Ex Parte Ballard et al

Patent Trial and Appeal Board

Mar 5, 2013

11259218 (P.T.A.B. Mar. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CURTIS C. BALLARD, KELLY J. REASONER, and
MIKE P. FLEISCHMANN
____________

Appeal 2011-006817
Application 11/259,218
Technology Center 3600
____________

Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006817
Application 11/259,218

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 11-13, and 16-
231. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to methods for managing removable
media (Spec., Abstract).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. Storage apparatus for managing removable media,
comprising:
a controller configured to robotically manage the
removable media and to monitor a licensed storage capacity of
the storage apparatus; and
a user interface coupled to the controller;
wherein in response to the controller detecting that usage
of a storage capacity of the storage apparatus has reached a
predetermined level of the licensed storage capacity, the
controller is configured to cause the user interface to display a
prompt to acquire additional licensed storage capacity, and
wherein if a request responsive to the prompt is received
at the user interface to acquire the additional licensed storage
capacity, the controller is configured to take action to authorize
usage of previously unlicensed storage capacity in the storage
apparatus as the additional licensed storage capacity.

THE REJECTIONS
The Examiner has rejected:
claims 11-13, 22, and 23 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 30, 2010) and Reply Brief (“Reply Br.,” filed December 14,
2010), and the Examiner’s Answer (“Ans.,” mailed October 15, 2010).
Appeal 2011-006817
Application 11/259,218

3
claims 1-3, 11-13, and 16-23 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
claims 1-3 and 16-18 under 35 U.S.C. § 112, second paragraph, as
being indefinite2;
claims 1, 3, 11-13, 16, 18, 19, 21, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Bruynsteen (US 6,658,663 B1, iss. Dec. 2, 2003)
and Microsoft, Description of the Low Disk Space Notification in Windows
XP (June 2, 2003)3 (hereafter “Microsoft”); and
claims 17, 20, and 23 under 35 U.S.C. § 103(a) as unpatentable over
Bruynsteen and Crawford (US 2006/0074765 A1, pub. Apr. 6, 2006).

We AFFIRM. We enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

ISSUES
Did the Examiner err in asserting that claims 11-13, 22, and 23 fail to
recite statutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in asserting that claims 1-3, 11-13, and 16-23
fail to comply with the written description requirement of 35 U.S.C. § 112,
first paragraph?
Did the Examiner err in asserting that claims 1-3 and 16-18 fail to
comply with the definiteness requirement of 35 U.S.C. § 112, second
paragraph?

2 The rejection of claims 19-21 on these grounds is withdrawn (Ans. 15).
3 Found at: http://support.microsoft.com/kb/285107 (last viewed Feb. 26,
2013).
Appeal 2011-006817
Application 11/259,218

4
Did the Examiner err in asserting that a combination of Bruynsteen
and Microsoft renders obvious “wherein if a request responsive to the
prompt is received at the user interface to acquire the additional licensed
storage capacity, the controller is configured to take action to authorize
usage of previously unlicensed storage capacity in the storage apparatus as
the additional licensed storage capacity,” as recited in independent claim 1?
Did the Examiner err in asserting that a combination of Bruynsteen,
Microsoft, and Crawford renders obvious “configuring the controller to
further receive an activation key from the authorization source to authorize
usage of the additional licensed storage capacity, wherein the activation key
is responsive to the order,” as recited in dependent claim 23?

FINDINGS OF FACT
Specification
FF1. The Specification does not provide a lexicographic definition of
“configured.”
FF2. After the prompt 31 is displayed, a user may choose to order
additional capacity directly from the available additional, but yet unlicensed,
capacity in the tape library 10. After choosing to make the order, such as by
selecting a “YES” button or icon, a user configurable capacity threshold 33
is displayed, and the user may select 34 or enter 34 the amount of additional
capacity to be purchase. This may be done by typing in the capacity
increase amount, or selecting an amount from a pull-down menu, or other
similar action, for example. Once the additional capacity to be purchased is
entered 34 or selected 34, the user is prompted for a password 35. After the
password 35 is entered, a request (order) is transmitted, such as by way of
Appeal 2011-006817
Application 11/259,218

5
the component 22 (interface manager 22), to the licensee or manufacturer,
such as to an appropriate order desk at the licensee or manufacturer, for
example. The request (order) is automatically processed at the licensee or
manufacturer, such as by automatically logging into a key generation system
at the licensee or manufacturer. A license and an activation key are
automatically generated and transmitted from the licensee or manufacturer
back to the tape library 10 in real time to authorize usage of the additional
licensed capacity (paras. [00026], [00038]).

