Ex Parte Greco et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201511971099 (P.T.A.B. Feb. 18, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL MERRILL GRECO and GLEN ALAN JAQUETTE ____________ Appeal 2012-007777 Application 11/971,099 Technology Center 2400 ____________ Before DENISE M. POTHIER, JEREMY J. CURCURI, and IRVIN E. BRANCH, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–25. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention “relates to data storage, and more particularly, to utilizing [a] target of opportunity to actions taken with respect to data storage drives and/or data storage cartridges.” Spec. ¶ 2. Claim 1 is reproduced below with the key disputed limitations emphasized: Appeal 2012-007777 Application 11/971,099 2 1. A method comprising: receiving a command to be performed on a tape cartridge; mounting said tape cartridge; determining if said command requires interaction with an encryption key manager; in response to a determination that said command requires interaction with said encryption key manager, holding off on performing said command; sending a request to said encryption key manager; recognizing a target of opportunity exists based on a determination that at least one special operation may be performed while said tape cartridge is mounted; in response to said determining at least one special operation may be performed, performing said at least one special operation and performing said command on the tape cartridge; demounting said tape cartridge after performing said at least one special operation and said command. The Examiner relies on the following as evidence of unpatentability: McRae US 6,104,813 Aug. 15, 2000 Kurple US 6,282,152 B1 Aug. 28, 2001 Gurevich US 2002/0178370 A1 Nov. 28, 2002 Ball US 2008/0219449 A1 Sept. 11,2008 Shu US 7,802,019 B2 Sept. 21, 2010 (filed Dec. 8, 2005) THE REJECTIONS 1. The Examiner rejected claim 9 under 35 U.S.C. § 101. Ans. 6.1 2. The Examiner rejected claims 1–3, 9–13, 15–22, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Ball and Gurevich. Ans. 7–23. 3. The Examiner rejected claims 4, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Ball, Gurevich, and McRae. Ans. 23–25. 1 The Examiner withdrew the § 101 rejection for claims 1–8. Ans. 4–5. Appeal 2012-007777 Application 11/971,099 3 4. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as unpatentable over Ball, Gurevich, and Shu. Ans. 25–26. 5. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as unpatentable over Ball, Gurevich, McRae, and Kurple. Ans. 27–28. 6. The Examiner rejected claims 14 and 23 under 35 U.S.C. § 103(a) as unpatentable over Ball, Gurevich, and Kurple. Ans. 28–30. OBVIOUSNESS REJECTION OVER BALL AND GUREVICH Appellants argue claims 1–3 as a group. App. Br. 12–15. Claims 9– 13, 15–22, 24, and 25 are separately discussed. App. Br. 15–24. However, the arguments for these claims are the same as those for claim 1 or refer back to the arguments of the claim from which they depend, directly or indirectly. Compare App. Br. 15–24 with App. Br. 12–15; see also Reply Br. 2–14. Accordingly, we group these claims collectively and select claim 1 as representative. See 37 C.F.R. 41.37(c)(1)(vii). The Examiner finds that Ball teaches the limitations of claim 1, except for the “recognizing” and “performing” steps. Ans. 7–9. The Examiner turns to Gurevich in combination with Ball to teach the missing limitations. Ans. 9–10. Appellants argue that Gurevich is nonanalogous art. App. Br. 13–14; Reply Br. 3–4. Appellants also assert Gurevich fails to teach the limitations of “recognizing a target of opportunity exists based on a determination that at least one special operation may be performed” and “performing said at least one special operation and performing said command on the tape cartridge.” App. Br. 14–15. Appellants contend that “[t]here is simply no Appeal 2012-007777 Application 11/971,099 4 nexus between what is claimed and the cited sections of Gurevich.” Reply Br. 4–5. ISSUES (1) Is Gurevich analogous art? (2) Under § 103, has the Examiner erred in rejecting claim 1 by finding that Ball and Gurevich collectively would have taught or suggested: (a) recognizing a target of opportunity exists based on a determination that at least one special operation may be performed and (b) performing the at least one special operation and performing a command on a tape cartridge? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of independent claim 1. First, we disagree that Gurevich is not analogous art. As stated in In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), “[t]he analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” Id. at 986–87 (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). Although we disagree with Appellants that the Examiner has conceded that Gurevich is not the same field of endeavor as Appellants (Reply Br. 3), Appellants have not stated what the field of endeavor is. App. Br. 13. Specifically, Appellants only contend that the Examiner states the field of endeavor is similar. App. Br. 13. Appellants describe the particular problem to be solved as performing a special operation and performing a Appeal 2012-007777 Application 11/971,099 5 command on a tape cartridge when an opportunity target exists. Id. To the extent that Appellants are arguing the problem and the field of the endeavor are the same, we find Appellants have defined the field of endeavor too narrowly. When considering the disclosure, the invention broadly “relates to data storage” as well as using “target of opportunity to actions taken with respect to data storage drives and/or data storage cartridges.” Spec. ¶ 2. We find that Appellants’ field of endeavor includes data storage generally. Gurevich teaches a system for improving data management. See Gurevich ¶ 2, Abstract. Gurevich further demonstrates that data management uses and involves data storage and actions taken with respect to data storage. Gurevich ¶¶ 67, 107–111; Fig. 5. Accordingly, Gurevich is within Appellants’ field of endeavor and is analogous art. We further refer to the Examiner’s comments addressing the “target of opportunity.” Ans. 35. The breadth of this claimed phrase “target of opportunity” includes the occasion of performing one task at the same time or with the same resources as another task. Spec. ¶ 53. Thus, even if the field of endeavor were considered to be narrowly tailored to targets of opportunity, Gurevich discusses performing actions or tasks using the same resources. See Gurevich ¶¶ 107–111; Fig. 5. Appellants further assert that Gurevich fails to teach or suggest the recited “recognizing” and “performing” steps. App. Br. 14–15. In particular, Appellants contend that “the sections of Gurevich pointed to in the rejection refer to an online user password, a personal identification number (PIN), and biometric data such as a fingerprint, voice print, eye iris print, etc. It is not apparent how this relates to recognizing a target of Appeal 2012-007777 Application 11/971,099 6 opportunity exists.” App. Br. 15; Reply Br. 6. Yet, the cited passages in Gurevich teach more than summarized by Appellants. As the Examiner explains, Gurevich teaches a special operation of a one-way hash function that is performed during an identity check to prevent unauthorized use. See Ans. 9, 35–37 (citing Gurevich ¶¶ 37, 59, 64). That is, when a user connects a device to a PC to synchronize the device with the PC, Gurevich teaches performing an identity check (e.g., a special operation). 2 Ans. 36 (Gurevich ¶ 64). Contrary to Appellants’ assertion (App. Br. 15), Gurevich teaches “a target of opportunity” exists to perform the identity check when the device connects to a PC (e.g., performing tasks at the same time as another task, including communicating between the device and the PC). Accordingly, Gurevich relates to “recognizing a target of opportunity exists based on a determination that at least one special operation may be performed,” as recited in claim 1, when the devices connect. Lastly, when combining this teaching with Ball, the combination teaches recognizing this opportunity target “while said tape cartridge is mounted” as recited. Attacking Gurevich individually and not considering what the references teach and suggest collectively does not show nonobviousness. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The combination of Ball and Gurevich yields no more than one skilled in the art 2 As described in the disclosure, a “special operation” includes key operations, “a rekey operation” and “an unauthorized request alert,” (Spec. ¶ 9) and “media diagnostics of the tape cartridge.” Spec. ¶ 94. Notably, although not discussed by the Examiner, a cited passage of Ball further teaches the key manager generating new keys. Ball ¶ 30. Appeal 2012-007777 Application 11/971,099 7 would have expected — performing commands that require interaction with an encryption key manager during a data backup operation and performing an authentication of the user by hashing function for an identity check that prevents unauthorized use at the initial steps of the backup operation when the devices connect. See Ans. 8–10 (citing Gurevich ¶¶ 37, 59, 64 and Ball ¶¶ 10, 26, 