MICROSOFT CORPORATION

Patent Trials and Appeals Board

Jul 15, 2020

14177810 - (D) (P.T.A.B. Jul. 15, 2020)

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.
14/177,810 02/11/2014 DAVID ALLEN GOEBEL 341206-US-NP/202749 5405
45809 7590 07/15/2020
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
MCQUITERY, DIEDRA M
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
IPDocket@shb.com
docket.shb@clarivate.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID ALLEN GOEBEL and IOAN OLTEAN
_____________

Appeal 2019-006547
Application 14/177,810
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
BETH Z. SHAW, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is MICROSOFT TECHNOLOGY LICENSING, LLC. See Appeal Br. 3.
Appeal 2019-006547
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “[v]arious methods
and systems for in-place unformatting of disks.” Abstract.

Illustrative Independent Claim 1
1. A distributed system comprising:

a preparation component configured for:

creating a backup file on a disk;

a preformatting component configured for:

using the backup file to occupy a predetermined location that
defines a backup zone on the disk, wherein the backup file is
stored in the backup zone,

[L1] wherein the backup zone includes a first portion of the
backup file in a first portion of the backup zone as a space-
holder for backing up primal data, and

[L2] wherein the backup zone includes a second portion of the
backup file in a second portion of the backup zone as a space-
holder for backing up file table data;

copying primal data from a primal zone to the first portion of
the backup zone;

overwriting the first portion of the backup file in the first
portion of the backup zone, wherein overwriting the first

2 We herein refer to the Final Office Action, mailed Oct. 10, 2018 (“Final
Act.”); Appeal Brief, filed Mar. 8, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed July 2, 2019 (“Ans.”); and the Reply Brief, filed Sept. 3,
2019 (“Reply Br.”).
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portion of the backup file backs up metadata files in the first
portion of the backup zone, wherein the primal data comprises
metadata;

copying file table data to the second portion of the backup zone;
and

overwriting the second portion of the backup file in the second
portion of the backup zone, wherein overwriting the second
portion of the backup file backs up a file system structure in the
in the second portion of the backup zone, wherein
the file table data comprises the file system structure; and

a formatting component configured for:

formatting the disk having the primal data and the file table data
in the backup zone;

an unformatting component configured for:

copying the primal data from the backup zone to the primal
zone;

copying the file table data to at least a file table zone; and

unformatting the disk to a preformat configuration.

Appeal Br. 22–23, “CLAIMS APPENDIX” (bracketed lettering added and
disputed limitations “L1” and “L2” emphasized).

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Dimitri et al. US 2003/0158997 A1 Aug. 21, 2003
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Application 14/177,810

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Kameda et al. US 2007/0064547 A1 Mar. 22, 2007
Pudipeddi et al. US 2007/0143563 A1 June 21, 2007
Kapoor et al. US 2007/0220032 A1 Sept. 20, 2007
Ragner US 7,814,554 B1 Oct. 12, 2010
Afonso et al. US 8,375,003 B1 Feb.12, 2013

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1, 7–11,
15–20
103 Kameda et al. (“Kameda”), Afonso et
al. (“Alfonso”), Kapoor et al.
(“Kapoor”)
B 2, 3, 5 103 Kameda, Afonso, Kapoor, Dimitri
C 4 103 Kameda, Afonso, Kapoor, Dimitri et
al. (“Dimitri”), Ragner
D 6, 12–14 103 Kameda, Afonso, Kapoor, Pudipeddi
et al. (“Pudipeddi”)

Analysis
Issues under § 103
Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following argued limitations regarding Rejection A of independent claims 1,
9, and 18.
Did the Examiner err by finding that Kameda, Afonso, and Kapoor
collectively teach or suggest limitations “L1” and “L2:”
[L1] wherein the backup zone includes a first portion of the
backup file in a first portion of the backup zone as a space-
holder for backing up primal data, and