ANALYSIS
Statutory Subject Matter
We are not persuaded the Examiner erred in asserting that claims 11-
13, 22, and 23 fail to recite statutory subject matter under 35 U.S.C. § 101
(App. Br. 6-8; Reply Br. 1-3). Independent claim 11 repeatedly recites
“configuring a controller.” The Specification does not provide a
lexicographic definition of “configured.” Accordingly, under a broadest
reasonable construction, we define “configuring a controller” as “to store
instructions on a controller.” The only other step recited by independent
claim 11 is “coupling a user interface to the controller.” Both the
“configuring” and “coupling” constitute insignificant post-solution activity.
The Supreme Court in Bilski approvingly cited Parker v. Flook, 437 U.S.
584 (1978), stating that Flook stands for “the proposition that the prohibition
against patenting abstract ideas ‘cannot be circumvented by… adding
‘insignificant post-solution activity.’” Bilski v. Kappos, 130 S.Ct. 3218,
3230 (2010). The mere storing of data on a controller, or coupling a user
interface to that controller, is just such an extra-solution activity insignificant
Appeal 2011-006817
Application 11/259,218

6
to the core of the invention, and thus is disfavored by Bilski and Flook. To
hold otherwise would allow Appellants to easily circumvent the
unpatentability of abstract ideas by merely storing it on a controller, or by
coupling a user interface, rendering superfluous the prohibition against
patenting abstract ideas.
As our rationale differs from that set forth by the Examiner, we
denominate our affirmance a NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F.R. § 41.50(b).

Written Description Requirement
We are persuaded the Examiner erred in asserting that claims 1-3, 11-
13, and 16-23 fail to comply with the written description requirement of 35
U.S.C. § 112, first paragraph (App. Br. 9-11; Reply Br. 3-5). The Examiner
asserts that the Specification does not provide adequate written description
support for “the controller is configured to take action to authorize usage of
previously unlicensed storage capacity in the storage apparatus as the
additional licensed storage capacity,” as recited in independent claim 1,
because paragraphs [0038] and [0043] of the Specification disclose that it is
the license and activation key generated by the key generation system at the
licensee or manufacturer that actually authorizes the usage of the additional
storage capacity (Ans. 17-18). However, independent claim 1 recites that
“the controller is configured to take action to authorize usage” (emphasis
added). Contrary to the Examiner’s assertion, it does not recite that the
action itself will “directly” result in authorizing the usage. The Specification
discloses sending a request (order) which eventually results in the authorized
usage (FF1). Thus, we are persuaded the Examiner’s rationale for rejecting
Appeal 2011-006817
Application 11/259,218

7
independent claim 1 on these grounds is incorrect.
Independent claim 19 recites “a controller configured to… in response
to detecting that the storage system has reached the predetermined level of
the licensed storage capacity, cause a request to be sent to an authorization
source to request additional licensed storage capacity to be made available in
the storage system.” For the same reasons as set forth above, we also do not
sustain the rejection of independent claim 19 on these grounds.
In rejecting claims 16, 17, and 19-23 on these grounds, the Examiner
asserts
the claims are directed to a controller for robotically managing
and issuing request. The most relevant disclosure is ¶[¶] 17-20
of the Specification. However, the disclosure describes two
different controllers an interface controller 21 and a library
controller 17. As these are distinct components, there is
insufficient support to convey that Applicant had possession of
the invention as claimed
(Ans. 18). However, while the disclosure of two separate controllers may be
grounds for an indefiniteness rejection, the Examiner has not shown that
they support an adequate basis for a written description rejection.

Indefiniteness Rejection
We are persuaded the Examiner erred in asserting that claims 1-3 and
16-18 fail to comply with the definiteness requirement of 35 U.S.C. § 112,
second paragraph (Ans. 11-13). The Examiner asserts that claims 1 and 2
are impermissibly directed to both an apparatus and a process (Ans. 18-19).
However, claims 1 and 2 are both directed to apparatuses that include
components that are configured to perform certain functions. Such
functional claiming is permissible in an apparatus claim and does not
Appeal 2011-006817
Application 11/259,218

8
constitute a process claim.

