Ex Parte Ballard et al

Board of Patent Appeals and Interferences

May 31, 2012

11259217 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CURTIS C. BALLARD and KELLY J. REASONER
____________________

Appeal 2010-002163
Application 11/259,217
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appellants appeal from the Examiner’s rejection of claims 1-19. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal 2010-002163
Application 11/259,217

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Representative Claim
1. Storage apparatus containing removable media,
comprising:
a controller configured to robotically manage the
removable media and to inventory the media after power-up
using a default inventory method; and
an operator control panel coupled to the controller and
configurable to solicit one of a number of alternate inventory
methods from a user during power-up.
Rejections on Appeal
1, The Examiner rejects claims 1, 2, 4-8, 10-15, and 17-19 under
35 U.S.C. § 103(a) as being unpatentable over Quantum P4000 and P7000
User’s Guide, ver. 4 (2004) (“Quantum”) and U.S. Patent No. US 7,228,405
B2 issued Jun. 5, 2007 (filed Jun. 25, 2002) (“Rothman”).
2. The Examiner rejects claims 3, 9, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Quantum, Rothman, and Quantum ATL
P4000 and ATL P7000 Prism FC470 User’s Guide Addendum, ver. 1 (July
2003) (“FC470”).

ISSUE
Does the Examiner err in providing a proper rationale for combining
Quantum and Rothman to show that the references collectively would have
taught or suggested “solicit[ing] one of a number of alternate inventory
methods from a user during power-up” as recited in claim 1 and
commensurately recited in claims 7 and 13?
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Application 11/259,217

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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
With respect to representative claim 1, Appellants contend that
“[n]either Quantum nor Rothman teach or suggest either together or
individually an operator control panel coupled to the controller and
configurable to solicit one of a number of alternate inventory methods from
a user during power-up” because “Quantum does not disclose the limitation
that solicitation occurs during power-up” and “Rothman discloses soliciting
of configuration features for a configurable device during powering up” but
“no where [sic] in Rothman is it taught or suggested soliciting one of a
number of alternate inventory methods from a user during power-up.” (Br.
9.) Appellants further assert that “[i]t appears that the Examiner’s statement
[(rationale for combinability)] above is based solely on hindsight derived
from appellants’ specification.” (Br. 15.)
We agree with the Examiner that the combination of Quantum and
Rothman was properly combined and would have taught the disputed
limitation of “solicit[ing] one of a number of alternate inventory methods
from a user during power-up” (claim 1) for the reasons set forth in the
Answer, which we incorporate herein by reference. (Ans. 3-4, 8-9.)
More particularly, we find that Appellants do not dispute the findings
of the Examiner (Ans. 3-4), but instead attempt to attack the references
Appeal 2010-002163
Application 11/259,217

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individually, instead of addressing the combination of references. (Br. 9; see
Ans. 9.) See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(noting that one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
We also find that Quantum and Rothman are analogous art, in that
both references teach controlling computer devices, in particular storage
media (Ans. 4, 9), and the Examiner provides a rationale for Quantum and
Rothman – improved efficiency and functionality (id.) – which is based on
“some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We further note
that Appellants failed to file a Reply Brief to rebut the findings and
responsive arguments made by the Examiner in the Answer.
Accordingly, we conclude, as did the Examiner, that the combination
of Quantum and Rothman would have taught or fairly suggested the disputed
features of “an operator control panel coupled to the controller and
configurable to solicit one of a number of alternate inventory methods from
a user during power-up” as recited in representative claim 1. Independent
claims 7 and 13 include limitations of commensurate scope. Thus, we
affirm the Examiner’s obviousness rejection of independent claim 1 as well
as independent claims 7 and 13 and dependent claims 2 and 4-6 (dependent
on claim 1), dependent claims 7, 8, and 10-12 (dependent on claim 7), and
dependent claims 14, 15, and 17-19 (dependent on claim 13), not separately
argued with particularity (Br. 15, 16, 18). We also affirm the Examiner’s
obviousness rejection of dependent claims 3(dependent on claim 1), 9
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Application 11/259,217

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(dependent on claim 7), and 16 (dependent on claim 13) not separately
argued with particularity (Br. 21).

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-19 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-19 under 35 U.S.C.
§ 103(a).

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

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