John W. Nicholson et al.

Patent Trials and Appeals Board

Jan 3, 2020

12789751 - (D) (P.T.A.B. Jan. 3, 2020)

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.
12/789,751 05/28/2010 John W. Nicholson RPS920100027USNP(710.138) 9213
58127 7590 01/03/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
SNIEZEK, ANDREW L
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
01/03/2020 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 JOHN W. NICHOLSON,
JEFFREY R. HOBBET, and PHILIP J. JAKES
____________

Appeal 2018-002526
Application 12/789,751
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT,
and JUSTIN T. ARBES, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, 8–11, 13, 14, and 16–21,

1 This Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed Aug.
28, 2017) and Reply Brief (“Reply Br.,” filed Jan. 9, 2018), the Examiner’s
Final Office Action (“Final Act.,” mailed Mar. 27, 2017) and Answer
(“Ans.,” mailed Nov. 9, 2017), and our Decision in a previous appeal in this
application (“Dec.,” mailed Aug. 17, 2016).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Lenovo (Singapore) PTE. LTD. as the
real party in interest. Appeal Br. 3.
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which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
INVENTION
Appellant’s invention relates to preventing damage to hard drives due
to sudden impact. Spec. ¶¶ 1–2.
Claims 1, 9, 16, and 19 are independent. Claim 1, reproduced below,
is illustrative of the subject matter on appeal:
1. An apparatus comprising:
one or more processors;
a display which displays output generated by the one or
more processors; and
a hard disk drive assembly operatively connected to the
one or more processors, the hard disk drive assembly comprising:
one or more platters;
one or more heads configured to read and write data
from the one or more platters; and
a drive controller configured to control said hard
disk drive assembly;
wherein, responsive to an indicator including a temporary
non-use indicator, the one or more heads configured to be placed
in a persist unload heads state in which the one or more heads:
are parked as a baseline setting but are permitted to
float over the one or more platters for completing requests
without transitioning to a suspend mode and while
maintaining the power supply to the hard disk drive;
the completing requests including performing one
or more of limited reading and limited writing of buffered
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requests responsive to one or more predetermined
conditions without transitioning to a suspend mode and
while maintaining the power supply to the hard disk drive;
wherein, responsive to an indicator of impending impact,
unload heads commands are issued to place the one or more
heads in a parked state;
wherein the drive controller is further configured to
remove the one or more heads from the persist unload heads state
responsive to another indicator.
Appeal Br. 30–31 (Claims App.).
REFERENCES
Asoh et al. US 7,480,813 B2 Jan. 20, 2009
Karakas US 7,751,142 B2 July 6, 20103
REJECTIONS ON APPEAL
Claims 1–3, 5, 8–11, 13, and 16–21 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Asoh. Final Act. 2–7; Ans. 2–7.
Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Asoh and Karakas. Final Act. 8; Ans. 8.
ANALYSIS
Claims 1–3, 5, 8–11, 13, and 16–21 Rejected Under
35 U.S.C. § 102(b) as Anticipated by Asoh
Appellant argues that Asoh fails to teach the following limitations as
recited in independent claim 1:

3 Application filed March 22, 2006.
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wherein, responsive to an indicator including a temporary
non-use indicator, the one or more heads configured to be placed
in a persist unload heads state in which the one or more heads:
are parked as a baseline setting but are permitted to
float over the one or more platters for completing requests
without transitioning to a suspend mode and while
maintaining the power supply to the hard disk drive;
the completing requests including performing one
or more of limited reading and limited writing of buffered
requests responsive to one or more predetermined
conditions without transitioning to a suspend mode and
while maintaining the power supply to the hard disk drive;
Appeal Br. 25; Reply Br. 28–29. Specifically, Appellant argues that the
Examiner cites to Asoh’s “transfer mode” and “there is no disclosure in
Asoh that the heads in the transfer mode are able to complete requests on a
limited basis (e.g., when needed).” Appeal Br. 26; Reply Br. 29–30; see
Final Act. 2.
The Examiner finds that Asoh teaches a “transfer mode” in which
heads of a hard disk drive are placed in a “persist unload state that
temporarily parks the heads . . . and while remaining in this state perform[]
one of a limited reading/writing of buffered requests.” Final Act. 2 (citing
Asoh 7:24–26, 9:24–30, 9:64–10:5). In particular, the Examiner finds that
before Asoh’s system changes from the “transfer mode” to a “suspend
mode,” a temporary blockage of read/write requests is cleared and the
requests are released and completed. Final Act. 9 (citing Asoh 9:61–10:5);
Ans. 10. The Examiner finds that “[o]nly after these functions are
performed does the device actually enter the suspend mode.” Final Act. 9;
Ans. 10.
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We agree with the Examiner that Asoh teaches placing the heads in a
persist unload state during the transfer mode, and completing read/write
requests, which were temporarily blocked, before shifting to the suspend
mode. See Final Act. 2, 9; Ans. 10. For example, Asoh states that “[i]n the
transfer mode, the [hard disk drive (HDD) 31] enters a head unloaded state.”
Asoh 7:24–26. Asoh further states that all IO request packets containing
read/write requests are stored in a memory queue, and the read/write
requests are blocked. Id. at 9:24–32. Asoh then describes completing the
read/write requests before shifting the system to the suspend mode as
follows:
The transfer mode process application 110 switches it[s] internal
state from the transfer mode to the suspend mode. Then, the
HDD unload and restart request handler 111 notifies the HDD
head unload driver 105 that the blockage of the read/write
requests is to be cleared. This releases the requests for the HDD
31 which have been temporarily blocked, resulting in the normal
operation state. Then, the API of the ACPI operating system
(OS) 101 is utilized to shift the state of the system to the suspend.
Id. at 9:64–10:5. Thus, we agree with the Examiner that Asoh teaches “the
one or more heads . . . completing requests including performing one or
more of limited reading and limited writing of buffered requests” while
“configured to be placed in a persist unload heads state,” as recited in claim
1. We also agree with the Examiner that Appellant’s argument that Asoh’s
heads in the transfer mode do not complete requests “when needed” is not
commensurate with the claim language, which does not require such a
limitation. See Appeal Br. 26; Reply Br. 29–30; Final Act. 9; Ans. 10.
Appellant further argues that Asoh fails to teach that “the one or more
heads . . . are parked as a baseline setting but are permitted to float over the
one or more platters for completing requests without transitioning to a
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suspend mode,” as recited in claim 1. Appeal Br. 27; Reply Br. 30–31. We
recognize that Appellant asserted this argument in the previous appeal,4 and
furthers this argument here. However, we remain unpersuaded because we
agree with the Examiner that Asoh teaches completing the read/write
requests before entering the suspend mode. See Final Act. 8–9 (citing Asoh
9:64–10:5); Ans. 9–10; Dec. 5. As the Examiner points out, although Asoh
states that the transfer mode process application’s internal state switches
from the transfer mode to the suspend mode, the system does not switch to a
suspend mode until after the read/write requests are completed. See Final
Act. 9; Ans. 10; Asoh 9:64–10:5. That is, Asoh’s heads do not transition to
a suspend mode when completing the read/write requests, but rather
afterwards. Thus, we agree with the Examiner that the claim limitations
associated with the recited “persist unload heads state,” including parking
the heads but permitting them to float over the platters for completing
requests, are met prior to transitioning to a suspend mode in Asoh. See Final
Act. 8–9; Ans. 9.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–3, 5, 8–11, 13, and 16–21 under 35 U.S.C. § 102(b) as being
anticipated by Asoh.
Claims 6 and 14 Rejected Under 35 U.S.C. § 103(a)
as Unpatentable Over Asoh and Karakas
Appellant argues that the Examiner improperly combined Asoh and
Karakas. App. Br. 27–28; Reply Br. 31–32. Specifically, Appellant argues
that one of ordinary skill in the art would not have been motivated to

4 Appeal No. 2015-004501.
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combine the teachings of Asoh and Karakas, and that the Examiner fails to
provide an explanation for the combination. Id. We note that Appellant
asserted this argument in the previous appeal. See Dec. 6.
The Examiner finds that Asoh teaches placing heads of a hard disk
drive in a persist unload heads state, completing read/write requests without
transitioning to a suspend mode, and using a sensor to prevent data from
being destroyed. Final Act. 2–3 (citing Asoh 11:50–57); Ans. 9–10. The
Examiner further finds that Karakas teaches that it was known in the hard
disk drive art to unload/park heads to prevent imminent impacts to the hard
disk drive, such as those detected using accelerometers. See Final Act. 8
(citing Karakas 1:39–56). The Examiner then concludes that it would have
been obvious to one of ordinary skill in the art to combine Asoh’s hard disk
drive assembly with Karakas’s teaching of the use of an accelerometer to
“provide an arrangement that prevents damage to the heads/disks due to
imminent impacts.” Final Act. 8; Ans. 11. As such, the Examiner provides
an articulated reasoning with some rational underpinning to support the
conclusion of obviousness, and Appellant has not explained sufficiently why
the Examiner’s analysis is incorrect. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Accordingly, we sustain the Examiner’s rejection of claims 6 and 14
under 35 U.S.C. § 103(a) as being unpatentable over Asoh and Karakas.
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Application 12/789,751

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CONCLUSION
The Examiner’s rejection of claims 1–3, 5, 8–11, 13, and 16–21 under
35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 6 and 14 under 35 U.S.C. § 103(a)
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

Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 8–11,
13, 16–21 102(b) Asoh
1–3, 5, 8–11,
13, 16–21

6, 14 103(a) Asoh, Karakas 6, 14
Overall
Outcome
1–3, 5, 6, 8–11,
13, 14, 16–21