Ex parte Dahlerud

Board of Patent Appeals and Interferences

Feb 9, 1999

08062156 (B.P.A.I. Feb. 9, 1999)

Application for patent filed May 6, 1993. According to appellant,1
this application is a continuation of Application 07/601,672, filed October
23, 1990 (abandoned).
1
Paper No. 42
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte OLE C. DAHLERUD
______________
Appeal No. 95-3290
Application 08/062,1561
_______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and LEE, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-7 and 9-15,
Appeal No. 95-3290
Application 08/062,156
2
which constituted all the claims in the application. An
amendment
after final rejection was filed on November 17, 1994 and was
entered by the examiner. This amendment cancelled claim 6.
Therefore, this appeal is directed to claims 1-5, 7 and 9-15.

The disclosed invention pertains to a method and
apparatus for rapidly locating data blocks on a tape. More
particularly, a block map is provided in memory which stores
information with respect to a plurality of entry points on the
tape and the number of logical blocks stored on the tape.
Specific logical data blocks are rapidly accessed on the tape
using the entry point information and the number of the
desired logical block.
Representative claim 1 is reproduced as follows:
1. A method for rapidly accessing a desired logical data
block identified by a logical block number on a tape,
comprising steps of:
providing the tape with a plurality of categorizing marks
wherein a plurality of logical blocks are respectively grouped
following the data categorizing marks;
providing a categorizing mark counter which counts the
categorizing marks;
Appeal No. 95-3290
Application 08/062,156
3
providing a logical block counter;
providing in memory a block map formed as an information
table defining a plurality of entry points corresponding to a
plurality of entry point intervals to be defined, for each
entry point said block map defining its location on the tape
in terms of said categorizing marks and a logical block
number; and
upon receiving a command to locate said desired logical
block, checking said block map to determine a closest entry
point which directly precedes the desired logical block to be
located, using the categorizing mark counter to locate said
nearest entry point, and then without any further referral to
another block map serially reading the logical blocks directly
following the entry point in order to count each logical block
which is traversed, and incrementing the logical block counter
until it reaches said logical block number of said desired
logical data block.
The examiner relies on the following references:
Klumpp et al. (Klumpp) 4,472,750 Sep. 18, 1984
Usui 4,656,535 Apr. 07, 1987
Hood et al. (Hood) 4,747,126 May 24,
1988
Osterlund 4,775,969 Oct. 04, 1988
Claims 1-5, 7 and 9-15 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner offers
Klumpp in view of Osterlund with respect to claims 7, 9 and
11-15, and adds Usui with respect to claims 1-5 and 10.
Appeal No. 95-3290
Application 08/062,156
4
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answers.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1-5, 7 and 9-15. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
Appeal No. 95-3290
Application 08/062,156
5
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
As indicated by the cases just cited, the examiner has
Appeal No. 95-3290
Application 08/062,156
6
at least two responsibilities in setting forth a rejection
under
35 U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
In our view, each of the independent claims recites
subject matter that the examiner has asserted is taught by the
applied prior art, but we are unable to find such teachings in
the applied prior art. Thus, there are differences between
the claimed invention and the teachings of the applied prior
art which have gone unrecognized by the examiner. Since the
examiner has not identified these differences, the rejection
fails to provide arguments as to why these differences would
have been obvious to one having ordinary skill in the art.
Therefore, the prima facie case of obviousness has not been
properly established for these claims.
Appeal No. 95-3290
Application 08/062,156
7
We consider first the rejection of independent claim
7. The examiner argues that Klumpp teaches a tape system
having a plurality of fixed length data blocks, but Klump does
not teach the claimed block map relating logical blocks to
physical blocks as recited in claim 7 [answer, pages 4-5].
Osterlund is cited for its teaching of record storage and
retrieval using a high-level directory and embedded
directories relating physical and logical data blocks. The
examiner concludes that the invention of claim 7 obviously
results when the directories of Osterlund are used in Klumpp
[Id. at page 5].
Appellant argues that neither Klumpp nor Osterlund
teaches that the logical block being sought has a
corresponding logical block number as claimed. It is further
argued that there is no logical block counter nor a block map
establishing relationships using logical block numbers.
Appellant also argues that the prior art does not teach that
the entry point mark is in front of the desired logical block.
Finally, appellant argues that the references do not teach a
block map which is used without reference to any further block
Appeal No. 95-3290
Application 08/062,156
8
map [brief, pages 10-11]. The examiner disagrees with
appellant’s arguments.
We agree with most of appellant’s arguments. The fact
that Osterlund counts bytes of data does not establish that
there are entry points in terms of a logical block number.
The block map of Osterlund refers to embedded directories and
not to logical block numbers. The examiner asserts that claim
7 does not require that the directory be before the logical
block, however, the examiner ignores what claim 7 does recite.
Claim 7 recites that the tape is moved to a mark in front of
the desired logical block which is not suggested by the
applied references. The embedded directories in Osterlund are
located after the data which is to be accessed. The embedded
directories in Osterlund operate as additional block maps
which must be used to read the desired data. Claim 7
specifically recites that such further block maps cannot be
used.
Thus, notwithstanding the examiner’s assertions to the
contrary, there are several features of independent claim 7
which are not suggested by the applied prior art. Since the
obviousness of these differences has not been addressed in the
Appeal No. 95-3290
Application 08/062,156
9
rejection, there is no prima facie showing of the obviousness
of claim 7. Accordingly, we do not sustain the rejection of
claim 7, the rejection of claim 9 which depends therefrom, or
the rejection of claim 11 which is grouped with claim 7.
Independent claim 12 is similar to claim 7 and also
recites that the entry point has a logical block number lower
than the desired logical data block number. The rejection of
claim 12 fails for the same reasons discussed above with
respect to claim 7. Therefore, we do not sustain the
rejection of claim 12 nor of claims 13 and 14 which depend
therefrom. Independent claim 15 is grouped with claim 12 so
that we also do not sustain the rejection of claim 15.
We now consider the rejection of independent claim 1.
The examiner applies Klumpp and Osterlund in the same manner
discussed above and additionally applies Usui for counting
indications from a beginning of tape. The examiner asserts
that it would have been obvious to locate data sectors in
Klumpp by counting indications of sector boundaries as taught
by Usui [answer, page 6]. Appellant makes several of the same
arguments discussed above and argues that Usui does not
Appeal No. 95-3290
Application 08/062,156
10
overcome the deficiencies of Klumpp and Osterlund [brief, page
15].
We again agree with appellant. Claim 1 recites many
of the same features which we previously considered with
respect to claim 7. Since Usui does not make up for the
deficiencies we noted above in Klumpp and Osterlund, we do not
sustain the rejection of claim 1 for reasons we have
previously discussed. Since claims 2-5 depend from claim 1
and claim 10 is grouped with claim 1, we also do not sustain
the rejection of these claims.
In summary, we have not sustained the examiner’s
rejection of any of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-5, 7 and 9-15 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
Appeal No. 95-3290
Application 08/062,156
11
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )

HILL, STEADMAN & SIMPSON
A Professional Corporation
85th Floor Sears Tower
Chicago, IL 60606
Appeal No. 95-3290
Application 08/062,156
12
JS/cam