Ex Parte Ballard et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11259220 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CURTIS C. BALLARD, KELLY J. REASONER,
and TIM MOORE
____________

Appeal 2009-010832
Application 11/259,220
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-6. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2009-010832
Application 11/259,220

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INVENTION
The Appellants describe the invention at issue on appeal as a
"[s]torage apparatus containing removable media and related methods that
filters and displays information regarding events relating to the health of the
storage apparatus." (Spec. 12.)

ILLUSTRATIVE CLAIM
1. Storage apparatus containing removable media, comprising:
a controller configured to robotically manage the
removable media and to manage events related to the health of
the storage apparatus, wherein the events are classified into one
of a number of predetermined event classes;
a display coupled to the controller for displaying the
events; and
an operator control panel coupled to the controller and
configurable to receive a class selection from a user;
wherein in response to the class selection, the controller
causes only events associated with the class selection to be
displayed.

REJECTIONS
Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the Appellants' admitted prior art ("AAPA") and U.S.
Patent Application Pub. No. 2005/0177790 ("Molander").
Claims 2, 4, and 6 stand rejected under § 103(a) as being unpatentable
over AAPA; Molander; and U.S. Patent Application Pub. No. 2006/0294214
("Chou").

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DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of
claims 1, 3, and 5 on the basis of claim 1 and the appeal of claims 2, 4, and 6
on the basis of claim 2. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, the
issues before us follow.
Did the Examiner err in combining teachings of AAPA and Molander
and in finding that the combined teachings of the references would have
suggested classifying events into one of a number of predetermined event
classes and also would have suggested a display coupled to a controller, as
required by representative claim 1?
Did the Examiner err in finding that the combined teachings of
AAPA, Molander, and Chou would have suggested the limitations of
representative claim 2? We address the issues seriatim.

REPRESENTATIVE CLAIM 1
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted).
Here, we agree with the Examiner's following findings regarding the
combining of teachings from AAPA and Molander.
Molander is directed to solving the problem identified by
Appellant's [sic] Background of [when a user is searching the
health related event logs, the user is required to sort
through these multiple logged events to find those that are
of interest (See Appellant's [sic] Background; pars. 0006-
0007)] as Molander teaches [displaying only some of the
events in an event log depending on a number of sorting
criteria (or event classes) so the reader does not have to
read through all the events (see paragraph 3)].
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(Ans. 8.) More specifically, we find that the problem identified by AAPA
and the solution identified by Molander would have provided a valid reason
to combine teachings of the references.
The Appellants argue that the "Appellant's [sic] Background teaches
away from the claim recitations, indicating that conventional tape libraries
do not display events in terms of predetermined event classes." (App. Br. 8.)
For the obviousness of an invention to be at issue, of course,
there must be some difference between the invention and each
prior art reference of record. It would be illogical, therefore, to
conclude that a reference teaches away from employing a
feature of an invention merely because it lacks that feature.
Teaching a Way is not Teaching Away, 79 J. Pat. & Trademark Off. Soc'y
867, 878 (1997) (citations omitted).
Here, the argument that AAPA teaches away from employing event
classes merely because it lacks these classes is illogical. There must be
some difference between the invention and each reference for the
obviousness of the invention to be at issue.
Therefore, we conclude that the Examiner did not err in in combining
teachings of AAPA and Molander.
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, we agree with the Examiner's following findings regarding
teachings of Molander.
Molander teaches events are classified into one of a
number of predetermined event classes, the operator control
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panel configurable to receive a class selection from a user, and
displaying only the events associated with the class selection as
[event logs wherein it is taught that these "event logs may
also include sorting criteria (note that a class comprises
categories to organize information, thus the sorting criteria
is interpreted to correspond to the claimed event classes)
such as time of the event or of the report, name of the event,
type of event, person reporting or on the scene, error code,
etc." . . . (see paragraph 3).
(Ans.7-8.) More specifically, we find that the reference's teachings that
"different types of events . . . can be sorted and ordered by categories such as
time, date, event type, and the like" (¶ 0002) , and that "[e]vent logs may
also include sorting criteria such as time of the event or of the report,
name of the event, type of event, person reporting or on the scene, error
code, etc." (¶ 0002) would have suggested classifying events into one of a
number of predetermined event classes or categories.
The Appellants argue that "[a]s is indicated in the present
specification in paragraph [0023], for example, a class includes errors,
warnings, and status information, for example. Molander does not teach
anything regarding these types of classes." (App. Br. 12.)
"Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment."
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994).
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Here, we agree with the Examiner's finding "that the features upon
which applicant [sic] relies (i.e., classes so that a class includes errors,
warnings, and status information) are not recited in the rejected claim . . . ."
(Ans. 16.) We also note the Appellants' phrases "for example" (Appeal Br.
12) and "such as" (Spec. ¶ 0023) characterizes these features as mere
examples rather than definitions.
Therefore, we conclude that the Examiner did not err in finding that
the combined teachings of AAPA and Molander would have suggested
classifying events into one of a number of predetermined event classes.
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)).
Here, the Appellants admit that in AAPA "there is a controller,"
(Appeal Br. 9) and "that there is a "control and display panel (or operator
control panel) . . . ." (Id.) They argue, however, that "there is no disclosure
in the Background section indicting that the conventional operator control
panel is coupled to the controller." (Reply Br. 6.)
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425). In determining obviousness,
furthermore, a reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole." Id.
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Here, Molander disclose that its "invention is most advantageously
implemented by a computer." (¶ 0025.) More specifically, "[o]ne suitable
computer system 20 is illustrated in FIG. 1" (id.), which follows.

