2019006921 (P.T.A.B. Oct. 27, 2020)

SEAGATE TECHNOLOGY LLC

Patent Trials and Appeals BoardOct 27, 2020

2019006921 (P.T.A.B. Oct. 27, 2020)

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. 14/917,447 03/08/2016 James Edward Dykes STL18149 7736 73462 7590 10/27/2020 Hall Estill - Seagate Technology LLC 100 North Broadway, Suite 2900 Oklahoma City, OK 73102-8820 EXAMINER JUNG, MICHAEL ART UNIT PAPER NUMBER 2895 NOTIFICATION DATE DELIVERY MODE 10/27/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO@dockettrak.com amelia.pharofrank@seagate.com okcipdocketing@hallestill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES EDWARD DYKES Appeal 2019-006921 Application 14/917,447 Technology Center 2800 Before N. WHITNEY WILSON, MONTÉ T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s November 27, 2018 decision to finally reject claims 1–20 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Seagate Technology, LLC, as the real party in interest. (Appeal Br. 1). Appeal 2019-006921 Application 14/917,447 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is generally directed to a mobile data storage device housed in a mobile computing device without a cooling feature. (Appeal Br. 2). The mobile data storage device comprises a controller configured to delay execution of at least one command in response to a predicted mobile data storage device temperature by inserting at least one time delay into a command queue stored in the mobile data computing device. Further details are set forth in illustrative claim 1, which is reproduced below from the Claims Appendix: 1. An apparatus comprising a mobile data storage device housed in a mobile computing device without a cooling feature, the mobile data storage device comprising a controller configured to delay execution of at least one command in response to a predicted mobile data storage device temperature by inserting at least one time delay into a command queue stored in the mobile data computing device. REJECTIONS2 1. Claims 1–20 are rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. 2. Claims 1–20 are rejected under 35 U.S.C. § 112(a) for failing to comply with the enablement requirement. 3. Claims 1–20 are rejected under 35 U.S.C. §112(b) as being indefinite. 4. Claims 1-20 are rejected under 35 U.S.C. §101 as lacking utility. 2 The Examiner has withdrawn the rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to a judicial exception (Ans. 8). Appeal 2019-006921 Application 14/917,447 3 DISCUSSION Though Appellant states that the claims do not stand or fall together, but are argued separately (Appeal Br. 4), the Appeal Brief does not offer separate arguments for any claim. Accordingly, each rejection will be addressed separately, but for each rejection all of the claims will stand or fall together. Rejection 1. The Examiner determines that the use of the term “cooling feature” in the claims instead of “active cooling feature” means that the claims do not meet the written description requirement and impermissibly broaden their scope (Final Act. 6). To satisfy the written description requirement of 35 U.S.C. § 112, the Specification must allow a person of ordinary skill in the art to recognize that the inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). The Specification must reasonably convey to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ralston Purina Co. v. Far-Mar- Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The Specification, however, need not describe the claimed subject matter word-for-word. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). In this instance, the Specification plainly describes the use of data storage devices in mobile computing devices that lack “cooling means” (see, e.g., Spec. 4, 5). Thus, we determine that the Specification would reasonably convey to a person of skill in the art that the inventor had possession of the claimed subject matter (i.e. a mobile computing device Appeal 2019-006921 Application 14/917,447 4 without a cooling feature/means), as of the filing date of the application on appeal. Rejection 2. The Examiner rejects claims 1–20 as not being enabled because: [A]ll operating computing devices produce heat, so reciting that a mobile computer device is without a cooling feature is violating first law of thermodynamics. All operating computer device must have a cooling feature in order for it to cool. With[out] a cooling feature, a computer device is inoperative. (Final Act. 6). Appellant argues that “cooling feature” must be interpreted in light of the Specification as being limited to features which produce convective means for cooling (i.e. by moving air), such as fans, vacuums, and vents, which are readily enabled to one of ordinary skill in the art (Appeal Br. 5–6). Both the Examiner and Appellant agree that the term “cooling feature” should be given its broadest reasonable interpretation (Ans. 8; see also Reply Br. 2). It is well established that “the PTO must give claims their broadest reasonable construction consistent with the [S]pecification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted, emphasis added). The Examiner argues that the broadest reasonable interpretation of “cooling feature” (which the Examiner determines without opposition should be construed as a “cooling means” and interpreted per the requirements of 35 U.S.C. § 112(f) (Final Act. 7)), is a cooling feature which includes thermally conductive materials which can carry heat away, and thus any device would have some kind of cooling feature (i.e., thermally Appeal 2019-006921 Application 14/917,447 5 conductive materials which could transmit heat) (Ans. 9). Because, according to the Examiner, it is impossible to construct a device which does not have some ability to conduct heat away via a thermally conductive material, the claims cannot be enabled (id.). We do not agree with the Examiner’s interpretation. Rather, we agree with Appellant that the broadest reasonable interpretation of a “cooling feature” in light of the Specification is a feature which provides convection by moving air (i.e. a fan, vacuum, or vent) (Reply Br. 2). As noted by Appellant, this construction is supported by the Specification, which states that “mobile electronics like tablet computers and smartphones do not have air moving capabilities,” and the “ability to adjust temperature of the data storage device without the use of moving air allows rotating data storage devices like a hard disk drive to be used in mobile electronics” (Spec. 5). Moreover, as noted by the Examiner, it would be impossible to construct a device which could not shed some amount of heat via thermal conductivity of the components. Thus, it would not be reasonable to construe the term in a way which would make it impossible to produce. Thus, we determine that the phrase “without a cooling feature” is enabled within the meaning of 35 U.S.C. §112(a). Rejection 3. The Examiner determines that the term “a cooling feature” is indefinite within the meaning of 35 U.S.C. § 112(b) because “it is unclear what the corresponding structure(s) of ‘a cooling feature’ are . . . as the limitation of ‘a cooling feature has triggered a scrutiny of interpretation under 35 U.S.C. §112(f).”’ (Final Act. 9). According to the Examiner, the written description fails to clearly set forth corresponding structure, Appeal 2019-006921 Application 14/917,447 6 materials, or acts to sufficiently describe the entire claimed cooling function (id.). We do not agree. Rather, we agree with Appellant that the Specification is sufficiently clear in stating that a cooling means (or cooling feature) is a means which moves air so as to cool the device. The Specification provides explicit structures which correspond to the claimed feature/means (i.e., fans, vacuums, vents). Thus, under the terms of 35 U.S.C. §112(f), the phrase “cooling features” includes disclosed structures (fans, vacuums, vents) described in the Specification and equivalents thereof. This is, in our judgment, sufficiently clear so as to meet the requirements of 35 U.S.C. §112(b). Thus, we determine that the phrase “without a cooling feature” is not indefinite, and we reverse the rejection. Rejection 4. The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as inoperative and lacking utility. According to the Examiner, all operating computer devices must have a cooling feature and, therefore, one without a cooling feature will not operate (Final Act. 26). We reverse this rejection because, as discussed above, the phrase “cooling feature” as used in the claims has a specific meaning (i.e. a fan, vacuum, or vent, or equivalents thereof), and the Examiner has not adequately shown that a computing device cannot operate without such a feature. CONCLUSION The Examiner’s rejections are reversed. Appeal 2019-006921 Application 14/917,447 7 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 112(a) Written Description 1–20 1–20 112(a) Enablement 1–20 1–20 112(b) Indefiniteness 1–20 1–20 101 Lack of Utility 1–20 Overall Outcome 1–20 REVERSED