Leonard Russo

Patent Trials and Appeals Board

Aug 13, 2019

13062787 - (D) (P.T.A.B. Aug. 13, 2019)

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.
13/062,787 03/08/2011 Leonard Russo 82651018 7552
22879 7590 08/13/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
SAIN, GAUTAM
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
08/13/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LEONARD RUSSO
________________

Appeal 2018-004755
Application 13/062,7871
Technology Center 2100
________________

Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
AMBER L. HAGY, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–4, 6, 8, 11–14, and 16–22. Claims 5, 7, 9, 10, and 15
are canceled. Appeal Br. i (Claims App’x). This appeal is related to a prior
appeal, No. 2015-001356, decided June 1, 2016, in which the Board
affirmed the Examiner’s rejection. Id. at 2. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

1 Appellant identifies Hewlett-Packard Development Company, L.P.
(“HPDC”), as the real party in interest. Appeal Br. 1. HPQ Holdings, LLC,
is the general or managing partner of HPDC. Id.
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Summary of disclosure
Appellant discloses “a method and an apparatus to manage non-
volatile (NV) memory as cache on a hard drive disk for data storage.”
Abstract. As part of this method, a “controller 104 may be . . . adapted to
flush data in the NV memory 102 upon receiving a command from the
operating system” (Spec. ¶ 14), where such command “may be compatible
with [a] Flash Cache command for . . . hard disk drives without NV
memory” (id. ¶ 30).
Exemplary claims (key limitations emphasized)
1. A method of a given hard disk drive, comprising:
receiving commands from an operating system on a computer;
storing, in a non-volatile (NV) memory of the given hard disk drive,
data corresponding to at least a portion of a file in use by the
computer;
tracking, in the given hard disk drive, which part of the data stored in
the NV memory has been modified by the operating system on the
computer; and
flushing, in response to a received flush command received from the
operating system on the computer, modified data in the NV memory
to commit the modified data to rotating hard disk media of the given
hard disk drive, wherein the received flush command is received from
the operating system that is designed to operate with a hard disk drive
with a volatile memory cache but without NV memory.
4. The method of claim 1, wherein the flushing comprises
keeping the data in the NV memory of the given hard disk drive
after committing the modified data to the rotating hard disk
media of the given hard disk drive.
11. A computer system comprising:
an operating system;
a first permanent storage device comprising:
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a non-volatile (NV) memory to store data of at least a
portion of a file in use by the computer system;
a permanent storage media; and
a controller to receive and respond to interface commands
from the operating system which enable the computer
system to use the permanent storage media, the interface
commands comprising a flush data command that is
compatible in syntax with a flush data command for a
permanent storage device with a volatile cache memory
but without NV memory to commit data in the volatile
cache memory to a permanent storage media, and wherein
the operating system is designed to operate with the
permanent storage device with the volatile memory cache
but without NV memory; and
a hardware interface to communicate with a component in
the computer system.2
19. A hard disk drive comprising:
a non-volatile (NV) memory to store data of at least a portion of
a file in use by a computer;

2 Appellant’s formatting of claim 11 suggests that the hardware interface is
part of the first permanent storage device. Appeal Br. ii. (Claims App’x)
