Ex Parte Lawson

Board of Patent Appeals and Interferences

Aug 17, 2010

11477980 (B.P.A.I. Aug. 17, 2010)

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.
11/477,980 06/29/2006 Gabriel J. Lawson STL 13139 5254
7590 08/18/2010
Fellers, Snider, Blankenship, Bailey & Tippens
Suite 1700
100 North Broadway
Oklahoma City, OK 73102-8820
EXAMINER
THAI, TUAN V
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
08/18/2010 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 GABRIEL J. LAWSON
__________

Appeal 2009-010271
Application 11/477,980
Technology Center 2100
__________

Before JOSEPH L. DIXON, STEPHEN C. SIU, and JAMES R. HUGHES,
Administrative Patent Judges.

SIU, 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.
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on August 11, 2010.

The Invention
The disclosed invention relates generally to ordering a command
queue in a storage space (Spec. 1).
Independent claim 1 is illustrative:
1. A data storage system comprising a primary data domain
and a separate redundant data domain, actuators independently
moveable in a data transfer relationship with each domain, and a
command queue controller configured for short-stroking the actuators
in accessing the information from one of the domains.

The Reference
The Examiner relies upon the following reference as evidence in
support of the rejection:
Brower US 2002/0103967 A1 Aug. 1, 2002

The Rejections
1. The Examiner rejects claims 7 and 17 under 35 U.S.C. § 112, second
paragraph as being indefinite.
2. The Examiner rejects claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Brower.

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APPELLANT’S CONTENTIONS
1. With regard to claim 7 and claim 17, Appellant asserts “that
“substantially’ certainly is not an indefinite term per se” (App. Br. 12). The
Examiner finds that “the scope of the claims is deemed unclear” because
“Appellant has not defined the limits of ‘substantially’” (Ans. 13).
2. With regard to claims 1-10, Appellant asserts that Brower fails
to disclose “a data storage system comprising a primary data domain and a
separate redundant data domain … actuators independently movable in a
data transfer relationship with each domain” (App. Br. 9).
3. With regard to claims 11-19, Appellant asserts that Brower fails
to disclose satisfying “a retrieve command from one of the primary and
redundant domains, depending on which head is nearest an LBA associated
with the retrieve command” (App. Br. 9).
4. With regard to claim 20, Appellant asserts that “there is no
evidence in the record that the structure of Brower is structurally equivalent
to the disclosed structure” (App. Br. 12) under an evaluation “resembling a
section 112(6) analysis” (id.).

ISSUES
Therefore, the issues before us are:
1. Did the Examiner err in finding that the claim term
“substantially” recited in claims 7 and 17 is unclear?
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2. Did the Examiner err in finding that Brower discloses a primary
domain, a separate redundant domain, and actuators independently moveable
in a data transfer relationship with each domain as recited in claims 1-10?
3. Did the Examiner err in finding that Brower discloses satisfying
a retrieve command depending on which head is nearest an LBA associated
with the retrieve command as recited in claims 11-19?
4. Did the Examiner err in finding that Brower discloses a
structure that is structurally equivalent to the means for ordering commands
recited in claim 20?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Brower discloses a “redundant array of independent . . . disks
(RAID)” in which “data is placed on multiple hard disks to allow
input/output (I/O) operations to be completed in an overlapping
manner, thereby improving system performance” (¶ [0006]).
2. Brower discloses hard disk drives containing “one or more disks 14,
a rotary actuator assembly 16, and associated control electronics”
(¶ [0024]).
3. Brower discloses a system that “uses two or more drives . . . to
implement a data storage system . . . in the form of a redundant array
of independent . . . disks (RAID)” (¶ [0027]).
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4. Brower discloses that “disk drives 10a and 10b are paired . . . [that] a
copy of the data is written to each of the two drives . . . [and that]
each drive has one-half of the primary copies, and one-half of the
secondary copies” (¶ [0029]).
5. The Specification discloses that when “the fixed LBA separation . . .
is substantially half of a full complement of the LBAs on each
domain” (Spec. 12), “the maximum seek distance will be half the
radial distance of the data storage medium 122” (id.).
6. Claim 20 is in the form of a “means-plus-function” claim (Claims
Appendix).

PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

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ANALYSIS
Claims 7 and 17
The Examiner finds that the term “substantially” as recited in claims 7
and 17 is unclear because “Appellant has not defined the limits of
‘substantially’ as it relates [to] the claim language” (App. Br. 13). However,
the test for definiteness under 35 U.S.C. § 112, second paragraph is whether
“those skilled in the art would understand what is claimed when the claim is
read in light of the specification.” Orthokinetics, Inc. v. Safety Travel
Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Since claims 7 and 17 specify a separation between actuators of
substantially half of a full complement of LBAs, which the Specification
discloses as maintaining a maximum seek distance at half the radial distance
of a data storage medium (FF 5), we disagree with the Examiner that one of
skill in the art would have trouble ascertaining the scope of claims 7 and 17
when interpreted in light of the Specification. Nor has the Examiner
demonstrated that one of skill in the art would not have understood what is
claimed when the claim is read in light of the Specification.
Accordingly, we conclude that the Examiner erred in finding claims 7
and 17 indefinite.

