Ex Parte Karp et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613449219 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/449,219 04/17/2012 James M. Karp TUC1P126/TUC920120038US1 5004 50548 7590 12/27/2016 ZILKA-KOTAB, PC- IBM 1155 N. 1st St. Suite 105 SAN JOSE, CA 95112 EXAMINER RANKIN, CANDICE A ART UNIT PAPER NUMBER 2132 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. KARP, TAKASHI KATAGIRI, YUHKO MORI, and YUTAKA OISHI Appeal 2015-005419 Application 13/449,219 Technology Center 2100 Before CARL W. WHITEHEAD JR, KEVIN C. TROCK, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 10, 11 and 25—28. Claims 12—20 have been canceled. See App. Br. 29. Claims 2 and 29 have been indicated as being allowable. Final Act. 14; Ans. 5. Claims 3—9 and 21—24 depend from claim 2 and, therefore, are allowable based on their dependence from claim 2. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 2. Appeal 2015-005419 Application 13/449,219 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to magnetic storage systems, such as a tape-based data storage system, and “using a best setting determined according to select tape operating parameters during a write procedure (WP).” Spec. ]Hf 1, 22—23. Claim 1, which is illustrative, reads as follows: 1. A tape drive system, comprising: a read channel; a write channel; logic configured to receive a request for a write operation to be performed in a tape drive; logic configured to determine an optimum a write procedure in response to receiving the request, the determining being based on expected writing times of each of a plurality of write procedures and an expected transaction size of a next write operation; and logic configured to invoke the determined optimum write procedure in response to determining the optimum write procedure. Rejections2 Claims 1—11 and 21—29 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over 2 Because claims 2—9, 21—24, and 29 are indicated as containing allowable subject matter, we treat the art-based rejections of these claims as withdrawn and do not address these rejections in the Decision. 2 Appeal 2015-005419 Application 13/449,219 claims 1—9 and 11—17 of co-pending Application No. 13/761,095 (the ‘“095 Application”). Final Act. 3—14.3 Claims 1, 10, 25, and 26 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Katagiri et al. (US 2009/0296268 Al; published Dec. 3, 2009) (“Katagiri”). Final Act. 14—17. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Katagiri and Amundsen et al. (US 7,900,011 B2; issued Mar. 1, 2011) (“Amundsen”). Final Act. 18—20. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Katagiri and Badam et al. (US 2012/0239871 Al; published Sept. 20, 2012) (“Badam”). Final Act. 22-23. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Katagiri and Mau et al. (US 6,469,967 Bl; issued Oct. 22, 2002) (“Mau”). Final Act. 23—24. Issues on Appeal Did the Examiner err in provisionally rejecting claims 1—11 and 21— 29 on the ground of non-statutory obviousness-type double patenting based on claims 1—9 and 11—17 of the ‘095 Application? Did the Examiner err in finding that Katagiri discloses “logic configured to determine an optimum a write procedure in response to receiving the request, the determining being based on expected writing times 3 Although the heading of the rejection identifies claims 1—11 as being rejected based on claims 1—9 of the ‘095 Application, in the body of the rejection, the Examiner further identifies claims 21—29 as being rejected based on claims 11—17 of the ‘095 Application. Final Act. 10—14. 3 Appeal 2015-005419 Application 13/449,219 of each of a plurality of write procedures and an expected transaction size of a next write operation,” as recited in claim 1? ANALYSIS Provisional Non-statutory Obviousness-type Double Patenting Rejection We acknowledge Appellants arguments (App. Br. 23) against the Examiner’s provisional non-statutory obviousness-type double patenting rejection of claims 1—11 and 21—29. However, the decision to maintain the rejection, to enter additional rejections against the claims of this application, or to withdraw the provisional rejection lies with the Examiner. Under these circumstances, we do not find the Examiner’s provisional double-patenting rejection ripe for our review and, therefore, do not reach the provisional double-patenting rejection of claims 1—11 and 21—29. See In re Mott, 539 F.2d 1291, 1296 (CCPA 1976). §102 Rejection Appellants contend the Examiner errs in rejecting claim 1 because Katagiri fails to disclose “logic configured to determine an optimum a write procedure in response to receiving the request, the determining being based on expected writing times of each of a plurality of write procedures and an expected transaction size of a next write operation,” as recited in claim 1. App. Br. 11—13; Reply Br. 5—7. Appellants contend Katagiri does not disclose determining an optimum write procedure based on expected writing times of each of a plurality of write procedures and an