(the hardware interface is indented to the same level as elements of the first
permanent storage device). This does not accord with the “and” following
the permanent storage media element, which suggests that the controller
element is the last claimed element of the first permanent storage device and
which is superfluous if the hardware interface is also part of the first
permanent storage device. Moreover, the Specification illustrates hardware
interface 105 as being outside hard disk drive 100. Spec. Fig. 1; see also
Spec. ¶ 18 (detailing standardized interface protocols for connecting storage
devices). For purposes of review, we have retained Appellant’s formatting
as the discrepancy between the claim, as formatted, and the Specification is
not material to the issues before us. In the event of further prosecution,
however, Appellant and the Examiner should ensure that there are no
ambiguities in the claim that would raise questions of indefiniteness under
35 U.S.C. § 112, second paragraph.
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a rotating hard disk media; and
a controller coupled to the NV memory and the rotating hard disk
media, wherein the controller is to receive and respond to
commands from an operating system on the computer which
enable the computer to use the hard disk drive, the commands
comprising a flush command from the operating system, the
controller to flush modified data in the NV memory to the
rotating hard disk media in response to the flush command, the
flush command having a field settable to:
a first value indicating that the data in the NV memory is
kept after the modified data has been flushed, and
a second value indicating that the data in the NV memory
is cleared after the modified data has been flushed;
wherein the controller is to:
after flushing the modified data, keep the data in the NV
memory in response to the field in the flush command
from the operating system set to the first value; and
after flushing the modified data, clear the data in the NV
memory in response to the field in the flush command
from the operating system set to the second value.
Rejections
The Examiner rejects claims 1–4, 11–14, 16–18, and 22 under
35 U.S.C. § 112, second paragraph. Final Act. 2–4.
The Examiner rejects claims 1–4, 6, 8, 12, 13, and 16–22 under
35 U.S.C. § 103(a) as being unpatentable over DeWhitt et al. (US 7,082,495
B2; issued July 25, 2006) (“DeWhitt”), Ergan et al. (US 7,644,239 B2;
issued Jan. 5, 2010) (“Ergan”), and Nakatani et al. (US 2004/0111557 A1;
published June 10, 2004) (“Nakatani”). Final Act. 5–15, 17–20.
The Examiner rejects claims 11 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over DeWhitt and Nakatani. Final Act. 15–17.
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35 U.S.C. § 112, SECOND PARAGRAPH, CLAIMS 1–4, 6, 8, AND 16–18
In rejecting claim 1 under 35 U.S.C. § 112, second paragraph, the
Examiner finds “one of ordinary skill would not have been able to determine
the scope of how the flush command or operating system is designed to
operate with a hard disk drive without a NV memory.” Final Act. 2. The
Examiner emphasizes that “[c]ompatibility of [the] operating system . . .
would have been subject to various distinct interpretations (for example, is
compatibility determined by a flag, or a bit, or other indicator that signifies
compatibility that is designed to operate).” Id.; see also Ans. 23.
Appellant contends the Examiner erred because the disputed claim
recitation “defines a specific characteristic of an operating system, i.e., the
operating system is ‘designed to operate with a hard disk drive with a
volatile memory cache but without NV memory.’” Appeal Br. 6.
Specifically, Appellant contends the recitation limits the claimed method to
exclude “operating systems designed to operate with a hard disk drive with
a[n] NV memory.” Id.; see also Reply Br. 2.
Appellant’s interpretation of the disputed recitation is narrower than
the broadest reasonable interpretation in light of the Specification. The
disputed recitation includes any operating system that can operate with hard
disk drives that lack non-volatile memory. See Spec. ¶ 30. Nothing in the
claim language or in the Specification excludes operating systems that are
also designed to operate with hard disk drives that have non-volatile
memory. In particular, the disputed claim language says nothing about an
operating system that is designed to operate only with a hard disk drive with
a volatile memory cache but without NV memory.
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Although the disputed claim language is not as narrow as Appellant
proffers, we do not agree with the Examiner that the claim language renders
claim 1 indefinite. Appellant is correct that the disputed claim language
“defines a specific characteristic of an operating system.” Appeal Br. 6. As
noted above, the specific characteristic is that the operating system can
operate with hard disk drives that lack non-volatile memory.
The Examiner’s findings regarding “compatibility” (Final Act. 2–3)
go beyond the scope of the disputed recitation and reach into the meaning of
disclosures in the Specification related to the use of commands “compatible
in syntax with [a] Flush Cache command for . . . hard disk drives without
NV memory,” thus making a hard disk drive with non-volatile memory
“operable even by an operating system designed to operate . . . hard disk
drives without NV memory” (Spec. ¶ 30). But the disputed recitation
merely recites a flush command received from an operating system that can
operate with hard disk drives that lack non-volatile memory. Therefore, the
Examiner’s findings regarding whether command “compatibility” is defined
or disclosed are not pertinent to whether claim 1 is definite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 1, or claims 2–4, 6, 8, and 16–18,
which are similarly rejected.
