Ex Parte Hoerger

Patent Trial and Appeal Board

Aug 31, 2016

13123563 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/123,563 04/11/2011 Carl R. Hoerger
56436 7590 09/02/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82690318 8777
EXAMINER
WONG,KINC
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL R. HOERGER
Appeal2015-001942
Application 13/123,563
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3---6, 8-10, 12, 13, and 18-20. Claims 2, 7, 11, and 14--17 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-001942
Application 13/123,563
The claims are directed to a locating a head element of a tape storage
device using servo information in a data track. Claim 9, reproduced below,
is illustrative of the claimed subject matter:
9. A method comprising:
receiving servo signals based on servo information in data
tracks of a storage tape read by read head elements of a head
assembly for a tape storage device;
determining positions of the read head elements based on
the servo information in the data tracks; and
identifying the head assembly as being out of specification
based at least on the determined positions of the read head
elements.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Saliba ("Saliba '904") us 5,523,904 June 4, 1996
Saliba ("Saliba '786") US 7,859,786 B2 Dec. 28, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3---6, 8, 9, 12, 13, and 18-20 stand rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Saliba ('904).
Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Saliba ('904) in view of Saliba ('786).
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Application 13/123,563
ANALYSIS
The Examiner has withdrawn the rejection of claims 1, 3-5 and 18
under 35 USC 112, second paragraph, and, therefore, we make no findings
or conclusions regarding it in the Decision.
Anticipation
Claim 9
Appellant contends that the portions of the Saliba ('904) reference
relied upon by the Examiner "refers to controlling a position of a magnetic
head for writing and reading tracks. However, there is absolutely nothing in
Saliba 1 [('904)] that even remotely teaches the identifying of a head
assembly as being out of specification, as recited in claim 9". (App. Br.
13). Appellant further contends:
The Examiner asserted that a "position error" described in Saliba
1 [('904)] constitutes the "head assembly as being out of
specification"" Office Action at 4. This assertion is clearly
incorrect. Position error refers to a head assembly being out of
alignment with respect to a storage tape. However, a position
error clearly does not provide any indication that a head assembly
is out of specification."
(App. Br. 13-14).
The Examiner further clarifies the statement of rejection in the
response to arguments section and finds:
Appellant is directed to col. 6, lines 15-35 and col. 11, lines 8-23
and col. 11, line 59 to col. 12, line 9 of Saliba ('904) where Saliba
('904) describes the evaluations, determination, test and
comparison with a reference, threshold, predetermined value
(calibration) that resulted from a different or error or
misalignment/position error which as a representation of head
assembly being out of specification in respective to a test,
comparison or calibration. Moreover, the "error" or "position
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Application 13/123,563
error" are consistent with the instant specification para. { 0036-
003 8}. Therefore, Saliba [ ('904)] discloses the noted argued
features of claim 9.
(Ans. 7).
Appellant generally responds to the Examiner's additional citations
and continues to generally contend that the positioning and repositioning of a
magnetic head based on servo information provides absolutely no teaching
whatsoever of identifying a head assembly as being out of specification.
(Reply Br. 10-11 ). But Appellant does not provide any persuasive argument
explaining why the misalignment errors to head position in Saliba '904 (e.g.,
col. 11, 1. 66; see Ans. 7) do not evidence that the head assembly is "out of
specification," as recited in claim 9.
Rather, if an adjustment of read head position is required due to
misalignment, we find "the head assembly is out of specification based at
least on the determined positions of the read head elements," within the
meaning of claim 9; and Appellant's general argument does not show error
in the Examiner's finding of anticipation. See e.g., Saliba '904 (col. 11, 1. 62
----66), as pointed to by the Examiner (Ans. 7): "For instance, if the servo
blocks 126 and 128 of FIG. 3 are laterally aligned with the servo blocks 122
and 124 respectively, the read servo would be functional, though subject to
providing ambiguous results 65 when the magnetic head 22 is misaligned
exactly between two tracks." (Emphasis added).
Given the evidence relied on by the Examiner (Ans. 7), on this record,
Appellant's arguments do not show error in the Examiner's finding of
anticipation regarding independent claim 9.
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Application 13/123,563
Claims 1 and 8
With respect to independent claim 1 and 8, the Examiner maintains
"Regarding claims 1, 3---6, 8, 12-13 and 18-20: claims (1, 3---6, 8, 12-13 and
18-20) have similar structure as claim 9 with recitations of the second
storage tape that which disclosed in col. 6, lines 36-47 of Saliba [('904)]."
(Ans. 3).
Appellant contends "the reliance on the rejection of claim 9 to reject
claim 1 constitutes error. The language of claim 1 is quite different from the
language of claim 9." (App. Br. 7). Appellant further contends:
the calibrating performed in claim 1 includes adjusting a lateral
position of the read element by a first amount during a read
operation, and adjusting a lateral position of a write head element
by a second, different amount during a write operation. The
concept of adjusting the read and write head elements by
different amounts during respective read and write operations is
not recited in claim 9, and is not taught anywhere in Saliba 1.
(App. Br. 8). Additionally, Appellant argues:
There is no indication anywhere in Saliba 1 that its
calibration operation includes the adjusting of the lateral
positions of the read and write head elements by different
amounts relative to a reference path along a data track of a
second storage tape during respective read and write operations,
as claimed.
Moreover, claim 1 recites that the processing circuit is
configured to determine a position of the read head element
based on the servo information in the data track of a first storage
tape. A position of the write head element is then determined
relative to the determined position of the read head element.
Moreover, according to claim 1, the calibrating that is performed
by the processing circuit includes adjusting lateral positions of
the read and write head elements relative to a reference path
along a data track of a second storage tape.
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Application 13/123,563
The operation described in column 6 of Saliba 1, in
relation to Fig. 3 of Saliba 1 [('904)], is with respect to one
storage tape. Thus, there is no concept in Saliba 1 [('904)] of
determining a position of the read head element based on the
servo information in the data track of a first storage tape, and
using such determined position of the read head element to adjust
lateral positions of the read head element and the write head
element relative to the reference path along a data track of a
second storage tape.
(App. Br. 9).
The Examiner responds with further clarification as to the portions of
the Saliba ('904) relied upon to support the finding of anticipation.
Appellant is directed to col. 6, lines 8-47 of Saliba ('904) where
Saliba ('904) describes the "calibration" that which include
adjusting the lateral position for read and write elements in a
different amounts relative to a reference path (position) along a
data track by adjusting the azimuth angle (col. 6, line 60 to col.
7, line 1 of Saliba ('904)) in respective to the reference position
during the calibration. The pre-written calibration track contains
servo information for calibration (content of the first tape
(golden/ calibrated/reference tape)) in the tape (second tape) also
meets the noted limitations of the arguments. Thus, Saliba ('904)
discloses the recited features of claim 1 interpreted consistent
with the instant specification para. {0011, 0012, 0019, 0023 and
0024}.
(Ans. 5).
We find error in the Examiner's findings regarding independent claim
1. The Examiner has not set forth any details of the rejection and
subsequently cites additional portions of the Saliba ('904) reference where
none were provided in the Final Action, and the Examiner's Answer
reiterates only col. 6, lines 36-47 of Saliba. Additionally, the Examiner
merely provides citations to the reference without further discussion.
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Application 13/123,563
Because the Examiner paints with a broad brush in making the
anticipation rejection, we are left to speculate as to the precise details of how
each argued claim limitation is expressly or inherently described by the
portion of column 6 relied on by the Examiner. We decline to engage in
speculation. We note that the Board is a reviewing body and not a place of
initial examination. Moreover, it is our view that the more rigorous
requirements of§ 102 essentially require a one-for-one mapping of each
argued limitation to the corresponding portion of the reference, which the
Examiner must identify with particularity.
Appellant further responds to the Examiner's new citations in the
Reply Brief. (Reply Br. 2--4 ). We agree with Appellant that the Examiner
has not presented a finding of anticipation.
With regards to independent claim 8, we find the Examiner did not set
forth a statement of rejection in the Final Action addressing the merits of the
claim, and in the Examiner's Answer, the Examiner directs Appellant to:
to col. 11, lines 24-58 and col. 7, lines 19-56 of Saliba
('904) where Saliba ('904) describes the independent evaluation
reading of the relative position of the head assembly for adjusting
the lateral position (azimuth misalignment of head gap and
adjustment thereof). Thus, Saliba ('904) discloses the recited
features of claim 8.
(Ans. 5---6).
Appellant addressed the Examiner's new citations and contends
adjustment of the magnetic head 22 causes identical adjustment of both the
read and write head elements. (Reply Br. 6-7). We agree with Appellant
that adjustment of the magnetic head 22 causes identical adjustment of both
the read and write head elements.
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Application 13/123,563
We agree with Appellant that the Examiner has not set forth a finding
of anticipation based upon Saliba ('904).
Claims 12 and 13
The Examiner does not provide a detailed statement of rejection
beyond the single citation in the Final Office Action and the Examiner's
Answer at page 3. The Examiner further cites "col. 11, line 59 to col. 12,
line 9 of Saliba ('904) where Saliba ('904) describes the correction of the tilt
use servo information in the data track that which is in-line with the instant
specification para. { 0040}. Thus, Saliba ('904) discloses the argued feature
of claims 12 and 13." (Ans. 6). Appellant further responds to the
Examiner's additional citations in the Reply Brief. (Reply Br. 8). We agree
with Appellant that the Examiner has not set forth a requisite finding of
anticipation of dependent claims 12 and 13.
Claim 20
With regards to dependent claim 20, the Examiner provides the same
insufficient statement of rejection and further maintains:
col. 11, lines 8-23 and col. 11, lines 59 to col. 12, line 9 of Saliba
('904) that which in with instant specification para. { 0018-0019}.
Thus, noted arguments are matched. Therefore, Saliba ('904)
discloses the noted argued features of claim 20 and respective to
feature of claim 1.
(Ans. 6).
Appellant contends "As explained above in connection with claim 1,
the calibration operation described in column 6 of Saliba 1 relates to a single
storage tape, and does not provide any teaching or hint of the foregoing
subject matter of claim 20." (Reply Br. 9).
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Application 13/123,563
Again, we find the Examiner's findings to be insufficient to support
the Examiner's finding of anticipation of dependent claim 20.
Obviousness
Claim 10
With regards to independent claim 10, the Examiner additionally
maintains:
Appellant is directed to col. 11, line 59- to col. 12, line 9
of Saliba ('904 ); and; col. 6, lines 17-27 and col. 6, lines 43- 60
of Saliba ('786) the detection of dimension of the other storage
tape and correction thereof that which are in-line with instant
specification para. { 003 8-0039}. Thus, Saliba ('786) matched to
noted arguing features of claim 10. Therefore, the combination
of Saliba ('904) and Saliba ('786) is proper.
(Ans. 7).
Appellant contends "However, there is nothing in Saliba 2 [('786)]
that even remotely teaches or hints at adjusting a tension applied to another
storage tape based on a detected dimension of the another storage tape and
on the determined positions of the read head elements. (App. Br. 15; Reply
Br. 12-13).
We agree with Appellant that the Examiner's conclusion of
obviousness is not based upon underlying factual findings supported by the
prior art references.
CONCLUSIONS
The Examiner did not err in rejecting independent claim 9 based upon
anticipation under 35 U.S.C. § 102, but the Examiner erred in rejecting
independent claims 1 and 8 based upon anticipation under 35 U.S.C. § 102
and the Examiner erred in rejecting corresponding dependent claims 3-6, 12,
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Appeal2015-001942
Application 13/123,563
13, and 18-20. The Examiner erred in rejecting independent claim 10 based
upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we do not sustain the Examiner's rejections of
claims 1, 3---6, 8, 10, 12, 13, and 18-20, but we sustain the Examiner's
rejection of claim 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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