Ex Parte Camble et alDownload PDFPatent Trial and Appeal BoardMar 19, 201310033003 (P.T.A.B. Mar. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER THOMAS CAMBLE and JEFF J. KATO ____________ Appeal 2010-005125 Application 10/033,003 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-005125 Application 10/033,003 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a system and method for using partitioning to provide capacity on demand in data libraries. (See Spec. ¶ [0002]). Claim 1 is illustrative of the invention and reads as follows: 1. A method for providing data storage capacity on demand comprising: disabling a set of slot elements and data transfer elements of a data library disallowing access to said disabled set by end users of said library; partitioning at least a portion of a set of active data media storage slot elements and active data transfer elements of said data library, exclusive of said disabled set, into partitions for use by said end users; and redefining said sets in response to changes in storage capacity rights of said end users. The Examiner’s Rejections Claims 1-6, 8, 12-16, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Abboud (US 6,636,958 B2; Oct. 21, 2003) and Schubert (US 6,742,034 B1; May 25, 2004). Ans. 4. Claims 7, 9-11, 17, and 19-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Abboud, Schubert and Darago (US 6,606,664 B2; Aug. 12, 2003). Ans. 7. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 5-25, and the Reply Brief, pages 2-8. Appeal 2010-005125 Application 10/033,003 3 Dispositive Issues: Did the Examiner err in finding that the combination of Abboud and Schubert teaches or suggests “disabling a set of slot elements and data transfer elements of a data library disallowing access to said disabled set by end users of said library” (hereinafter “disabling/disallowing access” feature), and “redefining said sets in response to changes in storage capacity rights of said end users” (hereinafter “redefining/capacity rights” feature), as recited in claim 1? (Emphases added). Did the Examiner err in rejecting claim 1 as being obvious because the Examiner used improper hindsight? We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. While Appellants admit that in Abboud “the disabled element constitutes the inactive server application,” and in Schubert “‘disabled slot elements’ are created by masking them from a certain host,” Appellants contend that neither Abboud nor Schubert teaches or suggests the disputed limitations emphasized above (App. Br. 6-8, Reply Br. 4-5), because the disabled elements of Schubert are accessible by end users. Reply Br. 4. In particular, Appellants argue that “Schubert only teaches masking other available logical storage devices from host 12, not disallowing access to disabled slot and data transfer elements to (all) end users of a data library.” App. Br. 8. (Emphasis added). Appeal 2010-005125 Application 10/033,003 4 The Examiner correctly finds that claim 1 does not recite all end users. Ans. 12. Thus, Appellants’ arguments are not commensurate with the scope of the claims. With regard to the “disabling/disallowing access” feature, Appellants have not provided an explicit definition of “disabling” or “disallowing access” in their Specification. The Specification discloses: Also in accordance with the present invention active storage capacity may be reduced and formerly active drives or slots may be disabled. These disabled drives and slots may remain reserved for use by the initial user or may become available for reservation or use by other users. Spec. ¶ [0023] (emphases ours). Thus, according to Appellants’ Specification, the disabled drives are available for use by other users. Although this disclosure is not limiting of the claimed invention, it provides context for which the “disabling/disallowing access” features are interpreted. The Examiner finds that Schubert teaches that “some storage elements are masked to certain end users.” Ans. 12 (citing Schubert, col.7, ll. 27-45; col. 9, ll. 13-26). In other words, although the masked storage elements are not accessible to some end users, they are available for use by other users. Consistent with the Examiner’s stated position (Ans. 11-12) and based on the broadest reasonable interpretation consistent with Appellants’ disclosure, including masking of certain storage elements to certain end users is not precluded by the claim language. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). With regard to the “redefining/capacity rights” features, Appellants’ Specification does not provide any definition giving special meaning and Appeal 2010-005125 Application 10/033,003 5 thereby limiting the scope of “redefining…in response to changes in storage capacity.” The Specification only states that redefining is done “by moving at least one element between the subsets in response to changes in storage capacity needs of the customer.” Spec. ¶ [0005] (emphases added). Therefore the phrase “redefining/capacity rights” is to be given its plain meaning unless inconsistent with the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). The Examiner has found the phrase “redefining/capacity rights” to encompass changing or reallocating the storage size when more memory is required. Ans. 11-12. We find that this construction of the “redefining/capacity rights” claim elements to be both reasonable and consistent with the Specification.1 Id. Appellants have not presented any persuasive evidence to convince us that the Examiner’s interpretation of “redefining/capacity rights” is in error. Given the above construction, the Examiner correctly points out (Ans. 11-12) that Abboud explicitly discloses changing the partition sizes when more memory is required (citing to Abboud, col. 7, ll. 21-36). Ans. 11. We also do not agree that the Examiner’s rejection is an improper hindsight reconstruction as it does not include knowledge gleaned only from the Appellants’ disclosure, but rather takes into account the teachings of Abboud and Schubert; i.e., knowledge which was within the level of ordinary skill at the time the claimed invention was made. See In re 1 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification.) Appeal 2010-005125 Application 10/033,003 6 McLaughlin 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). Further, we deem that intelligent management of computer storage space by disabling certain resources so that space is freed up for the users to be well known and within the skill of an artisan. Ans. 4. Contrary to Appellants’ allegation, the Examiner has not resorted to hindsight. Regarding claims 2-23, while Appellants raised additional arguments for patentability of the cited claims, we find that the Examiner has rebutted in the Answer each and every one of those arguments supported by sufficient evidence. (Ans. 12-19.) Therefore, we adopt the Examiner’s findings and underlying reasoning, which are incorporated herein by reference. Consequently, we find no error in the Examiner’s rejections of claims 1-23. CONCLUSION On the record before us, we conclude that, because the references teach or suggest all the claim limitations, the Examiner did not err in rejecting claims 1-23 for obviousness under 35 U.S.C. § 103(a). Appeal 2010-005125 Application 10/033,003 7 DECISION The Examiner’s decision rejecting claims 1-23 is affirmed. 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)(iv). AFFIRMED tj Copy with citationCopy as parenthetical citation