Ex Parte Koren et al

Patent Trial and Appeal Board

Jun 30, 2014

12491210 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/491,210 06/24/2009 Rami Koren SANDP016D3.C 4967
77215 7590 07/01/2014
MPG, LLP AND SANDISK
710 LAKEWAY DRIVE SUITE 200
SUNNYVALE, CA 94085
EXAMINER
BRAGDON, REGINALD GLENWOOD
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
07/01/2014 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 RAMI KOREN, ERAN LEIBINGER, NIMROD WIESZ,
EUGEN ZILBERMAN, OFER TZUR, SAGIV AHARONOFF, and
MORDECHAI TEICHER
_____________

Appeal 2011-009821
Application 12/491,210
Technology Center 2100
______________

Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-19, mailed May 14, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 7-10 under 35 U.S.C. § 112, ¶ 2.
Appeal 2011-009821
Application 12/491,210

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INVENTION
Appellants’ invention is directed to a method and a device for
sanitizing a storage device. Claim 1 is illustrative of the invention:
1. A computer implemented method for sanitizing a storage
device, comprising:
determining sanitize status associated with the sanitizing
of the storage device upon powering up of the storage device,
wherein the storage device includes a plurality of sub-arrays
each having a plurality of storage chips, the sanitize status
determined by:
interrogating a sanitize flag associated with each of the
plurality of storage chips in each of the plurality of sub-arrays
of the storage device upon powering up of the storage device,
the sanitize flag defining the sanitize status associated with the
sanitizing of each of the plurality of storage chips in each of the
plurality of sub-arrays of the storage device; and
resuming the sanitizing of the plurality of storage ships
within the plurality of sub-arrays of the storage device based on
the sanitize status of the storage device.

REFERENCES
Malecek US 5,295,255 Mar. 15, 1994
Asnaashari US 5,928,370 July 27, 1999
Rawlins US 6,216,183 B1 Apr. 10, 2001
Sugai US 6,571,312 B1 May 27, 2003

REJECTIONS AT ISSUE
Claims 17 and 19 stand rejected under § 35 U.S.C. § 112, ¶ 1, for
lacking adequate written description.
Claims 1 and 11 stand rejected under § 35 U.S.C. § 112, ¶ 2, as being
indefinite.
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Claims 1-13, 16, and 18 stand rejected under § 35 U.S.C. 103(a) as
being unpatentable over the combination of Sugai, Rawlins, and
Asnaashari.1 Ans. 5-22.
Claims 14 and 15 stand rejected under § 35 U.S.C. 103(a) as being
unpatentable over the combination of Sugai, Rawlins, Asnaashari, and
Malecek. Ans. 22-23.

REJECTION OF CLAIMS 17 AND 19 UNDER 35 U.S.C. § 112, ¶ 1
Contentions
The Examiner rejected claims 17 and 19 as failing to comply with the
written description requirement of 35 U.S.C. § 112, ¶ 1, because step (c) of
claims 17 and 19 allegedly recites subject matter not supported by
Appellants’ Specification. Ans. 3-4.
Analysis
The Examiner established a prima facie case of a failure to satisfy the
written description requirement. As a result, the burden has shifted to
Appellants to explain how the disclosure conveys with reasonable clarity to
ordinarily skilled artisan that Appellants were in possession of step (c) in
claims 17 and 19 and thus satisfies the written description requirement.
Appellants have not responded to the rejection. Therefore, we summarily
sustain the Examiner’s rejection claims 17 and 19 under 35 U.S.C. § 112, ¶
1.