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[L2] wherein the backup zone includes a second portion of the
backup file in a second portion of the backup zone as a space-
holder for backing up file table data [,]
within the meaning of independent claim 1?3
The Examiner reads the disputed dispositive L1 limitation of claim 1
on Kameda, at paragraphs 49, 53, 55, 63, 66, and Figures 2F and 4B. See
Final Act. 5–6. The Examiner also reads the disputed L2 limitation of claim
1 on Kameda, at paragraphs 53, 55, 63, 66, and Figures 2F and 4B. See
Final Act. 6.
The Examiner finds “Kameda fails to explicitly disclose:”
• creating a backup file on a disk;

• a preformatting component configured for: using the backup
file to occupy a predetermined location that defines a backup
zone on the disk, wherein the backup file is stored in the backup
zone;

• [a] backup zone as a space-holder;

• overwriting the first portion of the backup file in the first
portion of the backup zone, wherein overwriting the first
portion of the backup file backs up metadata files in the first
portion of the backup zone, wherein the primal data comprises
metadata; [and]

• overwriting the second portion of the backup file in the second
portion of the backup zone, wherein overwriting the second
portion of the backup file backs up a file system structure in the
in the second portion of the backup zone, wherein the file table
data comprises the file system structure.

3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
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Final Act. 7–8 (underlining omitted).
However, the Examiner finds the cited portion of Afonso (at column
11, lines 42–58) teaches, creating a backup file on a disk at column, using
the backup file to occupy a predetermined location that defines a backup
zone on the disk, wherein the backup file is stored in the backup zone, and
using the backup zone as a space-holder. See Final Act. 8 (citing Afonso,
col. 11, ll. 42–58).
The Examiner additionally finds that the same paragraph 52 of
Kapoor teaches or suggests the two recited “overwriting” limitations recited
in claim 1.
Appellant disagrees with the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness. On pages 12 and 13 of the
Appeal Brief, Appellant focuses the argument on limitation L1 of claim 1:
[L1] wherein the backup zone includes a first portion of the
backup file in a first portion of the backup zone as a space-
holder for backing up primal data. . . .
Appeal Br. 12.
Appellant traverses the teachings of Kameda, and contends:
By way of background, Kameda is directed to extracting
effective file management data, and saving the effective
management data to “an area outside the terminal area.” See
Kameda at ¶ [0049]. Specifically, prior to formatting the optical
disk, the effective management data is extracted, from portions
of the disk and stored in the area outside the terminal area of the
disk, which is a single designated area for storing the single
type of data (i.e., the effective management data). In this regard,
Kameda only discusses saving all effective file management
data into a single area.
Appeal Br. 13.
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Appellant traverses the teachings of Afonso, and contends:
Afonso allows for saving a compressed backup file of the
virtual machine disk file(s) without writing the backup file to a
disk of the backup proxy. Id. at C11:L54-56. “For instance, each
of the data blocks associated with a write operation can be
compressed and saved to an alternative destination on disk
identified by the intercept module.” Id at C11:L56-59.
However, merely creating and saving a compressed backup file
in an alternative destination, as in Afonso, is not the same as a
backup zone that includes a first portion of the backup file in a
first portion of the backup zone as a space-holder for backing
up primal data, and the backup zone further including a second
portion of the backup file in a second portion of the backup
zone as a space-holder for backing up file table data.
Appeal Br. 15 (emphasis added and omitted).
As an initial matter of claim construction, we focus our analysis on
the claim terms “primal data” and “file table data.” Claim 1. Turning to the
Specification, at paragraph 24 for context, we find a description of primal
data as being contained within “[a] primal zone [that] generally refers to
areas of the volume that the file system will allocate first as files are written
to a freshly formatted volume . . . Accordingly data in the primal zone is
referred to herein as primal data.”
In contrast, the Specification, at paragraph 24, describes a file table as
follows: “A file table generally refers to a file system (e.g., NTFS) structure
that defines the files on a volume. A file table may include information
about where data is located, and the associated metadata.” 4
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s arguments with respect to disputed limitation

