Ex Parte Kaler

Board of Patent Appeals and Interferences

Feb 25, 2011

11066840 (B.P.A.I. Feb. 25, 2011)

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.
11/066,840 02/24/2005 Paul Kaler 200502-01 8199
7590 02/28/2011
Robert C. Strawbrich
71 Janice Place
Hamburg, NY 14075
EXAMINER
DU, THUAN N
ART UNIT PAPER NUMBER
2116
MAIL DATE DELIVERY MODE
02/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL KALER
____________

Appeal 2009-008137
Application 11/066,840
Technology Center 2100
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008137
Application 11/066,840

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24, which are all the claims in the application. Claims
1, 2, 6-11, and 15-24 remain rejected. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

Invention
Appellant’s invention relates to a solid state disk (SSD) device
including a non-volatile storage module (NVSM), a secondary power source
coupled to power inputs of the SSD, a volatile memory (VM), a controller in
communication with the NVSM and the VM. The controller is operable in a
(re)populate mode to (re)populate data stored in the NVSM to the VM when
primary power is initially applied to power inputs of the SSD and further
operable in a primary power on mode to replicate data to the NVSM that
was written to the VM in response to received I/O requests while primary
power is applied to the power inputs of the SSD. The secondary power
source can be decoupled from the power inputs of the SSD while the
controller is operating in either the (re)populate mode or the primary power
on mode. Abstract.

Representative Claim
1. A solid state disk (SSD) comprising:

a non-volatile storage module (NVSM);

a secondary power source coupled to power inputs of the
SSD;
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Application 11/066,840

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a volatile memory (VM);

a controller in communication with the NVSM and the
VM, the controller operable in a (re)populate mode to
(re)populate data stored in the NVSM to the VM when primary
power is initially applied to power inputs of the SSD and
further operable in a primary power on mode to replicate data to
the NVSM that was written to the VM in response to received
I/O requests while primary power is applied to the power inputs
of the SSD; and

wherein the secondary power source can be decoupled
from the power inputs of the SSD while the controller is
operating in either the (re)populate mode or the primary power
on mode.

Prior Art
Digital Equipment Corporation, ESE50 SDI Solid State Disk Service
Guide (June 1993) (“ESE50”).

Claim Status/Examiner’s Rejections
Claims 1, 2, 6-11, and 15-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over ESE50.
The Final Rejection (at 7) objected to claims 3-5 and 12-14 as
allowable if rewritten to overcome the rejection under 35 U.S.C. § 112,
second paragraph. However, the § 112 rejection has been withdrawn (Ans.
5-6). As the claims are not rejected in the Answer, we conclude that
dependent claims 3-5 and 12-14 are objected to as depending from rejected
claims.

Appeal 2009-008137
Application 11/066,840

4
PRINCIPAL ISSUES
(1) Has Appellant shown that the Examiner erred in finding that
ESE50 teaches that “the secondary power source can be decoupled from the
power inputs of the SSD while the controller is operating” as recited in claim
1?
(2) Has Appellant shown that the Examiner erred in finding that
ESE50 teaches “the secondary power source and NVSM are accessible to
the first and second compartments through openings in the housing” as
recited in claim 21?

FINDINGS OF FACT
ESE50
1. The ESE50 service guide teaches an ESE50 solid state disk
assembly that includes a controller module, an AC power supply, a battery
pack, multiple storage modules, and an internal SCSI disk. Page 1-8, Figure
1-5.
2. The ESE50 teaches an external enclosure that contains the
ESE50 assembly. Pages 6-2, 6-3, 6-4, Figure 6-2.
3. The ESE50 teaches removal and replacement procedures for
field replaceable units (FRUs), such as a disk drive and a battery pack.
Replacing the disk drive and the battery pack FRUs requires removing the
ESE50 from its external enclosure. Page 6-1.
4. Procedures for removing and replacing FRUs include an
orderly shutdown procedure (Section 6.2), which should only be performed
by qualified and authorized personnel (Section 6.2.1). Page 6-2.
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4(a). Before removing or installing FRUs, one must perform a
system backup and then power down the system (Section 6.2.1). Id.
4(b). To power down the ESE50, turn off the AC power switch
at the rear of the unit (Section 6.2.2). Id.
4(c). Set the AC power switch to off, and unplug the power
cord from the unit’s AC power receptacle (Section 6.3.1). Page 6-3.
4(d). Do not remove the disk drive until all the steps in section
6.2.2 and section 6.3.1 have been performed (Section 6.7). Page 6-19.
4(e). Do not remove the battery pack until all the steps in
section 6.2.2 and section 6.3.1 have been performed (Section 6.8). Page 6-
22.