1 Although the rejection’s heading (Ans. 5) only recites claims 1-13 as being
rejected over the combination of Sugai, Rawlins, and Asnaashari, the body
of the rejection (Ans. 18-22) indicates that claims 16 and 18 are intended to
be included in the rejection statement. We understand this omission to
constitute harmless error.
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REJECTION OF CLAIM 1 UNDER 35 U.S.C. § 112, ¶ 2
Contentions
The Examiner rejected claim 1 under 35 U.S.C. § 112, ¶ 2, as being
indefinite because the phrase “the status determined by,” includes a comma
instead of a colon. Ans. 4. The Examiner finds that the use of the comma
renders the claim not reasonably clear as to whether a colon was intended or
whether some additional limitation was inadvertently omitted from the
claim. Id.
Appellants did not submit a formal, after-final amendment replacing
the comma with a colon. Appellants instead attempted to amend the claim
by replacing the comma with a colon in the Claims Appendix of the Appeal
Brief. App. Br. A-1.
Analysis
We do not address whether Appellants’ attempt to amend claim 1 for
the first time in the Appeal Brief constituted an effective response for the
purpose of having the amendment officially entered into the record. We do
find the attempted amendment sufficient, though, to constitute a response to
the indefiniteness rejection. We therefore address the indefiniteness
rejection on the merits.
We do not agree with the Examiner that Appellants’ use of a comma
instead of a colon renders claim 1 indefinite. Appellants’ response renders it
reasonably clear that the use of the comma merely constituted a clerical error
and that a colon was intended. As such, the inadvertent use of the comma at
most warrants a claim objection. We therefore do not sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 112, ¶ 2.
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REJECTION OF CLAIMS 1-6 AND 11-15 UNDER 35 U.S.C. § 103(A)
Contentions
The Examiner finds that Sugai teaches a method of sanitizing erasure
units2 residing on only a single storage chip of a flash device. Ans. 5-6. The
Examiner finds that Asnaashari teaches a flash storage device having a
plurality of sub-arrays, each sub-array having a plurality of storage chips,
each of the plurality of storage chips having at least one erasure unit.
Ans. 7. The Examiner concludes that it would have been obvious to modify
Sugai so that the flash storage device has a plurality of storage chips in each
of a plurality of sub-arrays instead of only a single storage chip, and so that
each erasure unit resides in one of the plurality of storage chips in one of the
plurality of sub-arrays instead of on only the single storage chip. Id.
The Examiner further finds that combination of Sugai and Asnaashari
teaches the limitation “the sanitize flag defining the sanitize status associated
with the sanitizing of each of the plurality of storage chips in each of the
plurality of sub-arrays . . . ,” as recited by independent claims 1 and 11,
because Sugai’s “erasure-unit-number hold region” corresponds to a sanitize
flag that is capable of holding the corresponding “erasure unit number” of

2 Sugai teaches erasing and then rewriting erasure units, which we
understand to be synonymous with sanitizing the erasure units based on
Appellants’ Specification. See Spec. ¶ 5 (stating that one method of
sanitizing a portion of flash media 12 involves first erasing the portion and
then rewriting the portion with random data). Although the Examiner cites
Rawlins for the teaching of a sanitizing operation, we understand the
Examiner to be relying on Rawlins only as a glossary to show that the
Sugai’s erasing and rewriting of erasure units is synonymous with the
claimed sanitizing of the erasure units. Ans. 6.
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any single erasure unit of the flash storage device, regardless of the storage
chip and sub-array in which the single erasure unit resides. Ans. 25-26.
Appellants argue that the combination of Sugai and Asnaashari does
not teach the limitation because Sugai’s erasure-unit-number hold region
only holds a single erasure unit number at a time, and because the single
erasure unit number only indicates the sanitize status of sanitizing a single
erasure unit residing in only a single one of the plurality of storage chips.
App. Br. 4-6; Reply Br. 3-4. Any individual one of Sugai’s sanitize statuses
is not associated with the sanitizing of each of the plurality of storage chips
in each of the plurality of sub-arrays of the storage device. Id.
Analysis
Appellants’ arguments are persuasive. Independent claims 1 and 11
do not merely require that a sanitize flag be associated with each of the
plurality of the storage chips in each of the plurality of arrays. The claims
further require that the sanitize flag defines a sanitize status that is associated
with the sanitizing of each of the plurality of storage chips in each of the
plurality of sub-arrays. Sugai’s erasure-unit-number hold region, though,
only holds a single erasure unit number at a time, and that single erasure unit
number only indicates the sanitize status for a single corresponding erasure
unit. Sugai, col. 8, ll. 24-31. The Examiner has not established that any
single erasure unit number, which we understand the Examiner to be
interpreting as corresponding to the claimed sanitize status, is associated
with each of the plurality of storage chips in each of the plurality of sub-
arrays.
For the reasons stated supra, we do not sustain the obviousness
rejection of independent claims 1 and 11 under 35 U.S.C. § 103(a). We
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likewise do not sustain the rejection of claims 2-6 and 16, which depend
from claim 1, or of claims 12, 13, and 18, which depend from claim 11.
With respect to the remaining rejection of dependent claims 14 and
15, the Examiner’s further reliance on Malecek does not cure the deficiency
of the obviousness rejection explained above. Accordingly, we likewise do
not sustain the rejection of these claims for the reasons set forth above.

