Ex Parte Haines et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11348636 (B.P.A.I. Jan. 17, 2012)

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.
11/348,636 02/07/2006 Jonathan W. Haines STL12551 7967
7590 01/18/2012
Fellers, Snider, Blankenship, Bailey & Tippens
Suite 1700
100 North Broadway
Oklahoma City, OH 73102-8820
EXAMINER
TSENG, CHENG YUAN
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
01/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN W. HAINES and EWECHYE TAN
____________

Appeal 2010-005990
Application 11/348,636
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-15, which are all of the pending claims. Claims 16-21 have been
canceled. An oral hearing on this appeal was conducted on January 10,
2012. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed July 13, 2009), the Answer (mailed Oct.
5, 2009), and the Reply Brief (filed Dec. 7, 2009) for the respective details.
We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to the partitioning of a data storage space
into a plurality of partitions. One of a plurality of different data integrity
operations is performed on stored data based on a determination as to which
partition the stored data resides. See generally Spec. 12:1-17.
Claims 1 and 9 are illustrative of the invention and read as follows:
1. A method comprising:
partitioning a continuously addressable data storage space into first
and second partitions; and
performing selected first or second different data integrity operations
on data stored in both partitions of the data storage space, each selected data
integrity operation determined in relation to which partition the stored data is
in, wherein the first data integrity operation is a data verification operation
and the second data integrity operation is a defragmentation operation.
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9. An apparatus comprising circuitry configured to select a data
integrity operation for stored data from a plurality of different data integrity
operations based on a predetermined correlation that makes where the stored
data resides determinative of whether the selected data integrity operation is
a data verification operation or a data defragmentation operation.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
NORTON PARTITIONMAGIC 8.0 USER’S GUIDE 1-159 (Symantec Corp. 2004)
[hereinafter PartitionMagic].
AMERICAN HERITAGE DICTIONARY 989 (Houghton Mifflin Co. 1982)
[hereinafter Dictionary].
Claims 1-15, all of the appealed claims, stand rejected under 35
U.S.C. § 103(a) as being unpatentable over PartitionMagic in view of
Dictionary.

ANALYSIS
Claims 1-8
With respect to independent claim 1, Appellants contend that
PartitionMagic does not disclose that a selected data integrity operation to be
performed on data stored in data storage space partitions is “determined in
relation to which partition the stored data is in” as claimed. According to
Appellants (App. Br. 6-8; Reply Br. 1-6), a user in PartitionMagic first
selects a particular partition and then, secondly, selects a data integrity
operation to be performed on data stored in that partition. In Appellants’
view (App. Br. 6-8; Reply Br. 1-6), if PartitionMagic disclosed the claimed
“in relation to” feature, the selection of the particular partition would be
determinative of the data integrity operation to be performed on data in that
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partition, i.e., the user would not need to perform the step of selecting the
data integrity operation.
We find Appellants’ arguments unpersuasive as they are not
commensurate with the scope of the language of claim 1. Contrary to
Appellants’ contention, we find no basis for concluding that the claim
language “determined in relation to which partition the stored data is in”
must be interpreted to mean “dependent upon” or “based on” which partition
the stored data is in as Appellants’ arguments impliedly suggest.
Accordingly, we find no error in the Examiner’s ultimate
determination (Ans. 4-5, 14-15) that PartitionMagic’s disclosure of a user
selection of a particular data integrity operation to be performed on a
particular data storage partition can be reasonably interpreted as
corresponding to the “in relation to” feature as claimed. For example, the
selection of a “defrag” operation to be performed on data stored in a second
data partition would result in the “defrag” operation being performed “in
relation to” the data stored in the second portion. Conversely, the “defrag”
operation would not be performed “in relation to” the data stored in the first
partition.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 1, as well as the rejection of dependent claims
2-8 not separately argued by Appellants in the principal Brief.1

1 Appellants, at pages 10-15 of the Reply Brief, for the first time on appeal
present separate arguments for the patentability of dependent claims 2-8.
These new arguments are entitled to no consideration because they are not
responsive to new points in the Answer. See Ex parte Borden, 93 USPQ2d
1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good
cause, the Board is not required to address an argument newly presented in
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Claim 15
We also sustain the Examiner’s obviousness rejection of independent
claim 15, which contains the previously discussed “in relation to” language
as part of a “means for performing” clause, for all of the reasons discussed
with respect to the rejection of independent claim 1. Appellants contend
(App. Br. 11-12; Reply Br. 9-10) that, in violation of the requirements for
examining means-plus-function claims under 35 U.S.C. § 112, sixth
paragraph, the Examiner has failed to show any structure in PartitionMagic
which is the equivalent of the disclosed structure for performing the claimed
function.
Appellants have identified the processor executable stored processing
instructions as the corresponding structure for the means element which
performs the function of performing different data integrity operations
(Spec. 12-13). Appellants, however, have provided no convincing
arguments as to why the stored processing instructions disclosed by
PartitionMagic (pp. 58, 60), such as the ScanDisk and Disk Defragmenter
routines, may not be considered to be equivalent to the structure disclosed by
Appellants. As explained by the Examiner (Ans. 17), it is the ScanDisk and
Disk Defragmenter software instructions disclosed by PartitionMagic which
perform the data integrity operations “in relation to” the stored data in the
various partitions.

the Reply Brief that could have been presented in the principal Brief on
Appeal).
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Claims 9-14
We do not sustain the Examiner’s obviousness rejection of
independent claim 9 and its dependent claims 10-14. Unlike the “in relation
to” language of independent claims 1 and 15, independent claim 9
specifically requires that the different data integrity operations are “based on
a predetermined correlation that makes where the stored data resides” as the
determining factor in the type of data integrity operation performed.
Accordingly, we agree with Appellants (App. Br. 10-11; Reply Br. 8-9) that
PartitionMagic has no such teaching since there is no correlation between
which storage partition particular stored data resides in and the data integrity
integration that is performed. In other words, the selection in PartitionMagic
by a user of a first partition to perform a data integrity operation would not
be determinative of the type of data integrity operation to be performed since
PartitionMagic requires a user to select which data integrity operation is to
be performed after a partition selection is made.

CONCLUSION
Based on the analysis above, we conclude that Appellants have not
shown that the Examiner erred in rejecting claims 1-8 and 15, but have
shown that the Examiner erred in rejecting claims 9-14.

DECISION
The Examiner’s decision rejecting claims 1-15 under 35 U.S.C.
§ 103(a) is affirmed-in-part.
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).
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AFFIRMED-IN-PART

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