Ex Parte New et al

Board of Patent Appeals and Interferences

Nov 16, 2010

10674081 (B.P.A.I. Nov. 16, 2010)

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.
10/674,081 09/29/2003 Richard M. H. New HSJ920030174US1 2173
7590 11/17/2010
John L. Rogitz
Rogitz & Associates
Suite 3120
750 B Street
San Diego, CA 92101
EXAMINER
BRAGDON, REGINALD GLENWOOD
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
11/17/2010 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 RICHARD M. H. NEW and MASON LAMAR WILLIAMS
____________________

Appeal 2009-005529
Application 10/674,081
Technology Center 2100
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and THU A.
DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005529
Application 10/674,081

2
I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-4,
6-13, 15, 16, and 18-25 under 35 U.S.C. § 134(a) (2002). Claims 5, 14, and
17 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.

A. INVENTION
According to Appellants, the invention relates to hard disk drives
(Spec. 1, l. 1).

B. ILLUSTRATIVE CLAIM
Claims 1 and 10 are exemplary and are reproduced below:
1. A hard disk drive (HDD) comprising:

at least one rotatable disk;

at least one write element configured for writing data to
the disk in isolated tracks and in bands, wherein at least two
tracks establish a band; and

at least one HDD controller controlling the write element,
the controller using a log-structured file system defining
segments, each segment corresponding to at least one of: a
respective band, and isolate tract, wherein the log-structured file
system uses an error correction code (ECC) block size larger
than a physical sector size of the disk, a cumulative ECC parity
state between successive partial writes of an ECC block being
retained.

10. A data storage system comprising:

disk means for storing data;

Appeal 2009-005529
Application 10/674,081

3
means for writing data to the disk in tracks and bands,
wherein at least two tracks establish a band and wherein at least
some bands are shingled; and

means for controlling the means for writing, the means
for controlling using a log means for establishing a file system,
wherein the log means uses a virtual address table (VAT) to
remap sectors as require for shingled track writing.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holland US 5,367,669 Nov. 22, 1994
Ono US 5,872,905 Feb. 16, 1999
Payne US 6,212,047 B1 Apr. 3, 2001
Liu US 2002/0071198 A1 Jun. 13, 2002
Asano US 2003/0147167 A1 Aug. 7, 2003
Kasiraj US 7,490,212 B2 Feb. 10, 2009
(filed Sep. 29, 2003)

Rosenblum et al., The Design and Implementation of a Log-Structured
File System, Proceedings of the 13th ACM Symposium on Operating
Systems Principles and the Feb. 1992 ACM Transactions on
Computer Systems; pp. 1-15, (1991).

Claims 1-4 and 6-9 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Liu, Rosenblum and Asano.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the teachings of Liu, Rosenblum, Asano, and Payne.
Appeal 2009-005529
Application 10/674,081

4
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Asano, and Ono.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the teachings of Liu, Rosenblum, Asano, Ono, and Holland.
Claims 10, 11, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Liu, Rosenblum, and Ono.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Ono, and Payne.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Ono, and Asano.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Liu, Rosenblum, and Holland.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Holland, and Payne.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Holland, and Asano.
Claims 22-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Liu, Rosenblum, Holland, and Ono.
Additionally, the Examiner provisionally rejected claim 18 on the
ground of non-statutory, obviousness-type double patenting as being
unpatentable over claim 9 of copending Application 10/674,093 (Ans. 4).
Appellants present no arguments against this rejection, and as such,
Appellants have waived any argument of error regarding the rejection. We
summarily sustain this rejection.

Appeal 2009-005529
Application 10/674,081

5
II. ISSUE
Has the Examiner erred in concluding that:
1) the language “a cumulative ECC parity state between successive
partial writes of an ECC block being retained” (claim 1) is vague and
unexplained either in the context of the claims or in the Specification?
2) Liu in view of Rosenblum and Ono would have suggested “a log
means” that “uses a virtual address table (VAT) to remap sectors as required
for shingled track writing” (claim 10) and Liu in view of Rosenblum and
Holland would have suggested “at least one drive controller…, the drive
controller for each drive writing data in shingled bands” (claim 18)? In
particular, the issue turns on whether Liu would have suggested shingled
track writing.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Specification
1. Appellants discloses that overlapping writing can be referred to as
“shingled track writing,” wherein tracks are written such that each
written track partially overlaps an immediately adjacent track that is
contiguous to it, like shingles on a tiled rood (Spec. 2, ll. 7-11).
Liu
2. Liu discloses data tracks in a disc drive that are divided into data
blocks, wherein writes to a data block begin from track 0 to 9 and
shall not start in between (pg. 6, [0068]; Fig. 13).

