Ex Parte Lee

Patent Trial and Appeal Board

Jul 27, 2016

11682997 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/682,997 0310712007 Sang-hun Lee
95480 7590 07/28/2016
SAKO IP, P,C
P.O. Box 2008
Livermore, CA 94551-2008
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
22170-00-us 1080
EXAMINER
TZENG, FRED
ART UNIT PAPER NUMBER
2695
MAILDATE DELIVERY MODE
07/28/2016 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 SANG-HUN LEE
Appeal2015-000790
Application 11/682,997
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 41-70. Claims 1--40 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Invention
The invention on appeal relates to a hard disk drive protection
apparatus and method to control a hard disk drive protection procedure of
the hard disk drive in response to an alert signal. (Spec. i-f 2).
Appeal2015-000790
Application 11/682,997
Representative Claims
41. An apparatus, comprising:
a hard disk drive (HDD) configured to store data;
[LI] an alert generator configured to generate at least
one alert;
[L2] a disturbance unit configured to generate a
disturbance signal in response to a physical disturbance of the
apparatus exceeding a predetermined threshold; and
a controller configured to control operations of the HDD
and the alert generator based on the disturbance signal and a
notice signal different from the disturbance signal.
62. An apparatus, comprising:
a hard disk drive (HDD) configured to store data;
[L3] an alert generator configured to generate at least
one alert in response to an input signal to the apparatus; and
a controller configured to place the HDD into a protected
mode while the at least one alert is generated.
(Emphasis added regarding the contested limitations, labeled as LI, L2, and
L3).
Prior Decision
See PTAB Appeal No. 2011---008900, Application 11/682,997, mailed
Feb. 14, 2013 (Examiner Affirmed regarding single anticipation rejection of
claims 1--40 over Pasolini et al. (US 7,450,332 B2; published Nov. 11,
2008)).
Rejection
Claims 41-70 are rejected underpre-AIA 35 U.S.C. § 102(e) as being
anticipated by Pasolini et al. (US 7 ,450,332 B2; published Nov. 11, 2008).
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Grouping of Claims
Based on Appellant's arguments, we decide the appeal of independent
claims 41 and 56 on the basis of representative independent claim 41.
Based on Appellant's arguments, we decide the appeal of claims 42
and 49 on the basis of representative independent claim 49.
Based on Appellant's arguments, we decide the appeal of dependent
claims 63---65, and 67-70 on the basis of representative independent claim
62.
We address separately argued dependent claims 44 and 48, infra.
We address (and reverse) the rejection of separately argued dependent
claims 43, 45, 58, 61, and 66, infra.
To the extent Appellant has not advanced separate, substantive
arguments for the remaining claims on appeal, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Anticipation Rejection of claims 41 and 56
Issue: Under 35 U.S.C. § 102(e), did the Examiner err by finding
Pasolini expressly or inherently discloses contested limitations L 1, "an alert
generator configured to generate at least one alert;" and L2, "a disturbance
unit configured to generate a disturbance signal in response to a physical
disturbance of the apparatus exceeding a predetermined threshold," within
the meaning of representative claim 41? 1
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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The Examiner finds Pasolini discloses these limitations by describing
"a free-fall detection device 16 [i.e., an alert generator LI, that] issues a
warning signal [i.e., at least one alert]" and "circuit 24" (i.e., a disturbance
unit L2) that issues free-fall detection signal F (i.e., a disturbance signal).
(Final Act. 3--4, citing Pasolini col. 3, 11. 61---67; col. 4, 11. 33-51; col. 5, 11.
44--49; and Fig. 3).
Appellant contends under the law of anticipation, "[a] rejection may
not use the same reference element to show Appellant's separate elements"
and the Examiner has done so because "the free-fall detection circuit (24) is
just part of the free-fall detection device (16)." (App. Br. 5, 8, referring to
Pasolini, Fig. 3). Appellant further contends, "as understood from the
portions of Pasolini et al.[], the output of the free fall detection device (16)
is the same as the output of the free-fall detection circuit (24 )" and therefore
"because they both generate [the] same signal, the reference does not show
both the 'at least one alert' and 'disturbance signal' recited in Appellant's
claim 41." (Id. at 8-9). Appellant additionally contends that "the entire
DETAILED DESCRIPTION of Pasolini et al. is silent regarding any
warning signal." (Reply 2).
We do not find Appellant's contentions persuasive. The Examiner
finds the contested "alert generator" L 1 is anticipated by "free-fall device
16" and the contested "disturbance unit" L2 is anticipated by "free-fall
detection circuit 24." (Final Act. 3--4; see Pasolini, Fig. 3). These are
separate components. The mere fact that one contains the other does not
render free-fall detection device 16 and free-fall detection circuit 24 the
same component. (For example (and as an analogy), an automobile contains
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an engine, but an engine as not an automobile. These are not considered to
be the same components).
