Ex parte Kakuta et al.

Board of Patent Appeals and Interferences

Sep 27, 2000

08355210 (B.P.A.I. Sep. 27, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HITOSHI KAKUTA,
YOSHIHISA KAMO, and HAJIMI AOI
__________
Appeal No. 1997-3851
Application No. 08/355,210
__________
HEARD: Sep. 14, 2000
__________
Before FLEMING, LALL, and BARRY, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 27 and 28. Claims 1 through 24 have been canceled.
Claims 25 and 26 have been allowed.
Appeal No. 1997-3851
Application No. 08/355,210
2
The present invention relates to an array disk subsystem
having a plurality of secondary storage controllers and a
plurality of secondary storages wherein the subsystem is
capable of achieving ordinary input/output processing even
while a backup processor is being executed.
The independent claim 27 is reproduced as follows:
27. An array disk subsystem, comprising:
a) an ECC generator for producing an ECC for a plurality
of data;
b) a plurality of data disks for storing said plurality
of data and said ECC; and
(c) a write data storage means for, when a write
instruction is issued to one of said data disks while said
data disks execute an operation which prevents said data disks
from inputting and outputting data, temporarily storing data
to be written in said one of said data disks.
The Examiner relies on the following references:
Dishon et al. (Dishon) 4,849,978 Jul. 18, 1989
Satoh et al. (Satoh) 5,313,612 May 17, 1994
(effective filing date Aug. 31, 1989)
Claims 27 and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dishon in view of Satoh.
Appeal No. 1997-3851
Application No. 08/355,210
Appellants filed an appeal brief on September 23, 1996. 1
Appellants filed a reply brief on February 13, 1997. The
Examiner responded by allowing claims 25 and 26 in view of the
terminal disclaimer filed with the reply brief. The Examiner
is silent as to whether the Examiner considered and entered
the reply brief. However, in view of the fact that the
Examiner had responded to the terminal disclaimer which was
referenced in the reply brief and did not make a positive
statement that the reply brief has not been entered, we will
view that the Examiner did consider and enter the reply brief
and the reply brief is properly before us for our
consideration. Appellants filed an additional supplemental
appeal brief on February 18, 2000.
The Examiner filed an answer on December 13, 1996. The2
Examiner filed a supplemental Examiner’s answer on March 12,
1997.
3
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the briefs and answers for the1 2
respective details thereof.
OPINION
We will not sustain the rejection of claims 27 and 28
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
Appeal No. 1997-3851
Application No. 08/355,210
4
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 519 U.S. 822 (1996) (citing W. L. Gore & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)).
On pages 2 and 3 of the reply brief, Appellants point out
that claim 27 sets forth “when a write instruction is issued
to one of said data disks all said data disks execute an
operation which prevents said data disks from inputting and
outputting data.” Appellants further point out that this
limitation sets forth that when the condition exists that an
operation is being executed by the data disks which prevents
the data disks from inputting and outputting data, the write
data storage means temporarily stores data to be written in
one of the data disks. On page 4 of the reply brief,
Appellants argue that Satoh does not teach or disclose storing
data temporarily when an operation is executed that prevents
Appeal No. 1997-3851
Application No. 08/355,210
5
the data disks from inputting and outputting data to the
optical disk drive 6.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1, 148 U.S.P.Q. (BNA) 459, . . . (1966),
focused on the procedural and evidentiary processes
in reaching a conclusion under section 103. As
adapted to ex parte procedure, Graham is interpreted
as continuing to place the “burden of proof on the
Patent Office which requires it to produce the
factual basis for its rejection of an application
under sections 102 and 103". [Citing] In re Warner,
54 C.C.P.A. 1628, 379 F.2d 1011, 1016, 154 U.S.P.Q.
(BNA) 173, 177 (CCPA 1967).
Upon our review of Dishon and Satoh, we fail to find that
either of these references teaches “a write data storage means
Appeal No. 1997-3851
Application No. 08/355,210
6
for, when a write instruction is issued to one of said data
disks while said data disks execute an operation which
prevents said data disks from inputting and outputting data,
temporarily storing data to be written in said one of said
data disks” as recited in Appellants’ claim 27. Satoh teaches
in column 5, lines 31 through 45, that a disk cache 5 can be
used to place a directory DIR whose rewriting frequency is
maximized in order to decrease the number of excesses to the
data optical disk drive 6. Thus, Satoh does not teach or
disclose storing data temporarily in a disk cache or a work
optical disk drive 7 when an operation is executed the
prevents the data disk from inputting and outputting data to
the optical disk drive 6. Satoh is concerned with
accomplishing a reduction in the number of accesses of the
data disk drive 6 by using cache memory 5 in the work optical
disk drive 7. However, Satoh is not concerned with the
problem of storing data temporarily because the data disks are
not available because an operation is underway that prevents
the data disks from inputting and outputting data.
Appeal No. 1997-3851
Application No. 08/355,210
7
In view of the foregoing, we have not sustained the
rejection of claims 27 and 28 under 35 U.S.C. § 103.
Accordingly, the Examiner’s decision is reversed.
REVERSED
Michael R. Fleming )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lance Leonard Barry )
Administrative Patent Judge )
MRF:tdl
Appeal No. 1997-3851
Application No. 08/355,210
8
FAY, SHARPE, BEALL, FAGAN,
MINNICH & MCKEE
104 East Hume Avenue
Alexandria, VA 22301