Ex Parte Forrer et al

Board of Patent Appeals and Interferences

Jun 28, 2010

11016216 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS R. FORRER, JR., JASON ERIC MOORE, and
ABEL ENRIQUE ZUZUARREGUI
____________
Appeal 2009-008465
Application 11/016,2161
Technology Center 2100
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Decided: June 28, 2010
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on December 17, 2004. The real party in interest is International
Business Machines Corp. (Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1, 3 through 6, 8, 9, 11 through 14, and
16 through 20. (Br. 4.) Claims 2, 7, 10, and 15 have been cancelled. (Id.)
We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse.
Appellants’ Invention
Appellants invented a method, apparatus, and computer program
product for permitting access to a storage drive, such as a hard disk drive,
while the drive is being formatted. (Spec. 1, ll. 8-12; spec. 2, ll. 20-23.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method in a hard disk drive, which includes a disk drive
controller and physical storage media, for permitting access to said
hard disk drive while said storage media is being formatted, a plurality
of logical block addresses being stored in said storage media, said
plurality of logical block addresses including a plurality of usable
logical block addresses and a plurality of defective logical block
addresses, said method comprising:

receiving, by said disk drive controller from a host, a format
command to execute a format process to format said storage media;

reading, by said disk drive controller, a list of said plurality of
defective logical block addresses, said list of said plurality of
defective logical block addresses being stored within said disk drive
controller;

building, by said disk drive controller, a track layout table that
makes said plurality of usable logical block addresses sequential and
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skips over said plurality of defective logical block addresses, said
track layout table being stored within said disk drive controller;

after said track layout table has been built, returning, by said
disk drive controller, a command complete response to said host
before said format process has been completed and before said storage
media has been formatted, said host waiting for said command
complete response before said host transmits any read or write
command to said hard disk drive;

for each one of said plurality of usable logical block addresses,
and for none of said plurality of defective logical block addresses:

storing, within a write table that is stored in said disk
drive controller, a first indicator that indicates whether or not
said usable logical block address includes real data, real data
being data that was written to said usable logical block address
after said format process started executing and before said
format process has been completed; and

storing, within said write table, a second indicator that
indicates whether or not said usable logical block address has
been formatted, said usable logical block address being
formatted when initialization data is written to said usable
logical block address;

first ones of said plurality of usable logical block
addresses having a first indicator that indicates that said first
ones of said plurality of usable logical block addresses include
real data and a second indicator that indicates that said first
ones of said plurality of usable logical block addresses have not
been formatted, wherein said first ones of said plurality of
usable logical block addresses include real data and have not
been formatted; and

using, by said disk drive controller, said write table to
execute read and write commands transmitted to said hard disk
drive from said host while said storage media is being
formatted.
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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Martinez US 4,498,146 Feb. 5, 1985
Watanabe US 2002/0144070 A1 Oct. 3, 2002

Rejection on Appeal
The Examiner rejects claims 1, 3 through 6, 8, 9, 11 through 14, and
16 through 20 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Watanabe and Martinez.

Appellants’ Contentions
Appellants contend that Watanabe’s disclosure of a bit that indicates
whether or not formatting has been completed in a block does not teach a
first and second indicator, whereby the first and second indicator each have
two different states. (Br. 14-15.) In particular, Appellants argue that the
claimed first indicator indicates whether or not the block includes real data,
which is unrelated to that claimed second indicator that indicates whether or
not the block has been formatted. (Id. at 15.) Further, Appellants allege that
Watanabe’s disclosure of storage system and a logical disk does not teach a
“hard disk drive, which includes a disk drive controller and physical storage
media,” as recited in independent claim 1. (Id. at 15-16.) Additionally,
Appellants contend that Watanabe’s disclosure of a bitmap does not teach
both a “track layout table” and a “write table,” as recited in independent
claim 1. (Id. at 16.)

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Examiner’s Findings and Conclusions
The Examiner finds that Watanabe’s disclosure of a bit amounts to an
indicator that indicates both a block that has not been formatted and a block
that contains real data. (Ans. 12-13.) Therefore, the Examiner concludes
that utilizing two indicators is an obvious variant since it would provide
greater resolution as to what type of data exists in each block. (Id. at 13.)
The Examiner also finds that Appellants’ Specification does not necessarily
require the two claimed indicators to be separate and distinct. (Id. at 13-14.)
Further, the Examiner finds that Watanabe’s disclosure of accessing a
storage media while formatting a logical disk teaches accessing a hard drive
during formatting. (Id. at 14.) The Examiner also finds that Watanabe’s
disclosure of a physical disk teaches “a hard disk drive, which includes a
disk drive controller and physical storage media,” as claimed. (Id.)
Additionally, the Examiner finds that independent claim 1 does not
explicitly recite a storage media and a controller integrated into a single
enclosure. (Id. at 14-15.) Finally, the Examiner finds that Watanabe’s
disclosure of a bitmap teaches both a “track layout table” and a “write table”
because there is nothing in the language of independent claim 1 that requires
the claimed tables to be separate and distinct. (Id. at 15.)