35 U.S.C. § 112, SECOND PARAGRAPH, CLAIMS 11–14 AND 22
In rejecting claim 11 under 35 U.S.C. § 112, second paragraph, the
Examiner finds:
the limitation of a flush data command that is compatible in
syntax with a flush command for a hard disk drive with a volatile
memory caches but without NV memory and wherein the flush
command is received from operating system that is designed to
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operate with a hard disk drive with volatile memory cache but
without NV memory, is indefinite because one of ordinary skill
in the art would not be able to ascertain what the Applicant
regards as their invention and would not be able to ascertain the
metes and bounds of these limitation.
Final Act. 3. Specifically, the Examiner finds “[t]he claims fails to specify
what about that flush command indicates that the command is designed to
operate with volatile memory but without NV memory (for example, a bit, a
flag, a value, . . .).” Ans. 24 (omission in original).
Appellant contends the Examiner erred because the disputed claim
“language defines the ‘flush data command’ with reasonable certainty.”
Appeal Br. 8. Specifically, Appellant argues:
Compatibility in syntax between commands would indicate that
a first command has an arrangement of information elements that
is consistent with an arrangement of information elements of a
second command, such that an entity that receives the first and
second commands would be able to understand the first and
second commands based on the consistency of the arrangement
of information elements of the commands.
Id.; see also Reply Br. 4–5.
We agree with Appellant that the disputed recitation is sufficiently
definite. The Specification discloses that:
The use of the specified commands noted above may be
compatible in syntax with current Flush Cache command for
current hard disk drives without NV memory to commit data in
their dynamic RAM cache to the hard drives rotating media. The
syntax compatibility may lead to easy integration of the hard disk
drive 100 with an operating system. Furthermore, the syntax
compatibility may make hard disk drive 100 operable even by an
operating system designed to operate current hard disk drives
without NV memory. For example, the flush disk command may
be performed, as a default, by controller 104 to commit modified
data to rotating hard disk media and then clear the data in the NV
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memory 102. Thus, the commands noted above may offer
compatibility for current operating system software designed to
operate current hard disk drives without NV memory to use a
hard disk drive 100 in Figure 1.
Spec. ¶ 30. Thus, the controller of the claimed first permanent storage
device can receive a flush data command that is either: (1) intended for use
with a permanent storage device with a volatile cache memory but without
non-volatile memory, or (2) extended in a syntax-compatible manner if
intended for use with a permanent storage device that includes a non-volatile
memory. Compare, e.g., Information technology – AT Attachment 8 –
ATA/ATAPI Command Set (ATA8-ACS), Working Draft Project, American
National Standard of Accredited Standards Committee INCITS, pp. 88–89,
available at http://www.t13.org/documents/uploadeddocuments/docs2006/
d1699r3f-ata8-acs.pdf (rev. 3f, Dec. 11, 2006), with Spec. ¶¶ 23, 25
(showing, for example, how unused Count or Sector Count inputs to the
prior art flush cache and flush cache ext commands can be used to indicate
whether to clear flushed data from non-volatile memory or to keep the
flushed data in non-volatile memory).
We agree with the Examiner that the disputed claim recitation does
not “specify what about the flush command indicates that the command is
designed to operate with volatile memory but without NV memory.” Final
Act. 4. But this is a question of breadth, not definiteness. The precise
similarities needed to make the claimed flush command syntax-compatible
with a “flush command for a permanent storage device with a volatile cache
memory but without NV memory” would depend on the flush command
being extended. An artisan of ordinary skill would recognize that any
changes that prevent a flush command intended for use with a permanent
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storage device with a volatile cache memory but without non-volatile
memory from being interpreted properly would not be syntax-compatible.
Thus, although the disputed claim language is broad, it is nonetheless
sufficiently definite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 11, and claims 12–14 and 22, which
depend therefrom and are similarly rejected.
