retention period and [B] at least some other content in the unit of content.” Because the content address is generated from a portion of content and that same portion of content includes a previously-defined retention period, we agree with Appellants’ interpretation that the content address must be generated from content that includes, at least, the “‘previously-defined retention period.’” Reply Br. 5. This interpretation is also consistent with Appellants’ Specification, where a “content address” is described as being “generated based upon the content of the data itself” and that “a retention period which is included in the content of the CDF” (content descriptor file) [which is included in content data]. See Appellants’ Spec. 6:17-18, 8:12-25, and 11:19-23. Given this interpretation, we nevertheless agree with, and adopt, the Examiner’s findings that McGovern teaches all features of the wherein clauses missing from Stuart. Ans. 14-16 (citing McGovern, ¶¶ [0017], [0020] and [0143].) For example, paragraph [0017] of McGovern teaches a “content address” generated from content of records (i.e., unit of content) the same way as Appellants’ content addressable storage (CAS) applications as described on page 6 of Appellants’ Specification. Id. at 14. Likewise, paragraph [0020] of McGovern teaches providing a specified retention date within a data set (i.e., unit of content) and storing the computed retention date in the file’s “‘last access time’ property/attribute field, or another Appeal 2012-001046 Application 10/731,790 9 metadata field … associated with the file” (i.e., content includes previously- defined retention period). Id. at 14-16 (citing McGovern, ¶ [0143].) Therefore, contrary to Appellants’ arguments, we find McGovern teaches a content address of a file generated from content that “includes the previously-defined retention period.” Lastly, we recognize that the Examiner must articulate some “reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, such a reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In the instant appeal, the Examiner has provided a rationale supporting the obviousness conclusion, i.e., to protect data files such that only unnecessary data can be deleted, and using the file identifier generated from the content of the file would prevent accidentally deleting files based on similar filenames, as suggested by McGovern. Ans. 6, 17. Appellants have not demonstrated the Examiner’s rationale is erroneous or why a person of ordinary skill in the art would not have reached the conclusions reached by the Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[T]he proper Appeal 2012-001046 Application 10/731,790 10 question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.”). Consequently, we are not persuaded that the Examiner failed to articulate a rationale for combining Stuart and McGovern. For the reasons set forth above, we find no reversible error in the Examiner’s position and, as such, sustain the Examiner’s obviousness rejection of Appellants’ independent claims 65, 70, and 75 over Stuart and McGovern. With respect to dependent claims 66-69, 71-74, and 76-78, Appellants present no separate patentability arguments. App. Br. 14-15. For the same reasons discussed, we also sustain the Examiner’s obviousness rejections of dependent claims 66-69, 71-74, and 76-78. CONCLUSION On the record before us, we conclude the Examiner has not erred in rejecting claims 65-78 under 35 U.S.C. § 103(a). Appeal 2012-001046 Application 10/731,790 11 DECISION As such, we AFFIRM the Examiner’s final rejection of claims 65-78.4 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 cdc 4 In the event of further prosecution, we suggest the Examiner consider whether claim 70 recite statutory subject matter under § 101. Claim 70 could be broadly construed to cover forms of non-transitory tangible media and transitory propagating signals in view of the ordinary and customary meaning of computer readable storage media, particularly when Appellant’s Specification is silent. As such, claim 70 could be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007); U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential), available at http://www.uspto.gov/ip/boards/bpai/ decisions/prec/fd2012007692.pdf.