Ex Parte Tripathi

Patent Trial and Appeal Board

May 1, 2017

11597674 (P.T.A.B. May. 1, 2017)

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.
11/597,674 01/22/2007 Shailendra Tripathi 82188137 6729
56436 7590 05/03/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
05/03/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAILENDRA TRIPATHI
Appeal 2017-000898
Application 11/597,674
Technology Center 2100
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
JASON J. CHUNG, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000898
Application 11/597,674
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 5—8, and 19. Claims 2, 4, 9-18, and 20 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
THE INVENTION
The claims are directed to pathname translation used, for example, to
access a file stored by a computer system. Spec. 3:4—13. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A pathname translation system for translating a pathname that
comprises one or more components, the system comprising:
a central processing unit (CPU) on which a file system and
an operating system run;
wherein said operating system is to perform pathname
translation by:
searching a name cache for said components that contains
pathname translations for directories in said file system;
searching for said components in a directory cache only
upon the name cache search not resulting in finding the searched
for components; and
searching said file system for said components only upon
the directory cache search not resulting in finding the searched
for components.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Factor US 6,094,706 July 25,2000
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REJECTIONS
The Examiner made the following rejections:
Claims 1,3, 5—8 and 19 stand rejected under 35U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2—3.
Claims 1,3, 5—8 and 19 stand rejected under 35U.S.C. § 101 as
directed to non-statutory subject matter, i.e., merely the abstract idea of
performing a sequence of searches. Final Act. 3.
Claims 1, 3, 5, 7, 8 and 191 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Applicant admitted prior art (AAPA) and Factor.
Final Act. 4—8.
APPELLANT’S CONTENTIONS
1. In connection with the rejections under 35 U.S.C. § 112, second
paragraph, Appellant contends:
a. “[Fjinding components that contain pathname translations is the
same as performing a pathname translation” as recited by
independent claims 1 and 19. Br. 10.
b. The Examiner’s finding that there is a lack of antecedent basis
for “the components found in said name cache, said directory
cache and said file system” is based on an improper “all-or-
nothing” interpretation of independent claim 3. Br. 13—15.
2. Appellant contends the rejection under 35 U.S.C. § 101 is improper
because
a. The claimed invention is not merely an abstract idea but “a
method for performing pathname translation that is executable
1 The rejection of claim 6 under 35 U.S.C. § 103(a) has been withdrawn.
Ans. 2.
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Application 11/597,674
by a computer” that minimizes the problem of performing I/O
operations. Br. 17—18.
b. The claims include hardware features constituting meaningful
limitations beyond any abstract idea. Br. 18—21.
3. Appellant contends the rejection under 35 U.S.C. § 103(a) is improper
because, although AAPA and Factor each disclose initially searching
a cache for pathname components prior to searching the on-disk file
structure directory, neither teaches or suggests first searching for
components in a name cache, if not found there, searching a directory
cache and, if still not found, searching a file system. Br. 23—29.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred in rejecting claims 1,3, 5—8, and 19
under one or more of 35 U.S.C. §§ 101, 103(a), and 112, second paragraph.
Except in connection with the rejection of claim 3 under 35 U.S.C. § 112,
second paragraph, we agree with Appellant’s conclusions as to the
impropriety of these rejections of the claims. In connection with the
aforementioned rejection of claim 3, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 3) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 5—8) and
concur with the conclusions reached by the Examiner. We highlight the
following for emphasis.
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35U.S.C.§ 112
In connection with independent claims 1 and 19 the Examiner finds it
is not clear how a pathname is translated solely based on the recited steps of
searching for components of a pathname. Final Act. 2—3. Accordingly, the
Examiner concludes the claims are indefinite. Id. Appellant argues “the
term ‘pathname translation’ [recited by the claims] refers to the information
contained in a name cache or directory cache that is ultimately used to locate
a file or directory.” Br. 10 (citations omitted). Appellant concludes “finding
components that contain pathname translations is the same as performing a
pathname translation”. Id. In response, the Examiner disagrees with
Appellant concerning the asserted equivalency between finding components
that contain pathname translations and performing a translation. The
Examiner further finds the claims are not limited to situations wherein there
is a successful search for pathname components such that, in some situations
wherein all searches fail, no translation can be or is performed. Ans. 4—5.
We are not persuaded the claims are indefinite. As Appellant argues,
the Specification discloses “pathname translation ... is performed . . . when
the operating system . . . searches [] the name cache [] for the next
component... of the pathname.” Spec., p.9,11. 6—11. Thus, searching and
finding pathname components is a method of translating a pathname.
