Ex Parte Venkatesh et al - Page 3

                Appeal 2007-0398                                                                                
                Application 10/308,445                                                                          

           1           Appellants contend that the claimed subject matter would not have                        
           2    been obvious.  More specifically, Appellants contend that:                                      
           3           (1) as to claims 11, 16, and 29, even if combined the reference                          
           4           disclosures do not result in “decoding of the pathnames . . . for the                    
           5           group of related snapshot systems” (Br. 31); and                                         
           6           (2) as to claims 20, 27, 36, and 38, improper hindsight has been used                    
           7           as the references fail to show a production file system configured to                    
           8           have related snapshot file systems (Br. 44, 47, and 50).                                 
           9    The Examiner contends that claims 11, 16, and 29 do not recite “decoding                        
          10    the pathnames” (Answer 49) and any hindsight reasoning has been proper                          
          11    (Answer 53-56).                                                                                 
          12           We reverse.                                                                              
          13                                       ISSUES                                                       
          14           Has Appellant shown that the Examiner has failed to establish one                        
          15    skilled in the art would have combined Chen and DeKoning to provide                             
          16    access to “a group of related snapshot file systems . . . ” as required by                      
          17    claims 11, 16, and 29?                                                                          
          18           Has Appellant shown that the Examiner has failed to establish one                        
          19    skilled in the art would have combined Chen and DeKoning and Patel to                           
          20    provide a server for operating “related snapshot file systems . . . ” as                        
          21    required by claims 20, 27, 36, and 38?                                                          
          22                                                                                                    
          23                                FINDINGS OF FACT                                                    
          24           Appellants invented a client-server protocol method and server for                       
          25    directory access of snapshot file storage systems (Specification 13:11-12).                     


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