Ex Parte Lee

Patent Trial and Appeal Board

Feb 13, 2013

11682997 (P.T.A.B. Feb. 13, 2013)

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.
11/682,997 03/07/2007 Sang-hun Lee 22170-00-US 1080
95480 7590 02/14/2013
SAKO IP, P.C.
P.O. Box 2008
Livermore, CA 94551-2008
EXAMINER
TZENG, FRED
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
02/14/2013 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
____________

Appeal 2011-008900
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
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-40. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal 2011-008900
Application 11/682,997

2
STATEMENT OF THE CASE
Appellant’s claimed invention “relates to a hard disk drive (HDD)
protection apparatus and method, and a device having the same, and more
particularly, to an HDD protection apparatus and method to control an HDD
protection procedure of the HDD in response to an alert signal, and a device
having the same.” (Spec. ¶ [0002]). Independent claim 1, reproduced
below, is representative of the subject matter on appeal:

1. A hard disk drive protection apparatus, comprising:

a hard disk drive (HDD);

an alert generator;

a notice signal generation unit to generate a notice signal
indicating a vibration alert or an audio alert that is to be generated
by the alert generator; and

a controller to receive the notice signal and to control operations of
the HDD and the alert generator based on the notice signal.
(disputed limitations emphasized).

REJECTION
The Examiner rejected claims 1-40 under 35 U.S.C. § 102(e) as being
anticipated by Pasolini (U.S. Pat. 7,450,332 B2).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the
anticipation rejection on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appeal 2011-008900
Application 11/682,997

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CONTENTIONS
Appellant contends, inter alia:
Pasolini merely describes detecting a free-fall using the
acceleration sensor 20 and protecting the portable apparatus 10
based on the detection of the free-fall. (See Pasolini, col. 5,
lines 40-65). That is, Pasolini merely describes that “the
accelerometer 20 senses the movements of the electronic
portable apparatus 10 and generates the corresponding
acceleration signals Ax, Ay, and Az.” (See Pasolini, col. 5,
lines 40-43). Pasolini further describes that “the free-fall
detection circuit 24 compares each one of the acceleration
signals Ax, Ay, Az with a preset acceleration threshold Ath …
and generates a free-fall detection signal F if certain conditions
are met which are indicative of a free-fall event.” (See Pasolini,
col. 5, lines 43-53, emphasis added). However, Pasolini cannot
be construed as teaching or disclosing, among other things,
Appellant’s “a notice signal generation unit to generate a notice
signal indicating a vibration alert or an audio alert that is to be
generated by the alert generator,” as … recited in independent
claim[] 1.
(App. Br. 6).

In the Reply Brief, Appellant similarly contends:
At best, Appellant submits that Pasolini describes a free-fall
detection circuit 24 that “compares each one of the acceleration
signals Ax, Ay, Az” received from the accelerometer 20 and
generates a “free-fall detection signal F” to control a “turning-
on of a warning light” or “emission of an alarm sound signal”
upon “detection of the freefall,” not a “notice signal generation
unit” to “generate” a “notice signal” to indicate a “vibration
alert” or an “audio alert.”
(Reply Br. 5).

Appeal 2011-008900
Application 11/682,997

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ISSUE
Under § 102, did the Examiner err in finding that Pasolini discloses a
“notice signal generation unit to generate a notice signal indicating a
vibration alert or an audio alert that is to be generated by the alert
generator,” within the meaning of representative claim 1 (emphasis added)?

ANALYSIS
This appeal turns upon claim construction. Our reviewing court
guides that “[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
At the outset, we observe that the disputed limitation of “a notice
signal generation unit to generate a notice signal indicating a vibration alert
or an audio alert that is to be generated by the alert generator” is a statement
of intended use. (Claim 1, emphasis added). “An[ ]intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
Because the notice signal and vibration alert or audio alert are not positively
recited as actually occurring, these limitations are not accorded patentable
weight.
Appeal 2011-008900
Application 11/682,997

5
We further observe that the hard disk drive, notice signal generation
unit, and alert generator of claim 1 are not claimed in a particular structural
arrangement, but instead appear to be coupled merely by signal flows that
are recited as statements of intended use. Although features of an apparatus
may be recited either structurally or functionally in the context of
anticipation, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. See In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997).
Even assuming arguendo that the “to generate” and “to be generated”
statements of intended use may be given patentable weight, we find the
weight of the evidence supports the Examiner’s finding of anticipation:
Pasolini clearly teaches that the free-fall detection signal F is
not only a signal notifying an occurrence of a free-fall based on
sizes of the sensed disturbance signals, but also a signal could
directly control emission of an alarm sound signal (see column
5 lines 44-50, column 10 lines 5-17; i.e., emission of an alarm
sound signal indicating an audio alert). Since the limitations
claimed by Appellant are that a notice signal generation unit to
generate a notice signal indicating a vibration alert or an audio
alert that is to be generated by the alert generator, and Pasolini
fully discloses the or part limitations, i.e., or an audio alert
generated by the alert generator (see column 5 lines 44-50,
column 10 lines 5-17; i.e., emission of an alarm sound signal
generated by free-fall detection device 16 satisfied the claimed
limitations), therefore, Pasolini teaches the Appellant’s claimed
limitations.
(Ans. 8).

As relied on by the Examiner (Id.), Pasolini discloses:
As will be described in greater detail hereinafter, the
free-fall detection circuit 24 compares each one of the
acceleration signals Ax, Ay, Az with a preset acceleration
threshold Ath, stored in the threshold register 22, and generates
Appeal 2011-008900
Application 11/682,997

6
a free-fall detection signal F, if certain conditions are met which
are indicative of a free-fall event. The free- fall detection signal
F is then sent to an output 26 of the free-fall detection device
16, to be sent in real time to the processor unit 18, as an
interrupt signal for immediately activating appropriate actions
for protecting the portable electronic apparatus 10. A typical
action is to issue a command to the HDD device 11 through an
industrial standard interface (such as ATA or SATA), for
controlling a forced parking of the read/write head 13 in a safe
position of the HDD device 11.
(col. 5, ll. 43-56).

As relied on by the Examiner (Ans. 8), Pasolini further discloses that
the free-fall detection signal (i.e., notice signal) triggers an audible alarm
(audio alert):
For example, the above signal could directly control a switch
designed to disable a given function within the portable
electronic apparatus, or else control turning-on of a warning
light, or emission of an alarm sound signal upon detection of
the free-fall. In general, shown in FIG. 10, the free-fall
detection signal F could directly control an actuatable circuit 70
in the portable electronic apparatus 10, configured to activate
appropriate protection actions for the portable electronic
apparatus 10.
(col. 10, ll. 8-17).

Given this evidence, on this record, we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner’s anticipation rejection of
representative claim 1, and independent claims 14, 24, 28, 30, and 39 which
recite the aforementioned disputed limitations in commensurate or similar
form. The remaining dependent claims (not argued separately) fall with
their associated independent claim. See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2011-008900
Application 11/682,997

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DECISION
We affirm the Examiner’s rejection under § 102 of claims 1-40.
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).

ORDER
AFFIRMED

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