Ex Parte Brondijk et al

Patent Trial and Appeal Board

Sep 18, 2012

10557974 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT ALBERTUS BRONDIJK and
STEPHANUS JOSEPHUS MARIA VAN BECKHOVEN
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Appeal 2010-004884
Application 10/557,974
Technology Center 2100
____________

Before ERIC B. CHEN, BRUCE R. WINSOR, and
ANDREW CALDWELL, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4-9, 11-14, and 16-20, which constitute all the claims pending in
this application. Claims 3, 10, and 15 are cancelled. (App. Br. 4). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to formatting a storage medium for
recording and retrieving data. (Spec. 1:1-10). Claim 1, which is illustrative
of the invention, reads as follows (with the disputed limitation emphasized):
1. A device for recording information on a storage
medium, the device comprising:
medium interface means for interfacing with the storage
medium for recording data on the medium and retrieving data
from the medium,
host interface means for receiving commands according
to a protocol from a host, the commands including a format
command, and
formatting means for formatting the storage medium
according to a format process indicated by the format
command, the formatting including interrupting the format
process until a point in time defined by a further command from
the host, wherein the formatting means are arranged for said
interrupting the format process directly after receiving the
format command.
The Examiner relies on the following prior art in rejecting the claims:
Taugher US 6,134,204 Oct. 17, 2000
Hirokuni1 JP 2001-043663 Feb. 16, 2001
Sasaki US 2003/0033475 A1 Feb. 13, 2003
Claims 1, 6-9, 13, and 16-18 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Sasaki. (Ans. 3-7).2

1 The record includes an English-language translation of Hirokuni’s cover
page.
2 The Examiner incorrectly includes claim 3 in the grounds for rejection
(Ans. 3-4, 12). Claim 3 is cancelled. (App. Br. 4, 14-15, 19; see also Ans.
2-3, §§ (3), (7)).
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Claims 4 and 143 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Sasaki, as evidenced by Hirokuni.4 (Ans. 7-8).
Claims 2, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sasaki and Hirokuni. (Ans. 8-10).
Claims 5, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sasaki and Taugher. (Ans. 10-12).
Rather than repeat the arguments here, we refer to the Briefs (App. Br.
filed July 13, 2009; Supp. Br. filed Aug. 28, 2009; Reply Br. filed Feb. 3,
2010) and the Answer (Ans. mailed Dec. 4, 2009; with replacement page 1
mailed Jan. 20, 2010) for the respective positions of Appellants and the
Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).

ISSUE
The pivotal issue raised by Appellants’ contentions is: Does Sasaki
disclose “[a] formatting means . . . arranged for . . . interrupting the format
process directly after receiving [a] format command” (hereinafter the
interrupting limitation), as recited in claim 1?