30–31, 35). Also, as stated, when combining Gurevich with Ball, these features taught by Gurevich improve data management functionality. See Ans. 10, 37 (citing Gurevich ¶ 18). This combination yields no more than one would expect from such an arrangement, and the combination is thus obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–17 (2007). Additionally, if the technique has been used to improve a device and a person of ordinary skill in the art would have recognized that technique would improve similar devices in the same way, then using the technique is obvious. See id. at 417. Concerning whether Gurevich teaches the recited “performing” step in claim 1, Appellants present no further argument. See App. Br. 15. However, we note that the above discussion also teaches performing the special operation (e.g., the one-way hash function) and refer to the Examiner’s findings concerning “performing said command,” which has not been specifically disputed. See Ans. 9–10. In the Reply Brief, Appellants argue for the first time that Gurevich’s teaching “has nothing to do with performing operations on a tape cartridge.” Reply Br. 4. Such arguments are waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are Appeal 2012-007777 Application 11/971,099 8 waived.”) We further note that the breadth of claim 1 only requires performing the command on the tape cartridge and not the special operation. As for independent claims 10 and 17, each recites “said encryption key manager” is “coupled to” a data storage device and the “said encryption key manager [is] configured to recognize a target of opportunity exists by determining if at least one special operation may be performed.” Appellants do not challenge that Ball teaches an encryption key manager. See App. Br. 19, 22. Additionally, the Examiner provides a reason with some rational underpinning to configure the encryption key manager to recognize the recited “target of opportunity.” Ans. 15, 18–19. Independent claim 18 recites a computer program product comprising a computer readable program that when executed performs a similar step to the recognizing step in claim 1. We note claim 18 is broader in scope to claim 1 in that it does not require that the target of opportunity be recognized “while said tape cartridge is mounted.” Even so, we are not persuaded by Appellants’ argument concerning claim 18 for the above-noted reasons. We therefore find a reason with some rational underpinning to combine Gurevich with Ball and support a legal conclusion of obviousness for claim 1 and independent claims 10, 17, and 18, which have similar limitations. As explained above, we further find that the Examiner has satisfied the disputed requirements in Graham v. John Deere, 383 U.S. 1 (1966). App. Br. 14–15. Specifically as explained in this decision and as disputed, the combination of references teaches or suggests the disputed limitations in claim 1. Appeal 2012-007777 Application 11/971,099 9 For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 2, 3, 9–13, 15–22, 24, and 25. REMAINING OBVIOUSNESS REJECTIONS Claims 4–8 depend directly or indirectly from claim 1; claim 14 depends indirectly from claim 10; and claim 23 depends indirectly from claim 18. For each of these rejections, Appellants refer to the arguments presented for the claim from which they depend. See App. Br. 24–28. The issues before us, then, are the same as those in connection with claims 1, 10, and 18, and we refer Appellants to our previous discussion. We sustain these rejections for the above-discussed reasons. THE PATENT-INELIGIBLE SUBJECT MATTER REJECTION Our conclusion that the Examiner did not err in rejecting claim 9 based on prior art renders it unnecessary to reach the propriety of the patent- ineligible subject matter rejection of that claim. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984); cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). Notably, various cases related to patent-eligible subject matter under 35 U.S.C. § 101 have been decided since the Examiner presented this rejection. If prosecution should continue, we recommend that the Examiner follow the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618–74633 (Dec. 16, 2014), available at: http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf (last visited January 19, 2015). Appeal 2012-007777 Application 11/971,099 10 CONCLUSION The Examiner did not err in rejecting claims 1–25 under § 103. DECISION The Examiner’s decision rejecting claims 1–25 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 mls Copy with citationCopy as parenthetical citation