Appeal 2009-005529
Application 10/674,081

6
IV. ANALYSIS
112, 2nd Paragraph
As to claim 1, the Examiner finds that “[t]he language ‘[a] cumulative
ECC parity state between successive partial writes of an ECC block is
retained’ is vague and unexplained either in the context of the claims or in
the specification” (Ans. 6). We agree with the Examiner.
We find that independent claim 1 on appeal is so abstract in recitation
that the claim is deemed indefinite. That is, we cannot determine the metes
and bounds of the claim as required to ascertain its scope. In particular, we
are unclear as to what the phrase “a cumulative ECC parity state between
successive partial writes of an ECC block being retained” is to include, mean
or represent.
Though a claim is read in view of the Specification, we agree with the
Examiner that Appellants’ Specification does not shed any light as to the
meaning of the phrase. In fact, we are unclear as to how the clause is linked
to the rest of the claims. That is, the language of claim 1 does not provide
any antecedent basis for “an ECC block” of which “a cumulative ECC parity
state between successive partial writes” are retained. In particular, the
language of claim 1 does not make clear whether the ECC block is
comprised within the hard disk drive or another structure. In fact, the claim
does not even make clear as to whether the hard disk drive itself retains the
cumulative ECC parity state. Instead, the clause seems to be left
unconnected at the end of the claim.
Therefore, we find it unclear as to what the language of claim 1 is
directed. When a claim becomes so ambiguous that one of ordinary skill in
the art cannot determine its scope absent speculation, such claim is invalid
Appeal 2009-005529
Application 10/674,081

7
for indefiniteness. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
Here, we conclude that claim 1 does not reasonably apprise those
skilled in the art of its scope. Because we conclude that there are significant
ambiguities with respect to claim 1 and thus to each of the claims depending
therefrom, we affirm the Examiner’s rejection under 35 U.S.C. § 112,
second paragraph, against claim 1 and claims 2-4 and 6-9 depending
therefrom.
35 U.S.C. § 103(a)
Claims 1-4 and 6-9
We reverse the outstanding rejection of claims 1-4 and 6-9 under
35 U.S.C. § 103(a), pro forma, because we conclude that at least
independent claim 1 is indefinite under 35 U.S.C. § 112, second paragraph,
as detailed above. That is, the claims on appeal must be reasonably
understood without resorting to speculation to thereby prevent the rejections
of the claims over prior art from being based on speculation and assumptions
as to the scope of the claims. See In re Steele, 305 F.2d at 862. Presently,
the claims on appeal do not adequately reflect what the disclosed invention
is. We are therefore declining from utilizing speculation and conjecture in
an attempt to ascertain the scope of the claims.
Claims 10-13, 15, 16, and 18-25
Appellants argue that “the relied-upon log structure in Rosenblum et
al. is not used in shingled writing …, nor is there any suggestion to do so”
(App. Br. 9). Though the Examiner finds that “Liu also shows shingled
track writing” (Ans. 14), after reviewing the record on appeal, we agree with
the Appellants that the sections of the cited references referenced by the
Examiner do not teach or suggest shingled track writing.
Appeal 2009-005529
Application 10/674,081

8
As defined by Appellants in the Specification, “shingled track
writing” refers to overlapping writing, wherein tracks are written such that
each written track partially overlaps an immediately adjacent track that is
contiguous to it, like shingles on a tiled rood (FF 1). However, Liu discloses
writing data tracks in consecutive manner, wherein the data tracks, though
adjacent to each other, do not overlap (FF 2).
We agree with Appellants that there is no teaching or even suggestion
in the sections cited by the Examiner of “a log means” that “uses a virtual
address table (VAT) to remap sectors as required for shingled track writing”
as required by claim 10 (App. Br. 9). Similarly, we agree with Appellants
that there is no teaching or even suggestion in the sections cited by the
Examiner in Liu and the applied references, alone or in combination, of “at
least one drive controller…, the drive controller for each drive writing data
in shingled bands” as required by claim 18 (App. Br. 10).
We find that Rosenblum, Ono, and Holland do not cure the noted
deficiencies of Liu. Accordingly, we affirm the rejection of claim 10 and of
claims 11, 15, and 16 depending therefrom over the teachings of Liu,
Rosenblum, and Ono; and the rejection of claim 18 and claim 19 depending
therefrom over the teachings of Liu, Rosenblum, and Holland.
We also find that Payne and Asano do not cure the deficiencies of Liu,
Rosenblum, Ono, and Holland. Accordingly, we also affirm 1) the rejection
of claim 12 over the teachings of Liu, Rosenblum, Ono, and Payne; 2) the
rejection of claim 13 over the teachings of Liu, Rosenblum, Ono, and Asano;
3) the rejection of claim 20 over the teachings of Liu, Rosenblum, Holland,
and Payne; 4) the rejection of claim 21 over the teachings of Liu,
Appeal 2009-005529
Application 10/674,081

9
Rosenblum, Holland, and Asano; 5) and the rejection of claims 22-25 over
the teachings of Liu, Rosenblum, Holland, and Ono.

V. CONCLUSION AND DECISION
We affirm the Examiner’s finding of claims 1-4 and 6-9 as indefinite
under 35 U.S.C. § 112, second paragraph, and claim 18 unpatentable on the
ground of non-statutory, obviousness-type double patenting. We reverse the
Examiner’s finding of claims 10-13, 15, 16, and 18-25 as unpatentable under
35 U.S.C. § 103(a). We also reverse the rejection of claims 1-4 and 6-9
under 35 U.S.C. § 103(a), pro forma.
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).

AFFIRMED-IN-PART

rwk

John L. Rogitz
Rogitz & Associates
Suite 3120
750 B Street
San Diego, CA 92101