4 “NTFS” refers to Microsoft’s “New Technology File System.” See Spec.
¶ 18.
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L1 as not being taught by Kameda or Afonso.
We find Kameda’s Figure 4B depicts that only the file management
data (corresponding to the claimed “file table”) is backed up. Based upon
our review, we find the user data area in Kameda (corresponding to
Appellant’s claimed “primal data”), as depicted in Figures 4A and 4B, is not
backed up. We further agree with Appellant’s arguments that Afonso does
not remedy the deficiency in Kameda regarding disputed limitation L1 of
claim 1. See Appeal Br. 15.
We additionally find a preponderance of the evidence supports
Appellant’s closing argument in the Reply Brief:
At most, Kameda uses a single area to back up only effective
file management data. See Kameda at ¶ [0049]. FIGS. 4A and
4B (aspects emphasized below using dashed boxes) clearly
depict that only a single area is used during the backup process
(e.g., to save the file management data). Specifically, prior to
formatting the optical disk, effective management data is
extracted (e.g., from the file management data area), and stored
in the area outside the terminal area of the disk (e.g.,
emphasized file management data (including space area)),
which is a single designated area for storing the single
type of data (i.e., the effective management data). FIGS. 4A and
4B also depict a user data area. However, this user data area
merely stores user data. Nothing in Kameda discusses a
separate area used . . . for backing up this user data (which the
Examiner correlates with primal data). Further,
nothing in Kameda discusses even backing up this user data.
The present application, on the other hand, has a backup
zone that includes a first portion for backing up primal data and
a second portion for backing up file table data.
Reply Br. 2–3 (emphasis omitted).
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As noted above, the Examiner only relies upon the tertiary Kapoor
reference, at paragraph 52, to teach or suggest the two recited “overwriting”
limitations recited in claim 1. See Final Act. 9.
Therefore, for essentially the same reasons argued by Appellant in the
Briefs, as discussed above, we find disputed limitation L1 of claim 1 is not
taught or suggested by the Examiner’s proffered combination of Kameda,
Afonso, and Kapoor.
Accordingly, we are constrained on this record to reverse the
Examiner’s obviousness Rejection A of independent claim 1. Remaining
independent claims 9 and 18, also rejected under Rejection A, recite the
disputed limitation L1 of claim 1 using similar language of commensurate
scope.
Therefore, for the same reasons, we also reverse the Examiner’s
Rejection A of independent claims 9 and 18. Because we have reversed the
Examiner’s Rejection A of each independent claim on appeal, we also
reverse the Examiner’s Rejection A of each associated dependent claim.

Rejection B of Claims 2, 3, 5,
Rejection C of Claim 4,
Rejection D of Claims 6, 12–14

In light of our reversal of Rejection A of independent claims 1, 9, and
18, supra, we also reverse obviousness rejection B of claims 2, 3, and 5,
obviousness Rejection C of claim 4, and obviousness Rejection D of claims
6 and 12–14.
On this record, the Examiner has not shown how the additionally-
cited secondary references overcome the aforementioned deficiencies with
respect to the base combination of Kameda, Afonso, and Kapoor, as
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Application 14/177,810

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discussed above regarding independent claims 1, 9, and 18, as rejected under
Rejection A.
Accordingly, we are constrained on this record to reverse the
Examiner’s obviousness rejections A, B, C, and D of all claims 1–20 on
appeal.

CONCLUSION
The Examiner erred in rejecting claims 1–20, as being obvious under
35 U.S.C. § 103, over the cited combinations of references.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–11,
15–20
103 Kameda, Afonso,
Kapoor
1, 7–11,
15–20
2, 3, 5 103 Kameda, Afonso,
Kapoor, Dimitri
2, 3, 5
4 103 Kameda, Afonso,
Kapoor, Dimitri,
Ragner
4
6, 12–14 103 Kameda, Afonso,
Kapoor, Pudipeddi
6, 12–14
Overall
Outcome
1–20

REVERSED