Claims 1-10
Claim 1 recites a primary data domain and a separate redundant data
domain. Appellant asserts that a domain “is disclosed as being an individual
data storage drive” (App. Br. 7), which the Examiner does not dispute.
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As set forth above, Brower discloses two or more storage discs (FF 1-
4) and that “primary storage locations are divided between the two drives . . .
as are the secondary storage locations” (¶ [0029]). Appellant argues that
since each drive in Brower contains both primary and secondary data and
since each drive contains one separate actuator, each of the actuators on each
of the different drives in Brower is not independently moveable with each
domain (each domain containing primary and separate redundant data,
respectively). To the extent that Appellant’s “domain” encompasses a
separate drive and each drive of Brower contains a portion of both the
primary and secondary redundant data domains, we agree with Appellant
that Brower does not disclose any given actuator of a particular drive
moving independently in a data transfer relationship with one domain (e.g.,
primary data) with another actuator of a different drive moving in a data
transfer relationship with another domain (e.g., secondary redundant data)
since each drive in Brower contains both primary and secondary redundant
data over which a given actuator may move.
Therefore, we conclude that the Examiner erred in rejecting
independent claim 1, and claims 2-10, which depend therefrom.

Claims 11-19
Claim 11 requires that a retrieve command is satisfied depending on
which head is nearest an LBA associated with the command. The Examiner
states that because “each head [in Brower] is in its own unique area of the
stripe, the head that’s in the area with the LBA is always the nearest head”
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(Ans. 12). However, even assuming that the Examiner’s statement to be
correct that Brower discloses a head that is close to a particular LBA, the
Examiner has not demonstrated any determination of which head is nearest
to a particular LBA.
For example, as described above, Brower discloses two or more hard
drives, each containing an actuator with an electromagnetic head. The
Examiner has not shown that a determination is made as to which head of
which drive is nearest a particular LBA. Rather, the Examiner states that
Brower discloses that the head in the vicinity of the LBA is “always the
nearest head.” Since the LBA may be located on multiple hard drives
(Brower stores both primary data and redundant data on each disc) and each
drive contains a separate actuator and head, multiple heads (each on
different drives) may each be “in the area with the LBA.” The Examiner has
not demonstrated that Brower determines which of these heads (on different
drives) is “nearest an LBA.” Nor has the Examiner demonstrated that
Brower discloses retrieving data based on which of the heads is closest to the
LBA associated with a corresponding retrieve command.
Accordingly, we conclude that the Examiner erred in rejecting
independent claim 11, and claims 12-19, which depend therefrom.

Claim 20
Appellant asserts Brower fails to disclose a structure that is
structurally equivalent to the claimed “means for ordering commands.”
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With use of the word “means,” a presumption of a means-plus-
function clause arises and we “must look to the specification and interpret
that language in light of the corresponding structure, material, or acts
described therein, and equivalents thereof, to the extent that the specification
provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193
(Fed. Cir. 1994).
Appellant asserts that the claimed structure of the claimed “means for
ordering commands” “includes command queue controller 198 depicted in
FIG. 5” (App. Br. 6). The Specification discloses that the command queue
controller “orders the passing of the write commands, as well as higher
priority read commands” (Spec. 9) and “can push a retrieve command
immediately upon its receipt to one of the actuators” (Spec. 11). Hence, the
Specification appears to merely provide a functional description of the
command queue controller 198, rather than a structural description.
The Specification thus discloses, at best, a general purpose computer
system having a command queue controller that orders the passing of write
and read commands and pushes a retrieve command upon receipt to an
actuator. While a general purpose computer may become “a special purpose
computer once it is programmed to perform particular functions pursuant to
instructions from program software” (Aristocrat Techs. Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing In re
Alappat, 33 F.3d 1526, 1545 (Fed. Cr. 1994)), Appellant has not indicated
that the Specification discloses an algorithm by which the desired result of
ordering the passing of write or read commands or pushing a retrieve
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command upon receipt to an actuator. Such a description of a desired result
of a performed operation by a general computer cannot constitute an
algorithm since such a disclosure merely “describes an outcome, not a
means for achieving that outcome.” Aristocrat, 521 F.3d at 1334.
Therefore, we are left only with Appellant’s indication of a box
illustrated in FIG. 5 as the structure of the “command queue controller 198.”
To the extent that an element that executes commands in the Brower system
may be depicted as a generalized box, we agree with the Examiner that
Brower discloses the structure (or equivalent structure) as that depicted in
FIG. 5 of the Specification (i.e., a box). Nor has Appellant pointed out any
differences between the box structure of FIG. 5 and the component in the
Brower reference. We also note that the Examiner points to Brower’s
paragraphs [0029], [0030], and [0034] and Figure 4 as disclosing a RAID
system that performs the recited function for the corresponding structure.
(Ans. 9, 12.)
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claim 20.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in finding that Brower discloses a structure that is
structurally equivalent to the means for ordering commands recited in claim
20.
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However, we also conclude that the Examiner erred in finding that the
claim term “substantially” recited in claims 7 and 17 is unclear and that
Brower discloses a primary domain, a separate redundant domain, and
actuators independently moveable in a data transfer relationship with each
domain as recited in claims 1-10 and satisfying a retrieve command
depending on which head is nearest an LBA associated with the retrieve
command as recited in claims 11-19.

DECISION
We affirm the Examiner’s decision rejecting claim 20 under
35 U.S.C. § 102. We reverse the Examiner’s decision rejecting claims 7 and
17 under 35 U.S.C. § 112 and claims 1-19 under 35 U.S.C. § 102.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

msc

Fellers, Snider, Blankenship, Bailey & Tippens
Suite 1700
100 North Broadway
Oklahoma City, OK 73102-8820