3 The Examiner has omitted claim 14 from the initial statement of the ground
of rejection (Ans. 7), but included claim 14 in the detailed findings of
anticipation (Ans. 7-8). We conclude this is a harmless typographical error.
4 The Examiner explains in an Advisory Action mailed April 21, 2009, that
Hirokuni is cited “to support features of the technology that would
necessarily be present in Sasaki . . . ” (Adv. Act. 2). See MPEP § 2131.01
(8th ed. 2001, rev. 2012).
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ANALYSIS
Claim 1
The Examiner finds that Sasaki discloses the interrupting limitation at
paragraphs [0040], [0042], and [0060]-[0061]. (Ans. 4). In particular,
Sasaki discloses that “[w]hen the host computer requests for data storage or
retrieval, the drive interrupts the background formatting, and stores user data
27 in or retrieves user data 27 from user data region 22 (FIG. 2C).” (Sasaki,
¶ [0042]). The Examiner further explains that “it is possible that a user
would sent a request to store data to the disk directly after the format process
is started, in which case the formatting would be interrupted directly after
receiving the format command.” (Ans. 4 (emphasis omitted); see also Ans.
12-14).
Appellants contend that Sasaki’s interruption of the formatting does
not directly follow the format request because there is an intervening step
between Sasaki’s format command and interruption of the format process:
Applicants agree that the “sending a request to store data
to the disk just after the formatting is started would then
interrupt the format.” However Applicants respectfully
disagree that this format interruption is “directly after receiving
the format command.” It is respectfully pointed out that the
following are the sequence of steps in Sasaki . . . : First, the
format process is started; second, the user requests to store data
on the disk; and third, the format process is interrupted in
response to the data storage (or retrieval) request.
Accordingly in Sasaki . . . , the interruption of the format
process (which is the third step) does NOT directly follow the
first step where the format process is started. Rather, the third
step of format interruption directly follows the second step of
data storage request. That is, there is indeed a requirement or
step that must take place before the formatting is interrupted in
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the systems of Sasaki and Hirokuni, namely, the issuance of a
data storage request.
(App. Br. 13; see also Reply Br. 2-4). In other words, Appellants contend
that “directly after” as used in claim 1 requires that there be no intervening
steps between the “format command” and “interrupting the format process.”
The Examiner responds by explaining as follows:
The main control unit starts the format process, and while the
format process is running, the control units monitors [sic]
certain events in the system, including determining if the format
process is finished, determining if a data storage request is
received, determining if the host computer requests to interrupt
the formatting, and determining if the user wants to eject the
disk (see [0065]-[0066] and [0070]-[0071]). Any of these
events can occur at any time, including right after the format
process starts.
(Ans. 13 (emphasis omitted)). The Examiner further explains:
This series of steps is consistent with applicants’
specification also. Page 6 of the instant application describes
the format process and the way the process is interrupted. The
format command contains an IMMED bit to indicate whether
the format process is interruptible or not. If the format process
is interruptible, then the host interface for the drive will appear
as ready to the host, even though the format process is still in
progress. This bit does not cause the format process to be
interrupted. A write command causes the process to be
interrupted. Referring to lines 17-29 on page 6 of the instant
application, receiving a write command will cause the format
process to be interrupted. Therefore, the series of steps for
formatting a storage medium and subsequently interrupting the
format process are the same in applicants’ specification and the
cited prior art.
(Ans. 14).
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We agree with the Examiner and adopt the Examiner’s findings (Ans.
3-4) and explanations (Ans. 12-14) in response to Appellants’ arguments as
our own.
Pertinent definitions of “directly” are “a: without delay: immediately
b: in a little while: shortly,” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY
328 (10th ed. 1999). We conclude that although the interrupting limitation
recites that “interrupting the format process” occurs at a time “directly after
receiving the format command” it does not require that “interrupting the
format process” be in response to, or the result of, the “format command.”
Further, we note that the support in the Specification identified by
Appellants for the interrupting limitation (see Supp. Br. 2-3) states “that by
interrupting the format process directly after receiving and analyzing the
format command results in the storage medium 20 being available for
immediate recording.” (Spec. 2:18-20 (emphasis added)). “Analyzing the
format command” is an intermediate step between “receiving the format
command” and “interrupting the format process.”
Appellants imply that the portion of the Specification (Spec. 6:17-29)
cited by the Examiner as being consistent with the Examiner’s reading of the
claim on the Sasaki (Ans. 14) is to an embodiment of the invention other
than the one claimed in claims 1, 8,and 18. (Reply Br. 4-5). However, we
note that the passage cited by the Examiner is a portion of a passage (Spec.
6:5-29) cited by Appellants (Supp. Br. 3) as support in the Specification for
a limitation in claim 8, which Appellants argue together with claim 1 (App.
Br. 10-14; Reply Br. 2-5), that is substantially the same as the interrupting
limitation.
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Therefore, in giving the claim its broadest reasonable interpretation in
light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997), we do not construe the interrupting limitation as precluding all
intermediate or simultaneous steps. Rather, we construe the interrupting
limitation as encompassing “interrupting the format process” at a time
shortly, which may or may not be immediately, after receiving the “format
command.”
For the foregoing reasons, and on the record before us, Appellants
have not persuaded us that the Examiner erred in finding that Sasaki
discloses the interrupting limitation as we construe it. Accordingly we will
sustain the rejection of claim 1 as anticipated by Sasaki.
Claims 6-9, 13, and 16-18
The patentability of independent claims 8 and 18 over Sasaki was
argued together with the patentability of claim 1 (App. Br. 10-14; Reply Br.
2-5). Appellants’ arguments are unpersuasive with regard to claims 8 and 18
for the same reasons as for claim 1, supra. Appellants rely on the
dependency of claims 6 and 7 from claim 1 and claims 9, 13, 16, and 17
from claim 8, and do not separately argue their patentability with
particularity. (App. Br. 14; Reply Br. 5). Accordingly, we will sustain the
rejection of claims 6-9, 13, and 16-18 as anticipated by Sasaki.
Claims 4 and 14
Appellants rely on the dependency of claim 4 from claim 1, and do
not separately argue its patentability with particularity. (App. Br. 15; Reply
Br. 5). Accordingly, we will sustain the rejection of claim 4 as anticipated
by Sasaki and Hirokuni, as well as claim 14, which depends from claim 8
and was not separately argued.
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Claims 2, 12, and 20
Appellants rely on the dependency of claims 2, 12, and 20 from claim
1, 8, and 18, respectively, and do not separately argue their patentability
with particularity. (App. Br. 15; Reply Br. 5). Accordingly, we will sustain
the rejection of claims 2, 12, and 20 as unpatentable over Sasaki and
Hirokuni.
Claims 5, 11, and 19
Appellants rely on the dependency of claims 5, 11, and 19 from claim
1, 8, and 18, respectively, and do not separately argue their patentability
with particularity. (App. Br. 15-16; Reply Br. 5). Accordingly, we will
sustain the rejection of claims 5, 11, and 19 as unpatentable over Sasaki and
Taugher.

ORDER
The decision of the Examiner to reject claims 1, 2, 4-9, 11-14, and 16-
20 is affirmed.5
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

5 In the event of further prosecution of claim 9, or claims in similar form, we
leave to the Examiner to ascertain whether such claims are directed to
statutory subject matter under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010). We further note that claim 9 refers back to claim 8 and recites a
different statutory class than does claim 8.
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