Merely because there is the possibility the search for pathname components
will be unsuccessful is insufficient to render the claim indefinite as one of
skill in the art would recognize the translation function would result in, for
example, the return of an appropriate error code indicating the pathname
could not be resolved. Accordingly, we do not sustain the rejection of claims
1 and 19 under 35 U.S.C. § 112, second paragraph, as being indefinite.
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In connection with claim 3 the Examiner finds there is insufficient
antecedent basis for the limitation “the components found in said name
cache, said directory cache, and said file system . . . because components are
not claimed as being found in all three locations.” Final Act. 3. Appellant
argues “[pathname] components are found in all three locations and
combined to yield the complete pathname translation.” Br. 13. According
to Appellant, the steps of claim 3 are iterated until all components of the
pathname are found such that “[s]ome of the components will have been
located in the name cache, some in the directory cache, and some in the file
system on disk.” Id.
We agree with the Examiner in concluding claim 3 is indefinite.
Contrary to Appellant’s argument, there is no suggestion, much less
requirement, for the steps of the claim to be repeated iteratively until all
pathname components are found, that components be found in each of three
locations (i.e., in the name cache, directory cache, and file system), or
multiple components be combined to form a complete pathname translation.
Instead, claim 3 only requires searching up to three locations but, at most,
finding a searched-for component in one of those locations. Therefore,
when interpreted as urged by Appellant, it is not clear how a file can be
accessed “using a pathname based on the components [plural] found in [each
of] said name cache, said directory cache, and said files system.”
Accordingly, we sustain the rejection of claim 3 and, by inherency of the
same defect, the rejection of dependent claims 5—8 under 35 U.S.C. § 112,
second paragraph.
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35 U.S.C.§ 101
The Examiner finds the claims are directed “to an abstract idea
because they are merely directed to a sequence of searches.” Final Act. 3.
The Examiner further finds “[t]he step of formulating a pathname based on
found components is also an abstract idea since is does not describe how the
formulation is done. It may be a manipulation of existing information based
on logical relationships which is an abstract idea.” Id. The Examiner also
finds “[t]he claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception.” Id.
Appellant argues the claims are not merely directed to searching but to
performing pathname translation by a CPU or computer that reduces the
amount of disk I/O operations by using two caches, i.e., a name cache and a
directory cache. Br. 17. Appellant further argues, even if an abstract idea,
the claims recite additional features that constitute significant meaningful
limitations beyond an abstract idea. Br. 18. Accordingly, Appellant asserts
“[t]he instant claims result in far fewer disk I/O operations for each
pathname that is translated. As a result, the computer will require less time
and incur less overhead expense in that it is no longer necessary to
frequently perform a time-intensive and costly disk I/O operation for each
pathname translation.” Id. The Examiner responds by finding “[t]he
claimed CPU, storage medium, and processor are recited at a high level of
generality and only perform the generic function of searching. Generic
computers performing generic computer functions without an inventive
concept, do not amount to significantly more than the abstract idea.” Ans. 8.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. 2347, 2355 (Fed. Cir. 2014) {citingMayo, 132 S. Ct. 1289, 1294
(Fed. Cir. 2012)). The Supreme Court’s framework indicates it must first be
determined whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas) (id. ). If so, a
second determination must be made to “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application (id.).
The difficulty with the Examiner’s finding under the first part of the
Alice framework, i.e., that the claims encompass an abstract idea, is the lack
of sufficient analysis or reasoning in arriving at the judicial exception. The
Examiner simply asserts the claims encompass an abstract idea “because
they are merely directed to a sequence of searches.” Final Act. 3. However
the Examiner provides insufficient analysis of the claim language including
the overarching step of performing a pathname translation or the
requirements for searching specific computer structures and systems, i.e.,
caches and a file system. In other words, the Examiner has not shown the
method simply describes the concept of “a sequence of searches.” See Ans.
14.
Therefore, the Examiner’s determination of the abstract idea under the
first step of the Alice inquiry is unfounded. As such, we need not proceed in
analyzing the Examiner’s determination as to the second step of the Alice
inquiry. Accordingly, we do not sustain the rejection of claims 1, 3, 5—8, and
19 under 35 U.S.C. § 101.
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35 U.S.C. § 103(a)
The Examiner finds AAPA’s disclosure of searching a name cache for
a pathname components and, if not found in the cache, extending the search
to a file system teaches the first and third searching steps of claim 1. Final
Act. 3. The Examiner finds Factor’s cache, including “the entire on-disk
representation of a file structure directory for namespace resolution /
pathname translation” which is searched prior to extending the search to a
file system, teaches the missing second, intermediate step of searching a
directory cache. Id. The Examiner concludes the combination of AAPA and
Factor teaches or suggests the three searching steps and locations of claim 1.
Final Act. 6. Appellant argues, inter alia, neither AAPA nor Factor teaches
or suggests “searching the directory cache only upon the name cache not
resulting in finding the searched-for components.” Br. 24. The Examiner
responds by finding
The difference between AAPA and the claims is that AAPA is
missing is [sic] the intermediate step of searching a directory
cache before searching the disk file system. The Factor reference
has been applied to show that it would have been obvious for an
ordinary artisan at the time of the invention to include another
cache for searching before having to resort to searching the disk
file system.
Ans. 11.
We are not persuaded by the Examiner’s reasoning. Both AAPA and
Factor disclose a single cache. There is no teaching of using multiple caches
whereby, if a cache miss occurs in a first cache, a search is then conducted of
a second cache prior searching a file system. Stated differently, the cited
portions of AAPA and Factor relied upon by the Examiner fail to teach
initially searching a first cache, then subsequently searching a second cache
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if a cache miss occurs in the first cache. Therefore, in the absence of
evidence of a multitier cache system, we agree with Appellant the
combination of AAPA and Factor fails to teach or suggest “searching for said
components in a directory cache only upon the name cache search not
resulting in finding the searched for components.” Br. 24 quoting claim 1.
Accordingly, we do not sustain the rejection of independent claim 1 or, for
the same reasons, the rejection of independent claims 3 and 19 under 35
U.S.C. § 103(a) over AAPA and Factor. We do not sustain the rejection of
dependent claims 5, 7, and 8 under 35 U.S.C. § 103(a) for the same reasons.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). We reject independent claims 1, 3, and 19 under
35 U.S.C. § 103(a) as being unpatentable over AAPA, Factor, and Perrin et
al. (US 6,618,792 Bl; Sept. 9, 2003) (“Perrin”).
The combination of AAPA and Factor teaches or suggests all the
limitations of independent claims 1,3, and 19 for the reasons set forth by the
Examiner (Final Act. 4—7) except for “searching for said components in a
directory cache only upon the name cache search not resulting in finding the
searched for components.” In the same field of endeavor Perrin teaches a
multilevel caching system for locating data in computer systems. Perrin,
Abstract. In response to a request to locate a file identified by a filename
(e.g., a pathname), Perrin’s file locator manager searches a primary-cache
for information about how to access the file and, if not found there, searches
a secondary cache before resorting to searching the persistent-storage-device
(e.g., disk) where the file is stored. Perrin col. 5,11. 25—48. Thus, the
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combination of AAPA, Factor, and Perrin teaches or suggests the step of
searching for components in a directory cache (Perrin’s secondary cache)
only upon the name cache search (the search of Perrin’s primary cache) not
resulting in finding the searched for components (Perrin’s file access
information). It would have been obvious to one of ordinary skill in the art
at the time of the invention to combine the teachings of the cited references
because Perrin’s multilevel cache system would achieve increased efficiency
by further minimizing file system accesses and associated I/O costs and
allow appropriate caching strategies to be utilized at the different caching
levels. Perrin col. 3,11. 17—24.
Accordingly, for the reasons discussed supra, we find the combination
of AAPA, Factor, and Perrin teaches or suggests the subject matter of claims
1, 3, and 19.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection regarding
independent claims 1, 3, and 19 under 35 U.S.C. § 103(a), pursuant to
37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims
to the extent necessary to determine whether those claims are unpatentable
over AAPA, Factor, and Perrin, or other prior art. We leave it to the
Examiner to ascertain the appropriateness of any further rejections based on
these or other references. Our decision not to enter a new ground of
rejection for all claims should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the non-rejected
claims. See MPEP § 1213.03.
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DECISION
We reverse the Examiner’s decision rejecting claims 1 and 19 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We affirm the Examiner’s decision rejecting claims 3 and 5—8 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We reverse the Examiner’s decision rejecting claims 1,3, 5—8 and 19
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
We reverse the Examiner’s decision rejecting claims 1, 3, 5, 7, 8 and
19 under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Factor.
We newly reject independent claims 1, 3, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA, Factor, and Perrin.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] 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 prosecution will be remanded to the
examiner. The new ground[s] of rejection [are] binding upon the
Examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground[s] of rejection designated in this
decision. Should the examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state
all other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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