35 U.S.C. § 103(A), CLAIMS 1–3, 11–14, 17, AND 18
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
DeWhitt teaches or suggests an operating system designed to operate with a
hard disk drive with a volatile memory but without non-volatile memory.
Final Act. 6 (citing DeWhitt col. 2, ll. 15–30, col. 7, ll. 28–63, col. 13, ll.
19–21, Fig. 3). Specifically, the Examiner interprets the operating system
limitation of claim 1 to encompass an operating system that “can work with
a hard disk drive either with or without NV memory[] since the ‘designed to’
[recitation] does not limit [the claimed operating system] to working only
[with a hard disk drive] without NV memory.” Ans. 26.
Appellant contends the Examiner erred because “DeWhitt clearly does
not teach the operating system of claim 1, and in fact, would have led a
person of ordinary skill in the art to an operating system designed to operate
with a hard disk drive that is with a NV memory.” Appeal Br. 11. That is,
Appellant argues that “although DeWhitt does mention a legacy system
where a hard drive does not include an NV memory, nowhere does DeWhitt
provide any teaching or hint that for such a legacy system, the operating
system would be able to issue a flush command to the hard drive.” Reply
Br. 12.
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Appellant’s arguments are unpersuasive because, as discussed above,
the claimed operating system must merely be capable of operating with hard
disk drives that lack non-volatile memory, but an operating system that is
also capable of, or designed to work with, hard disk drives that have non-
volatile memory falls within a reasonably broad interpretation of the
disputed recitation. The operating system of DeWhitt specifically
determines whether hard drive 300 has non-volatile memory (DeWhitt col.
13, ll. 19–20)—a separate component that may added to legacy systems to
improve performance (id. at col. 7, ll. 34–37). Furthermore, DeWhitt
distinguishes between optional non-volatile memory and cache memory 312,
which “is used to buffer data being read from or written to the storage
medium.” Id. at col. 7, ll. 46–47; see also id. Fig. 3 (separately depicting
“Volatile Cache Memory” 312 and “NV Cache Memory” 200). Therefore,
DeWhitt’s operating system is designed to work with a hard disk drive that
has a volatile memory cache but that does not have (optional) non-volatile
memory.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1. Appellant makes similar arguments with respect to independent
claim 11. Appeal. Br. 19–20. Accordingly, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of claim 11. We also sustain the Examiner’s
35 U.S.C. § 103(a) rejections of claims 2, 3, 12–14, 17, and 18, which
depend from either claim 1 or claim 11, and which Appellant does not argue
separately with persuasive specificity.
35 U.S.C. § 103(A), CLAIM 4
In rejecting claim 4, the Examiner finds that DeWhitt teaches or
suggests flushing that comprises keeping data in non-volatile memory of a
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hard drive after committing modified data to the rotating hard disk media of
the hard disk drive. Final Act. 8 (citing DeWhitt col. 12, ll. 40–49); see also
Ans. 28–29. Appellant contends the Examiner erred because DeWhitt
“specifically states that pinned data is removed from the NV memory when
the pinned data is flushed.” Appeal Br. 15; see also Reply Br. 17.
Appellant’s arguments are unpersuasive because the Examiner also
relies on Ergan in rejecting claim 1, from which claim 4 depends. See Final
Act. 5–7. Moreover, as the Examiner’s findings show, Ergan teaches a flush
non-volatile memory cache command where pinned committed memory is
retained in non-volatile memory. See Ergan col. 11, tab. 1 (the Flush NVM
Cache command differs from the Flush NVM Cache – unpin command,
which removes pinned commands); see also Final Act. 12 (citing Ergan col.
10, ll. 50–57, col. 11, tab. 1). Modifying DeWhitt to include Ergan’s
modified flush command would have been obvious to an artisan of ordinary
skill as a way of allowing data committed to disk to continue to remain “pre-
cached so that [the] user doesn’t have to wait for [the] hard disk to be
accessed [when] accessing data that may be needed frequently or [is] needed
for booting.” Final Act. 11 (citing DeWhitt col. 2, ll. 38–44).
