Ex Parte Starr et al

Patent Trial and Appeal Board

May 12, 2014

11230146 (P.T.A.B. May. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/230,146 09/19/2005 Matthew Thomas Starr 3023741 US01 3033
67070 7590 05/12/2014
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
RIGOL, YAIMA
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
05/12/2014 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, and NATHAN CHRISTOPHER THOMPSON
____________________

Appeal 2011-0134451
Application 11/230,146
Technology Center 2100
____________________

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

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Spectra Logic, Corp. App. Br. 1.
Appeal 2011-013445
Application 11/230,146

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 24-44. Claims 1-23 have been canceled. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method and storage system (500) for mapping a
mobile random access storage to a virtual storage in a docking station. Spec.
[0007]. In particular, the docking station includes a first address (409)
identifying the location thereof, as well as a first and a second sub-addresses
(403, 411) indicating the types of storage devices contained within the
docking station. The storage devices in the first address and sub-addresses
form a virtual storage device within the docking station interfacing with the
mobile storage device via a switch. In consequence, upon receiving a
request from a host (502), the storage system (500) directs the host (502) to
one of its sub-addresses to which the mobile storage device was mapped as a
tape or an optical disk. Spec. [0022], [0023], Figures 4 and 5.
Illustrative Claim
Independent claim 24 further illustrates the invention. It reads as
follows:
24. A storage system comprising:
a docking station associated with an address and a first
and a second sub-address wherein the docking station is
Appeal 2011-013445
Application 11/230,146

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identifiable to a consumer of data as a target storage device via
the address;
a first mobile storage device designated to correspond to
the first sub-address wherein the first sub-address corresponds
to a first type of storage device, the first mobile storage device
forming a linked relationship with the docking station upon
being at least partially received by an opening in the docking
station, wherein when linked, the consumer of data recognizes
the docking station as the target storage device capable of
storing data as the first type of storage device.

Prior Art Relied Upon
Keele US 5,455,926 Oct. 3, 1995
Kitamura US 2005/0033911 A1 Feb. 10, 2005
Justiss US 7,454,565 B1 Nov. 18, 2008
(filed Jun. 29, 2004)

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
Claims 24-32, 34-37, and 39-44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Justiss and
Kitamura.
Claims 33 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Justiss, Kitamura, and Keele.

2 The Examiner withdrew the double patenting rejection previously entered
against claims 24-44. Ans. 16.
Appeal 2011-013445
Application 11/230,146

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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 8-39, and the Reply Brief, page 4.3

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Justiss and Kitamura teaches or suggests a first
mobile device designated to correspond to the first sub-address of a docking
station, wherein the first sub-address corresponds to a first type of storage
device, as recited in claim 24?

Appellants argue the proposed combination of references does not
teach or suggest the disputed limitations emphasized above. According to
Appellants, Justiss discloses a shelf system with a plurality of slots into
which a media changer disposes tape cartridges and optical disks. App. Br.
6. However, Appellants argue Justiss does not teach the media slots
correspond to a mobile storage station designated thereto. Id. at 9-10.
Further, Appellants argue Kitamura’s disclosure of arranging a plurality of

3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 09, 2009), the supplemental
Appeal Brief (filed Dec. 11, 2009), the Reply Brief (filed August 19, 2011),
and the Answer (mailed March 30, 2010) for the respective details. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants 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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Application 11/230,146

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tapes and optical disks to thereby provide vital storage does not cure the
noted deficiencies of Justiss. Id. at 10-11.
In response, the Examiner finds Justiss’s disclosure of a transport
element associated with a plurality of logical addresses corresponding to
storage elements teaches the docking station associated with an address and
sub-addresses to which a mobile storage device is assigned. Ans. 18-20.
Based upon our review of the record before us, we find error in the
Examiner’s obviousness rejection regarding claim 24. We note at the outset
the Examiner’s claim interpretation of the disputed limitations is reasonable.
We further agree with the Examiner’s finding that Justiss’s disclosure of a
drive having associated therewith a plurality of slots with corresponding
storages fairly teaches or suggests a docking station with an address and a
plurality of sub-addresses. Id. However, we do not agree with the Examiner
that the plurality of slots also correspond to the mobile device storage. Ans.
20. While the claimed mobile storage device acquires the same sub-address
of the virtual storage in the docking station once it is assigned thereto, the
mobile storage device is a different entity from the virtual device.
Consequently, the mobile device cannot be read on the virtual device.
Because Appellants have shown at least one error in the Examiner’s
rejection, we need not reach the merits of Appellants’ remaining arguments.
It follows that Appellants have shown error in the Examiner’s rejection of
claim 24.

Appeal 2011-013445
Application 11/230,146

6
Because claims 25-44 recite commensurate limitations as those in
claim 24 discussed above, Appellants have similarly shown error in the
Examiner’s rejection of those claims.

DECISION
We reverse the Examiner’s rejection of claims 24-44.

REVERSED
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