Further, two items are the same if they are identical, or nearly
identical. Here, the two features relied on by the Examiner are not identical
elements because they do not have identical structures, nor do they provide
identical functions. Free-fall detection device 16 has capabilities beyond
those of free-fall detection circuit 24; for example, it provides accelerometer
20 functionality that is not provided by free-fall detection circuit 24.
(Pasolini, Fig. 3, col. 4, 11. 42-51).
Moreover, we conclude the contested claim language does not
preclude the Examiner's broader reading. (Ans. 2-3). 2 Therefore, we find
the Examiner has shown how separate elements of the Pasolini reference
(free-fall detection device 16 and free-fall detection circuit 24, Fig. 3)
anticipate the separate (L 1) "alert generator" and (L2) "disturbance unit,"
recited in claim 41, respectively.
In addition, we do not find Pasolini's "warning signal" (col. 3, 1. 62;
col. 10, 11. 11-12) and "free-fall detection signal F" (Fig. 3. col. 3, 1. 32, col.
10, 1. 5) are the same signal. Contrary to Appellant's argument (Reply 2),
Pasolini's detailed description expressly discloses "free-fall detection signal
F ... directly activate[ s] appropriate protection actions" such as
"control[ing] turning-on of a warning light [i.e., a visual alert], or emission
of an alarm sound signal [i.e., an audible alert] upon detection of the free-
fall." (Pasolini, col. 10, 11. 5-17). Thus, "free-fall detection signal F" is used
2 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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to control separate visual or audible warning signals (i.e., "at least one
alert") which are intended for human perception. (Id.; claim 41 ).
We observe claim 14 of Pasolini (col. 12) further confirms the
distinction between the two signals by reciting both a "warning signal" and a
"free-fall detection signal," which perform separate functions. 3 Because the
evidence shows Pasolini' s "warning signal" and "free-fall detection signal
F" are not the same signal, on this record, we are not persuaded the
Examiner erred in finding Pasolini anticipates contested limitations L 1 and
L2. Therefore, we sustain the rejection of representative independent claim
41. Independent claim 56 (not separately argued) falls with representative
claim 41. See Grouping of Claims, supra.
Anticipation Rejection of claims 42 and 49
Issue: Under 35 U.S.C. § 102(e), did the Examiner err by finding
Pasolini anticipates the contested limitation "a controller configured to
selectively generate the alert signal and the protection signal in response to
the notice signal," within the meaning of claim 49?
Appellant contends the Examiner's "rationale fails to show how the
processor unit (18) of Pasolini et al. generates 'a protection signal and an
alert signal." (App. Br. 11 ).
3 See Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d
1362, 1371 (Fed. Cir. 2008) ("Different claim terms are presumed to have
different meanings." (citation omitted)).
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We do not find Appellant's arguments commensurate in scope with
claim 49. 4 The contested limitation requires the controller to selectively
generate the alert signal and the protection signal." (Claim 49, emphasis
added). We understand the term "selectively" means "of, relating to, or
characterized by selection," while "select" is understood to mean "chosen
from a number or group by fitness or selection." 5 Thus, we conclude under
a broad but reasonable interpretation, the controller of claim 49 is required to
"selectively generate" at least one of a protection signal, and an alert signal,
and not both as alleged by the Appellant. (App. Br. 11 ). 6
Because Appellant has not argued a definition recited in the claim, or
supported in the Specification (or provided rebuttal evidence in the record),
we are not persuaded the Examiner's reading of the claim is overly broad or
unreasonable. 7 We find the Examiner's findings regarding the contested
limitation are supported by a preponderance of the evidence. (Final Act. 4 ).
Pasolini describes that free-fall detection signal F "directly activate[s]
[i.e., selects, e.g., by controlling a switch,] appropriate protection actions,"
including the head parking signal (i.e., a protection signal) and the warning
4 See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.").
5 WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY (19th ed. 1991) (page
1064), emphasis added. See 37 C.F.R. § 41.30 regarding citations to
dictionaries.
6 The Examiner reads the claimed "protection signal" on the head park
signal in Pasolini (col. 10, 11. 22-25) "The free-fall detection signal F could
directly be received and interpreted by the control circuit of the HDD device
11, to instantaneously park the read/write head 13." See also col. 5, 1. 55.
(Final. Act. 4).
7 See n.2 supra.
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signal (i.e. an "alert signal" - a warning light or alarm sound signal).
(Pasolini, col. 10, 11. 5-25).
Given this evidence, we are not persuaded the Examiner erred in
finding Pasolini anticipates the contested limitation "a controller configured
to selectively generate the alert signal and the protection signal in response
to the notice signal" (emphasis added), within the meaning of claim 49.
