Ex Parte Kushwah et al

Patent Trials and Appeals Board

Jan 15, 2013

11084065 - (D) (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AJAY PRATAP SINGH KUSHWAH, AKHIL KAUSHIK,
JIAN XING, MAYANK JOSHI, PASHUPATI KUMAR,
SUBRAMANIAM PERIYAGARAM,
RANGARAJAN SURYANARAYANAN, and YOGITA BIJANI
____________

Appeal 2010-004937
Application 11/084,065
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, BRUCE R. WINSOR, and
BARBARA A. BENOIT, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-7 and 9-20, which constitute all the claims pending in
this application. Claim 8 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and designate a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellants’ invention relates to electronic information management.
Spec. ¶ [0002]. Output from an application to an operating system is
monitored substantially continuously, it is determined if a policy applies to
data associated with the output, and the policy is executed if the policy
applies. Abstract. Claims 1, 3, and 10, which are illustrative of the
invention, read as follows:
1. A method for information management comprising:
monitoring output from an application to an operating
system which if executed causes data protected by a backup
application to be deleted, wherein the output is monitored
substantially continuously;
determining if a policy applies to the data which would
be deleted if the output were executed; and
executing the policy if the policy applies, including by
determining whether the policy allows deletion of the data.
3. The method of claim 1, wherein executing the policy
includes determining whether to store the data in a high
performance storage media.
10. The method of claim 1, wherein executing the policy
includes maintaining a copy of the data if the policy does not
allow deletion of the data.
Claims 1-4, 10, 15, 17, 19, and 201 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Lewis (US 2002/0083037 A1; June 27, 2002).
Ans. 3-8.
Claims 13, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lewis. Ans. 9-10.

1 The Answer lists claim 8 in the grounds for rejection (Ans. 3, 5); however,
claim 8 is cancelled (App. Br. 2, 12; see Amendment filed August 29, 2008).
Accordingly, claim 8 is not before us.
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Claims 5-7, 9, 11, 12, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lewis and Manley (US 7,043,485 B2; May 9, 2006;
filed Mar. 19, 2002). Ans. 10-14.
Rather than repeat the arguments here, we refer to the Briefs (App.
Br., Reply Br.) and the Answer (Ans.) for the respective positions of
Appellants and the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues raised by Appellants’ contentions are as follows:
Does Lewis disclose “determining if a policy applies to the data which
would be deleted if the output were executed” (hereinafter the “claim 1
determining step”), as recited in claim 1?
Does Lewis disclose “executing the policy includes determining
whether to store the data in a high performance storage media” (hereinafter
the “claim 3 determining step”), as recited in claim 3?
Does Lewis disclose “executing the policy includes maintaining a
copy of the data if the policy does not allow deletion of the data”
(hereinafter the “maintaining step”), as recited in claim 10?

