Ex Parte Goodman et al

Board of Patent Appeals and Interferences

Jul 11, 2012

10740726 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN G. GOODMAN and LEONARD G. JESIONOWSKI
____________________

Appeal 2010-007602
Application 10/740,726
Technology Center 3600
____________________

Before LINDA E. HORNER, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-007602
Application 10/740,726

2
The “invention relates to automated data storage libraries having one
or more accessors, and more particularly, to controlling an accessor or an
alternate accessor in the event such accessor fails to execute a work request
received by its associated accessor controller.” Spec 1.
Claims 1, 11 and 21 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A method for operating an automated data
storage library, said library comprising a plurality
of storage shelves for storing data storage media,
at least one data storage drive, at least one accessor
for accessing and delivering data storage media
among said storage shelves and said at least one
data storage drive in response to a work request,
and at least one accessor controller for controlling
said at least one accessor, comprising:
providing at least one work request tracking
controller;
receiving said work request by said at least
one work request tracking controller;
storing information regarding said work
request in memory accessible by said at least one
work request tracking controller;
receiving said work request by at least one
of said accessor controllers; and
wherein if said at least one work request
tracking controller determines that said work
request is not satisfied by said library, sending a
second work request by said at least one work
request tracking controller based upon said stored
information to at least one of said accessor
controllers.

Appeal 2010-007602
Application 10/740,726

3
REJECTIONS
Claims 1-3, 7-13, 18-21 and 23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Fosler (US 5,914,919, issued Jun. 22, 1999).
Claims 4-6, 14-17, 22, and 24-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fosler and Nishijo (US 6,230,075 B1, issued
May 8, 2001).

ANALYSIS
The Examiner bears the initial burden to set forth a prima facie case of
anticipation. A single prior art reference anticipates a patent claim if it
expressly or inherently describes each and every limitation set forth in the
patent claim. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). The Examiner has failed to express a clear finding on what
component of Fosler constitutes a “work request tracking controller” that
“determines that said work request is not satisfied” as required by claim 1.
Moreover, the Examiner has not adequately supported a finding that
Folser inherently anticipates claim 1. Inherent anticipation requires that the
missing descriptive material is “necessarily present,” not merely probably or
possibly present, in the prior art. In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citing Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1268, (Fed. Cir. 1991)).
Fosler discloses an automated data storage library including “dual
library managers 24 and 25 are provided to manage the positioning and
access of the accessors 16 and 17 to transport data storage media between
storage slots 12 and 14, import/export port 20 and data storage drives 18 and
19.” Col. 3, ll. 6-10 (emphasis omitted); see Ans. 4. For the step of
Appeal 2010-007602
Application 10/740,726

4
“providing at least one work request tracking controller” of claim 1, the
Examiner cites to col. 3, ll. 49-53 of Fosler, which describes “[c]ommands
for access to data or to locations on the data storage media and information
to be recorded on, or to be read from, selected data storage media are
typically transmitted directly between the drives 18-19 and the host”
(emphasis omitted). See Ans. 4. In response to Appellants’ arguments, the
Examiner states that in Fosler “work requests are provided by the hosts to
the accessor controllers – which are designated as 24 and 25” and “[t]he
work request is stored by the host computer, and accessed by the work
request tracking controller.” Ans. 10. It is unclear from these statements if
the Examiner determined that the library manager 24, 25 or the host
processor is the work request tracking controller.
Further, the Examiner appears to find that “wherein if said at least one
work request tracking controller determines that said work request is not
satisfied by said library,” as recited in claim 1, reads on Fosler at column 5,
lines 1-10:
In the present invention, when such a failure
occurs, rather than switch to the standby accessor
and its local standby library manager, an
immediate switch of accessors only is made, while
the active library manager additionally still
maintains control of the now unavailable accessor.
The immediate transfer of control of the standby
accessor to the active library manager provides an
immediate capability of carrying out the command
queue of the active library manager without the
need to bring a standby library manager up to date.
See Ans. 6, 10. However, this citation is silent on which component
determines “the work request is not satisfied” as called for by claim 1.
Appeal 2010-007602
Application 10/740,726

5
While a prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production, the rejection may not be so
uninformative as to prevent the Appellant from recognizing and seeking to
counter the grounds for rejection. In re Jung, 637 F.3d 1356, 1362-3 (Fed.
Cir. 2011). In this case, we find that the Examiner has not met this initial
burden, as the rejection does not allow the Appellant to recognize the basis
for the ground of the rejection. Therefore, the Examiner has failed to
establish a prima facie showing of anticipation of claim 1. Independent
claims 11 and 21 require a “work request tracking controller” similar to that
required by claim 1. Accordingly, we cannot sustain the rejection of
independent claims 1, 11 and 21, and claims 2, 3, 7-10, 12, 13, 18-20, and 23
which depend therefrom, as being anticipated by Fosler under 35 U.S.C.
§ 102(b).
The remaining ground of rejection, based on Fosler in combination
with Nishijo, relies on the same ambiguous finding as discussed supra.
Therefore, we cannot sustain the Examiner’s rejection of claims 4-6, 14-17,
22, and 24-27 under 35 U.S.C. § 103(a) over Fosler and Nishijo.

DECISION
We REVERSE the decision of the Examiner to reject claims 1-27.

REVERSED

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