INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Aug 3, 2021

2020003138 (P.T.A.B. Aug. 3, 2021)

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.
14/636,869 03/03/2015 David A. BRETTELL TUC920140126US1 (0685) 2221
138093 7590 08/03/2021
Griffiths & Seaton PLLC (IBM)
860 Blue Gentian Road
Suite 200
St. Paul, MN 55121
EXAMINER
BIRKHIMER, CHRISTOPHER D
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
docketing@gs-iplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DAVID A. BRETTELL, VANESSA R. EARLE,
ALAN J. FISHER, and DUKE A. LEE
________________

Appeal 2020-003138
Application 14/636,869
Technology Center 2100
________________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 3–9, 11–17, and 19–24.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
INVENTION
The invention relates to improved virtual tape storage using inter-
partition logical volume copies. Spec. ¶ 1. Claim 1 is illustrative of the

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, International Business Machines
is the real party in interest. Appeal Br. 2.
2 Claims 2, 10, and 18 are cancelled. Appeal Br. 30, 32, 35.
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Application 14/636,869
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invention and is reproduced below with emphases denoting the disputed
limitations:
1. A method for storing data in a virtual data storage
environment, by a processor, the method comprising:
in a virtualized tape storage environment, creating a
plurality of partitions on a single virtual tape storage library
node serving data to a plurality of clients via a network, each
partition having unique attributes allowing for specific data
management,
replicating a logical volume across the plurality of
partitions within the single, virtual tape storage library node, the
plurality of partitions being in a cache of the virtual tape library
node such that a plurality of copies of the logical volume are
redundantly stored in each one of the plurality of partitions in the
cache of the virtual tape storage library node; wherein at least a
first one of the plurality of copies of the logical volume
comprising a primary copy of the logical volume is stored on a
first tapeless, resident partition, a second one of the plurality of
copies of the logical volume is stored on a second tape partition,
and a third one of the plurality of copies of the logical volume is
stored on a third tape partition, thereby increasing availability
and redundancy of the logical volume for disaster recovery
operations,
upon initiating a service mode of the virtual tape storage
library node, entering individual ones of the plurality of
partitions into the service mode such that respective ones of the
plurality of clients access the logical volume through one of the
plurality of copies in one of the plurality of partitions not entered
into the service mode, and
associating each of the plurality of copies of the logical
volume in each of the plurality of partitions with a respective
expiratory time during a delete expire processing operation;
wherein, when including the logical volume for deletion during
the delete expire operation, the primary copy of the plurality of
copies of the logical volume is deleted notwithstanding the
second and third ones of the plurality of copies of the logical
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volume are withheld from deletion until the logical volume is
required for reuse as scratch.
Appeal Br. 12 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 1, 3–9, 11–17, 19–24 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 4–6.
The Examiner rejects claims 1, 3–9, 11–17, 19–24 under 35 U.S.C.
§ 112(b) as being indefinite. Final Act. 6–7.
The Examiner rejects claims 1, 3–9, 11–17, 19–24 under 35 U.S.C.
§ 112(a) as failing to comply with the enablement requirement. Final Act.
7–11.
ANALYSIS
I. Claims 1, 3–9, 11–17, and 19–24 rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement
The Examiner finds that the Specification and Drawings fail to
provide adequate written description support for the italicized limitations
above. Ans. 4–7; Final Act. 2–3. In particular, the Examiner finds that
“[s]aying something is fully accessible until a certain time does not by itself
require that the data be deleted after the specific time.” Ans. 6.
Appellant argues that paragraphs 15, 16, 21, 31, 33, and 39 of the
Specification provide support for the italicized limitations above. Appeal
Br. 14–17; Reply Br. 2–4. In particular, Appellant argues that paragraph 39
provides support for the limitation “the second and third ones of the plurality
of copies of the logical volume are withheld from deletion until the logical
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volume is required for reuse as scratch.” Appeal Br. 17; Reply Br. 3. We
disagree with Appellant.
It is well settled that a description that merely renders the invention
obvious does not satisfy the written description requirement. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
banc). Here, paragraph 39 of the Specification states:
Storage servers, such as the IBM TS 7720™ include delete
expire processing functionality. When a logical volume
undergoes delete expire processing, the data is deleted from
cache and also the logical volume maps-to-physical volume
records are removed. Once the logical volume maps-to-physical
volume records are deleted, it is very difficult to restore the data
if the action was inadvertently initiated. In one embodiment of
the present invention utilizing IPC functionality, the delete
expire processing algorithm may change such that each logical