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ANALYSIS
CLAIMS REJECTED AS ANTICIPATED BY LEWIS
Claim 1
The Examiner finds that Lewis discloses the claim 1 determining step.
Ans. 4 (citing Lewis ¶¶ [0004] (ll. 9-12), [0012], [0052]). The Examiner
explains as follows:
[B]ecause there are no conditions for “determining if a policy
applies to the data [...]” a mere loading of computer executable
instructions of the above policy would indeed cause the
computer to determine that a policy applies. Because the policy
is associated with data which would be deleted, this allows the
computer to “determine[e] if a policy applies to the data which
would be deleted if the output were executed.”
Ans. 15 (brackets in original).
Appellants contend as follows:
[In the invention of claim 1], there are two decisions made: 1) is
there a policy which applies and 2), if so, does the policy permit
deletion? Using Lewis’ technique, there is no check prior to
deletion of a snapshot of whether there is any policy which
applies to the snapshot being deleted and (if so) whether that
policy permits deletion.
App. Br. 8.
Loading a policy to keep (e.g., by not deleting) blocks which
are still in use and delete those blocks which are not in use is
not the same thing as determining if a policy applies to data.
For example, suppose Lewis’ policy is loaded as computer
executable instructions onto a computer. If that computer with
Lewis’ policy loaded onto it is given some data (specifically,
“data which would be deleted if the output were executed”) and
an instruction to delete that data, that computer would not first
determine whether a policy applies to that data. It would go
straight to execution of the policy, for example with the thought
process: “You’ve asked me to delete this data; is the data in use? If yes, keep; if no, delete.” The
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thought process is not “You’ve asked me to delete this data; is
there a policy that applies to the data?...” Furthermore, at the
time of loading a policy there is no “output from an application
to an operating system” nor is there “data which would be
deleted if the output were executed”. How can a determination
be made (as argued by the Examiner) if the data related to the
determination is not yet in existence?
Reply Br. 4-5.
We agree with the Examiner. The claim has no limitations as to how
or when the determining step occurs, nor does it require that the determining
step be performed by a computer or computer program. Furthermore, claim
1 does not recite that the determining step examines items of output or data
individually, or that it follows or is linked to the monitoring step recited in
claim 1. Accordingly, the claim 1 determining step does not preclude a
programmer determining that a policy applies to data which would be
deleted if the output were executed and in accordance with that
determination loading the policy instructions into a computer that would
execute the policy.
Accordingly, Appellants have not persuaded us of error in the
rejection of claim 1 and we will sustain the rejection of (1) claim 1; (2)
claims 17 and 20, which were argued together with claim 1; and (3) claims
2, 4, 15, and 19, which depend variously from claims 1 and 17 and were not
separately argued with particularity.
Claim 3
The Examiner finds that Lewis discloses the claim 3 determining step.
Ans. 5 (citing Lewis ¶ [0015] (ll. 3-5)). The Examiner concedes that
Lewis’s “disclosure does not make clear who or what makes the decision to
move to high performance media.” Ans. 16. However, the Examiner takes
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substantially the same positions with regard to the claim 3 determining step
as with the claim 1 determining step, i.e., that the claim 3 determining step
“could be performed by software in the computer, it could be performed by a
programmer designing the software, it could be selected by user input, etc.”
Id.
Appellants contend that the claim 3 determining step requires that:
the determination is specifically with respect to data which is
“protected by a backup application”. The listing of possible
types of storage by Lewis is with respect to the invention as a
whole (, e.g., “the invention is operative on...” and “it is still
possible for the invention...”) and does not specifically refer to
“data protected by a backup application”.
Reply Br. 5.
We agree with Appellants. The claim 3 determining step recites that
determining whether to use high performance media is a part of the step of
executing the policy recited in claim 1. Accordingly, it cannot be made in
advance by a programmer but must be made with regard to the data upon
which the executing step operates, i.e., not the “whole invention.” The
Examiner has not established that the claim 3 determining step is performed
as a part of the step of executing the policy, and therefore has not established
that claim 3 is anticipated by Lewis.
Accordingly, we will not sustain the rejection of claim 3.
Claim 10
The Examiner finds that Lewis discloses the maintaining step. Ans. 5
(citing Lewis ¶ [0052] (ll. 3-7)). The Examiner explains that “snapshots
which are not desired for deletion are maintained, furthermore because a
snapshot is a copy of data to begin with and snapshots are ‘data protected by
a backup application.’” Ans. 17. Lewis discloses:
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Blocks not used in the active file system 110 are not
necessarily available for allocation or reallocation because the
blocks may be used by snapshots. Blocks used by snapshots
are freed by removing a snapshot using the snap delete
command. When a snapshot is deleted any block used only by
that snapshot and not by the other snapshots nor by the active
file system becomes free for reuse by WAFL [Write Anywhere
File Layout]. If no other snapshot or active files uses the block,
then the block can be freed, and then written over during the
next copy-on-write operation by WAFL.
Lewis ¶ [0052].
Appellants contend that Lewis does not describe maintaining
snapshots according to a policy. App. Br. 11. Although Appellants’
contention may be correct, it does not persuade us that the Examiner’s
rejection of claim 10 as anticipated by Lewis is in error. In particular, we
construe “data which would be deleted if the output were executed” to
encompass the data included in Lewis’s blocks. See Lewis ¶ [0052]. Lewis
discloses a file management procedure, i.e., a “policy,” wherein if the active
file system or any snapshot is using a block, the block may not be allocated
or reallocated, i.e., deletion is not allowed and the data in the block is
maintained. Id. On the other hand, “[i]f no other snapshot or active files
uses the block, then the block can be freed, and then written over during the
next copy-on-write operation,” i.e., the data in the block may be deleted. Id.
Accordingly, we will sustain the rejection of 10. However, because
we are sustaining the rejection with an explanation of Lewis’s disclosure that
differs from that articulated by the Examiner, we will designate our
affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b).

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CLAIMS REJECTED AS UNPATENTABLE OVER LEWIS
We will sustain the rejection of claims 13, 14, and 16, which depend
from claim 1 and were not separately argued with particularity. See App.
Br. 11.

CLAIMS REJECTED AS UNPATENTABLE OVER LEWIS AND MANLEY
We will sustain the rejection of claims 5-7, 9, 11, 12, and 18, which
depend variously from claims 1 and 17 and were not separately argued with
particularity. See App. Br. 11.

ORDER
The decision of the Examiner to reject claims 1, 2, 4-7, and 9-20 is
affirmed.2 We designated the rejection of claim 10 as a new ground of
rejection under 37 C.F.R. § 41.50(b).
The decision of the Examiner to reject claim 3 is reversed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

2 In the event of further prosecution of claim 20, or claims in similar form,
we leave to the Examiner to ascertain whether such claims are directed to
statutory subject matter under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010).
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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