Ex parte Hlava et al.

Board of Patent Appeals and Interferences

Mar 9, 2000

08122828 (B.P.A.I. Mar. 9, 2000)

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publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALAN HLAVA, SCOTT D. MASTIE and
ARTHUR R. ROBERTS
____________
Appeal No. 1997-2058
Application No. 08/122,828
____________
ON BRIEF
____________
Before THOMAS, KRASS, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-20,
which are all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 08/122,828
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BACKGROUND
The appellants’ invention relates to a task management for data accesses to
multiple logical partitions on physical disk drives in computer systems. The methodology
involves concurrently executing threads/tasks in accordance with each of the physical disk
task lists to execute all data access tasks in each partition and access the partitions
sequentially until the data access program is completed. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced below.
1. A method of optimizing data access in a computer system wherein
said computer system includes multiple physical disks with each physical
disk having an access controller, at least one of the physical disks includes a
plurality of logical partitions, and a data access program for performing data
access tasks on a master task list, each data access task identifying a
partition on which the access task operates, said program having a plurality
of program threads for concurrently accessing data located in multiple
partitions, said method comprising the steps of:
mapping according to physical disks the logical partitions identified
by data access tasks to be performed by the data access program;
dividing out data access tasks on the master task list by partition and
physical disk into a task list for each physical disk according to the partition
identified by each data access task;
initiating a thread to operate on each physical disk to be accessed as
a part of the data access program; and
concurrently executing said threads in accordance with each of the
physical disk task lists to execute all data access tasks in each partition and
access the partitions sequentially until said data access program is
completed.
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The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Miro 5,220,653 Jun. 15, 1993
Howarth, “A Review of Disk Scheduling Policies,” The Australian Computer Journal, Vol.
14, No. 4, pp. 150-154, (November 1982).
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Miro
in view of Howarth. Claim 18 stands rejected under 35 U.S.C. § 112, paragraph two as
failing to particularly point out and distinctly claim the invention.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 14, mailed Dec. 30, 1996) for the examiner's reasoning in support of
the rejections, and to the appellants’ brief (Paper No. 13, filed Oct. 10, 1996) for the
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Appeal No. 1997-2058
Application No. 08/122,828
We note that appellants have offered to modify the term to clearly reference the “physical disk1
task list” which would have obviated the rejection, if previously submitted by amendment after final rejection.
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35 U.S.C. § 112, PARAGRAPH 2
The examiner rejects the term “the queue” as lacking proper antecedent basis in
claim 18 and appellants maintain that there is proper antecedent basis in the claim.
Appellants argue that the antecedent basis for the term is “the physical disk task list.” (See
brief at page 32.) While the defect in the claim is not a fatal flaw to understanding the
metes and bounds of the claimed invention once explained by appellants, in essence,
appellants admit that the claim lacks particularity in the use of the term “the queue.”
Therefore, we agree with the examiner and will sustain the rejection of claim 18.1
35 U.S.C. § 103
At the outset, we note that we are in general agreement with appellants (brief at
pages 18-22) that the claims on appeal would not have been obvious to one of ordinary
skill in the art at the time the invention was made in light of the teachings of Miro and
Howath. Appellants argue that the prior art references applied against the claims have not
recognized the problem of thrashing where multiple threads, for each disk drive, are
operated concurrently in a multi-partitioned drive. (See brief at page 18.) We agree with
appellants. Appellants argue that the examiner has made a conclusionary statement of
obviousness to “extend this policy [of shortest-seek-time-first] to multiple partitioned drives”
and that all accesses to that partition would be scheduled first then accesses to other
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partitions. (See brief at page 19.) We agree with appellants that the examiner’s statement
of obviousness is merely a conclusion without support from a teaching in the prior art
references applied or by an express line of reasoning set forth by the examiner.
Obviousness is tested by "what the combined teachings of the references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some teaching or suggestion
supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing concurrent operation with multitasking
and forcing execution of all data access tasks in each partition with the partitions being
accessed sequentially until the tasks are completed are not appreciated by the prior art
applied by the examiner. In our view, the examiner’s analysis of the claimed invention, and
the application of the prior art applied against the claimed invention lacks an analytical
linkage to modify scheduling policy of Howath, as advanced by the examiner, and be
implemented in combination with the system of Miro.
Instead, the examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "[t]o imbue one of ordinary skill in
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the art with knowledge of the invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It is essential that :
the decisionmaker forget what he or she has been taught at trial about the
claimed invention and cast the mind back to the time the invention was made
. . . to occupy the mind of one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted wisdom in the
art. W.L. Gore, 721 F.2d at 1553, 220 USPQ at 313.
Since the limitation concerning concurrent operation with multitasking is not taught
or suggested by the applied prior art, we will not sustain the 35 U.S.C. § 103 rejection of
independent claims 1, 11 and 13, and of dependent claims 2-10, 12 and 14-20.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
CONCLUSION
To summarize, the decision of the examiner to reject claim 18 under 35 U.S.C.
§ 112, paragraph two is affirmed and the decision of the examiner to reject claims 1-20
under 35 U.S.C. § 103 is reversed.
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AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-2058
Application No. 08/122,828
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WILLIAM DICK
626 E. KILBOURN AVE., APT 2206
MILWAUKEE, WI 53202