Accordingly, we sustain the Examiner's anticipation rejection of
independent claim 49, and grouped claim 42 (not argued separately, see
App. Br. 10-11). See Grouping of Claims, supra.
Anticipation Rejection of claims 43, 45, 61, and 66
Claim 43 recites a temporal limitation, in pertinent part: "the
controller is configured to selectively generate a protection signal prior to an
alert signal in response to the notice signal;" (emphasis added).
The Examiner finds Pasolini discloses the contested limitation at col.
8, ii. 10--'23, and coi. 10, ii. 5-17. (Final Act. 4). No further explanation is
provided by the Examiner in the Answer.
Appellant focuses on the temporal "prior to" limitation, arguing that
Pasolini "does not show signals generated prior to one another, as recited in
[Appellant's] claims." (App. Br. 12, emphasis added).
We are persuaded by Appellant's argument. Pasolini describes that
upon receiving free-fall detection signal F, processor unit 18 (i.e., the
controller) issues "an appropriate signal for controlling parking in a safe
position on the read/write head [i.e., a "protection signal"]." (Pasolini col. 8,
11. 10-23, Fig. 3). As discussed above, Pasolini describes that free-fall
detection signal F "directly activate[s] appropriate protection actions,"
including the head parking signal (i.e., a protection signal) and the warning
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signal (i.e. an "alert signal" - a warning light or alarm sound signal).
(Pasolini, col. 10, 11. 5-25).
Given this evidence, we find the head parking (protection) signal and
the warning (alert) signal in Pasolini are generated substantially
simultaneously. See n.6, supra. However, we find to affirm the Examiner's
finding (Final Act. 4) that Pasolini discloses the head parking (protection)
signal is generated prior to the warning (alert) signal (claim 43), would
require speculation on our part. We decline to engage in speculation.
Accordingly, we reverse the Examiner's anticipation rejection of claim 43,
and the anticipation rejection of claim 66, which recites the contested
temporal limitation using commensurate language.
Claims 45 and 61 are directed to a commensurate temporal limitation
requiring delaying the alert signal with respect to the protection signal. We
are persuaded by Appellant's contention the claimed "delay unit" (claim 45)
and the commensurate step or act of "delaying the alert signal" (claim 61)
are not shown by the Examiner as being disclosed in Pasolini. (App. Br.
13). Therefore, we also reverse the anticipation rejection of claims 45 and
61.
Anticipation Rejection of claim 44
Claim 44 recites, in pertinent part: "the controller is configured to
selectively generate a protection signal and an alert signal simultaneously in
response to the notice signal" (emphasis added).
The Examiner finds Pasolini discloses the contested limitation at col.
8, 11. 10-23 and col. 10, 11. 5-17. (Final Act. 4). Appellant argues "the
rejection [of claim 44] is defective for the same reason [as claim 43]: while
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the tnnmg of signals is discussed, only one signal from the processor unit
(18) (i.e., controller) is shown." (App. Br. 12).
We do not find this argument persuasive. As discussed above
regarding claim 49, we conclude the term "selectively" only requires
selection of at least one of the protection signal or the alert signal. See n.5.
supra. As also discussed above regarding claim 43, we find the head
parking (protection) signal and the warning (alert) signal in Pasolini are
generated substantially simultaneously (col. 10, 11. 5-17). See n.6, supra.
Therefore, we are not persuaded the Examiner erred in finding Pasolini
anticipates the contested limitation. Accordingly, on this record and based
on a preponderance of the evidence, we sustain the Examiner's rejection of
dependent claim 44.
Anticipation Rejection of Dependent Claim 48
Claim 48 recites: "a notice signal generator configured to generate the
notice signal, the notice signal generator being selected from the group of:
an signal receiver configured to generate the notice signal in response to a
transmitted signal and an internal signal unit configured to generate the
notice signal in response to a user input to the apparatus."
The Examiner finds Pasolini discloses this limitation at col. 5, 11. 44--
59; col. 7, 11. 29-51; and col. 8, 11. 11-13. (Final Act. 5). Appellant argues
the Examiner "uses the same element to show three of Appellant's separate
claim elements," which "fails to show Appellant's elements 'arranged as in
the claim."' (App. Br. 13-14).
We do not find this argument persuasive. Pasolini explicitly discloses
register array 21, that generates a signal (based on acceleration signals Ax,
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Ay, and Az), that provides notice the device is accelerating in a particular
direction. (Pasolini, col. 5, 11. 40-59). Further, as can be seen in Fig. 3, we
find register array 21 is "[a] signal receiver configured to generate the notice
signal in response to a transmitted signal" because it receives an input signal
Ax,y,z from accelerometer 20, and generates an output signal sent to the input
of free-fall detection circuit 24. Therefore, given this evidence, we are not
persuaded the Examiner erred, and we sustain the Examiner's rejection of
dependent claim 48.
