Ex Parte Chennamsetty et al

Patent Trial and Appeal Board

Sep 19, 2018

14307395 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/307,395 06/17/2014 Ramamohan Chennamsetty
46917 7590 09/21/2018
KONRAD RA YNES DAVDA & VICTOR, LLP.
ATTN: IBM37
350 SOUTH BEVERLY DRIVE, SUITE 360
BEVERLY HILLS, CA 90212
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUC920130177US 1 3087
EXAMINER
AGHARAHIMI, F ARHAD
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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 RAMAMOHAN CHENNAMSETTY, BLAINE H. DOLPH,
SANDEEP R. PATIL, and RIY AZAHAMAD M. SHIRAGUPPI
Appeal2018-003702
Application 14/307 ,395
Technology Center 2100
Before MAHSHID D. SAADAT, JUSTIN BUSCH, and BETH Z. SHAW,
Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1--4, 7-11, 14--18, and 20-23. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Br. 1.
2 Claims 5, 6, 12, 13, and 19 have been canceled.
Appeal2018-003702
Application 14/307 ,395
STATEMENT OF THE CASE
Appellants' invention relates to "the placement of data fragments
generated by an erasure code in distributed computational devices based on a
deduplication factor." Spec. ,r 1. Claim 1 is illustrative of the invention and
reads as follows:
1. A method comprising:
generating, via a file division and erasure code
application executing in a controlling computational device,
data fragments and parity fragments of a first file; and
distributing each of the generated data fragments and
parity fragments of the first file in a different distributed
computational device of a plurality of distributed computational
devices, wherein distributing of a generated data fragment of
the first file comprises:
determining whether any distributed computational
device already stores a duplicate copy of the generated
data fragment of the first file, wherein the duplicate copy
is a data fragment of a second file;
in response to determining that a distributed
computational device already stores the duplicate copy
that is a data fragment of the second file, then in response
to the distributed computational device already storing
another data fragment of the first file besides the
generated data fragment of the first file, removing the
already stored another data fragment of the first file from
the distributed computational device for placement in
another distributed computational device; and
subsequent to removing the another data fragment
of the first file from the distributed computational device,
placing the generated data fragment of the first file in the
distributed computational device in which the duplicate
copy that is a data fragment of the second file is already
stored.
2
Appeal2018-003702
Application 14/307 ,395
The Examiner rejected claims 1-3, 8-10, 15-17, and 21-23 under
35 U.S.C. § I02(a)(l) as anticipated by Bates (US 2009/0235022 Al;
published Sept. 17, 2009), and further added Patel (US 2003/0135514 Al;
published July 17, 2003) and Shavit (US 2008/0228691 Al; published Sept.
18, 2008) to reject the remaining claims under 35 U.S.C. § I03(a). See Final
Act. 2-17.
ANALYSIS
Appellants contend that Bates relates "to deduplication and to the
storage of data and parity in various types of RAID systems," but fails to
teach the claimed limitations of:
removing the already stored another data fragment of the
first file from the distributed computational device for
placement in another distributed computational device; and
subsequent to removing the another data fragment of the
first file from the distributed computational device, placing the
generated data fragment of the first file in the distributed
computational device in which the duplicate copy that is a data
fragment of the second file is already stored.
Br. 11-12. Appellants further challenge the Examiner's reliance on
inherency in explaining Bates' disclosure. Br. 14.
The Examiner responds by restating the teachings of Bates in Figure 1
and paragraphs 3 and 6 that describe a RAID array having multiple parity
blocks allows rebuilding the array. Ans. 3. The Examiner further explains
that
Bates discloses file and block level deduplication, which is well
understood in the art to contemplate storage of one copy of a
data block for multiple files (see Bates, paragraph [0028-
0029]). In order to preserve the ability of the RAID formation
3
Appeal2018-003702
Application 14/307 ,395
to rebuild itself in the event of the failure of one or more
storage devices, it is inherent that every block of a file be stored
on separate devices. Combined with deduplication, which is
also taught by Bates, it is inherent that subsequent blocks of a
first file cannot be stored on the same storage device as a
storage device that contains a block of a second file that is a
duplicate of the first block of the first file. To do otherwise
would defeat the purpose of a RAID 6 formation.
Ans. 3--4. The Examiner further finds that the above-discussed RAID 6 is
required to store data blocks and parity blocks on separate drives to rebuild
the data that is lost on a failed storage device. Ans. 4.
We agree with Appellants. Here, Appellants correctly contend that
Bates does not teach the claim requirement that "before placing the
generated data fragment of the first file in the distributed computational
device in which the duplicate copy that is a data fragment of the second file
is already stored, the another data fragment of the first file that is different
from the generated data fragment of the first file is removed from the
distributed computational device for placement in another distributed
computational device." See Br. 14.
To the extent the Examiner asserts that the claimed order of storing
the generated data fragment of the first file and removing another data
fragment of the first file is inherent in Bates, the Examiner makes
insufficient findings in the record before us to support a determination of
inherency. "It is well settled that a prior art reference may anticipate when
the claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) ( citations and internal quotation marks omitted). The Examiner has
4
Appeal2018-003702
Application 14/307 ,395
the burden of providing reasonable proof that a claim limitation is an
inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55
(CCP A 1977); see also Crown Operations Int 'l, LTD v. Solutia Inc., 289
F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this "burden of
production by 'adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond."' In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007)). The burden of proof then shifts to the applicant "to prove
that the subject matter shown to be in the prior art does not possess the
characteristic relied on." Best, 562 F.2d at 1254-55; In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner
established a prima facie case of anticipation, the burden of proof was
properly shifted to the inventor to rebut the finding of inherency). Here, the
Examiner finds "RAID 6 requires every data block and parity block for a
stripe must be stored on a separate drive" and not doing so "would defeat the
purpose of the RAID 6 array, which is to rebuild data lost on a failed storage
device using the data blocks and parity blocks on the remaining storage
devices," (Ans. 4), but this finding, standing alone, does not support a
determination that the claimed sequence of storing and removing data
fragments is inherent in Bates.
Accordingly, we do not sustain the 35 U.S.C. § 102(e) rejection of
claim 1, independent claims 8 and 15 reciting similar limitations, or claims
2, 3, 9, 10, 16, 17, and 21-23 dependent therefrom. We do not sustain the
35 U.S.C. § 103(a) rejection of the remaining claims because the Examiner
relies on Bates in the same manner discussed above in the context of claim
5
Appeal2018-003702
Application 14/307 ,395
1, and has not identified any teachings in the other applied prior art to
overcome the above-noted deficiency of Bates.
DECISION
We reverse the decision of the Examiner to reject claims 1-3, 8-10,
15-17, and 21-23.
REVERSED
6