volume copy per logical partition may or may not have an
associated expired time. For example, if a logical volume has a
copy in the resident partition and another in a tape partition, the
copy in the resident partition may be deleted while the copy on
tape remains fully accessible until the host application needs to
reuse the logical volume as scratch. This provides a safety buffer
for data that was inadvertently placed for delete expire
processing.
Spec. ¶ 39 (emphasis added).
Although paragraph 39 pertains to delete expire processing, we
interpret the first three sentences of paragraph 39 to describe the prior art,
and the remaining sentences to describe how Appellant’s invention
differentiates from the prior art. Spec. ¶ 39. Also, we interpret the sentence
“[i]n one embodiment of the present invention utilizing IPC functionality,
the delete expire processing algorithm may change such that each logical
volume copy per logical partition may or may not have an associated
expired time” (emphasis added) as meaning Appellant’s invention might not
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delete the copy in the tape after the host application needs to reuse the
logical volume as scratch.
Moreover, we agree with the Examiner’s finding that “[s]aying
something is fully accessible until a certain time does not by itself require
that the data be deleted after the specific time.” Ans. 6. Stated another way,
the Specification’s disclosure of “the copy in the resident partition may be
deleted while the copy on tape remains fully accessible until the host
application needs to reuse the logical volume as scratch” does not provide
adequate written description support for the limitation “the second and third
ones of the plurality of copies of the logical volume are withheld from
deletion until the logical volume is required for reuse as scratch.” This is
because the disclosure that “the copy in the resident partition may be deleted
while the copy on tape remains fully accessible until the host application
needs to reuse the logical volume as scratch” (emphasis added) does not
require deletion after the host application needs to reuse the logical volume
as scratch (as stated above); rather, this disclosure might mean that the copy
on tape remains partially accessible after the host application needs to reuse
the logical volume as scratch.
At best, a skilled artisan would recognize Appellant’s disclosure of
“the copy in the resident partition may be deleted while the copy on tape
remains fully accessible until the host application needs to reuse the logical
volume as scratch” (Spec. ¶ 39) would render obvious the claim 1 limitation
“the second and third ones of the plurality of copies of the logical volume
are withheld from deletion until the logical volume is required for reuse as
scratch,” which is insufficient in showing possession. See Ariad, 598 F.3d at
1352.
Appellant does not argue claims 3–9, 11–17, and 19–24 separately
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with particularity. Appeal Br. 14–17. Accordingly, we sustain the
Examiner’s rejection of: (1) independent claims 1, 9, and 17; and (2)
dependent claims 3–8, 11–16, and 19–24 under 35 U.S.C. § 112(a), written
description.
Accordingly, we sustain the Examiner’s rejection of: (1) independent
claims 1, 9, and 17; and (2) dependent claims 3–8, 11–16, and 19–24 under
35 U.S.C. § 112(a), written description.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
II. Claims 1, 3–9, 11–17, and 19–24 rejected under 35 U.S.C. § 112(b)
as being indefinite
The Examiner concludes the italicized limitations above are indefinite
because the Specification lacks support, which renders the scope of the
italicized limitations uncertain. Ans. 8–9; Final Act. 6–7.
Appellant argues that the metes and bounds of the italicized claim
limitations is shown clearly when read in light of paragraphs 15, 16, 21, 31,
33, and 39 of the Specification. Appeal Br. 17–21 (citing Spec. ¶¶ 15, 16,
21, 31, 33, 39); Reply Br. 7. We agree with Appellant.
As an initial matter, we adopt Appellant’s interpretation of a “node,”
which is a “connection point in a network such as a computer or server.”
Reply Br. 2, 6, 7; Appeal Br. 17–21 (citing Spec. ¶¶ 15, 16, 21, 31, 33).
Appellant’s paragraph 33 of the Specification describes a stand-alone server
such as IBM TS 7700 series, which is a node because it is a connection point
in a network such as a computer or server. Appeal Br. 17–21 (citing Spec.
¶¶ 15, 16, 21, 31, 33); Reply Br. 2, 7.
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Furthermore, we agree with Appellant’s argument that the
Specification’s disclosure of a “virtual tape library (VTL) is a data storage
virtualization technology,” the “virtual tape storage products . . . for
example, the IBM TS7700™ Series of Enterprise Tape Storage Solutions
consist of two models, the TS7720 Virtualization Engine (TS7720 VE™)
and TS7740 Virtualization Engine (TS7740 VE™),” “server systems, such
as the IBM TS7720™,” and “client computers 111 may be connected to the
server 112 through a local area network” clearly provide the metes and
bounds of “a single virtual tape storage library node serving data to a
plurality of clients via a network.” Appeal Br. 19 (citing Spec. ¶¶ 15, 16,
21).
Moreover, we agree with Appellant’s argument that definiteness of
the claim is shown when read in light of the Specification because the
Specification states a “the delete expire processing algorithm may change
such that each logical volume copy per logical partition may or may not
have an associated expired time” (emphasis added); “expired time” provides
