Ex Parte Starr et al

Patent Trial and Appeal Board

Jan 30, 2015

12058228 (P.T.A.B. Jan. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/058,228 03/28/2008 Matthew Thomas Starr 3023745 US04 2732
67070 7590 01/30/2015
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
RIGOL, YAIMA
ART UNIT PAPER NUMBER
2135
MAIL DATE DELIVERY MODE
01/30/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW THOMAS STARR, RICHARD DOUGLAS
RECTOR, MARK LORIN LANTRY, JOHN DAVID BARR, and
NATHAN CHRISTOPHER THOMPSON

Appeal 2012-00102111
Application 12/058,228
Technology Center 2100
____________________

Before JEAN R. HOMERE, KEN B. BARRETT, and CATHERINE
SHIANG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Spectra Logic Corp. App.
Br. 2.
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Application 12/058,228

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for allowing a host
computer (102) to store and retrieve data from a mobile media storage
system (114, 116) coupled thereto via a communications interface (107)
intended for a tape library. Spec. ¶ 2, Fig. 1. In particular, each mobile
storage element (114, 116) is paired with an associated docking station (108,
112), which upon being switched, causes the docked mobile storage to
appear to the host computer as a virtual tape library, and to be mapped as
such. Spec. ¶ 7.
Representative Claim
Independent claim 1 is representative. It reads as follows:
1. A storage system comprising:
an interface processor device that interfaces between
said storage system and a host;
a first mobile storage element;
a first docking station adapted to receive said first
mobile storage element to form a functional pair wherein
said functional pair can perform storage operations;
a switch system capable of switching said first
docking station to appear virtually to said host as a first
tape storage system;
a map system that is adapted to map said first docking
station as either said docking station or said virtual tape
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storage system based on the switching state of said
switch system.

Prior Art Relied Upon
Kaneda et al. US 6,490,648 B1 Dec. 3, 2002
Leonhardt et al. US 2004/0177228 A1 Sep. 9, 2004
Kitamura et al. US 2005/0033911 A1 Feb. 10, 2005
Nourmohamadian et al. US 7,747,816 B1 Jun. 29, 2010

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1-6, 8, 9, 11, 12, and 14-20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Kitamura and Kaneda.
Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kitamura, Kaneda, and Leonhardt.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kitamura, Kaneda, and
Nourmohamadian.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 7-40 and the Reply Brief, pages 4-6.2

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed January 9, 2012), the Reply Brief (filed July
12, 2012), and the Answer (mailed March 28, 2012) for the respective
details. We have considered in this Decision only those arguments
Appellants actually raised in the Brief. Any other arguments Appellants
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Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding
the combination of Kitamura and Kaneda teaches or suggests switching a
docking station to cause a mobile storage device paired therewith to appear
as a virtual tape library to a host computer coupled thereto, as recited in
claim 1?
Appellants argue the proffered combination does not teach or suggest
the disputed limitations emphasized above. App. Br. 8-13. We have
reviewed the Examiner’s rejection in light of Appellants’ arguments. We
are unpersuaded by Appellants’ contentions. We adopt as our own the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and as detailed in the Examiner’s Answer in response to
Appellants’ Appeal Brief. See Ans. 21-27. However, we highlight and
address specific arguments and findings for emphasis as follows.
Appellants argue while Kitamura discloses a fixed array of magnetic
disks, which can function as virtual tapes, Kitamura does not teach a mobile
storage element paired with a docking station capable of being switched to
appear as a virtual tape to a host computer. App. Br. 9-11. Likewise,
Appellants argue although Kaneda discloses mobile storage elements
inserted in slots of a changer, Kaneda’s docked storage element cannot
simply be substituted in Kitamura to teach the disputed limitations because
the resulting combination would be conjectural at best. Id. at 12-13.

could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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In response, the Examiner finds Kaneda’s disclosure of a changer
having a plurality of cells for holding removable storage media would have
complemented Kitamura’s virtual tape library system, thereby allowing to
switch the docking station by making it appear as a virtual tape to a host
computer. Ans. 23-26.
On the record before us, we find no error in the Examiner’s
obviousness rejection of claim 1. In particular, we agree with the Examiner
that Appellants’ attack of the references individually, as opposed to the
combination thereof, is ineffective to show non-obviousness. Ans. 23.
Further, Appellants do not challenge the Examiner’s finding that Kaneda’s
disclosure of a changer having a plurality of cells for housing storage
elements teaches a docking station for receiving a mobile storage element.
Rather, Appellants argue Kitamura’s disclosure does not teach the latter
limitation. Thus, Appellants’ response fails to squarely rebut the Examiner’s
specific finding on this point. As admitted by Appellants, Kitamura teaches
fixed storage elements appearing as a virtual tape to a host. App. Br. 13.
Therefore, we echo the Examiner’s finding that, upon replacing Kitamura’s
fixed storage elements with Kaneda’s docking station-storage element pair,
the host computer would have been able to view a virtual tape storage
system. Ans. 24. Accordingly, we agree with the Examiner that because
Kitamura and Kaneda disclose prior art elements that perform their ordinary
functions to predictably result in storage pairs being perceived by a host
computer as a virtual tape, the combination is properly supported by
sufficient rationale underpinning (reducing cost and time). KSR Int'l Co. v.
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Teleflex, Inc., 550 U.S. 398, 416 (2007). For these same reasons, we do not
agree with Appellants’ argument that the mere existence of removable drives
in Kaneda is not sufficient to justify the combination of the cited references
to map a docking station to the virtual tape. App. Br. 12. Hence, we find
the cumulative weight and the totality of the evidence on this record
reasonably support the Examiner’s finding that the combined disclosures of
Kitamura and Kaneda would have taught or suggested the disputed
limitations.
For at least the aforementioned reasons, we find no error in the
Examiner’s conclusion that the combination of Kitamura and Kaneda
renders claim 1 unpatentable.

Regarding the rejections of claims 2-20, to the extent Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1 above, claims 2-20 fall therewith. See 37 C.F.R. §
41.37(c)(1)(vii). Further, to the extent Appellants have raised additional
arguments for patentability of these claims (App. Br. 13-40), we find that the
Examiner has rebutted in the Answer each and every one of those arguments
by a preponderance of the evidence. Answer 27-42. We adopt the
Examiner’s findings and underlying reasoning, which we incorporate herein
by reference. Because Appellants have failed to persuasively rebut the
Examiner’s findings regarding the rejections of claims 2-20, Appellants have
failed to show error in the Examiner’s rejections of these claims.
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DECISION
We affirm the Examiner’s rejections of claims 1-20 as set forth above.
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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