Ex Parte Auerbach et al

Patent Trial and Appeal Board

Dec 17, 2013

11329591 (P.T.A.B. Dec. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL AUERBACH, JAMES G. BELLESON, and
BRAD V. JOHNSON
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Appeal 2011-007621
Application 11/329,591
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007621
Application 11/329,591

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-4, 6-12, 14-20, and 22-24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
The invention is directed to disk drive temperature control (Spec. 1:5-
6). Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A disk drive internal temperature control system,
comprising:

a disk drive temperature monitor for determining an
internal temperature of said disk drive and for providing a
measure of said temperature of said disk drive, said temperature
monitor configured to operate within said disk drive;

a disk drive temperature manager for managing said
temperature of said disk drive based on said measure of said
temperature of said disk drive, said disk drive temperature
manager configured to operate within said disk drive; and

a temperature control component configured to operate
within said disk drive for controlling said internal temperature
of said disk drive wherein said temperature control component
initiates cooling of said disk drive in response to said disk drive
reaching a first temperature and said temperature control
component initiates heating of said disk drive in response to
said disk drive reaching a second temperature.

REJECTION
Claims 1-4, 6-12, 14-20, and 22-24 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Appeal 2011-007621
Application 11/329,591

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ANALYSIS
The Examiner finds:
Each of independent claims 1, 9, and 17 set forth new
limitations directed to having a temperature monitor configured
to operate within the disk drive and having a temperature
manager configured to operate within the disk drive. Neither
the written specification nor the drawings as initially filed teach
support such new limitations

(Ans. 3-4). Appellants contend these limitations are fully supported and cite
to the Specification, which describes Figure 1 as showing “a vehicle [100]
with an onboard hard disk drive (HDD) [209] that has an internal
temperature control system according to one embodiment of the present
invention” and provides that the “internal temperature control system
includes a disk drive temperature monitor . . . and a disk drive temperature
manager. . .” (App. Br. 8-10 citing Spec. 5:6-7, 16:5-9). We agree with
Appellants.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Examiner does not
specifically respond to Appellants’ arguments (see App. Br. 8-10) that
Figure 1 shows an entire internal temperature control system within a hard
disk drive and that the Specification provides that an “internal temperature
control system includes a disk drive temperature monitor . . . and a disk
drive temperature manager. . .” (Spec. 16:5-9) (emphasis added). The
Examiner states that Figure 1 “does not depict a three dimensional
Appeal 2011-007621
Application 11/329,591

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arrangement which could support appellants position” (Ans. 4), but it is
unclear how this statement shows that Figure 1 does not support the claimed
invention. Moreover, there is no requirement that Appellants’ drawings
show a three dimensional arrangement of the claimed invention. The
remainder of the Examiner’s response focuses on the arrangement in Figure
2A as showing both a temperature monitor and temperature manager
external to a hard disk drive (see Ans. 4-5). However, Figure 2A is only an
exemplary embodiment (see Spec. 9:4-5), and does not limit the scope of the
invention. Accordingly, we are persuaded that Appellants’ Specification
supports independent claims 1, 9, and 17 and find that one of ordinary skill
in the art would have recognized that Appellants had possession of the
claimed invention at the time the application was filed.
We are therefore constrained by the record to find that the Examiner
erred in rejecting claims 1-4, 6-12, 14-20, and 22-24.

CONCLUSION
The Examiner erred in rejecting claims 1-4, 6-12, 14-20, and 22-24
under 35 U.S.C. § 112, first paragraph.

DECISION
The Examiner’s decision rejecting claims 1-4, 6-12, 14-20, and 22-24
is reversed.

REVERSED

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