II. ISSUE
Therefore, the pivotal issue before us is whether Appellants have
shown that the Examiner erred in concluding that the combination of
Watanabe and Martinez renders independent claim 1 unpatentable? In
particular, the issue turns on whether the proffered combination teaches:
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(a) “a first indicator that indicates whether or not said usable
logical block address includes real data,” as recited in independent claim 1;
and
(b) “a second indicator that indicates whether or not said usable
logic block address has been formatted,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Watanabe
1. Watanabe generally relates to formatting a storage device and,
in particular, to “a storage system and storage media [] such that access is
possible in a state where formatting has completed immediately in response
to a format start instruction even when logical disk formatting is being
executed.” (2: para. [0030].)
2. Watanabe’s figure 21 depicts a configuration view of a storage
system. (9: para. [00163].) Watanabe discloses that storage system (1500)
has a bitmap (1501) in a logical disk (1503) and, further, records format
completed blocks. (9: para. [0164].) According to Watanabe, the logical
disk (1503) “is an apparent disk device constructed without relation to the
physical restrictions on physical disks.” (1: para. [0005].) Further, before
formatting all the bits, Watanabe discloses that a processor (1504) sets each
bit to “1” in order to indicate an unformatted bit. (9: para. [00164].) Once
formatting is complete, Watanabe discloses that the processor (1504) sets
each bit to “0.” (Id.)

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IV. PRINCIPLE OF LAW
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).

V. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part: 1) a first indicator that
indicates whether or not said usable logical block address includes real data;
and 2) a second indicator that indicates whether or not said usable logic
block address has been formatted.
As detailed in the Findings of Fact section, Watanabe discloses
accessing a storage device while the device is being formatted. (FF 1.) In
particular, Watanabe discloses a processor that formats and stores blocks
within a physical disk drive. (FF 2.) Watanabe discloses that the processor
initially labels each bit with a “1” in order to indicate unformatted bits. (Id.)
Further, once the processor completes the formatting process, Watanabe
discloses that each bit is labeled with a “0.” (Id.)
We find that Watanabe’s disclosure teaches an indicator, or a bit in a
bitmap, that indicates whether or not the formatting process is complete for a
block. Consequently, we find that Watanabe teaches “a second indicator
that indicates whether or not said usable logic block address has been
formatted,” as recited in independent claim 1. However, we agree with
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Appellants that Watanabe’s disclosure falls short of teaching or suggesting
“a first indicator that indicates whether or not said usable logical block
address includes real data,” as recited in independent claim 1. Although we
find that Watanabe’s disclosure teaches an indicator that indicates whether
or not formatting is complete for a block, Watanabe’s cited disclosure does
not teach or suggest a separate and distinct indicator that indicates whether a
block includes initialization data written to the block after the formatting
process started executing, but before the formatting process has been
completed. This is in accordance with the definition of real data provided in
the claim. While Watanabe’s disk drive may be able to store a single
indicator for each block, we find it fails to teach or suggest storing two
separate and distinct indicators. Therefore, the Examiner has improperly
relied upon Watanabe’s disclosure to teach “a first indicator that indicates
whether or not said usable logical block address includes real data,” as
recited in independent claim 1. Further, we find that Martinez does not cure
the noted deficiencies of Watanabe.
Since Appellants have shown at least one error in the Examiner’s
rejection of independent claim 1, we need not reach the merits of
Appellants’ other arguments. It follows that Appellants have shown that the
Examiner erred in concluding that the combination of Watanabe and
Martinez renders independent claim 1.

Claims 3 through 6, 8, 9, 11 through 14, and 16 through 20
Because independent claims 9 and 17, and dependent claims 3
through 6, 8, 11 through 14, 16, and 18 through 20, also recite the limitation
discussed above, we find that Appellants have also shown error in the
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Examiner’s rejection of these claims for the reasons set forth in our
discussion of independent claim 1.

VI. CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1,
3 through 6, 8, 9, 11 through 14, and 16 through 20 as being unpatentable
under 35 U.S.C. § 103(a).

VII. DECISION
We reverse the Examiner’s decision to reject claims 1, 3 through 6, 8,
9, 11 through 14, and 16 through 20.

REVERSED

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