REJECTION OF CLAIMS 7-10 UNDER 35 U.S.C. § 103(A)
Independent claim 7 reads as follows:
7. A computer implemented method for sanitizing a
storage device, comprising:
receiving a sanitize command to sanitize at least a
portion of a data storage medium within the storage device,
wherein the data storage medium includes a plurality of sub-
arrays each having a plurality of storage chips;
performing the sanitizing of the plurality of storage
chips within the plurality of sub-arrays forming the portion of
the data storage medium within the storage device in response
to the sanitize command, the sanitizing executing a sanitize
method, the sanitize method defined by one or more sanitize
parameters, the sanitize parameters identified based on the
sanitize command; and
resuming the sanitizing of the plurality of storage chips
within the plurality of sub-arrays of the storage device upon
powering up the storage device after an unexpected power
down,
wherein the storage device is a non-volatile storage
device.
Contentions
The Examiner finds that the combination of Sugai and Asnaashari
teaches “sanitizing of the plurality of storage chips within the plurality of
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sub-arrays forming the portion of the data storage medium within the storage
device in response to the sanitize command . . . ” because Sugai teaches
sanitizing an “erasure unit” in response to a “write request.” Ans. 6.
Appellants argue, inter alia, that the combination of Sugai and
Asnaashari does not teach the disputed limitation because Sugai’s single
write request only results in the sanitization of a single storage chip, whereas
claim 7 recites a “single sanitize command” that results in the sanitization of
multiple storage chips. App. Br. 4-6; Reply Br. 3-4.
Analysis
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). In the case of independent claim 7, though, the scope of the claim
protection cannot be reasonably ascertained.
The first limitation of claim 7 sets forth “receiving a sanitize
command to sanitize at least a portion of a data storage medium within the
storage device, wherein the data storage medium includes a plurality of sub-
arrays each having a plurality of storage chips.” That is, the first limitation
sets forth what is contained in the storage medium (a plurality of sub-arrays
each having a plurality of storage chips), and it broadly sets forth that a
command is received to sanitize some unspecified portion of this data
storage medium. According to the first limitation, the unspecified portion to
be sanitized could be merely a single storage chip.
In contrast, the second limitation of claim 7 sets forth “performing the
sanitizing of the plurality of storage chips within the plurality of sub-arrays
forming the portion of the data storage medium within the storage device in
response to the sanitize command, the sanitizing executing a sanitize method
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. . .” (emphasis added). That is, the second limitation does not merely set
forth the “plurality of storage chips within the plurality of sub-arrays” is part
of the storage medium. The second limitation instead more narrowly
requires that the “plurality of storage chips within the plurality of sub-
arrays” is what forms the portion of the data storage medium that is being
sanitized. According to the second limitation, the portion to be sanitized
must consist of at least four storage chips – two storage chips in each of at
least two sub-arrays.
To summarize, the first limitation of claim 7 initially sets forth a
broad limitation (only requiring a sanitize command for a single chip), while
the second limitation subsequently sets forth a more narrow limitation
(requiring that at least four chips be sanitized). As such, one of ordinary
skill would not be put on reasonable notice as to whether the metes and
bounds of claim 7 require at least four chips be sanitized or merely require
that one chip be sanitized. See MPEP § 2173.05(c)(I) (discussing the
indefiniteness concerns potentially raised by a claim that simultaneously
sets forth both narrow and broad limitations).
Furthermore, Appellants’ Specification does not reasonably clarify the
claim-scope ambiguities that are raised by claim 7. For example, one
passage cited by Appellants as being relevant to the embodiment of the
invention where only a portion of the storage device is sanitized is contained
in the Specification’s “Summary of the Invention” Section. See App. Br. 2
(citing Spec ¶ 9). The explanation of sanitizing portions of the storage
device, as set forth in this passage of the Specification, appears to be
circular, further compounding the confusion:
[0009] According to the present invention there is provided a
method of cleaning a medium wherein data are stored, the
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medium including a plurality of blocks and that is only block-
wise erasable, each block being bounded by a respective first
block boundary and a respective second block boundary, the
method including the steps of: (a) selecting a portion of the
medium to sanitize, the portion being bounded by a first portion
boundary and a second portion boundary, at least one of the
portion boundaries being within one of the blocks; (b) for each
of the portion boundaries that is within one of the blocks,
copying the data, that is stored in the one block outside of the
portion, to a second block; and (c) sanitizing every block
spanned by the portion.
Spec. ¶ 9 (setting forth that the block to be sanitized is bounded by first and
second block boundaries, but then alternatively setting forth that the
boundaries are within the blocks themselves).
Moreover, while the “DESCRIPTION OF THE PREFERRED
EMBODIMENTS” section of the Specification does set forth a process for
sanitizing an entire flash array (see Spec. ¶¶ 64-67), this section of the
Specification does not directly set forth the specific processes for
alternatively sanitizing only a portion of the storage device. The
Specification instead merely makes reference to the Lasser patent, which the
present Specification incorporates by reference:
[0067] The above description applies to resumption of an
interrupted sanitize of all of flash array 32. An interrupted
partial sanitize of flash array 32 also can be resumed, using
techniques adapted from Lasser et al., U.S. Pat. No. 6,977,847,
which is incorporated by reference for all purposes as if fully
set forth herein. Note that some of these techniques require
modification of NAND flash chips 42.
Spec. ¶ 67. But this passage does not say which of Lasser’s techniques are
to be used, much less how they are to be adapted. Rather, the Specification
merely reiterates that some of the techniques would require modification.
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This is not the only ambiguity present in claim 7. The third limitation
of claim 7 recites “resuming the sanitizing of the plurality of storage chips
within the plurality of sub-arrays of the storage device upon powering up the
storage device after an unexpected power down.” That is, the third
limitation does not recite that the sanitizing of the noted portion of the
plurality of chips be resumed or that the sanitizing of the plurality of chips
that forms the portion be resumed. The term portion is not mentioned in the
third limitation. As such, it is not reasonably clear whether claim 7 requires
that after an unexpected power down, the sanitizing of only the at least a
portion of the storage device be resumed, or that all of the plurality of
storage chips subsequently be sanitized.
Because independent claim 7 requires “considerable speculation as to
[the] meaning of the terms employed and assumptions as to the scope of
such claims” is needed, we do not address the merits of the Examiner’s
obviousness rejection under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859,
862, (CCPA 1962) (holding that the Examiner and the Board were wrong in
relying on what, at best, were speculative assumptions as to the meaning of
the claims and in basing a prior-art rejection thereon). We therefore
summarily reverse this rejection of claim 7 pro forma, as well as the
rejection of dependent claims 8-10. However, for the above-stated reasons,
we newly reject claims 7-10 under 35 U.S.C. § 112, ¶ 2 as being indefinite.

DECISION
The Examiner’s decision to reject claims 17 and 19 under 35 U.S.C.
§ 112, ¶ 1, is affirmed.
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The Examiner’s decision to reject claim 1 under 35 U.S.C. § 112, ¶ 2,
is reversed.
The Examiner’s decision to reject claims 1-16 and 18 under 35 U.S.C.
§ 103(a) is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 7-10 under 35 U.S.C. § 112, ¶ 2, for
indefiniteness.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds 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. . . .
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
that “Appellant[s] may file a single request for rehearing within two months
of the date of the original decision of the Board.”
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
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review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeals Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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