Ex Parte Ballard et al

Patent Trial and Appeal Board

Jul 31, 2017

13171888 (P.T.A.B. Jul. 31, 2017)

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.
13/171,888 06/29/2011 Curtis C. BALLARD 82689128 6299
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
VO, THANH DUC
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS C. BALLARD and KEVIN LLOYD JONES
Appeal 2016-003071
Application 13/171,888
Technology Center 2100
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20, all the pending claims in the
present application. See Claim Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to techniques to send and
receive access commands. See Abstract.
Appeal 2016-003071
Application 13/171,888
Claim 1 is illustrative:
1. A method comprising:
including an expected media position in an access command
sent from a device driver of a computer to a sequential access storage
device, the expected media position calculated by the device driver; and
receiving a response from the sequential access storage device
indicating if the expected media position matches an actual media position.
Appellants appeal the following rejections:
Rl. Claims 1, 2, 4—7, 13, and 15—20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Leonhardt (US 2002/0087783 Al, July
4, 2002) and Ayres (US 2003/0200477 Al, Oct. 23, 2003);
R2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leonhardt, Ayres, and Rhodes (US 2007/0180312 Al,
Aug. 2, 2007);
R3. Claims 8, 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bergsten (US 6,073,209, June 6, 2000) and Ayres;
R4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bergsten, Ayres, and Rhodes; and
R5. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leonhardt, Ayres, and Hammar (US 5,933,396, Aug. 3,
1999).
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
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Appeal 2016-003071
Application 13/171,888
ANALYSIS
Rejection under § 103(a) of claims 1—7 and 13—20
Issue 1: Did the Examiner err in finding that Leonhardt and Ayres
collectively teach or suggest including an expected media position in an
access command and receiving a response, as set forth in claim 1 ?
Appellants contend that “a person of ordinary skill in the art will
appreciate that an access command does not necessarily have to include
an ‘expected address which the data is going to be read from or written
to.’ For example, Leonhardt describes a different technique, namely placing
a ‘file marker’ on the tape” (App. Br. 6). Appellants further contend that,
in another example, “the current address would be maintained internally
within the storage device itself, and thus there would be no need to receive
the address from an external source. . . . [I]t is clearly not necessary to
include the current address in the command sent to the storage device” {id. at
7). We agree with Appellants.
When relying upon a theory of inherency, the Examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
Examiner’s determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463-64 (BPAI 1990).
Here, the Examiner merely finds that “by [Leonhardt] sending a
command to retrieve the tape for a read, such a command has to include an
indication of tape position, ID, or address” (Ans. 11). However, as
highlighted by Appellants (see App. Br. 6), one does not have to include a
tape position in a command itself because Leonhardt describes other
options/techniques for identifying a tape position or address other than
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Application 13/171,888
including it in the access command, i.e., by using a file marker (see
Leonhardt || 52 and 53). Appellants also point out that the position could
be maintained internally within the storage device itself (App. Br. 7).
In an attempt to disqualify at least Appellants’ proffered “file marker”
option, which is introduced in Leonhardt, the Examiner further finds that
“the term ‘media position’ is the physical tape location, address, or ID for
retrieving the tape rather than a file marker or data position within a tape
when the tape is accessed. . . . [T]he Appellants’] example does not fit with
the Examiner’s interpretation . . . .” (Ans. 12). However, we find the
Examiner’s interpretation of “media position” is inconsistent with
Appellants’ specification.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In reAmer. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted).
For example, Appellants’ Specification discloses that “the expected
media position may indicate that the media is currently at a certain logical
block address of the media” (116) and that “the new expected media
position would be the initial position plus the two blocks of data that were
just written” (id.). Thus, in light of the specification, the expected media
position does not refer to the physical tape location, as proffered by the
Examiner but, rather, to a file location within the media. As such,
Leonhardt’s disclosed “file markers” are relevant to the claimed expected
media position. Thus, the Examiner’s interpretation of “media position” is
unavailing.
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Application 13/171,888
Appellants further contend that in Leonhardt “the cited material [i.e.,
paragraph 52,] describes something different, namely repositioning the tape
and writing data to the tape,” (App. Br. 9) instead of the claimed receiving a
response indicating if the expected media position matches an actual media
position.
Although we agree with the Examiner that ‘“[receiving a response’
does not mean ‘receiving a signal or flag’” (Ans. 13), we note that claim 1
does require a “response . . . indicating if the expected media position
matches an actual media position” (see claim 1) (emphasis added). Here, the
Examiner has merely directed our attention to Leonhardt’s receiving data
from the tape device by reading the data from the RAF buffer/marking and
equates this to “a response indicating . . . matching tape address, location,
ID, or position” (see Ans. 13—14, citing Leonhardt’s 145).
However, Leonhardt’s paragraph 45 merely discloses a method for
speeding up reading from the tape device by keeping data on the random
access function (RAF) indefinitely and retrieving this data first while
waiting for the tape drive to be retrieved and mounted (see 145). The
Examiner has not shown where Leonhardt discloses comparing an expected
media position with an actual media position, i.e., a necessary function for
determining whether there is a match between two things (see claim 13).
Instead, the Examiner is merely directing our attention to receipt of data
from the storage device and a method of writing data to a tape, as an
indication of a match. At best, we find this disclosure to indicate that there
is data at the requested address/position, not that this address matches
another address. The Examiner also has not explained sufficiently how any
of the other references of record teach the aforementioned features. Because
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Application 13/171,888
we agree with at least the arguments advanced supra by Appellants, we need
not reach the merits of Appellants’ other arguments.
In view of the above discussion, we do not sustain the rejection of
independent claims 1 and 13, or the rejections of claims 2—7 and 14—20,
which are dependent thereon.
Rejection under § 103(a) of claims 8—12
Issue 2: Did the Examiner err in finding that Bergsten and Ayres
collectively teach or suggest including an expected media position in an
access command, as set forth in claim 8?
Similar to claim 1, the Examiner finds that “the expected media
position is an inherent feature . . . with the access command” (Final Act. 7;
see also Ans. 15—16).
Appellants contend that “as discussed above with reference to
independent claim 1, an access command. . . does not necessarily have to
include an address position ... the current address could be indicated by a
‘file marker’” (App. Br. 12). We agree with Appellants that the Examiner
has not demonstrated that this feature is inherent in the prior art for the
reasons presented supra.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Accordingly, we will not sustain the Examiner’s obviousness rejection of
claims 8—12.
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Application 13/171,888
DECISION
We reverse the Examiner’s § 103(a) rejections Rl—R5.
REVERSED
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