Anticipation Rejection of Dependent Claim 58
Claim 5 8 recites (emphasis added):
The method of claim 56, wherein:
selectively generating the alert signal and protection
signal includes
generating the alert signal and protection signal in
response to the apparatus being configured to generate at least a
first type of alert, and
generating the alert signal and not generating the
protection signal in response to the apparatus being configured
to generate at least a second type of alert.
The Examiner concludes claim 5 8 recites "method steps associated
with apparatus claims 41-55, 62-70 and therefore [is] rejected on the same
basis as [the] apparatus claims." (Final Act. 7).
Appellant contends the limitation "generating the alert signal and not
generating the protection signal ... does not appear in the apparatus claims
41-55 and 62-70" and "[a]ccordingly, a prima facie showing cannot have
been made." (App. Br. 14).
We agree with Appellant the limitation "generating the alert signal"
(claim 58) is not recited in apparatus claims 41-55 or 62-70. Further, we
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decline to make speculative assumptions regarding the Examiner's intended
mapping of the contested feature of claim 5 8 to a corresponding feature in
Pasolini. Accordingly, for the same reason argued by Appellant (App. Br.
14), we reverse the Examiner's rejection of claim 58.
Anticipation Rejection of Independent Claim 62
Issue: Under 35 U.S.C. § 102(e), did the Examiner err by finding
Pasolini anticipates the contested limitation L3: "an alert generator
configured to generate at least one alert in response to an input signal to the
apparatus," within the meaning of independent claim 62?
The Examiner finds Pasolini discloses contested limitation L3 at col.
3, 11. 61-67 and col. 4, 11. 33-51. (Final Act. 5).
Appellant contends "[a]s best understood by Appellant, the rejection
looks to column 5, lines 44--59 of Pasolini et al.," which "Appellant asserts
... is utterly silent regarding any 'input signal to the apparatus." (App. Br.
14--15). Appellant further urges: "the above-noted acceleration signals Ax,
Ay, Az are generated internal to the apparatus" and "[t]he above-noted free-
fall detection signal (F) is also generated internal to the apparatus." (Id. at
15).
The Examiner further explains: "the movements of the apparatus 10
are the input signals to the apparatus." (Ans. 4, emphasis added).
Appellant replies that the Examiner's Answer "presents a new ground
for rejection, and is improper as it has not been designated as such" because
"nowhere, in any of the rejections, does the Examiner make the argument
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that the movements of the apparatus are input signals to the apparatus."
(Reply 5-6). 8
We do not find Appellant's arguments commensurate in scope with
the claim. Claim 62 is silent regarding any language that would preclude the
input signals from being "internal" to the apparatus, as urged by Appellant.
(App. Br. 15). Further, by addressing Pasolini, col. 5, 11. 43-59, and not
Pasolini, col. 3, 11. 61---67, and col. 4, 11. 33-51 (App. Br. 14--15), we find the
Appellant has failed to address the Examiner's specific findings. (Final Act.
5).
Therefore, on this record, we are not persuaded the Examiner erred in
determining "the movements of the apparatus 10 are the input signals to the
apparatus." (Ans. 4). Nor do we consider this a new ground of rejection, as
the citations provided by the Examiner (Final Act. 5) describe how the
apparatus detects a "free-fall condition" (i.e., movement or falling as an input
signal to the apparatus). (Pasolini, e.g., col. 3, 11. 61-67). See n.7 supra.
Accordingly, on this record and based on a preponderance of the
evidence, we sustain the Examiner's rejection of representative independent
claim 62. Grouped claims 63-65 and 67-70 (not argued separately), fall
with claim 62. See Grouping of Claims, supra.
8 We note pursuant to 37 C.F.R. § 41.40 (Tolling of time period to file a
reply brief), Appellant has not filed a petition to the Director under § 1.181
within two months from the entry of the Examiner's Answer and before the
filing of any reply brief. Failure of Appellant to timely file such a petition
constitutes a waiver of any arguments that a rejection must be designated as
a new ground of rejection. 37 C.F.R. § 41.40.
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Anticipation Rejection of Remaining Dependent Claims
As indicated above, to the extent Appellant has not advanced separate,
substantive arguments for the remaining claims on appeal, such arguments
are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner's rejection of claims 41, 42, 44, 46-57, 59,
60, 62---65, and 67-70 under pre-AIA 35 U.S.C. § 102(e).
We reverse the Examiner's rejection of claims 43, 45, 58, 61, and 66
underpre-AIA 35 U.S.C. § 102(e).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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