Because the Examiner’s findings show that the combination of
DeWhitt, Ergan, and Nakatini teaches or suggests the disputed recitation, we
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 4.
35 U.S.C. § 103(A), CLAIMS 6, 8, 16, AND 19–22
In rejecting claim 19 as obvious, the Examiner finds the combination
of DeWhitt and Nakatini teaches or suggests a flush command with a
settable field, while Ergan teaches or suggests modifying such a flush
command to include a settable field that indicates whether to keep or clear
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modified data in non-volatile memory after the modified data is flushed.
Final Act. 11–12 (citing DeWhitt col. 2, ll. 38–53; Nakatini ¶¶ 55, 56; Ergan
col. 10, ll. 30–32, 50–57, col. 11, tab. 1); see also Ans. 29–30 (further citing
Ergan col. 8, ll. 60–65, col. 9, ll. 15–21).
Appellant contends the Examiner erred because DeWhitt “merely
refers to an operating system being able to unpin a block” (Appeal Br. 16)
and because there is no indication that Nakatini’s “flush request command
includes a field that is settable to” either a first value that “indicates that the
data in the NV memory is kept after the modified data has been flushed,
and” or to a second value that “indicates that the data in the NV memory is
cleared after the modified data has been flushed” (id. at 17). See also Reply
Br. 19.
With respect to Ergan, Appellant merely contends that “Ergan does
not remedy the deficiencies of DeWhitt and Nakatani with respect to the
claimed subject matter.” Appeal Br. 18; see also Reply Br. 20. Appellant
alludes to an explanation to be found “above.” Appeal Br. 18; Reply Br. 20.
We cannot find, however, any pertinent explanation in the briefs as to why
Ergan fails to remedy the alleged deficiencies of DeWhitt and Nakatani with
respect to the disputed flush command field recitation. Rather, Appellant
merely contends that Ergan “also refers to an operating system that works
specifically with an NV memory.” Appeal Br. 12; see also Reply Br. 13–14.
This argument, however, is unpersuasive for the reasons discussed above
with respect to the 35 U.S.C. § 103(a) rejection of claim 1.
Furthermore, the Examiner’s findings show that Ergan teaches
distinguishing between flushing non-volatile memory where modified
sectors, if pinned, are retained in non-volatile memory, and flushing non-
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volatile memory where all such sectors are unpinned, and thus removed
from non-volatile memory. See Ergan col. 11, tab. 1. Specifically, Ergan
teaches making this distinction through the use of two commands: Flush
NVM Cache and Flush NVM Cache – unpin. Id. Moreover, we agree with
the Examiner that it would have been obvious to an artisan of ordinary skill
to consolidate Ergan’s flush commands into the flush command taught or
suggested by the combination of DeWhitt and Nakatani by including a field
settable to either keep modified data in non-volatile memory (similar to
Ergan’s Flush NVM Cache command) or to remove modified data from non-
volatile memory (similar to Ergan’s Flush NVM Cache – unpin command).
See Final Act. 29–30. We further note that the use of fields such as flags to
change the behavior of a procedure was commonplace and trivial,
particularly when the behaviors are as closely related as the NVM Cache and
Flush NVM Cache – unpin commands of Ergan (i.e., where the behaviors of
the commands are mostly identical).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 19, and claims 6, 8, 20, and 21, which Appellant does not argue
separately. Appeal Br. 18. For these reasons (i.e, those with respect to
claim 19), and for the reasons discussed above with respect to claims 1 and
11 (from which claims 16 and 22 respectively depend), we also sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 16 and 22.
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DECISION
We reverse the Examiner’s decision rejecting claims 1–4, 11–14, 16–
18, and 22 under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1–4, 6, 8, 11–14,
and 16–22 under 35 U.S.C. § 103(a).
Because we affirm at least one rejection of each claim, we affirm the
Examiner’s decision rejecting claims 1–4, 6, 8, 11–14, and 16–22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED