Ex Parte KishiDownload PDFPatent Trial and Appeal BoardAug 21, 201311087027 (P.T.A.B. Aug. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGORY T. KISHI ____________________ Appeal 2011-000056 Application 11/087,027 Technology Center 2100 ____________________ Before MARC S. HOFF, ERIC B. CHEN, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000056 Application 11/087,027 2 STATEMENT OF THE CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1, 19, 20, 22–26, 28, 29, and 35–42. Claims 2–18, 21, 27, and 30–34 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Illustrative Claim The claimed subject matter relates to scrubbing data within a data storage subsystem. Claim 1 is illustrative and is reproduced below with key limitations emphasized: 1. A method for scrubbing data in a storage element within a data storage subsystem, said method comprising: selecting a storage element from a plurality of defined storage elements within a data storage subsystem; suspending any data modifications on said selected storage element; performing a scrubbing operation on said selected storage element after suspension of said data modifications by validating data within said selected storage element; and in response to a completion of said scrubbing operation on said selected storage element, resuming data modifications on said selected storage element and selecting another one of said plurality of defined storage elements for scrubbing operation. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2011-000056 Application 11/087,027 3 Lavelle Cavanna New Pelley Redford US 2003/0142101 A1 US 2003/0167440 A1 US 2005/0028048 A1 US 2005/0268022 A1 US 2005/0289436 A1 Jul. 31, 2003 Sep. 4, 2003 Feb. 3, 2005 Dec. 1, 2005 (filed May 26, 2004) Dec. 29, 2005 (filed Aug. 30, 2004) Rejections Claims 1, 19, 20, 22–26, 28, 29, and 35–42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over New and Redford, alone or in combination with other cited references (Ans. 4–9).1 Issue Appellant’s contentions present us with the issue of whether Redford teaches or suggests the limitations of independent claim 1 that recite “suspending any data modifications on said selected storage element,” “performing a scrubbing operation … after suspension of said data modifications” (emphasis added) and “in response to a completion of said scrubbing … resuming data modifications on said selected storage element.”2 1 The Appeal Brief addresses rejections of claims 35–39 and 42 as unpatentable under 35 U.S.C. § 112, second paragraph (App. Br. 9). These rejections have been withdrawn by the Examiner (Ans. 3) and are therefore not before us. 2 Appellant’s contentions raise additional issues. Because the identified issue is dispositive, we do not reach the additional issues. Appeal 2011-000056 Application 11/087,027 4 ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief and Reply Brief, and have reviewed the Examiner’s response to Appellant’s arguments. Appellant contends that the Examiner erred in finding that Redford teaches or suggests the limitations emphasized in the reproduction of independent claim 1 supra (App. Br. 10–12). The Examiner relies on the following disclosure of Redford (Ans. 4– 5): Preferably, the block of data is a block of read-only data that is not subjected to modifications. Whenever a checksum value is derived from the block of read-only data, a constant checksum value is obtained, which can be used for evaluating data integrity of the block of data. (Redford, ¶ [0037]). While this disclosure teaches performing scrubbing operations on read-only storage elements, we disagree with the Examiner’s finding (Ans. 4–5) that it reasonably teaches or suggests the suspension and resumption of data modifications on selected storage elements. The Examiner reasons that such changes in the state of the data are evident since “one of skill in the art would know[] a block of data without any modification (read-only data) would not need to do any scrubbing or evaluating for data error because this data has not been changed, so there is no[] error introduced” (Ans. 10). We disagree with this reasoning because, as Appellant argues (Reply Br. 2), Redford explicitly contemplates circumstances in which data that are not Appeal 2011-000056 Application 11/087,027 5 intentionally changed are still subject to potential corruption through such effects as the impact of radiation (see Redford, ¶ [0033]). We therefore do not sustain the Examiner’s rejection of independent claim 1. We also do not sustain the Examiner’s rejections of independent claims 24 and 35, which recite similar limitations, nor of the various dependent claims. NEW GROUNDS OF REJECTION UNDER 37 C.F.R. §41.50(b) Under 37 C.F.R §41.50(b), we enter new grounds of rejection of independent claims 1, 24, and 35 under 35 U.S.C. § 103(a) as unpatentable over New in view of Appellant’s admitted prior art (AAPA). Although both Appellant and the Examiner largely couch their remarks in terms of read-only characteristics of storage elements, the claims are not so limited. During patent examination, claims must be given their broadest reasonable interpretation consistent with the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 872, 875 (Fed. Cir. 2004). In the “Description of the Related Art” section of Appellant’s Specification, Appellant acknowledges that it was known for “all access to the data to be scrubbed [to be] simply suspended[] during data scrubbing Appeal 2011-000056 Application 11/087,027 6 operations in conventional data storage subsystems” (Spec. ¶ [0006], emphasis added). Applying the broadest reasonable interpretation of the claim recitations consistent with the specification, we find that this admission of conventional scrubbing operations resolves the deficiencies of New. Specifically, the suspension of all access to data during scrubbing operations reasonably suggests “suspending any data modifications on said selected storage element,” “performing a scrubbing operation on said selected storage element after suspension of said data modifications,” and “resuming data modifications on said selected storage element.” Although we have rejected claims 1, 24, and 35 pursuant to our authority under 37 C.F.R. §41.50(b), we have not reviewed the remaining claims to the extent necessary to determine whether those claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the Examiner to ascertain whether claims dependent from independent claims 1, 24, and 35 should be rejected on similar grounds to those set forth herein or in combination with additional prior art. DECISION The Examiner’s decision rejecting claims 1, 19, 20, 22–26, 28, 29, and 35–42 is reversed. New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b) rejecting claims 1, 24, and 35 under 35 U.S.C. § 103(a) as unpatentable over New and Appellant’s admitted prior art. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection … shall not be considered final for judicial review.” This section also provides Appeal 2011-000056 Application 11/087,027 7 that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED 37 C.F.R. § 41.50(b) tj Copy with citationCopy as parenthetical citation