Ex Parte Qualls

Board of Patent Appeals and Interferences

Mar 8, 2012

10609765 (B.P.A.I. Mar. 8, 2012)

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.
10/609,765 06/30/2003 William R. Qualls 10377US01 9939
7590 03/08/2012
Kelly P. Fitzgerald
Shumaker & Sieffert, P.A.
Suite 300
1625 Radio Drive
Woodbury, MN 55125
EXAMINER
CASTRO, ANGEL A
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
03/08/2012 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 WILLIAM R. QUALLS

Appeal 2009-013828
Application 10/609,765
Technology Center 2600
______________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013828
Application 10/609,765

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 4 through 7, 12, 13, 15, 17 through 20, 25, 26, 28 through 31,
33, 34, and 37 through 40.
We affirm.

INVENTION
The invention is directed to a data storage product with a storage
media volumetric factor greater than 450. See Specification page 2 and
figures 1 and 2. Claim 1 is representative of the invention and reproduced
below:
1. A data storage product, comprising:
a recordable layer having a recordable area and a
characteristic width; and
a product container having a container volume containing
the recordable layer,
wherein the data storage product has a storage media
volumetric factor defined as the characteristic width of the
recordable layer multiplied by the recordable area of the
recordable layer divided by the container volume of the product
container, and
wherein the storage media volumetric factor of the data
storage product is in a range of approximately 450 to
approximately 1500.

REFERENCES
HU US 6,246,542 B1 June 12, 2001
BRADSHAW US 6,890,631 B1 May 10, 2005
Standard ECMA-319, Data Intechange on 12, 7 mm 384-Track
Magnetic Tape Cartridges, Ultrium Format (June 2001)
Appeal 2009-013828
Application 10/609,765

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REJECTION AT ISSUE
The Examiner has rejected claims 1, 2, 4 through 7, 12, 13, 15, 17
through 20, 25, 26, 28 through 31, 33, 34, and 37 through 40 under 35
U.S.C. § 103(a) as being unpatentable Standard ECMA-319 Ultrium format
cartridge (Ultrium cartridge) in view of Bradshaw or Hu. Answer 3.1

ISSUES
Appellant argues on pages 5 through 9 of the Brief2 that the
Examiner’s rejection under 35 U.S.C. § 103(a) is in error, as using a dual
surface magnetic tape would render the Ultrium cartridge unsatisfactory for
its intended purpose. These arguments present us with the following issue:
did the Examiner err in combining the teachings of Ultrium cartridge with
Bradshaw or Hu?
Further, with respect to Claims 37 through 40, Appellant’s arguments
on page 9 of the Brief present us with the issue: did the Examiner error in
finding that the combined teachings of Ultrium cartridge with Bradshaw or
Hu teach a single recording layer as claimed?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusion the Examiner erred in combining the teachings of Ultrium

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
March 24, 2009.
2 Throughout this opinion we refer to the Appeal Brief dated December 8,
2009.
Appeal 2009-013828
Application 10/609,765

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cartridge with Bradshaw or Hu. Appellant’s arguments focus on Ultrium
“provid[ing] physical interchange of such cartridges between drives” and
using a single recordable layer. Brief 8 and Reply Brief 3-4. We note that
the sections of Ultrium cartridge that Appellant cites to support these
assertions are not of record. Nonetheless, these arguments have not
persuaded us that the proposed combination, which uses a dual-surface
recording media, would defeat the intended purpose of Ultrium cartridge.
We consider that the intended purpose is to provide a recordable media in a
cartridge. Further, we do not see that using a dual-surface recording media
would render the cartridge un-usable, it would likely merely result in a
recording device only being able to use one side of the recording media.
The Examiner has shown that the Ultrium cartridge is of a certain volume
and amount of storage media (recording tape) and there are many ways to
increase the volumetric factor of a cartridge. Answer 4. Further, the
Examiner has shown that 1998 feet (the length of 8.9 µm tape in the Ultrium
cartridge) of the double surface storage media taught by either of Bradshaw
and Hu, when used in the Ultrium cartridge, would yield the claimed
volumetric factor. Answer 4. Further, the Examiner finds that 2540 feet of
the storage media taught by Bradshaw would fit in the Ultrium cartridge,
which would result in a density of 545 per side (i.e. even recording
information on only one side of the double sided material taught by
Bradshaw would yield the claimed volumetric factor). Answer 4-5. Thus,
Appellant’s arguments have not persuaded us of error in the rejection of
claims 1, 2, 4 through 7, 12, 13, 15, 17 through 20, 25, 26, 28 through 31,
33, 34, and 37 through 40.
Appeal 2009-013828
Application 10/609,765

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Further, Appellant’s arguments directed to the second issue have not
persuaded us that the Examiner erred in finding that the combined teachings
of Ultrium cartridge with Bradshaw or Hu teach a single recording layer as
claimed. The Examiner finds that the claims recite the device includes a
single recordable layer, but do not recite that the device includes only a
single layer. Answer 5. Thus, the Examiner finds that one side of the
device, which is made obvious by the combination of the references, meets
this limitation. Answer 5. We concur with the Examiner’s claim
interpretation and finding regarding the combination of the references.
Accordingly, Appellant’s arguments directed to the second issue have not
persuaded us of error in the rejection of claims 37 through 40.

SUMMARY
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1, 2, 4 through 7, 12, 13, 15, 17 through 20,
25, 26, 28 through 31, 33, 34, and 37 through 40 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1, 2, 4 through 7, 12,
13, 15, 17 through 20, 25, 26, 28 through 31, 33, 34, and 37 through 40 is
affirmed.
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

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