INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardAug 3, 20212020003138 (P.T.A.B. Aug. 3, 2021) Copy Citation 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. Appeal 2020-003138 Application 14/636,869 2 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 Appeal 2020-003138 Application 14/636,869 3 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 Appeal 2020-003138 Application 14/636,869 4 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 Appeal 2020-003138 Application 14/636,869 5 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 Appeal 2020-003138 Application 14/636,869 6 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. Appeal 2020-003138 Application 14/636,869 7 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 Appeal 2020-003138 Application 14/636,869 8 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 Appeal 2020-003138 Application 14/636,869 9 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, Appeal 2020-003138 Application 14/636,869 10 858 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. Appeal 2020-003138 Application 14/636,869 11 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. Appeal 2020-003138 Application 14/636,869 12 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 Copy with citationCopy as parenthetical citation