Ex Parte Hollingsworth et al

Board of Patent Appeals and Interferences

Apr 13, 2009

10125697 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT E. HOLLINGSWORTH and HENRY WURZBURG
____________

Appeal 2008-3870
Application 10/125,697
Technology Center 2100
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Decided:1 April 13, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 35-68, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellants’ invention relates to a solid-state floppy disk drive that
may include a non-volatile memory and a connector for coupling the drive to
a computer system. The non-volatile memory may store instructions and
data to allow the disk drive to emulate a (mechanical) floppy disk drive
having a bootable floppy disk inserted into it. (Spec. 3:1-6.) The non-
volatile memory may also contain a program that allows emulation of the
removal of a first disk and insertion of a second. (Id., ll. 17-25.)

Representative Claims
35. An apparatus, comprising:
a solid state non-volatile memory, wherein the solid state non-volatile
memory stores first program instructions which emulate a plurality of floppy
disks, wherein at least one of the floppy disks is a bootable floppy disk,
wherein the solid state non-volatile memory further stores second program
instructions which are executable to emulate switching among the plurality
of floppy disks; and
a connector electrically coupled to the solid state non-volatile memory
for coupling the apparatus to a computer system.

56. A solid-state floppy disk drive comprising:
a non-volatile memory, wherein the non-volatile memory is
configured to store instructions and data which allow the solid state disk
drive to emulate a disk drive having a bootable floppy disk inserted, wherein
the non-volatile memory includes a first partition, wherein the first partition
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Application 10/125,697

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includes a boot sector, an operating system, and a disk swap utility program;
and
a connector for coupling the solid state disk drive to a computer
system.

Prior Art
Holzhammer US 5,630,093 May 13, 1997
Ruff US 6,178,487 B1 Jan. 23, 2001

Examiner’s Rejections
Claims 35-68 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holzhammer and Ruff.

FINDINGS OF FACT
Holzhammer
Holzhammer describes a flash memory array 34 (Fig. 2) that is
structured to emulate either a fixed disk drive or a floppy disk drive.
Holzhammer col. 5, ll. 14-16. The flash memory array stores both data and
executable code. Id. at col. 6, ll. 35-39.
Holzhammer describes several different embodiments of the flash
memory array. Figure 3 depicts a personal computer system 40 having a
flash memory array 64 that stores application program 24, operating system
26, and data that can be transferred to system RAM 52. Holzhammer col. 7,
ll. 24-46.
Flash memory array 96 (Fig. 4) may be contained in a controller 92,
which may be external to the personal computer system but connected by
any standard input/output interface. Holzhammer col. 8, ll. 15-64.

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Ruff
Ruff describes a method for allowing manipulation of disk partitions.
Ruff Abstract.
Both floppy disks and “hard” disks have data arranged by physical or
logical sector addresses. See generally Ruff col. 1, l. 18 - col. 2, l. 19.
Data on disks may also be grouped into physical “partitions” that are
defined by partition tables. Ruff col. 2, l. 20 - col. 3, l. 10.
Ruff teaches that partitions can be, inter alia, moved or copied to
other locations on the same disk, or to another disk. Ruff col. 6, ll. 52-60;
col. 12, ll. 40-48; Fig. 7.

PRINCIPLES OF LAW
Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
What a reference teaches is a question of fact. In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992). In evaluating a reference, it is proper to take into account not only
the specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom. See In re
Preda, 401 F.2d 825, 826 (C.C.P.A. 1968).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
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ANALYSIS
Our discussion will be limited to consideration of the claim language
that Appellants contend is not taught or suggested by the combination of
Holzhammer and Ruff, which is the basis for Appellants’ allegation of error
in the Examiner’s rejection under § 103(a).
Appellants submit that the references do not teach or suggest a “disk
swap utility program” as recited in independent claims 56 and 61.
For reasons unexplained, Appellants seem to use the terms “disk swap
utility program” (claims 56 and 61) and “disk switch utility program”
interchangeably (Spec. 10:19 - 11:18; Fig. 4; emphasis added). (See also
“Summary of the Claimed Subject Matter,” App. Br. 3-4.)
In any event, we do not find any particular limiting definition in the
Specification for either of a “disk swap utility program” or a “disk switch
utility program.” We do not place any significance on the claim 56 and
claim 61 terms, beyond the plain meaning of the words “disk,” “swap,”
“utility,” and “program.”
The Examiner finds there is a “utility program” described in the
“Background” description of Holzhammer that is deemed to be “a functional
equivalence [sic; equivalent] of the disk swap utility program.” (Ans. 3.)
The Examiner refers to col. 1, line 47 through column 2, line 18 of the
reference, which speaks of the prior art MS-DOS operating system and
utility programs. The utility programs of MS-DOS provide functions that
include (1) formatting a diskette or hard disk, and (2) checking a diskette or
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a hard disk. We do not find adequate description in the indicated section of
Holzhammer for any kind of “disk swap utility program.”
However, the Examiner also relies on Ruff for its teachings directed to
moving or copying selected partitions, to the same or to a different disk, as a
“disk swap utility program.”
We agree with the Examiner that Ruff teaches a “disk swap utility
program” within the meaning of the terms used in claims 56 and 61. Ruff’s
description of moving or copying some or all of the partitions (i.e., memory
contents) of one disk to another disk teaches a “disk swap utility program,”
for all that claims 56 and 61 require of the “program.” One of ordinary skill
in the art would understand that, for example, the capability of designating
the “source” and “target” disk for moving or copying partitions enables
swapping at least a portion of the contents of one disk with another. See,
e.g., Ruff col. 27, ll. 43-65. Moreover, the “disk swap utility program”
language does not distinguish over swapping partitions on a single disk,
which the artisan would also understand to be within the Ruff’s system
capability, even though a specific example may not be provided in the text
of the reference.
However, we agree with Appellants that the rejection over
Holzhammer and Ruff fails to account for the more specific requirements
recited in the other independent claims. Claim 35 recites, “wherein the solid
state non-volatile memory further stores second program instructions which
are executable to emulate switching among the plurality of floppy disks . . .
.” Claim 50 recites, “wherein said executing comprises emulating a plurality
of floppy disks being loaded successively on a floppy disk drive.” Claim 55
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recites, “second program instructions which are executable to emulate
switching among the plurality of floppy disks . . . .”
We agree with the Examiner that, for example, Ruff teaches a disk
utility program that provides the capability of moving or copying selected
partitions to a different location on the same or a different disk (Ans. 3).
However, we agree with Appellants that the rejection does not show why the
ordinary artisan would consider the applied references to teach, suggest, or
render obvious the subject matter of claims 35, 50, and 55, which contain the
above-noted language.
In a rejection on obviousness grounds, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Because the
Examiner has not provided persuasive reasons why the subject matter of
independent claims 35, 50, and 55 would have been obvious to the artisan,
we do not sustain the § 103(a) rejection as to those claims.
Accordingly, and in view of claim dependencies, we do not sustain
the rejection of claims 35-55. We sustain the rejection of claims 56-68, as
Appellants have not argued separate patentability for the claims that depend
from base claim 56 or 61. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The rejection of claims 35-68 under 35 U.S.C. § 103(a) as being
unpatentable over Holzhammer and Ruff is affirmed with respect to claims
56-68 but reversed with respect to claims 35-55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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Application 10/125,697

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AFFIRMED-IN-PART

erc

JEFFREY C. HOOD
MEYERTONS, HOOD, KIVLIN, KOWERT & GOERZEL
P.O. BOX 398
AUSTIN TX 78767-0398