the metes and bounds for “expiratory time.” Appeal Br. 20–21 (citing Spec.
¶ 39); Reply Br. 3, 6–7 (citing Spec. ¶ 39). Therefore, paragraph 39 of the
Specification clearly provides the metes and bounds of the limitation
“associating each of the plurality of copies of the logical volume in each of
the plurality of partitions with a respective expiratory time during a delete
expire processing operation.” Appeal Br. 20–21 (citing Spec. ¶ 39); Reply
Br. 3, 6–7 (citing Spec. ¶ 39).
We also agree with Appellant’s argument that the Specification’s
disclosure of “the delete expire processing algorithm may change such that
each logical volume copy per logical partition may or may not have an
associated expired time” (emphases added), which clearly provides the
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metes and bounds for the limitation “wherein, when including the logical
volume for deletion during the delete expire operation, the primary copy of
the plurality of copies of the logical volume is deleted.” Appeal Br. 20–21
(citing Spec. ¶ 39).
Additionally, we agree with Appellant’s argument that the
Specification’s discussion of “if a logical volume has a copy in the resident
partition and another in a tape partition, the copy in the resident partition
may be deleted while the copy on tape remains fully accessible until the host
application needs to reuse the logical volume as scratch” (emphasis added)
provides a skilled artisan with the metes and bounds of the limitation “the
primary copy of the plurality of copies of the logical volume is deleted
notwithstanding the second and third ones of the plurality of copies of the
logical volume are withheld from deletion until the logical volume is
required for reuse as scratch.” Appeal Br. 17 (citing Spec. ¶ 39); see also
Spec. ¶ 32 (discussing the elements of Figure 6 and stating “[a] primary
copy of the logical volume may be stored on a tapeless (resident) partition
602, a secondary copy on tape partition A 604, and another secondary copy
on tape partition B 606,” which provides the metes and bounds for the
limitation “second and third ones of the plurality of copies”).
We determine that a skilled artisan would interpret the claimed
“deletion” of the copy as an obvious modification of the copy on tape
“remain[ing] fully accessible until the host application needs to reuse the
logical volume as scratch” disclosed in the Specification. See also supra § I.
(discussing that a skilled artisan would recognize that the limitation
“withheld from deletion until the logical volume is required for reuse as
scratch” is an obvious variation of “remains fully accessible until the host
application needs to reuse the logical volume as scratch” recited in
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paragraph 39 of the Specification).
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 1, 9, and 17; and (2) dependent claims 3–8, 11–16,
and 19–24 under 35 U.S.C. § 112(b).
III. Claims 1, 3–9, 11–17, and 19–24 rejected under 35 U.S.C. § 112(a)
as failing to comply with the enablement requirement
The Examiner concludes the italicized limitations fail to comply with
the enable requirement because there are multiple limitations that are not
described in the Specification and result in undue experimentation to teach a
skilled artisan in how to make and use the full scope of the claimed
invention. Ans. 9–13; Final Act. 7–11.
Appellant argues that the Specification provides support for the
italicized limitations in paragraphs 15, 16, 21, 31, 33, and 39 of the
Specification, which provide sufficient teachings to a skilled artisan in how
to make and use the full scope of the claimed invention without undue
experimentation. Appeal Br. 21–27 (citing In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988)); Reply Br. 7–9 (citing In re Wands, 858 F.2d at 737). We
agree with Appellant.
Enablement is a question of law involving underlying factual
inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365
(Fed. Cir. 1997). “To be enabling, the specification of a patent [application]
must teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Genentech, Inc. v.
Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). Determining the need for
“undue experimentation” is not “a single, simple factual determination, but
rather is a conclusion reached by weighing many” factors. In re Wands,
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858 F.2d 731, 737 (Fed. Cir. 1988). Those factors (the Wands factors)
include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. (citing In re Forman, 230 USPQ 546, 547 (BPAI 1986)).
In this case, Appellant refers us to paragraphs 15, 16, 21, 31, 33, and
39 of the Specification, which provide sufficient teachings to a skilled
artisan in how to make and use the full scope of the claimed invention
without undue experimentation, which we adopt. Appeal Br. 21–27; Reply
Br. 7–9. Moreover, Appellant provides sufficient explanations as the
italicized limitations pursuant to the Wands factors, which we also adopt.
Appeal Br. 21–27 (citing In re Wands, 858 F.2d at 737); Reply Br. 7–9
(citing In re Wands, 858 F.2d at 737).
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 1, 9, and 17; and (2) dependent claims 3–8, 11–16,
and 19–24 under 35 U.S.C. § 112(a), enablement.
IV. Objection to the drawings and the Specification
Ordinarily, we will not review the Examiner’s objection to the
drawings and objection3 to the Specification. See MPEP § 706.01 (“The
practical difference between a rejection and an objection is that a rejection,
involving the merits of the claim, is subject to review by the Patent Trial and

