Ex Parte Ishizaki

Patent Trial and Appeal Board

Sep 27, 2012

10974955 (P.T.A.B. Sep. 27, 2012)

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.
10/974,955 10/28/2004 Tsutomu Ishizaki NE327-US 5059
21254 7590 09/28/2012
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
CHOE, YONG J
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
09/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte TSUTOMU ISHIZAKI
____________________

Appeal 2010-004634
Application 10/974,955
Technology Center 2100
____________________

Before: ROBERT E. NAPPI, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004634
Application 10/974,955
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3, 5-9, and 11-23.
1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A disk drive device comprising:
a disk drive comprising a plurality of physical disks each
comprising a storage area; and
a controller which performs reading and writing of data
to said storage areas of the physical disks according to an
instruction from a host device,
wherein in each of the physical disks, said storage area is
divided into a plurality of storage areas,
wherein said plurality of divided storage areas of one of
said plurality of physical disks are set to make pairs with a
plurality of divided storage areas of other of said plurality of
physical disks,
wherein the controller stores correlation data for
corresponding a pair of storage areas to each other, and has a
managing function of maintaining same data on the pair of
storage areas, based on the correlation data,
wherein the controller has a function of recognizing a
replacement physical disk in said plurality of physical disks,

1
Claims 4 and 10 are canceled.
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and upon recognition of the replacement physical disk,
functions to copy previously paired data stored on a storage
area of another physical disk, to a storage area of the
replacement physical disk, and
wherein one of the pair of storage areas is set as a data
writing area and another of the pair of storage areas is set as a
data copying area.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matoba 5,880,955 Mar. 9, 1999
Watanabe US 7,024,526 B2 Apr. 4, 2006
Orsley US 7,076,606 B2 Jul. 11, 2006

REJECTIONS AT ISSUE
2

The Examiner made the following rejections:
Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Orsley, Matoba, and Watanabe. Ans. 4.

2
Appellant collectively argues the rejection of claims 1, 16, and 18 under 35
U.S.C. § 103(a). Separate patentability is not argued for 2, 3, 5-9, 11-15, 17,
and 19-23. “A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.” 37
C.F.R. § 41.37(c)(1)(vii)(last sentence). In view of the foregoing, we select
claim 1 as representative of all the argued claims and base our decision on
claim 1.
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ISSUE 1: PROPRIETY OF COMBINATION
Issue: Under 35 U.S.C. §103(a): Did the Examiner err in combining
Orsley, Matoba, and Watanabe?
Appellant contends that the Examiner has failed to establish a factual
basis to support the legal conclusion of obviousness by failing to make the
factual determinations set forth in Graham and to provide a reason why one
of ordinary skill in the art would have made the combination. Appellant
further contends that the Examiner has not articulated a reason for
combining the cited references. App. Br. 8-9. We disagree.
Other than alleging that the Examiner errs in combining Orsely,
Matoba, and Watanabe (App. Br. 9), Appellant provides no persuasive
argument why the combination is not obvious. To the contrary, we find that
the Examiner's fact findings were sufficient to (i) determine the scope and
content of the prior art, and (ii) ascertain the differences between the prior
art and the claims at issue. See Ans. 4-5. Appellant does not dispute that a
person of ordinary skill in the art would have had the skill to understand the
Orsley, Matoba, and Watanabe disclosures, and to have used Matoba’s disk
controller in the disk array system of Orsely and incorporate copying data
from the primary storage into the secondary storage as taught by Watanabe
into the disk array system of Orsley as modified by Matoba, the third
Graham factor. (See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
We agree with the Examiner’s Graham findings.
Furthermore, the Examiner is only required to give “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner gave
“sufficient reliability for the large amounts of data can be ensured without
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Application 10/974,955
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decreasing the data transfer speed” for combining Orsley and Matoba (Ans.
6) and “in order to prevent the loss of data in the event of storage failure by
mirroring the data” as a reason for “copying data from the primary storage
into the secondary storage” as taught by Watanabe into the disk array system
of Orsley (Ans. 7). Those reasons have rational underpinnings.
Therefore, we find that the Examiner has established a prima facie
showing of obviousness. We note that the Appellant does not rebut the
Examiner’s findings or rationale, but merely argues that the Examiner has
not articulated the required findings or rationale.
Therefore, on this record, we are not persuaded of Examiner error.

ISSUE 2: TEACHINGS OF THE PRIOR ART
Issue: Under 35 U.S.C. §103(a): Does the combination of Orsley,
Matoba, and Watanabe render claim 1 obvious?
Appellant contends that the combination of Orsley, Matoba, and
Watanabe fails to “teach or suggest, ‘wherein one of the pair of storage
areas is set as a data writing area and another of the pair of storage areas is
set as a data copying area’, as recited in exemplary claim 1 and similarly
recited in exemplary claims 16 and 18.” (App. Br. 9, 10). While Appellant
concedes that Watanable “discloses a primary storage subsystem and a
secondary storage subsystem where certain data from the primary storage
subsystem is copied into the secondary storage system,” (App. Br. 11),
Appellant contends that Watanabe fails to teach or suggest:
(i) “a physical disc that is divided into a plurality of storage areas,”
(ii) “sets of pairs of data storage areas,” or
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(iii) “one of the allegedly disclosed pairs of storage areas is set as a
data writing area while another of the pair is set as a data
copying area.”
(App. Br. 11).
In connection with claim language (i) and (ii) above, the Examiner
relies on Orsley, not Watanabe, for disclosing these elements. See Ans. 5.
Thus, these contentions of Appellant do not persuade us of error on the part
of the Examiner because Appellant is responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In connection with claim language (iii), Appellant provides no
persuasive reasons or argument that Watanabe is deficient. Contrary to
Appellant’s assertions, we find that Watanabe discloses paired primary and
secondary storage areas (Data #0 and Data #3 in both Primary and
Secondary Memory). Since Appellant admits that Watanabe discloses a
primary storage subsystem and a secondary storage subsystem where certain
data from the primary storage subsystem is copied into the secondary storage
system (see supra citing to App. Br. 11), it follows that it also discloses
“wherein one of the pair of storage areas is set as a data writing area and
another of the pair of storage areas is set as a data copying area.” Thus, we
agree with the Examiner that Watanabe discloses one of the pair of storage
areas is set as a data writing area and another of the pair of storage areas is
set as a data copying data. See Ans. 13.
Therefore, on this record, we are not persuaded of Examiner error.
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Accordingly, we sustain the Examiner’s rejection of claim 1 and of
independent claims 16 and 18 under 35 U.S.C. § 103(a) and of dependent
claims 2, 3, 5-9, 11-15, 17 and 19-23, which are not argued separately.

DECISION
The decision of the Examiner to reject claims 1-3, 5-9, and 11-23 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)(1)(iv)(2011).

AFFIRMED
dw