PRINCIPLES OF LAW
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Section 103(a) rejection of claims 1, 2, 6-11, and 15-20
Appellant contends that ESE50 does not teach that “the secondary
power source can be decoupled from the power inputs of the SSD while the
controller is operating” as recited in claim 1. Appellant further contends that
the service guide teaches away from decoupling the battery pack during
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Application 11/066,840

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operation, by stating that the battery pack can only be removed after the
ESE50 SSD has been properly shut down, primary power has been
disconnected, and the internal chassis has been removed from the external
housing. App. Br. 23-25. The Examiner responds by stating that the word
“decouple” encompasses electronic decoupling. Ans. 6. The Examiner also
states that physical removal of the secondary power source and the NVSM
are not recited in claim 1. Ans. 7.
However, even assuming that claim 1 encompasses “electronic”
decoupling, the Examiner has not shown how ESE50 might teach either of
mechanical or “electronic” decoupling of the battery pack during operation.
The Examiner has also not addressed Appellant’s argument that the ESE50
teaches away from decoupling the battery pack during operation. See FF 4 -
4(e). The rejection has not established, on this record, that ESE50 teaches
that “the secondary power source can be decoupled from the power inputs of
the SSD while the controller is operating” as recited in claim 1.
Claim 10 recites that “the NVSM can be decoupled from the
controller and other components of the SSD while the controller is operating
in either the primary power on mode or the primary power off mode.” The
Examiner finds that the RZ27 disk drive shown in Figure 6-10 of ESE50
corresponds to the NVSM recited in claim 1, and, apparently, the NVSM
recited in claim 10. See Ans. 4, 5. Appellant contends that ESE50 warns the
user not to remove the disk drive during operation. Appellant concludes that
the ESE50 neither teaches nor suggests to one of ordinary skill in the art at
the time of invention that the NVSM can be decoupled from the controller
while the controller is operating. App. Br. 25-26.
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We agree with Appellant. The ESE50 warns users to shut down the
system before removing the disk drive. The Examiner has not shown how
the controller can operate after the system has been shut down. The
Examiner has not provided any explanation or evidence to show how ESE50
teaches that “the NVSM can be decoupled from the controller… while the
controller is operating.” Therefore, the rejection has not established, on this
record, that ESE50 teaches all the requirements of claim 10.
We therefore do not sustain the § 103(a) rejection of claims 1, 2, 6-11,
and 15-20.

Section 103(a) rejection of claims 21-24
Appellant contends that the ESE50 does not teach that “the secondary
power source and NVSM are accessible to the first and second
compartments through openings in the housing” as recited in claim 21. App.
Br. 27-30. The Examiner finds that Figure 6-2 of ESE50 teaches an
enclosure, which corresponds to the housing of claim 21. Ans. 7. The
Examiner finds that the enclosure must be removed before any of the
components can be removed. The Examiner further finds that the claim does
not require that the enclosure must not be removed when removing the
battery pack and disk drive. Ans. 10.
Claim 21 recites that “the secondary power source and NVSM are
accessible to the first and second compartments through openings in the
housing.” The Examiner has not established, on the record before us, that
the enclosure of Figure 6-2 of ESE50 teaches “openings in the housing”
through which “the secondary power source and NVSM are accessible to the
first and second components” as recited in claim 21. In particular, the
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rejection fails to point out where the reference may disclose or teach such
“openings” in the Enclosure pictured at page 7 of the Answer (ESE50 Fig. 6-
2).
Claims 22-24 depend from claim 21. We thus cannot sustain the
§ 103(a) of claims 21-24.

CONCLUSIONS OF LAW
(1) Appellant has shown that the Examiner erred in finding that
ESE50 teaches that “the secondary power source can be decoupled from the
power inputs of the SSD while the controller is operating” as recited in claim
1.
(2) Appellant has shown that the Examiner erred in finding that
ESE50 teaches “the secondary power source and NVSM are accessible to
the first and second compartments through openings in the housing” as
recited in claim 21.

DECISION
The rejection of claims 1, 2, 6-11, and 15-24 under 35 U.S.C. § 103(a)
as being unpatentable over ESE50 is reversed.

REVERSED

msc

Robert C. Strawbrich
71 Janice Place
Hamburg NY 14075