Ex Parte Kishi

Patent Trial and Appeal Board

Aug 21, 2013

11087027 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGORY T. KISHI
____________________

Appeal 2011-000056
Application 11/087,027
Technology Center 2100
____________________

Before MARC S. HOFF, ERIC B. CHEN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000056
Application 11/087,027

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 19, 20, 22–26, 28, 29, and 35–42. Claims 2–18, 21, 27, and 30–34
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

Illustrative Claim
The claimed subject matter relates to scrubbing data within a data
storage subsystem.
Claim 1 is illustrative and is reproduced below with key limitations
emphasized:
1. A method for scrubbing data in a storage element within a
data storage subsystem, said method comprising:
selecting a storage element from a plurality of defined
storage elements within a data storage subsystem;
suspending any data modifications on said selected
storage element;
performing a scrubbing operation on said selected storage
element after suspension of said data modifications by
validating data within said selected storage element; and
in response to a completion of said scrubbing operation
on said selected storage element, resuming data modifications
on said selected storage element and selecting another one of
said plurality of defined storage elements for scrubbing
operation.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 11/087,027

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Lavelle
Cavanna
New
Pelley

Redford
US 2003/0142101 A1
US 2003/0167440 A1
US 2005/0028048 A1
US 2005/0268022 A1

US 2005/0289436 A1
Jul. 31, 2003
Sep. 4, 2003
Feb. 3, 2005
Dec. 1, 2005
(filed May 26, 2004)
Dec. 29, 2005
(filed Aug. 30, 2004)
Rejections
Claims 1, 19, 20, 22–26, 28, 29, and 35–42 stand rejected under 35
U.S.C. § 103(a) as unpatentable over New and Redford, alone or in
combination with other cited references (Ans. 4–9).1

Issue
Appellant’s contentions present us with the issue of whether Redford
teaches or suggests the limitations of independent claim 1 that recite
“suspending any data modifications on said selected storage element,”
“performing a scrubbing operation … after suspension of said data
modifications” (emphasis added) and “in response to a completion of said
scrubbing … resuming data modifications on said selected storage
element.”2

1 The Appeal Brief addresses rejections of claims 35–39 and 42 as
unpatentable under 35 U.S.C. § 112, second paragraph (App. Br. 9). These
rejections have been withdrawn by the Examiner (Ans. 3) and are therefore
not before us.
2 Appellant’s contentions raise additional issues. Because the identified
issue is dispositive, we do not reach the additional issues.
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ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellant’s
arguments.
Appellant contends that the Examiner erred in finding that Redford
teaches or suggests the limitations emphasized in the reproduction of
independent claim 1 supra (App. Br. 10–12).
The Examiner relies on the following disclosure of Redford (Ans. 4–
5):
Preferably, the block of data is a block of read-only data that is
not subjected to modifications. Whenever a checksum value is
derived from the block of read-only data, a constant checksum
value is obtained, which can be used for evaluating data
integrity of the block of data.
(Redford, ¶ [0037]).
While this disclosure teaches performing scrubbing operations on
read-only storage elements, we disagree with the Examiner’s finding (Ans.
4–5) that it reasonably teaches or suggests the suspension and resumption of
data modifications on selected storage elements. The Examiner reasons that
such changes in the state of the data are evident since “one of skill in the art
would know[] a block of data without any modification (read-only data)
would not need to do any scrubbing or evaluating for data error because this
data has not been changed, so there is no[] error introduced” (Ans. 10). We
disagree with this reasoning because, as Appellant argues (Reply Br. 2),
Redford explicitly contemplates circumstances in which data that are not
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intentionally changed are still subject to potential corruption through such
effects as the impact of radiation (see Redford, ¶ [0033]).
We therefore do not sustain the Examiner’s rejection of independent
claim 1. We also do not sustain the Examiner’s rejections of independent
claims 24 and 35, which recite similar limitations, nor of the various
dependent claims.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. §41.50(b)
Under 37 C.F.R §41.50(b), we enter new grounds of rejection of
independent claims 1, 24, and 35 under 35 U.S.C. § 103(a) as unpatentable
over New in view of Appellant’s admitted prior art (AAPA).
Although both Appellant and the Examiner largely couch their
remarks in terms of read-only characteristics of storage elements, the claims
are not so limited. During patent examination, claims must be given their
broadest reasonable interpretation consistent with the specification. See
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 872, 875 (Fed. Cir.
2004).
In the “Description of the Related Art” section of Appellant’s
Specification, Appellant acknowledges that it was known for “all access to
the data to be scrubbed [to be] simply suspended[] during data scrubbing
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operations in conventional data storage subsystems” (Spec. ¶ [0006],
emphasis added). Applying the broadest reasonable interpretation of the
claim recitations consistent with the specification, we find that this
admission of conventional scrubbing operations resolves the deficiencies of
New. Specifically, the suspension of all access to data during scrubbing
operations reasonably suggests “suspending any data modifications on said
selected storage element,” “performing a scrubbing operation on said
selected storage element after suspension of said data modifications,” and
“resuming data modifications on said selected storage element.”
Although we have rejected claims 1, 24, and 35 pursuant to our
authority under 37 C.F.R. §41.50(b), we have not reviewed the remaining
claims to the extent necessary to determine whether those claims are
unpatentable under 35 U.S.C. § 103(a). We leave it to the Examiner to
ascertain whether claims dependent from independent claims 1, 24, and 35
should be rejected on similar grounds to those set forth herein or in
combination with additional prior art.

DECISION
The Examiner’s decision rejecting claims 1, 19, 20, 22–26, 28, 29,
and 35–42 is reversed.
New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b)
rejecting claims 1, 24, and 35 under 35 U.S.C. § 103(a) as unpatentable over
New and Appellant’s admitted prior art.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection …
shall not be considered final for judicial review.” This section also provides
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that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

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