Philip Jurey et al.

Patent Trials and Appeals Board

Dec 27, 2019

14632766 - (D) (P.T.A.B. Dec. 27, 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.
14/632,766 02/26/2015 Philip Jurey STL18495 6004
73462 7590 12/27/2019
Hall Estill - Seagate Technology LLC
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
EXAMINER
EDOUARD, JEAN C
ART UNIT PAPER NUMBER
2138
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
USPTO@dockettrak.com
danderson@hallestill.com
okcipdocketing@hallestill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP JUREY, DALE T. RILEY, and JOHN W. SHAW
Appeal 2018-007811
Application 14/632,766
Technology Center 2100
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Seagate Technology
LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a multi-device storage with consolidated
channel and control circuitry. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An apparatus comprising:
a plurality of data storage devices each comprising a
local driver circuit adapted to transfer data with a local memory
module; and
a main driver circuit external to the plurality of data
storage devices configured to stream frequency modulated write
data via parallel data transfer paths to the respective local driver
circuits for concurrent transfer of the frequency modulated
write data to the respective local memory modules.
REJECTIONS
Claims 1–4, 6–13, 15–17, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of DeCenzo (US 2006/0277362
A1; published Dec. 7, 2006) and Sloan et al. (US 2002/0154439 A1;
published Oct. 24, 2002) (“Sloan”). Final Act. 5–14.
Claims 5 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of DeCenzo, Sloan, and Mahr et al. (US 2009/0006073
A1; published Jan. 1, 2009) (“Mahr”). Final Act. 14–16.
Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of DeCenzo, Sloan, and Brunnett et al. (US 2008/0030888
A1; published Feb. 7, 2008) (“Brunnett”). Final Act. 16–17.
ANALYSIS
We have reviewed the rejections of claims 1–20 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
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Decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Claims 1–11, 19, and 20
Appellant argues claims 1–11, 19, and 20 as a group. Appeal Br. 5.
We select claim 1 as representative of the group, with claims 2‒11, 19, and
20 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
With respect to independent claim 1, Appellant contends the cited
portions of DeCenzo and Sloan do not teach or suggest a main driver circuit
that is external to local driver circuits of a plurality of data storage devices.
Appeal Br. 5. In particular, Appellant argues that “the ordinary artisan would
not characterize a multiplexer in Sloan as the claimed driver circuit.” Id. at
6.
We are not persuaded that the Examiner erred. The Examiner found
that DeCenzo teaches a plurality of storage devices (DeCenzo Figs. 2 and 3,
¶¶ 24–26), each comprising a local circuit for transferring data via plurality
of individual data paths. Ans. 3. Thus, according to the Examiner, DeCenzo
teaches all of the recited features of claim 1, except a circuit device external
to the storage devices that allows concurrent writes to the storage devices via
parallel interfaces. Id. The Examiner explained that, according to the
Appellant’s Specification, the main driver circuit in claim 1 is a preamplifier
driver circuit configured as a multichannel multiplexer. Id. The Examiner
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found that Sloan teaches a multiplexer circuit 156 that interacts with
multiple driver circuits and plurality of heads 1–4 via parallel interfaces for
streaming frequency write data. Ans. 3–4 (citing Sloan Fig. 5, ¶¶ 23, 24, 27–
29); Final Act. 5.
Appellant has not persuasively rebutted the Examiner’s findings.
Instead, Appellant argues in a conclusory manner that an artisan of ordinary
skill would not “characterize a multiplexer in Sloan as the claimed driver
circuit.” Appeal Br. 6. Rule 41.37 “require[s] more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.” In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Moreover, the test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Appellant does not specifically address the combined
teachings of DeCenzo and Sloan cited by the Examiner. Instead, Appellant
attacks DeCenzo and Sloan separately. See Appeal Br. 7. Nonobviousness,
however, cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we are not persuaded by Appellant’s argument that the
Examiner erred in finding that the combination of DeCenzo and Sloan
teaches or suggests the disputed limitation.
Appellant next contends the Examiner erred in combining the cited
teachings of DeCenzo and Sloan. Appeal Br. 6. Appellant argues that,
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because DeCenzo and Sloan are silent with respect to the claimed main and
local driver circuit configuration that facilitates concurrent transfer of
frequency modulated write data, “no ordinary artisan could find any
reasonable motivation to alter and/or combine the cited references to arrive
at the claimed subject matter.” Id. at 7.
We are not persuaded that the Examiner erred. The Supreme Court
has rejected the rigid requirement of demonstrating a teaching, suggestion,
or motivation to combine references in order to show obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, a rejection based
on obviousness only needs to be supported by “some articulated reasoning
with some rational underpinning” to combine known elements in the manner
required by the claim. Id. at 418. We find the Examiner provided
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006);
Final Act 5–6; Ans. 4.
Appellant next argues that the data storage subgroups of DeCenzo
teach away from the use of a single disc drive of Sloan by exclusively
teaching circuitry shared by multiple different data storage units. Appeal Br.
7 (citing DeCenzo Figs. 4 and 7, ¶¶ 27, 39).2

2 Appellant also argues that Sloan teaches away from “the claimed subject
matter,” referring to limitations recited in claim 1. Reply Br. 1. Appellant,
however, has waived this argument because Appellant presented it for the
first time in the Reply Brief, without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74
(BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.”).