3 We note that on pages 14–15 of the Specification, paragraph 40 precedes
paragraph 36. Spec. 14–15. In the event of further prosecution, the
Examiner may want to consider having Appellant correct the numbering of
the paragraphs.
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Appeal Board, while an objection, if persisted, may be reviewed only by way
of petition to the Director of the USPTO.”) (emphasis added); see also
37 C.F.R. § 1.181 (describing a petition to the Director of the USPTO). The
exception where the basis of the objection relates to matters involved in the
rejection. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that
there are many kinds of decisions made by examiners that are not appealable
to the Board when they are not directly connected with the merits of issues
involving rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971)); see also MPEP 2163.06(II) (“If both the claims and
specification contain new matter either directly or indirectly, and there has
been both a rejection and objection by the examiner, the issue becomes
appealable and should not be decided by petition.”) (emphasis added).
The Examiner finds that the Specification and Drawings fail to
provide adequate support for the italicized limitations above. Ans. 4–7;
Final Act. 2–3.
Appellant argues that paragraph 39 of the Specification provides
sufficient support for the italicized limitations above. Appeal Br. 11–14.
Reply Br. 2–4.
We disagree with Appellant for the reasons articulated supra in § I.
We, therefore, discern no error in the Examiner’s objection to the
Specification and Drawings.

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CONCLUSION

Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject claims 1,
3–9, 11–17, and 19–24. See 37 C.F.R. § 41.50(a)(1). See 37 C.F.R.
§ 41.50(f).
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). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9,
11–17,
19–24
112(a) Written
Description
1, 3–9,
11–17,
19–24

1, 3–9,
11–17,
19–24
112(b) Indefiniteness 1, 3–9,
11–17,
19–24
1, 3–9,
11–17,
19–24
112(a) Enablement 1, 3–9,
11–17,
19–24
Overall
Outcome
1, 3–9,
11–17,
19–24