Theresa M. Brown et al.

Patent Trials and Appeals BoardNov 14, 2019

14071529 - (D) (P.T.A.B. Nov. 14, 2019)

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. 14/071,529 11/04/2013 Theresa M. Brown TUC920120085US2 1080 46917 7590 11/14/2019 KONRAD, RAYNES, DAVDA & VICTOR LLP ATTN: IBMTUC 350 SOUTH BEVERLY DRIVE, SUITE 360 BEVERLY HILLS, CA 90212 EXAMINER FAYE, HANNAH A ART UNIT PAPER NUMBER 2139 NOTIFICATION DATE DELIVERY MODE 11/14/2019 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): krvuspto@ipmatters.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THERESA M. BROWN, NEDLAYA Y. FRANCISCO, SUGUANG LI and BETH A. PETERSON ____________ Appeal 2018-008603 Application 14/071,529 Technology Center 2100 ____________ Before JOHNNY A. KUMAR, STEVEN M. AMUNDSON, and JASON M. REPKO, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 23, 25, and 26, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant has filed a related Appeal in copending U.S. Patent Application No. 13/759,935. App. Br. 3. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as International Business Machines Corporation. App. Br. 2. Appeal 2018-008603 Application 14/071,529 2 STATEMENT OF THE CASE The Invention The invention concerns “performing point in time copy operations from source volumes to space efficient target volumes in two stages via a non-volatile storage.” Spec. ¶ 1.3 Representative Claim Independent claim 1 exemplifies the subject matter of the claims under consideration and reads as follows: 1. A method, comprising: in response to receiving, by a controller, a request from a host to perform a point in time copy operation from a source volume to a space efficient target volume, performing a first set of operations, the first set of operations comprising: updating a bitmap metadata to indicate tracks to be copied for the point in time copy operation, and in response to updating the bitmap metadata sending an indication to the host that the point in time copy operation is complete even though a corresponding physical point in time copy of data stored in the tracks has not committed; and in response to updating the bitmap metadata, copying, via the controller, by using the bitmap metadata, data stored in the tracks indicated in the bitmap metadata, from the source volume to a non-volatile storage to preserve the point in time copy operation; and subsequent to completion of the first set of operations, performing a second set operations, comprising asynchronously copying, via a background process, the data copied in the first set 3 This decision employs the following abbreviations: “Spec.” for the Specification, filed Nov. 4, 2013; “Final Act.” for the Final Office Action, mailed July 27, 2017; “App. Br.” for the Appeal Brief, filed Mar. 7, 2018; “Ans.” for the Examiner’s Answer, mailed June 28, 2018; and “Reply Br.” for the Reply Brief, filed Aug. 28, 2018. Appeal 2018-008603 Application 14/071,529 3 of operations to the non-volatile storage, from the nonvolatile storage to the space efficient target volume to perform a commit of the physical point in time copy of the data from the source volume to the space efficient target volume, wherein the copying of the data from the source volume to the non-volatile storage takes less time in comparison to directly copying the data from the source volume to the space efficient target volume, and wherein the asynchronous copying of the data via the background process takes more time than the copying of the data from the source volume to the non-volatile storage. App. Br. 21 (Claims App.). The Rejections on Appeal Claim 1, 23, 25 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Burton et al. (US 2005/0251634 A1, pub. Nov. 10, 2005) and in view of Lorenz et al. (US 2008/0077629 A1, pub. Mar. 27, 2008). Claim 2 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burton and Lorenz in view of Kiselev (US 8,001,085 B1, iss. Aug. 16, 2011). ANALYSIS We have reviewed the rejection of the pending claims in light of Appellant’s arguments that the Examiner erred. In doing so, we have evaluated only the arguments that Appellant actually makes on appeal. Independent Claim 1 Claim 1 recites a method where a first set of operations require, inter alia, “copying . . . data stored in the tracks indicated in the bitmap metadata, from the source volume to a non-volatile storage to preserve the point in time copy operation” (step 1); and a second set of operations require, inter alia, “asynchronously copying, via a background process, the data copied in the first set of operations to the non-volatile storage” (step 2); and “wherein Appeal 2018-008603 Application 14/071,529 4 the asynchronous copying of the data via the background process takes more time than the copying of the data from the source volume to the non-volatile storage” (disputed time limitation). App. Br. 21 (Claims App.). The Examiner finds that Burton discloses the disputed time limitation of claim 1. Final Act. 3–4 (citing Burton ¶ 3). Paragraph 3 of Burton discloses: Point in time copying is as of a point in time, unlike synchronous mirroring which is a continuous process of copying data as it updated, but which prevents any updating from occurring by failing to complete the updating storage transaction for the data at a source until after that updating data has also been stored at a target. Asynchronous mirroring also is continuous, but may appear to be quicker, and is a complex process that requires that the updating data is first stored by the source data storage, and requires that safeguards are in place to assure that it will ultimately be stored at the target data storage. Among other things, Appellant argues that Paragraph 3 of Burton does not teach the disputed time limitation, i.e., “wherein the asynchronous copying of the data via the background process takes more time than the copying of the data from the source volume to the non-volatile storage” Reply Br. 3–4 (emphasis added). In particular, Appellant argues that “[p]aragraph 3 of the cited Burton appears to be comparing asynchronous mirroring to synchronous mirroring, and seems to be indicating that asynchronous mirroring may appear to be quicker than synchronous mirroring.” Id. at 4 (citing Burton, ¶ 3). We agree with Appellant that the Examiner has not adequately explained how Burton teaches the disputed time limitation of claim 1. Accordingly, we find that the Examiner has failed to show that Burton teaches that the asynchronous copying of the data via the background Appeal 2018-008603 Application 14/071,529 5 process takes more time than the copying of the data from the source volume to the non-volatile storage as required by the claims. Based on the record before us, we do not sustain the obviousness rejection of claim 1 based on Burton and Lorenz. Because this determination resolves the appeal with respect to this claim, we need not address Appellant’s other arguments regarding Examiner error. Dependent Claims 2, 23, 25, and 26 Claims 2, 23, 25, and 26 depend directly from claim 1. App. Br. 21– 23 (Claims App.). For the reasons discussed regarding independent claim 1, we do not sustain the obviousness rejections of these dependent claims. Appeal 2018-008603 Application 14/071,529 6 CONCLUSION4 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 23, 25, 26 103 Burton, Lorenz 1, 23, 25, 26 2 103 Burton, Lorenz, Kiselev 2 Overall Outcome 1, 2, 23, 25, 26 REVERSED 4 We note claim 1 recites wherein the asynchronous copying of the data via the background process (step 2) takes more time than the copying of the data from the source volume to the non-volatile storage (step 1). Our reviewing court guides: where “the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option,” a solution that is obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). Applying this reasoning here, we note the limited, finite set of three possibilities —the steps may occur such that (1) step 1 takes more time than step 2; (2) step 2 takes more time than step 1; or (3) step 1 and step 2 take the same time. Therefore, in the event of further prosecution the Examiner should ascertain whether modifying Burton (1) would have merely been a predictable result and (2) would have been obvious to try, and thus claim 1 should be rejected under 35 U.S.C. § 103(a).