Ex Parte Camble et al

Patent Trial and Appeal Board

Mar 19, 2013

10033003 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER THOMAS CAMBLE and JEFF J. KATO
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Appeal 2010-005125
Application 10/033,003
Technology Center 2400
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Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a system and method for using
partitioning to provide capacity on demand in data libraries. (See Spec. ¶
[0002]).
Claim 1 is illustrative of the invention and reads as follows:
1. A method for providing data storage capacity on demand
comprising:
disabling a set of slot elements and data transfer elements of a
data library disallowing access to said disabled set by end users of
said library;
partitioning at least a portion of a set of active data media
storage slot elements and active data transfer elements of said data
library, exclusive of said disabled set, into partitions for use by said
end users; and
redefining said sets in response to changes in storage capacity
rights of said end users.

The Examiner’s Rejections
Claims 1-6, 8, 12-16, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Abboud (US 6,636,958 B2; Oct. 21, 2003) and
Schubert (US 6,742,034 B1; May 25, 2004). Ans. 4.
Claims 7, 9-11, 17, and 19-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Abboud, Schubert and Darago (US 6,606,664
B2; Aug. 12, 2003). Ans. 7.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5-25, and the Reply Brief, pages 2-8.
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Dispositive Issues: Did the Examiner err in finding that the
combination of Abboud and Schubert teaches or suggests “disabling a set of
slot elements and data transfer elements of a data library disallowing access
to said disabled set by end users of said library” (hereinafter
“disabling/disallowing access” feature), and “redefining said sets in response
to changes in storage capacity rights of said end users” (hereinafter
“redefining/capacity rights” feature), as recited in claim 1? (Emphases
added). Did the Examiner err in rejecting claim 1 as being obvious because
the Examiner used improper hindsight?
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
While Appellants admit that in Abboud “the disabled element
constitutes the inactive server application,” and in Schubert “‘disabled slot
elements’ are created by masking them from a certain host,” Appellants
contend that neither Abboud nor Schubert teaches or suggests the disputed
limitations emphasized above (App. Br. 6-8, Reply Br. 4-5), because the
disabled elements of Schubert are accessible by end users. Reply Br. 4. In
particular, Appellants argue that “Schubert only teaches masking other
available logical storage devices from host 12, not disallowing access to
disabled slot and data transfer elements to (all) end users of a data library.”
App. Br. 8. (Emphasis added).
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The Examiner correctly finds that claim 1 does not recite all end
users. Ans. 12. Thus, Appellants’ arguments are not commensurate with the
scope of the claims.
With regard to the “disabling/disallowing access” feature, Appellants
have not provided an explicit definition of “disabling” or “disallowing
access” in their Specification. The Specification discloses:
Also in accordance with the present invention active storage capacity
may be reduced and formerly active drives or slots may be disabled.
These disabled drives and slots may remain reserved for use by the
initial user or may become available for reservation or use by other
users.
Spec. ¶ [0023] (emphases ours).

Thus, according to Appellants’ Specification, the disabled drives are
available for use by other users. Although this disclosure is not limiting of
the claimed invention, it provides context for which the
“disabling/disallowing access” features are interpreted.
The Examiner finds that Schubert teaches that “some storage elements
are masked to certain end users.” Ans. 12 (citing Schubert, col.7, ll. 27-45;
col. 9, ll. 13-26). In other words, although the masked storage elements are
not accessible to some end users, they are available for use by other users.
Consistent with the Examiner’s stated position (Ans. 11-12) and based
on the broadest reasonable interpretation consistent with Appellants’
disclosure, including masking of certain storage elements to certain end
users is not precluded by the claim language. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
With regard to the “redefining/capacity rights” features, Appellants’
Specification does not provide any definition giving special meaning and
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thereby limiting the scope of “redefining…in response to changes in storage
capacity.” The Specification only states that redefining is done “by moving
at least one element between the subsets in response to changes in storage
capacity needs of the customer.” Spec. ¶ [0005] (emphases added).
Therefore the phrase “redefining/capacity rights” is to be given its plain
meaning unless inconsistent with the Specification. See In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358
F.3d 1371, 1372 (Fed. Cir. 2004).
The Examiner has found the phrase “redefining/capacity rights” to
encompass changing or reallocating the storage size when more memory is
required. Ans. 11-12. We find that this construction of the
“redefining/capacity rights” claim elements to be both reasonable and
consistent with the Specification.1 Id. Appellants have not presented any
persuasive evidence to convince us that the Examiner’s interpretation of
“redefining/capacity rights” is in error.
Given the above construction, the Examiner correctly points out (Ans.
11-12) that Abboud explicitly discloses changing the partition sizes when
more memory is required (citing to Abboud, col. 7, ll. 21-36). Ans. 11.
We also do not agree that the Examiner’s rejection is an improper
hindsight reconstruction as it does not include knowledge gleaned only from
the Appellants’ disclosure, but rather takes into account the teachings of
Abboud and Schubert; i.e., knowledge which was within the level of
ordinary skill at the time the claimed invention was made. See In re

1 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification.)
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McLaughlin 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based on hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill in the art at the time the claimed invention
was made and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.”).
Further, we deem that intelligent management of computer storage
space by disabling certain resources so that space is freed up for the users to
be well known and within the skill of an artisan. Ans. 4. Contrary to
Appellants’ allegation, the Examiner has not resorted to hindsight.

Regarding claims 2-23, while Appellants raised additional arguments
for patentability of the cited claims, we find that the Examiner has rebutted
in the Answer each and every one of those arguments supported by
sufficient evidence. (Ans. 12-19.) Therefore, we adopt the Examiner’s
findings and underlying reasoning, which are incorporated herein by
reference. Consequently, we find no error in the Examiner’s rejections of
claims 1-23.

CONCLUSION
On the record before us, we conclude that, because the references
teach or suggest all the claim limitations, the Examiner did not err in
rejecting claims 1-23 for obviousness under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s decision rejecting claims 1-23 is affirmed.

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).

AFFIRMED

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