Ex Parte Espeseth et al

Board of Patent Appeals and Interferences

May 21, 2007

10764946 (B.P.A.I. May. 21, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ADAM MICHAEL ESPESETH,
ROBERT ANTON STEINBACH and
TREVOR JAMES BRIGGS
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Appeal 2007-0915
Application 10/764,9461
Technology Center 2100
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Decided: May 21, 2007
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Before: RICHARD TORCZON, SALLY C. MEDLEY, and MARK
NAGUMO, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the Case 1
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Applicants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5 and 7-20. We have jurisdiction under 35 U.S.C. § 6(b).

1 Application for patent filed 26 January 2004. The real party in interest is
Hitachi Global Storage Technologies, Netherlands, B.V.
Appeal 2007-0915
Application 10/764,946

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Clegg US 6,721,845 B1 Apr. 13, 2004

Claims 1 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clegg (Final Rejection at 3 and Answer at 3).
BACKGROUND
The invention relates to a hard disk drive (HDD) that includes at least
one rotatable disk and at least one data transfer element. The data transfer
element is controlled by a controller, which executes commands in a queue.
Commands are selected to be executed based on either an optimized
throughput benefit, or an optimized operation rate benefit.
B. Issue
The issue is whether Applicants have shown that the Examiner has
failed to sufficiently demonstrate that there is a legal basis for rejecting
claims 1 and 5 over Clegg?
For the reasons that follow, Applicants have failed to demonstrate that
the Examiner’s rejection is legally incorrect.
C. Findings of fact (“FF”)
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion by at least a preponderance of the
evidence.
1. Applicants’ claims 1 and 5 are the subject of this appeal.
2. Claim 1 is as follows:
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A hard disk drive (HDD) comprising:
at least one rotatable disk;
at least one data transfer element; and
at least one HDD controller controlling the data transfer element to
execute commands in a queue, at least one command being selected
for execution based on at least one of: an optimized throughput
benefit, or an optimized operation rate benefit, wherein the throughput
benefit is determined based at least in part on a pipe length.
3. Instead of reciting “or an optimized operation rate benefit” original
claim 1 recited “and an optimized operation rate benefit.” (‘946, original
claim 1.)
4. In a paper dated JUN 01 2006 and styled “RESPONSE TO 12
TELEPHONE INTERVIEW,” Applicants explained the change from “and”
to “or” as follows:
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certain instances, Applicant has been made aware of Superguide 16
Corp. v. DirectTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir.
2004) in which a claim recitation of “at least one of A, B, C,
and D” was held to minimally require at least one element from
each of the categories A, B, C, and D, not one or more elements
from one or more categories as intended in the present case,
with the Federal Circuit noting that for the latter interpretation
to hold, the conjunctive “or” should be used. Accordingly, the
present amendment is believed to reconcile, with the
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Superguide case, both Applicant’s intended claim scope and
what Applicant believes to have been the examiner’s
understanding of the claimed invention when examination was
conducted.
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5. In the Appeal Brief, under section (5) styled “Summary of Claimed
Subject Matter,” Applicants state that claim 1 includes “[a]t least one
command is selected for execution based on an optimized throughput benefit
(page 7 and figure 2) and/or an optimized operation rate benefit (page 8 and
figure 3), wherein the throughput benefit is determined based on a pipe
length ….” (Emphasis added) (Appeal Br. at 2-3).
6. The Examiner finally rejected independent claim 1 and dependent
claim 5 based on Clegg.
7. The Examiner argued that Clegg teaches both selecting a command
based on an optimized throughput benefit and an optimized operation rate
benefit (Answer 4).
8. For the optimized operation rate benefit feature, the Examiner
relied on Clegg column 2, lines 25-30 to column 3, line 4 (Answer 4 and 7).
9. In the Appeal Brief and Reply Briefs, Applicants’ argument is
based solely on that Clegg fails to describe “wherein the throughput benefit
is determined based at least in part on a pipe length” (emphasis added)
(Appeal Br. 4-5; Reply Br. 1-2, dated Sept. 19, 2006; Reply Br. 1-2, dated
Oct. 25, 2006).
10. Applicants do not dispute that Clegg describes selecting a
command for execution based on an optimized operation rate benefit.
D. Principles of Law
Claim interpretation is a question of law, but the subordinate findings
relating to proper claim construction are issues of fact. Claim elements must
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be construed as they would be understood by those skilled in the art. See
Hoechst Celanese Corp. v. B.P. Chems., Ltd., 78 F.3d 1575, 1578, 38
USPQ2d 1126, 1129 (Fed. Cir. 1996).
E. Analysis
Claim 1, when properly interpreted, requires selection of a command
to be executed based on at least one of (1) an optimized throughput benefit,
which is determined based at least in part on a pipe length, or (2) an
optimized operation rate benefit (FF 2). Claim 1 does not require selection
of the command based on both an optimized throughput benefit and an
optimized rate benefit. Applicants apparently agree with this interpretation
(FFs 4 and 5).
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A reference that describes either an optimized throughput benefit
(determined based at least in part on a pipe length) or an optimized operation
rate benefit meets the optimized limitation.
Applicants’ arguments are with respect to the “optimized throughput
benefit” limitation, e.g., whether Clegg describes an optimized throughput
benefit that is determined based on pipe length (FF 9). Applicants are silent
with respect to whether Clegg describes an “optimized operation rate
benefit.” Since Applicants have failed to sufficiently demonstrate that the
Examiner’s findings that Clegg describes an “optimized operation rate
benefit” (FF 7) are erroneous, the Examiner’s rejection of claim 1 is
affirmed.
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Since Applicants do not separately address dependent claim 5 in the
Appeal Brief or Reply Briefs (FF 9), claim 5 stands or falls together with the
base rejection and therefore the rejection of claim 5 is also sustained.
E. Decision
Upon consideration of the record, and for the reasons given, the
Examiner’s rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Clegg 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).
AFFIRMED

mv

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