Ex Parte Tan et al

Patent Trial and Appeal Board

May 14, 2014

11345913 (P.T.A.B. May. 14, 2014)

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.
11/345,913 02/02/2006 SzeChek Tan S01.12-1113/STL 12950 1413
27365 7590 05/15/2014
SEAGATE TECHNOLOGY LLC
C/O WESTMAN, CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3244
EXAMINER
FAAL, BABOUCARR
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
05/15/2014 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 SZECHEK TAN, WENXIANG XIE, YEWMENG TAN
and WEILOON NG
____________________

Appeal 2011-007623
Application 11/345,913
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and
PETER P. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007623
Application 11/345,913

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16 and 20-26. Claims 17-19 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An apparatus, comprising:
a data storage medium that is partitionable; and
control electronics that includes a hot-pluggable bus connection that
communicates with a host wherein the control electronics
receives a command from the host while the bus is energized,
and the control electronics, upon recognizing that the command
is a simulated event, dynamically re-maps the data storage
medium to provide a selected number M of active partitions,
where the selected number M is dynamically controllable from
the host.
Rejection
The Examiner rejected claims 1-7, 9-14, 16, 20-22, and 24-26 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Applicant
Admitted Prior Art (“AAPA”), Mayank Sarup, Fdisk for Partitioning,
April 19, 2001 (“Sarup”), and Oshins (US 7,366,944 B2; Apr. 29, 2008).
1

1
Separate patentability is not argued for claims 2-7, 9-14, 16, 20-22, and
24-26. Except for our ultimate decision, these claims are not discussed
further herein.
Contrary to introductory statements in the Final Rejection (page 3, paragraph
3) and Answer (page 4, paragraph 3), these are the claims rejected and
appealed under this rejection. The detailed discussion in both the Final
Rejection and Answer covers claims 1-7, 9-14, 16, 20-22, and 24-26.

Appeal 2011-007623
Application 11/345,913

3
The Examiner rejected claims 8 and 23 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of AAPA, Sarup, Oshins, and Oishi
(US 2003/0225971 A1, Dec. 4, 2003).
2

The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of AAPA, Sarup, Oshins, and Tame (US
2004/0026502 Al, Feb. 12, 2004).
3

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the Examiner did not follow the teaching-
suggestion-motivation requirement set forth by In re Vaeck, 947 F.2d 488
(Fed. Cir. 1991). (Br. 4).
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the Examiner did not set forth a
“convincing line of reasoning . . .” as required by Ex parte Clapp, 227
USPQ2d 972, 973 (BPAI 1985). (Br. 4).
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Office Action acknowledges that AAPA and Sarup do not
disclose all the elements of claim l. Specifically, AAPA and
Sarup, taken individually or in combination, do not show
“control electronics that . . . receives a command from the host

2
Separate patentability is not argued for claims 8 and 23. Rather,
Appellants argue these claims only by referencing the argument for the
claims from which these claims depend. Except for our ultimate decision,
these claims are not discussed further herein.
3
Separate patentability is not argued for claim 15. Rather, Appellants argue
this claim only by referencing the argument for the claim from which this
claim depends. Except for our ultimate decision, this claim is not discussed
further herein.
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Application 11/345,913

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. . . and . . . upon recognizing that the command is a simulated
event, dynamically re-maps the data storage medium.” As a
result, the final Office Action relies on Oshins. (Citing col. 2,
lines 29-35.)
(Br. 5).
4

4. a. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellants respectfully point out that Oshins’ description
regarding informing an operating system component that the
device has disappeared or is no longer operational when a
request to simulate unplug and re-plug events is received has
nothing to do with “control electronics that . . . receives a
command from the host . . . and . . . upon recognizing that the
command is a simulated event, dynamically re-maps the data
storage medium.”
(Br. 6) (emphasis added).
4. b. Appellants also contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
The connection between the recognition that the command is
simulated event and the dynamic re-mapping of the data storage
medium is not taught or expressly or impliedly suggested in
the combination of references (AAPA, Sarup and Oshins) cited
in the Office Action.
Also, Oshins mentions simulating a hardware module
being plugged/unplugged, but does not address any
recognition of the simulated event and other related
processing within the hardware module, but instead focuses on
device driver operation in the host. In contrast, as noted above,
the claimed invention includes “control electronics that . . .
receives a command from the host . . . and . . . upon recognizing

