Ex Parte Hopkins et al

Patent Trial and Appeal Board

Jul 28, 2017

12895077 (P.T.A.B. Jul. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/895,077 09/30/2010 Kenneth M. HOPKINS STL 070246.00 7122
64776 7590
HolzerlPLaw, P.C.
dba Holzer Patel Drennan
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
WRIGHT, INGRID D
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hiplaw@blackhillsip.com
docket @ hpdlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH M. HOPKINS and
ANDREW GOODWIN
Appeal 2016-001704
Application 12/895,077
Technology Center 2800
Before CHRISTOPHER L. CRUMBLEY, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek relief under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1,3, 5—13 and 15.1 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Application No. 12/895,077, titled A Storage System And A Storage Bridge
Bay Canister, filed September 30, 2010. The real party in interest is
identified as Seagate Technology LLC. Appeal Brief filed January 26, 2015
(“App. Br”), 3.
Appeal 2016-001704
Application 12/895,077
CLAIMED SUBJECT MATTER
The claims are directed to a storage system and a Storage Bridge Bay
canister. Spec. 1:4—5.2 “Storage Bridge Bay (SBB) is a specification []that
defines mechanical, electrical and low-level enclosure management
requirements for an enclosure controller slot that will support a variety of
storage controllers from plural independent hardware vendors and storage
system vendors.” Id. at 1:14—18. A Storage Bridge Bay canister, according
to the specification, is one that can “provid[e] control functionality . . . and
significant data storage to augment the capacity of the system as a whole.”
Id. at 2:7—9.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A Storage Bridge Bay storage system, comprising:
a housing comprising:
a front section comprising hard disk drive slots
configured to receive a plurality of hard disk drives; and
a rear section comprising one or more Storage
Bridge Bay canister slots, each slot configured to receive
a Storage Bridge Bay canister;
wherein the front section and the rear section are
separated by a mid-plane; and,
a Storage Bridge Bay canister configured to be received
in the rear section, the Storage Bridge Bay canister
comprising:
2 We refer to the specification as “Spec.” We also refer to the Final Action
mailed May 8, 2014 (“Final Act.”), the Examiner’s Answer mailed
September 11, 2015 (“Ans.”), and the Reply Brief filed November 11, 2015
(“Reply Br.”).
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Appeal 2016-001704
Application 12/895,077
one or more solid state drives having, in total,
storage capacity greater than or equal to a gigabyte; and,
electrical connections in accordance with the
Storage Bridge Bay standard;
wherein the electrical connections are in
communication with the one or more solid state drives
thereby enabling control and transfer of data to or from the
one or more solid state drives;
wherein a storage capacity of the Storage Bridge Bay
storage system is defined by a combination of a storage capacity
of the plurality of hard disk drives received in the front section
and a storage capacity of the one or more solid state drives
provided in the one or more Storage Bridge Bay canisters
received in the rear section.
Claims Appendix (emphases added).3
REJECTIONS
Claims 1, 3, 5—12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Stuhlsatz,4 Matsushige,5 and
Rabinovitz.6 Ans. 2; see also Final Act. 2.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Stuhlsatz, Matsushige, Rabinovitz, and Berke.7
Ans. 2—3; see also Final Act. 9.
3 Appellants filed a Replacement Claims Appendix on March 16, 2015 to
which this citation refers.
4 US 2011/0083992 Al, published April 14, 2011.
5 US 8,250,453 B2, issued August 21, 2012.
6 US 6,906,918 B2, issued June 14, 2005.
7 US 2011/0082971 Al, published April 7, 2011.
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Appeal 2016-001704
Application 12/895,077
OPINION
The dispositive issue on appeal is whether the combined prior art
teaches a “Storage Bridge Bay storage system comprising ... a Storage
Bridge Bay canister . . . comprising: one or more solid state drives” as
recited in claim 1,8
The Examiner acknowledges that Stuhlsatz does not disclose a
“Storage Bridge Bay canister comprising [] one or more solid state drives”
and relies on Matsushige for the teaching. Final Act. 3. Specifically, the
Examiner finds that Figure 5 of Matsushige illustrates a storage device
having “disk drive 210 [being] mounted on a canister 218.” Final Act. 3
(citing Matsushige Fig. 5); Matsushige at 9:34—36. The Examiner also finds
that Matsushige at 6:47—54 describes that “one or more disk drives 210”
may be solid state drives. Ans. 6, 10, 13.
Appellants, on the other hand, argue that disk drive 210 in Matsushige
is not a solid state drive and therefore fails to teach a “Storage Bridge Bay
canister comprising [] one or more solid state drive” as recited in claim 1.
App. Br. 11.
Matsushige at 6:47—54 cited by the Examiner (Ans. 6, 10, 13) is
reproduced below (emphasis added):
The storage device 200 includes one or more disk drives
210, which provide a data storage area, and one or more switches
(SW 240). The disk drive 210 is, for example, a hard disk drive,
but the storage device 200 may be one that provides a data
storage area by use of a storage medium different from the disk
8 Appellants present arguments solely for independent claim 1 (and
independent claims 3 and 15 which share the common claim limitation at
issue in this appeal). App. Br. 7—11. Consistent with the provisions of 37
C.F.R. § 41.37(c)(l)(iv) (2013), claims 3, 5—13 and 15 stand or fall with
claim 1.
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Appeal 2016-001704
Application 12/895,077
drive 210, such as a SSD (Solid State Drive (Disk)[)], an optical
disk drive, a magneto-optical disk drive or the like. Note that in
the following explanation, it is assumed that two types of disk
drives, that is, SAS (Serial Attached SCSI) and SATA (Serial
AT A) can be mounted as the disk drive 210 in the storage device
200.
This passage of Matsushige states that storage device 200 may
provide a solid state drive (disk) which is “a storage medium different from
the disk drive 210.” Id. at 6:51—53. This passage does not mention canister
218. Id. The Examiner does not explain why this passage— distinguishing a
solid state drive as one that is “different from the disk drive 210” without
mentioning canister 218 — supports the finding that canister 218 “is capable
of including ... a Solid State Drive (SSD).” Ans. 10. The Examiner has
only shown that canister 218 in Matsushige may house certain types of hard
disk drive (Ans. 6, 10, 13 (citing Matsushige at 6:47—54); Final Act. 3
(citing Matsushige Fig. 5)) but not a “Storage Bridge Bay canister . . .
comprising: one or more solid state drives” as recited in claim 1, and we
cannot sustain the rejection on this basis.
DECISION
The Examiner’s rejections of claims 1,3, 5—13 and 15 are reversed.
REVERSED
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