Obviousness Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Bruynsteen and Microsoft renders obvious “wherein if a
request responsive to the prompt is received at the user interface to acquire
the additional licensed storage capacity, the controller is configured to take
action to authorize usage of previously unlicensed storage capacity in the
storage apparatus as the additional licensed storage capacity,” as recited in
independent claim 1 (App. Br. 13-18; Reply Br. 5). Appellants assert that
the Examiner concedes that Bruynsteen does not disclose the
aforementioned aspect of independent claim 1, and then asserts that
Microsoft only discloses prompting a user to delete old and unnecessary files
in previously authorized storage space, and not previously unlicensed
storage space, as recited in independent claim 1. However, Appellants’
characterization of the Examiner’s position is not accurate. The Examiner
does cite Bruynsteen for disclosing “authorizing previously unlicensed
storage capacity in the storage apparatus as the additional license storage
capacity” (Ans. 10, 20), but then admits that Bruynsteen does not disclose
the prompting aspect of independent claim 1. For the prompting aspect, and
the prompting aspect alone, the Examiner cites Microsoft (Ans. 10, 20).
These disclosures of Bruynsteen and Microsoft are then combined to teach
or suggest the “wherein” clauses of independent claim 1.
Appellants assert that
[s]ince Microsoft specifically teaches that existing
storage capacity (currently occupied by old or unnecessary
files) be re-used, the solution proposed by Microsoft would
Appeal 2011-006817
Application 11/259,218

9
have led a person of ordinary skill in the art away from the
claimed subject matter, which recites that the controller is
configured to take action to authorize usage of previously
unlicensed storage capacity in the storage apparatus as the
additional licensed storage capacity. The solution of Microsoft
is the reuse of existing storage capacity, and thus, a person of
ordinary skill in the art would not have been led to a solution
that involves authorizing usage of previously unlicensed storage
capacity as the additional licensed storage capacity. Therefore,
a person of ordinary skill in the art would have found no reason
to combine the teachings of Microsoft with Bruynsteen to
achieve the claimed subject matter.
(App. Br. 17; emphasis original). We disagree. The Examiner has added the
prompt system of Microsoft to the system of Bruynsteen which authorizes
usage of previously unlicensed storage capacity. Thus, the deletion of old or
unnecessary files in the existing storage capacity of Microsoft does not come
into play. Moreover, even if such an issue did come into play, we are not
persuaded that one of ordinary skill would have been unable to replace the
deletion of old or unnecessary files in the existing storage capacity of
Microsoft with the authorization of usage of the previously unlicensed
storage capacity of Bruynsteen, as set forth by the Examiner.
Appellants set forth similar arguments for the corresponding aspects
of independent claims 11 and 19 (App. Br. 18-21). We find those arguments
unpersuasive for the same reasons set forth above with respect to
independent claim 1.

Obviousness Rejection of Dependent Claim 23
We are not persuaded the Examiner erred in asserting that a
combination of Bruynsteen, Microsoft, and Crawford renders obvious
“configuring the controller to further receive an activation key from the
Appeal 2011-006817
Application 11/259,218

10
authorization source to authorize usage of the additional licensed storage
capacity, wherein the activation key is responsive to the order,” as recited in
dependent claim 23 (App. Br. 21-22). Appellants assert that
Crawford relates to receiving an activation confirmation from a
host computer that includes receiving an activation key code,
for the purpose of performing a wireless network access.
Crawford has nothing to do with the claimed subject matter,
which relates to receiving an activation key from the
authorization source to authorize a usage of the additional
licensed storage capacity, where the activation key is
responsive to the order that is sent to an authorization source to
acquire the additional licensed storage capacity.
(App. Br. 21). However, Bruynsteen is cited for disclosing “receive a
confirmation from the authorization source to authorized usage of the
additional licensed capacity (i.e. awaits a confirmation that adjustment is
successfully complete, see Bruynsteen, Column 4, Lines 32-41)” (Ans. 10,
14, 20), to which the Examiner has added the activation key code of
Crawford (Ans. 14). It is thus immaterial that Crawford’s activation key
code is for wireless network access, as the Examiner has replaced this
wireless network access with the authorization of usage of the previously
unlicensed storage capacity of Bruynsteen. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone does
not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Appellants set forth similar arguments for the corresponding aspects
Appeal 2011-006817
Application 11/259,218

11
of dependent claims 17 and 20 (App. Br. 22). We find those arguments
unpersuasive for the same reasons set forth above with respect to dependent
claim 23.

DECISION
The decision of the Examiner to reject claims 11-13, 22, and 23 under
35 U.S.C. § 101 is AFFIRMED.
The decision of the Examiner to reject claims 1-3, 11-13, and 16-23
under 35 U.S.C. § 112, first paragraph, is REVERSED.
The decision of the Examiner to reject claims 1-3 and 16-18 under 35
U.S.C. § 112, second paragraph, is REVERSED.
The decision of the Examiner to reject claims 1-3, 11-13, and 16-23
under 35 U.S.C. § 103(a) is AFFIRMED.
This decision also contains a NEW GROUND OF REJECTION for
claims 11-13, 22, and 23 pursuant to 37 C.F.R. § 41.50(b), which provides
"[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Appeal 2011-006817
Application 11/259,218

12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)

mls