Ex Parte LeeDownload PDFPatent Trial and Appeal BoardJul 27, 201611682997 (P.T.A.B. Jul. 27, 2016) Copy Citation 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). 2 Appeal2015-000790 Application 11/682,997 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). 3 Appeal2015-000790 Application 11/682,997 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 4 Appeal2015-000790 Application 11/682,997 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). 5 Appeal2015-000790 Application 11/682,997 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)). 6 Appeal2015-000790 Application 11/682,997 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. 7 Appeal2015-000790 Application 11/682,997 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 8 Appeal2015-000790 Application 11/682,997 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 9 Appeal2015-000790 Application 11/682,997 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, 10 Appeal2015-000790 Application 11/682,997 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 11 Appeal2015-000790 Application 11/682,997 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 12 Appeal2015-000790 Application 11/682,997 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. 13 Appeal2015-000790 Application 11/682,997 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 14 Copy with citationCopy as parenthetical citation