More specifically, Figure 1 shows that the computer system features "a
display such as a CRT [i.e., cathode ray tube] or plasma screen . . . . The
computer system further includes . . . at least one data processor CPU [i.e.,
central processing unit] 26, a memory 28 . . . ." (¶ 0025.)
We find that the line connecting the CPU 26 to the CRT/plasma screen 22
would have suggested coupling the CRT/plasma display to the CPU, which
is a controller.
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Molander also describes the interaction of its processor, memory, and
monitor as follows:
a processor coupled to said first memory to arrange the first
portion into a tabular format and the second portion into a
graphical format, said formats combined into an output signal
that enables a monitor to simultaneously display said tabular
format and said graphical format . . . .
(Claim 20.) We find that the processor's arranging of data into different
formats and combining these into a signal for a monitor would also have
suggested coupling the monitor, which is a display, to the processor, which
is a controller.
Therefore, we conclude that the Examiner did not err in finding that
that the combined teachings of AAPA and Molander would have suggested a
display coupled to a controller.

REPRESENTATIVE CLAIM 2
The Examiner finds that "Chou teaches a system that uses an Event
Severity attribute to signal critical events that comprise serious failures that
require attention and warning events that comprise failures that don't
interrupt the data flow." (Ans. 4-5.) Chou supports this finding by
disclosing that an "Event Table may comprise an Event Severity attribute"
(¶ 0038) and that the Event Severity attribute "may comprise a critical
event" (¶ 0041) or "a warning event" (¶ 0043) inter alia.
The Appellants argue that "Chou does not disclose or suggest event
classes including critical events, critical and warning events, and all events .
. . ." (Reply Br. 14.)
Appeal 2009-010832
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"Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious." Ex parte Curry,
84 USPQ2d 1272, 1274 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004)), aff’d, Appeal No. 2006-1003 (Fed. Cir. 2006).
"[W]hen descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability[.]" Curry, 84 USPQ2d at 1274 (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)).
Here, the terms "critical," "critical and warning," and "all" are merely
nonfunctional labels describing types of events. These labels cannot render
nonobvious claim 2, which would have otherwise been obvious. Therefore,
we conclude that the Examiner did not err in finding that the combined
teachings of AAPA, Molander, and Chou would have suggested the
limitations of representative claim 2.

DECISION
We affirm the rejections of claims 1 and 2 and of claims 3-6, which
fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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