Ex Parte Tan et alDownload PDFPatent Trial and Appeal BoardMay 14, 201411345913 (P.T.A.B. May. 14, 2014) Copy Citation 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. Appeal 2011-007623 Application 11/345,913 4 . . . 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. Appeal 2011-007623 Application 11/345,913 5 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. Appeal 2011-007623 Application 11/345,913 6 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 Appeal 2011-007623 Application 11/345,913 7 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 8 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 Copy with citationCopy as parenthetical citation