expected transaction size of a next write operation, as required by claim 1, but, instead, discloses: 4 Appeal 2015-005419 Application 13/449,219 Katagiri’s tape drive system operates, not according to Appellant’s claim 1, but rather by (1) determining an ideal tape speed at which to perform a next write operation, and (2) in response to determining the ideal tape speed for the next write operation, determining whether to perform a backhitch (BH) write procedure or a same wrap backhitchless flush (SWBF) write procedure based on the determined ideal tape speed. App. Br. 12. Appellants further contend Katagiri does not disclose that either of these two determinations are made based on an expected transaction size of a next write operation, as required by claim 1. Id. (citing Katagiri, Figs. 4—6; ]fl[ 47—51). Katagiri relates to controlling the traveling of a tape in a tape drive which temporarily stores data to be written to the tape in a buffer and then writes the data from the buffer to the tape at a time convenient for the tape drive. Katagiri ||2, 4. Katagiri discloses that to ensure that all the data transmitted to the tape drive is written to the tape, a host transmits a synchronous command to the tape drive to force the tape drive to write the data to the tape, which is referred to as synchronization. Katagiri 14. Katagiri discloses that if the tape is not stopped after synchronization, a gap occurs between the data written during the synchronization and the next data written to the tape thereby reducing the storage capacity of the tape. Katagiri | 5. To recover this lost storage capacity, Katagiri discloses that a backhitch operation is performed. Id. The backhitch operation ultimately results in the tape being moved back to a position at which the last data was written to allow the subsequent data to be written immediately following the data written during the synchronization. Id. Katagiri discloses that because the subsequent data cannot be written to the tape until after the backhitch operation is performed, performing the backhitch operation has a significant 5 Appeal 2015-005419 Application 13/449,219 influence on the performance of the tape drive. Katagiri | 5. Katagiri discloses that to improve performance, the subsequent data can be written to the tape without performing a backhitch operation (referred to as “backhitchless writing”) but that this improvement comes at the cost of a reduced storage capacity of the tape. Katagiri 139. To balance the costs associated with backhitchless writing, Katagiri discloses determining, upon receipt of a synchronous command, whether to perform backhitchless writing based on the remaining capacity of the tape. Katagiri || 44, 84. Katagiri further discloses when it is determined to perform a backhitchless writing process, if a transfer rate of the tape is faster than a rate at which the host transfers data to the tape drive, a backhitch will still be performed during the backhitchless writing process because the buffer will run out of data before all of the data is transferred from the host to the tape drive. Katagiri | 51. To avoid performing this backhitch, Katagiri discloses determining an optimum tape speed and, if the optimum tape speed is different from the current tape speed, changing the tape speed by performing a backhitch prior to performing the backhitchless writing. Katagiri | 52. The Examiner finds Katagiri discloses that each transaction size may be the same, different, or large transaction sizes and, therefore, discloses that the determination of whether to perform the backhitch for changing the tape speed is based on an expected transaction size for a next write operation. Ans. 4 (citing Katagiri || 39, 50, 53). Although we agree with the Examiner that Katagiri discloses that the transaction sizes for writing data to a tape may be the same, different, or large transaction sizes, the Examiner’s findings are insufficient to show that Katagiri discloses using these transaction sizes in determining whether to perform the backhitch for 6 Appeal 2015-005419 Application 13/449,219 changing the tape speed. As such, we are constrained by the record and do not sustain the Examiner’s rejection of claim 1; and claims 10, 25, and 26, which depend therefrom. §103 Rejections Claims 11, 27, and 28 stand rejected under 35 U.S.C. § 103(a) based on Katagiri and various additional references. The Examiner fails to find that these additional references cure the above noted deficiencies in the disclosure of Katagiri. As such, we do not sustain the rejections of claims 11, 27, and 28 for the reasons discussed supra with respect to claim 1. DECISION We decline to reach the Examiner’s provisional non-statutory obviousness-type double patenting rejection of claims 1—11 and 21—29. We reverse the Examiner’s rejection of claims 1,10, 25, and 26 under 35 U.S.C. § 102(b). We reverse the Examiner’s rejections of claims 11, 27, and 28 under 35 U.S.C. § 103(a). REVERSED 7 Copy with citationCopy as parenthetical citation