Ex Parte Klier

Patent Trial and Appeal Board

Jul 8, 2014

10723037 (P.T.A.B. Jul. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAN KLIER1
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Appeal 2012-003682
Application 10/723,037
Technology Center 2100
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Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a storage
system and method. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-14, 17, 18, 20, 21, and 23-28 are on appeal (App. Br. 2).
The claims subject to each rejection have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is
representative and reads as follows:

1 Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP (App. Br. 1).
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1. An automated storage system comprising:
a data access drive configured to read and write computer-readable
data on storage media;
a drive controller provided at the data access drive;
computer-readable program code provided in computer-readable
storage at the data access drive, the computer-readable program code
executable by the drive controller for generating drive information and user
interface rendering data, wherein the drive information comprises a status of
the data access drive and an operating speed of the data access drive; and
a user interface module to output the drive information via a user
interface in accordance with the user interface rendering data.
Claims 1-5, 7-14, 17, 18, 20, 21, and 24-28 stand rejected under
35 U.S.C. § 103(a) as obvious de Jong2 in view of HD_Speed3 and Riedel4
(Ans. 5).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious de Jong
in view of HD_Speed, Riedel, and Matsumoto5 (Ans. 9).
Claim 23 stands rejected under 35 U.S.C. § 103(a) as obvious de Jong
in view of HD_Speed, Riedel, and CD Speed 20006 (Ans. 11).
The Examiner relies on de Jong for disclosing
an automated storage system comprising:
a data access drive . . . operable to read and write
computer-readable data on storage media . . . ;
a drive controller . . . provided at the data access drive;
computer-readable program code . . . provided in
computer-readable storage . . . , the computer-readable program
code executable . . . for generating drive information and user

2 de Jong et al., US 7,107,534 B1, Sept. 12, 2006.
3 The Art of Code (2003), www.steelbytes.com.
4 Erik Riedel, Active Disks - Remote Execution for Network-Attached
Storage (2000).
5 Matsumoto et al., US 2002/0124124 A1, Sept. 5, 2002.
6 CD Speed Homepage (2003), www.cdspeed2000.com.
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interface rendering data . . . , wherein drive information
comprises a status of the data access drive . . . ; and
a user interface module . . . to output the drive
information via a user interface in accordance with the user
interface rendering data.
(Ans. 5.)
The Examiner relies on HD_Speed for teaching “a GUI application
that a user can install on a drive which will display drive information that
comprises a status of the data access drive and an operating speed of the data
access drive” (id. at 6). The Examiner concludes:
It would have been obvious to one of ordinary skill at the time
of the invention to modify de Jong with the teachings of
HD_Speed and include drive information that comprises a
status of the data access drive and an operating speed of the
data access drive with the motivation to provide the user with
better benchmark of their computer’s capabilities and to help
the user diagnose potential problems with a disk drive.
(Id.)
The Examiner relies on Riedel for teaching “that computer-readable
program code can be executable by the drive controller” (id.). The
Examiner concludes that it would have been obvious “to modify de Jong_
Speed with the teachings of Riedel and include the ability to execute code
right on the dive controller with the motivation to improve application
performance” (id.).
In rejecting dependent claims 6 and 23, the Examiner additionally
relies on Matsumoto and CD Speed 2000, respectively (id. at 9-11).
However, Appellants do not separately argue the rejections of claims 6 and
23 (App. Br. 14) and have therefore waived any additional arguments with
regard to these dependent claims. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any
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arguments or authorities not included in the brief or a reply brief . . . will be
refused consideration by the Board, unless good cause is shown.”). We will
therefore consider the rejections together.
ANALYSIS
Appellant argues that neither de Jong nor HD_Speed discloses that the
computer-readable program code is provided in computer-readable storage
at the data access drive and that it is executable by the drive controller (App.
Br. 7-9). Appellant also argues that Riedel fails to disclose computer-
readable program code for generating drive information and user interface
rendering data, where the drive information comprises a status of the data
access drive and an operating speed of the data access drive (id. at 10).
However, we conclude that Appellant has not adequately explained why the
combination of de Jong, HD_Speed, and Riedel fails to suggest the
computer-readable program code of claim 1.
In particular, Appellant argues that the Examiner “erred in arguing
that HD_Speed discloses a GUI application that displays drive information
comprising an operating speed of the data access drive” (id. at 9). We are
not persuaded.
De Jong clearly discloses a graphical user interface (GUI) (de Jong,
col. 6, l. 62). In addition, HD_Speed discloses software that “[m]easures
both sustained and burst data transfer rates of your hard disks, cd/dvd-roms
and floppy” and has a “[r]ealtime graphical display” (HD_Speed 1).
Appellant has not adequately explained why these teachings fail to suggest a
GUI application that displays drive information comprising an operating
speed of the data access drive.
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Appellant also argues that, “in view of the significant differences
between the claimed subject matter and the teachings of the references, no
reason existed that would have prompted a person of ordinary skill in the art
to combine the teachings of the references to achieve the subject matter of
claim 1” (App. Br. 10). In support of this position, Appellant argues:
The Examiner has cited to no specific hint given in any of the
references regarding executing computer-readable program
code by a drive controller at a data access drive to generate user
interface rendering data, where a user interface module is to
output the drive information via a user interface in accordance
with the user interface rendering data.
(Id. at 11.) We are not persuaded.
As indicated by the Supreme Court, “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In the present case,
Riedel discloses that “allowing application-specific code to be executed at
storage devices . . . can make more effective use of device, client and
interconnection resources and considerably improve application I/O
performance” (Riedel 1). In particular, Riedel discloses that “[p]rocessing
that can be performed cheaply at the disks will offload the other system
components and can significantly improve overall user-visible performance”
(id. at 3). Appellant has not adequately explained why Riedel’s disclosure
fails to suggest including computer-readable program code for generating
drive information and user interface rendering data, as described in de Jong
and HD_Speed, at the data access drive, such that it is executable by the
drive controller.
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In addition, Appellant argues that “it is clear that both de Jong and
HD_Speed would have led a person of ordinary skill in the art away from
executing computer-readable program code by a drive controller (provided
at the data access drive) for generating the drive information and user
interface rendering data of claim 1” (App. Br. 11). We are not persuaded.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “[I]n general, a reference will teach away if it suggests that
the line of development flowing from the reference’s disclosure is unlikely
to be productive of the result sought by the applicant.” Id. We do not agree
that the failure of de Jong and HD_Speed to teach executing its computer-
readable program code by a drive controller provided at the data access drive
constitutes a teaching away from doing so. Appellant has not pointed to any
specific discouragement or disparagement in either de Jong or HD_Speed of
Riedel’s suggestion to execute application code at a storage device.
CONCLUSION
The evidence supports the Examiner’s conclusion that claim 1 would
have been obvious. We therefore affirm the obviousness rejections.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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