Ex Parte Jaquette et al

Patent Trial and Appeal Board

Dec 31, 2013

11679736 (P.T.A.B. Dec. 31, 2013)

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.
11/679,736 02/27/2007 Glen Alan Jaquette TUC920060110US1 4056
7590 01/02/2014
Brian C. Kunzler
Kunzler and Associates
Suite 600
8 East Broadway
Salt Lake City, UT 84111
EXAMINER
MANGIALASCHI, TRACY
ART UNIT PAPER NUMBER
2668
MAIL DATE DELIVERY MODE
01/02/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GLEN ALAN JAQUETTE,
SCOTT JEFFREY SCHAFFER,
and TOSHIYUKI SHIRATORI
____________

Appeal 2011-008057
Application 11/679,736
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008057
Application 11/679,736
2
STATEMENT OF THE CASE
The Examiner finally rejected claims 1, 3-9, and 11-20. Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to self-describing heterogeneous magnetic tape
formatting. Claim 1, reproduced below with disputed limitations
emphasized and lettered, is representative of the claimed subject matter:
1. An apparatus for creating a self-describing, heterogeneous
format, the apparatus comprising:
a detection module comprising semiconductor circuits and
configured to determine if data is to be encrypted when
written to a magnetic tape in response to a host command
and if the data is already encrypted;
an encryption module comprising semiconductor circuits and
configured to encrypt the data if the data is to be
encrypted and if the data is not already encrypted;
a write module comprising semiconductor circuits and
configured to write a reserved codeword followed by the
data to the magnetic tape wherein the reserved codeword
is configured as an encryption reserved codeword if the
data is encrypted else the reserved codeword is
configured as a clear data reserved codeword, wherein
encrypted and unencrypted data segments are intermixed
on the magnetic tape;
a read module comprising semiconductor circuits and
configured to read the magnetic tape as a plurality of
words;
Appeal 2011-008057
Application 11/679,736
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[a] an identification module comprising semiconductor circuits
and configured to identify the reserved codeword from
plurality of words and
[a1] replace the reserved codeword with zeros if the reserved
codeword is the clear data reserved codeword; and the
read module further configured to transfer the data from
the magnetic tape.
REJECTIONS
R1. Claims 1, 3-5, 9, 11-13, and 15-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and suggestions
of U.S. Pub. No. 2005/0246510 (Nov. 3, 2005) (“Retnamma”) and U.S.
Patent No. 5,598,388 (Jan. 28, 1997) (“Van Maren”).
R2. Claims 6-8, 14, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
Retnamma, Van Maren, and Standard ECMA-321, Streaming Lossless Data
Compression Algorithm (June 2001) (“ECMA-SLDC”).

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of rejection R1
of claims 1, 3-5, 9, 11-13, and 15-18 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1
We address rejection R2 separately, infra.

1 Appellants filed a Notice of Appeal on Aug. 12, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.
Appeal 2011-008057
Application 11/679,736
4
ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 18-22). We
highlight and address specific findings and arguments below:
R1. CLAIM 1
We consider the claim 1 limitations “[a] an identification module . . .
configured to . . . [a1] replace the reserved codeword with zeros if the
reserved codeword is the clear data reserved codeword; . . . .”
As an initial matter of claim construction, a question arises as to the
amount of patentable weight, if any, that should be given the disputed claim
1 limitations [a] and [a1]. First, we conclude the claim 1 limitation [a1]
“reserved codeword with zeros” is non-functional descriptive material that is
not accorded patentable weight.2 Specifically, apparatus claim 1 does not

2 Cf. Functional descriptive material consists of data structures and
computer programs which impart functionality when employed as a
computer component. See Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off.
Gaz. Pat. Office 142 (November 22, 2005), especially pages 151-152. The
Manual of Patent Examining Procedure includes substantively the same
guidance. See MPEP § 2111.05 Eight Edition, Revision 9, Aug. 2012. See
also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential);
Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative), aff’d No.
2006-1003 (Fed. Cir. June 12, 2006) (Rule 36); Ex parte Mathias, 84
USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed.
Cir. 2006).
Appeal 2011-008057
Application 11/679,736
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positively recite that the “reserved codeword with zeros” is actually used to
change or alter any machine or computer function.
Second, we conclude the limitation [a] “an identification module . . .
configured to . . . [a1] . . .” (emphasis added) is a statement of intended use
because the claim does not positively recite that the [a1] function of “replace
the reserved codeword with zeros” is actually performed.3 Moreover,
limitation [a1] is conditional and may never occur because the [a1] “replace
the reserved codeword with zeros,” only occurs “if the reserved codeword is
the clear data reserved codeword.”
Even if we assume arguendo that limitations [a] and [a1] may be
accorded patentable weight by our reviewing court, we find the weight of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for the reasons discussed below.
Appellants contend the “reserved codeword does not specify a
previous group in which a separator mark, an access point or the beginning
of an uncompressed record occurred as taught in Van Maren. See
Van Maren, col. 11, lines 58-63.” (App. Br. 16).
Appellants’ contention is not persuasive because the Examiner also
relies upon Van Maren’s description of a “particular algorithm number (e.g.
all zeros)” in the flag field that indicates uncompressed data to teach or

3 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
Appeal 2011-008057
Application 11/679,736
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suggest the claimed “replace reserved codeword with zeros.” (Van Maren
col. 10, ll. 15-18; Ans. 20-21). Moreover, Appellants did not file a Rely
Brief to further rebut the Examiner’s findings. For these reasons, on this
record, we are not persuaded of Examiner error. Accordingly, we sustain the
rejection of claim 1 and of claims 3-5, 9, 11-13, and 15-18, which fall with
claim 1.
R2.
Regarding the remaining claims 6-8, 14, 19, and 20 in rejection R2,
Appellants argue these claims are patentable by virtue of their dependency
from parent claims 1, 9, and 15. (App. Br. 18). However, we find no
deficiencies in the rejection R1 of claims 1, 9, and 15 for the reasons
discussed above. Therefore, we sustain the Examiner’s rejection R2 of
claims 6-8, 14, 19, and 20.

DECISION
We affirm the Examiner's rejections R1 and R2 of claims 1, 3-9, and
11-20 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

msc