4
Appellants repeat the Sarup portion of this contention at page 3 of the
Reply Brief.
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Application 11/345,913

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that the command is a simulated event, dynamically re-maps
the data storage medium.”
(Br. 6-7) (emphasis added).
5

5. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[T]he above section of [Appellants’] specification describes a
hot-pluggable data storage device that is not dynamically
partionable, which is contrast with claim 1 and has nothing to
do with control electronics that receive a command from the
host and upon recognizing that the command is a simulated
event, dynamically re-maps the data storage medium.
(Reply Br. 2) (emphasis added).

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions.
As to Appellants’ above contentions 1 and 2, Appellants’ arguments
fail because they do not acknowledge the impact of the Supreme Court’s
explicit rejection in KSR of the rigid requirement that the art suggest a
modification. KSR Int’l Inc. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We
begin by rejecting the rigid approach of the Court of Appeals.”). The
Court’s decision in KSR repudiated reliance on a “teaching, suggestion or
motivation” as a requirement to show obviousness.

5
Appellants repeat the gist of this contention at page 3 of the Reply Brief.
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We look to whether the Examiner has provide some articulated
reasoning as to why a person having ordinary skill in the art would recognize
that there was an apparent reason to combine the known elements in the
fashion claimed by the claim at issue. KSR, 550 U.S. at 418. We conclude
that the Examiner provides just such articulated reasoning, in the rejection
from which this appeal is taken and in the Answer. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusions reached by the Examiner. We highlight the following
for emphasis.
As to Appellants’ above contention 3, we disagree that the Examiner
has erred. Appellants’ argument misstates the Examiner’s articulated
reasoning as to the claim elements missing from AAPA and Sarup. The
Examiner stated, “The combined teachings of AAPA and Sarup do not
specifically disclose: recognizing that the command is a simulated
event.” (Final Rejection 3, paragraph 8). Examiner error cannot be shown
based on Appellants’ misstatements of the record.
As to Appellants’ above contention 4a, we disagree that the Examiner
has erred. Appellants’ argument builds on the misstatement of contention 3
and argues that that Oshins does not cure the (misstated) deficiencies of
AAPA and Sarup. Again, Examiner error cannot be shown based on
Appellants’ misstatements of the record.
As to Appellants’ above contention 4b, we disagree that the Examiner
has erred. Appellants’ argument builds further on Appellants’ misstatement
of contention 3 and continues to fail to address the actual articulated
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reasoning of the Examiner. Again, Examiner error cannot be shown based
on misstatements of the record. The Examiner relied on Oshins solely to
show that it was known to use a simulated plug/unplug event as a trigger
command for an activity (i.e., resetting).
9. However, Oshins in an analogous art discloses: recognizing
that the command is a simulated event (col. 2 lines 29-35;
discloses a simulated plug and unplug event in the case of the
driver "resetting" its internal state).
Final Rejection 3, paragraph 9. We agree with the Examiner that “[i]t would
have been obvious to one having ordinary skill in the art at the time of the
invention to combine the teachings of AAPA, Sarup and Oshins modified
with Oshin’s [sic] teachings to recognize a simulated plug and unplug to
increase the device driver's ability to continue normal operations in case of
failure (col. 2 lines 17-20).” Final Rejection 3-4, paragraph 10.
As to Appellants’ above contention 5, we disagree that the Examiner
has erred. Appellants’ argument misstates the Examiner’s articulated
reasoning as to the claim elements shown by AAPA. The Examiner relied
on Sarup, not AAPA, to show the claimed “dynamically re-maps.” Again,
Examiner error cannot be shown based on Appellants’ misstatements of the
record.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-16 and 20-26 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-16 and 20-26 are not patentable.
Appeal 2011-007623
Application 11/345,913

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DECISION
The Examiner’s rejections of claims 1-16 and 20-26 are 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

ELD