Ex Parte Kishi et al

Patent Trial and Appeal Board

Dec 16, 2014

11737732 (P.T.A.B. Dec. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREGORY TAD KISHI, MARK ALLAN
NORMAN, LAURA JEAN OSTASIEWSKI, and
CHRISTOPHER MICHAEL SANSONE1
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Appeal 2012-007807
Application 11/737,732
Technology Center 2100
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Before: JASON V. MORGAN, NATHAN A. ENGELS, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF CASE
The claimed invention relates to a system for prioritizing the order in
which data will be securely erased from storage tapes. Claim 1, reproduced
below, is exemplary.

1Appellants identify the real party in interest as International Business
Machines Corporation.
Appeal 2012-007807
Application 11/737,732
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1. A tape management system comprising:

a processor wherein said processor is configured to:

determine an erasure deadline for at least two physical
volumes of a plurality of physical volumes;

calculate a remaining time for each said physical volume
by comparing a current date to said erasure deadline of each
physical volume, respectively; and

perform a secure data erase on said plurality of physical
volumes in an order based on said calculated remaining time,
wherein said secure data erase is performed on said physical
volume with a shortest calculated remaining time first.

APPELLANTS’ CONTENTION
Appellants argue that the Examiner erred in rejecting claims 1–10
under 35 U.S.C. § 103(a) as obvious in view of Gibble et al. (US 2003/
0196036 A1) and Symantec, The Norton Desktop The Essential Set of
Windows Utilities & Productivity Tools Version 3 for Windows User’s
Guide 12-6, 12-8 (copyright 1991–93) (“Symantec”).2 Specifically,
Appellants argue that Gibble teaches performing a secure erasure only after
an expiration deadline, in contrast to claim 1 which requires performing a
secure data erase before an expiration deadline.

ANALYSIS
Gibble teaches a system in which expired data remains in physical
storage for a certain “time duration” after the data’s expiration date. Gibble

2 The Examiner refers to this reference as Norton, Using Smart Erase (1991)
in the listing of evidence relied upon. Ans. 4. However, as the Examiner
has noted, this publication is an excerpt from the listed user’s guide. Final
Act. 12; PTO-892, Notice of References Cited 2 (Aug. 27, 2010).
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Application 11/737,732
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¶¶ 19, 40. After the time duration has elapsed, the system disclosed in
Gibble overwrites the data such that it can no longer be accessed. Id.
Appellants argue that Gibble fails to satisfy the limitation of claim 1
that requires “calculat[ing] a remaining time for each said physical volume
by comparing a current date to said erasure deadline” and the related
limitation that requires prioritizing the order of secure data erasures based on
the remaining times. App. Br. 11–12. In short, Appellants argue that those
limitations of claim 1 require that secure data erasures be performed before a
certain deadline, while Gibble teaches erasing data only after a certain
deadline. Id.
The Examiner finds that Gibble teaches determining whether data has
been expired longer than a specified time duration and using that
information to determine when the data will be erased. Ans. 17–18. The
Examiner finds that there is only an “insubstantial difference” between the
claimed method of erasing data before a deadline and Gibble’s method of
erasing data after a deadline. Ans. 18.
We agree with the Appellants. Among other differences cited by the
Appellants, the claimed invention operates to ensure that expired data is not
available on or after an erasure deadline, while the cited art permits physical
storage of expired data until after a set deadline. App. Br. 11. The
Examiner’s finding that erasure after the erasure deadline is insubstantially
different than erasure in advance of a deadline lacks support in the record.
Thus, we do not sustain the Examiner’s rejection of claim 1. Claims 2–10
depend from claim 1, and we therefore do not sustain the Examiner’s
rejection of claims 2–10 for the same reasons.
Appeal 2012-007807
Application 11/737,732
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DECISION
For the above reasons, the Examiner’s rejection of claims 1–10 is
reversed.
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) (2009).

REVERSED

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