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Appellant’s “teaching away” argument fails, however, because
Appellant has not identified where DeCenzo actually criticizes, discredits, or
otherwise discourages the claimed invention. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.”) (citing Fulton).
Moreover, it is well settled that “a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012). Nor is the test for obviousness whether a secondary reference’s
features can be bodily incorporated into the structure of the primary
reference. See Keller, 642 F.2d at 425. The Supreme Court has held that
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418.
Appellant’s further contention that the Examiner engaged in
“impermissible hindsight reconstruction” is also not persuasive. See Appeal
Br. 7. The Examiner has set forth articulated reasoning with rational
underpinnings for the combination, and Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
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For these reasons, we are not persuaded that the Examiner erred in
combining the cited teachings of DeCenzo and Sloan, or in the ultimate
conclusion of obviousness.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 1, as well as the Examiner’s § 103(a) rejection of
independent claim 19 and dependent claims 2–11 and 20, argued as a group
with claim 1.
Claims 12–18
Appellant argues claims 12–18 as a group. Appeal Br. 8. We select
claim 12 as representative of the group, with claims 13–18 standing or
falling with claim 12. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends that the Examiner erred in rejecting claim 12 for
obviousness because “Decenzo and Sloan fail to teach first and second
driver circuits facilitating the streaming of frequency modulated write data
to multiple data storage devices.” Appeal Br. 8.
For reasons similar to those discussed above for claim 1, we are not
persuaded that the Examiner erred. The Examiner found that DeCenzo
teaches a plurality of storage devices associated with a circuit board within
housing 102. Ans. 5 (citing DeCenzo Figs. 1–3, ¶¶ 21 and 24). Thus,
according to the Examiner, DeCenzo teaches all of the recited features of
claim 12 except a circuit board including a read/write channel and a first
preamplifier/driver circuit. Id. The Examiner found that Sloan teaches a
preamplifier/driver circuit configured as a multichannel data multiplexer that
transfer data to heads 1–4 via multiple parallel data paths. Id. at 6 (citing
Sloan Fig. 5, ¶¶ 21, 23, and 27). Thus, the Examiner combined DeCenzo’s
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storage device 100, which is within housing 102, with Sloan’s control board
comprising a read/write channel and a first stage amplifier. Id.
Appellant has not persuasively rebutted the Examiner’s findings.
Again, the test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See Keller, 642
F.2d at 425. Appellant does not specifically address the combined teachings
of DeCenzo and Sloan cited by the Examiner. Instead, Appellant attacks
DeCenzo and Sloan separately. See Appeal Br. 8–9. Nonobviousness,
however, cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior art disclosures.
See Merck, 800 F.2d at 1097.
Accordingly, we are not persuaded by Appellant’s argument that the
Examiner erred in finding that the combination of DeCenzo and Sloan
teaches or suggests the disputed limitation of claim 12.
Appellant next argues that Sloan teaches away from the subject matter
of claim 12. Appeal Br. 9.
Appellant’s “teaching away” argument fails because Appellant has not
identified where Sloan actually criticizes, discredits, or otherwise
discourages the claimed multiple data storage devices contained within a
single housing and connected to a control board comprising a
preamplifier/driver circuit. See Fulton, 391 F.3d at 1201; DePuy Spine, 567
F.3d at 1327) (citing Fulton).
Appellant further argues that, because DeCenzo is silent with respect
to, and Sloan teaches away from, the subject matter of claim 12, the
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Examiner erred in combining the teachings of DeCenzo and Sloan. Appeal
Br. 9.
We disagree because we find that the Examiner provided “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Kahn, 441 F.3d at 988; Final Act 10–11; Ans. 6. Moreover, “a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” Mouttet, 686
F.3d at 1332. Nor is the test for obviousness whether a secondary reference’s
features can be bodily incorporated into the structure of the primary
reference. See Keller, 642 F.2d at 425. The Supreme Court has held that
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418.
For these reasons, we are not persuaded that the Examiner erred in
combining the cited teachings of DeCenzo and Sloan, or in the ultimate
conclusion of obviousness with regard to claim 12.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 12, as well as the Examiner’s § 103(a) rejection of
dependent claims 13–18, argued as a group with claim 12.
DECISION
We affirm the decision of the Examiner rejecting claims 1–20.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 6–13,
15–17, 19,
20
103(a) DeCenzo
Sloan
1–4, 6–13,
15–17, 19,
20

5, 14 103(a) DeCenzo
Sloan
Mahr
5, 14
18 103(a) DeCenzo
Sloan
Brunnett
18
Overall Outcome: 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED