Ex Parte Deckers

Board of Patent Appeals and Interferences

May 16, 2006

10656040 (B.P.A.I. May. 16, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN V. DECKERS
____________

Appeal No. 2005-2731
Application No. 10/656,040
____________

ON BRIEF
____________

Before FRANKFORT, OWENS and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final rejection of claims 28, 37, 38
and 44 through 46. Claims 47 through 59, the only other claims remaining in the
application, have been withdrawn from further consideration. Claims 1 through 27, 29
through 36 and 39 through 43 have been canceled.

Appellant’s invention relates to a data storage apparatus used to access data stored in
first and second different types of storage media, i.e., a hard disk drive cartridge and a
tape cartridge, wherein the hard disk drive cartridge has a “tape cartridge form factor” (i.e,
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a given set of standardized physical configurational and dimensional criteria which apply to
the design of cartridges), for example, Digital Audio Tape (DAT), Digital Data storage
(DDS), Digital linear tape (DLT). The data storage apparatus includes a picker configured
to move both of the different forms of storage media and a docking device in
communication linkage with a host device and adapted to receive the first storage media
and the second storage media from the picker. Independent claim 28 is representative of
the subject matter on appeal and a copy of that claim can be found in the Claims Appendix
attached to appellant’s brief.

The prior art references relied upon by the examiner in rejecting the appealed claims
are:
Stefansky 5,329,412 Jul. 12, 1994
Kim 5,666,342 Sep. 9, 1997
Kulakowski et al. (Kulakowski) 6,731,455 May 4, 2004
(filed Apr. 26, 2001)

Claim 45 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement. In the examiner’s view, this claim contains subject
matter which was not described in the specification in such a way as to enable one skilled
in the art to which it pertains, or with which it is most nearly connected, to make and/or use
the invention.
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Claims 28, 37, 38 and 44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kulakowski in view of Stefansky.

Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kulakowski in view of Stefansky as applied to claim 28 above, and further in view of Kim.

Rather than reiterate the examiner's full statement of the above-noted rejections and
the conflicting viewpoints advanced by the examiner and appellant regarding those
rejections, we make reference to the answer (mailed May 4, 2005) for the examiner's
reasoning in support of the rejections, and to appellant’s brief (filed April 25, 2005) and
reply brief (filed June 10, 2005) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we have made the determinations which follow.
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We turn first to the examiner's rejection of claim 45 under
35 U.S.C. § 112, first paragraph, as being based on a non-enabling disclosure. It is by
now well-established law that the test for compliance with the enablement requirement in
the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. See, In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA
1971). Note also, In re Scarborough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) and In
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Moreover, in
rejecting a claim for lack of enablement, it is also well settled that the examiner has the
initial burden of advancing acceptable reasoning inconsistent with enablement in order to
substantiate the rejection. See In re Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA
1982); In re Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971). Once this is done,
the burden shifts to appellant to rebut this conclusion by presenting evidence to prove that
the disclosure in the specification is enabling. See In re Doyle, 482 F.2d 1385, 179 USPQ
227 (CCPA 1973); In re Eynde, 480 F.2d 1364, 178 USPQ 640 (CCPA 1973).

In the case before us, after reviewing appellant’s arguments in the brief and reply brief,
the disclosure as set for in the specification and appellant’s claim 45, we are of the opinion
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that the examiner has not met his burden of advancing acceptable reasoning inconsistent
with enablement. The examiner’s position as set forth in the answer (page 6) is that
[t]he original disclosure did not provide any enabling evidence for the
combination of the docking device being able to actually read/link both the
tape and the hard disk to the host. There is no structure description to allow
one of ordinary skill in the art to ascertain the physical make up of the
integrated docking device. Without such description, one would not be able
to make and use the invention without excessive undue experimentation.

Although it is true that appellant has not provided details as to exactly what the
structure of a docking device having the capability of receiving and communicating with
both a hard disk cartridge and a tape cartridge would look like, we agree with appellant
that one of ordinary skill in the art presented with appellant’s disclosure, particularly the
portions highlighted at pages 6 and 7 of the brief, would have been able to make and use
the docking device schematically shown in Figure 4 of the application drawings and the
overall data storage apparatus of claim 45 without the need for undue experimentation. In
that regard, we note that the examiner has provided no convincing explanation or line of
reasoning as to why making and using a docking device like that set forth in claim 45 on
appeal would have required undue experimentation. See, for example, MPEP § 2164.01
and 2164.01(a) for the factors to be addressed by the examiner in establishing that there is
sufficient evidence to support a determination that a disclosure does not satisfy the
enablement requirement.

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As for the examiner’s comments bridging pages 6 and 7 of the answer, we agree with
appellant’s responsive arguments found on pages 2 and 3 of the reply brief, which the
examiner has chosen not to rebut. Moreover, in understanding the level of skill in the art,
we also note the patent to Ho-Geol Kim (U.S. 5,666,342) applied by the examiner in the
rejection of claims 45 and 46 under 35 U.S.C.
§ 103, which patent discloses a docking device or united tape and disc
recording/reproducing device having a united inserting part, wherein the device is adapted
to receive and communicatively interact with both a tape cassette and an optical hard disc.

For the above reasons, we will not sustain the examiner's rejection of claim 45 under 35
U.S.C. 112, first paragraph, as being based on a non-enabling disclosure.

We next consider the examiner's rejection of claims 28, 37, 38 and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Kulakowski in view of Stefansky. In maintaining this
rejection the examiner urges that Kulakowski discloses a data storage library like that
claimed by appellant which is capable of handling tape cartridges or a combination of tape
and hard disk drive devices, but “is silent as to the specific of the HDD having form factor
in the shape of a tape cartridge” (answer, pages 3-4). To address the noted difference the
examiner turns to Stefansky, urging that it discloses a portable hard disk drive (HDD)
cartridge that can have the dimension of a tape cartridge (col. 1, lines 21-47). From the
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disclosures pointed to in the applied patents, the examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of appellant’s invention to have
the housing dimensions of Kulakowski’s HDD coincide with the housing dimensions of a
magnetic tape cartridge, as taught by Stefansky, “since it has been held that discovering
an optimum value of a result effective variable involves only routine skill in the art”
(answer, page 4).

In addition, the examiner urges that it would have been obvious for one of ordinary skill
in the art to have provided Kulakowski’s HDD with a housing having the same dimension
as a magnetic tape housing “because such HDD cover had been known in the art, as
demonstrated by Stefansky ‘412”. The examiner further contends that
[s]ince Stefansky ‘412 modified apparatus and docking device is designed to
handle storage media having tape cartridge form factor, it is obvious that the
apparatus and the docking device is also capable of handling any tape
cartridges” (answer, page 4).

After a review of the applied patents, even if we were to agree that Stefansky teaches a
hard disk drive cartridge having a tape cartridge form factor (see, e.g., col. 3, lines 1-3), we
agree with appellant that there is nothing in either Kulakowski or Stefansky which would
have led one of ordinary skill in the art to modify the dual-ended hard disk drive cartridge
(2) of Kulakowski to necessarily have a tape cartridge form factor, since Stefansky gives
no reason for having a hard disk drive cartridge configured to have a tape cartridge form
factor. Moreover, even if such a modification were to be made in Kulakowski, we agree
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with appellant’s further assessment that there is no teaching or disclosure in Kulakowski or
Stefansky of a data storage library that includes both forms of storage media required in
claim 28 on appeal, or of a docking device in communicative linkage with a host device
that is capable of receiving and interacting with both forms of data storage media set forth
in claim 28. The examiner’s finding that Kulakowski (col. 11, lines 21-47) discloses those
aspects of the claimed invention is not well founded. In our view, the somewhat expansive
and cryptic commentary at column 11, lines 21-47, of Kulakowski fails to reasonably teach
or suggest use of two different forms of data storage media in a single automated library
system and provides no teaching or disclosure regarding a docking device like that
specifically required in claim 28 on appeal. Nor does anything in Stefansky make up for
those deficiencies in the disclosure of Kulakowski.

Thus, for the reasons set forth above, we will not sustain the examiner’s rejection of
claim 28, or of claims 37, 38 and 44 which depend therefrom, under 35 U.S.C. § 103(a).

Regarding the rejection of claims 45 and 46 under 35 U.S.C.
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§ 103(a) as being unpatentable over Kulakowski in view of Stefansky and Kim, we have
additionally reviewed the Kim patent, but find nothing therein which addresses the
deficiencies in the basic combination of Kulakowski and Stefansky noted above. For that
reason, the examiner’s rejection of dependent claims 45 and 46 under 35 U.S.C. § 103(a)
will likewise not be sustained.

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In summary: since neither the rejection of claim 45 under
35 U.S.C. § 112, first paragraph, nor either of the obviousness rejections under 35 U.S.C.
§ 103(a) has been sustained, it follows that the decision of the examiner is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Comment [jvn1]: Type or Paste
Address

Appeal No. 2005-2731
Application No. 10/656,040

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Hewlett-Packard Company
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400

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