Ex Parte Markow et al

Board of Patent Appeals and Interferences

Jul 5, 2011

11549385 (B.P.A.I. Jul. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITCHELL MARKOW, JEREMY M. FORD, and
RICARDO V. DOMINGUEZ
____________

Appeal 2009-007086
Application 11/549,385
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JEAN R. HOMERE, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 21-40. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). This appeal is related to appeal 2007-3033.
We affirm.
A. INVENTION
The invention at issue on appeal relates, in general, to the field of
detecting information handling system failures. In one aspect, the present
invention relates to a method and apparatus for detecting acoustic signals
generated by a hard disk drive in an information handling system using an
integrated sensor in the hard disk drive. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 21, which further illustrates the invention, follows.
21. An information handling system for detecting a
hardware component failure in the information handling
system, comprising:
a processor;
memory interfaced with the processor;
program code stored by the memory and executable by
the processor;
a plurality of hardware components; and
a sensor positioned within each of the plurality of
hardware components, where each sensor detects an acoustic
property of a hardware component in which the sensor is
positioned;
where the program code comprises a diagnostics module
for analyzing a detected acoustic property from at least a first
sensor and issuing a hardware component failure signal for a
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hardware component associated with said first sensor based
upon the detected acoustic property.

C. REFERENCES
The Examiner relies on the following references as evidence:

Gross US 6,957,365 B2 Oct. 18, 2005
Erten US 6,625,587 B1 Sep.23, 2003
Radomski US 6,507,790 B1 Jan. 14, 2003
Brant US 5,517,613 May 14, 1996

D. REJECTIONS
Claims 21-40 stand rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement. The claim(s)
contains subject matter which was not described in the specification in such
a way as to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of the
claimed invention.
Claims 37-40 stand rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the enablement requirement. The claim(s) contains
subject matter which was not described in the specification in such a way as
to enable one skilled in the art to which it pertains, or with which it is most
nearly connected, to make and/or use the invention.
Claims 21, 22, and 25-29 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Gross in view of Brant.
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Claims 23 and 24 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Gross in view of Brant as applied to claim 21 above, and
further in view of Erten.
Claims 30-33, 35, 37, 39, and 40 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Gross in view of Radomski and Brant.
Claim 34 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Gross in view of Radomski and Brant as applied to claim
30 above.
Claims 36 and 38 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Gross in view of Radomski and Brant as applied to claims
35 and 37 above, and further in view Erten.

PRINCIPLES OF LAW

§ 112 First Paragraph, Written Description
The test for written description is summarized in Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation
marks and citations omitted):
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue. . . .
Nonetheless, the disclosure must . . . convey with reasonable
clarity to those skilled in the art that . . . [the inventor] was in
possession of the invention. . . . Put another way, one skilled in
the art, reading the original disclosure, must immediately
discern the limitation at issue in the claims. . . . That inquiry is
a factual one and must be assessed on a case-by-case basis.

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§ 112 First Paragraph, Enablement
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement. If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the specification is indeed
enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In
re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation ....
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not ‘experimentation.’”
Id. at 736-737.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
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The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
The amount of direction or guidance presented;
The existence of working examples;
The nature of the invention;
The state of the prior art;
The relative skill of those in the art;
The level of predictability in the art; and
The breadth of the claims.
Id. at 737. The Examiner’s analysis must consider all the evidence
related to each of these factors, and any conclusion of non-enablement must
be based on the evidence as a whole. Id.

OBVIOUSNESS
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellants have the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
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Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellants’ Briefs to show error in the proffered prima facie case.

ANALYSIS
Appellants set forth various arguments in the Appeal Brief and the
Examiner thoroughly responds to each of Appellants’ arguments in the
Answer and the responsive arguments at page 22-28. We find the
Examiner's showings with respect to the written description requirement and
obviousness to be persuasive and adopt those findings as our own.

35 U.S.C. §112, First Paragraph, Written Description Requirement

Appellants contend that "the specification clearly shows that the
inventor possessed the specific subject matter now claimed." (App. Br. 5).
We disagree with Appellants' proposition and find no clear indication of a
system that contains multiple hardware components or disk drives, each with
sensors positioned within each of the hardware components, and a
diagnostics module for analyzing signals from at least a first sensor or
multiple sensors. We find Appellants' citations to pages 6 and 7 of
Appellants' Specification to fall short of clearly showing possession at the
time of the invention. Additionally, the citations to pages 8 and 10 of the
Specification merely support the fact that more than a single hard disk drive
is produced by a manufacturer. Therefore, Appellants' have not shown error
in the Examiner's showing of a lack of written description support for
independent claims 21, 30, and 37.
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In the Reply Brief, Appellants contend that the "Examiner parsed each
citations separately to argue that each separately parsed statement fails to
show that there are multiple hardware components, each having its own
sensor.… Applicants respectfully submit that the Examiner is missing the
forest for the trees." (Reply Br. 1). We disagree with Appellants' contention
and find that evaluating Appellants' Specification, as a whole, one skilled in
the art would be left to speculate whether multiple hardware components,
each with a sensor within each of the components (hard disk drive) would be
diagnosed by a diagnostics module. For example, if multiple hard disk
drives of various sizes, shapes, or manufacturers were present in a system,
then each distinct drive may require its own acoustic model. However,
Appellants' Specification is completely silent with regards to diagnosing
multiple devices (yet, we find that one size does not fit all). Therefore,
Appellants have not shown error in the Examiner’s showing of a lack of
written description support for claims 21-40.

35 U.S.C. §112, First Paragraph, Enablement Requirement

With regards to the Examiner's enablement rejection, the Examiner
maintains that:
Referring to claim 37, and subsequently claims 38-40,
Applicant describes a sensor to detect "electromagnetic signals
generated by operation said hard disk drives". In claims 38 and
39, Applicant further identifies these "electromagnetic signals"
as acoustic in nature. This is further understood to refer to
paragraph 34 wherein Applicant misconstrues
electromagnetism to encompass sound, pressure, and
temperature. In particular, Applicant should be made aware that
sound is an aspect of modulated air, which is not
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electromagnetic. For more information regarding the
differences between the EM spectrum, sound, pressure, and
temperature, Examiner advises consulting various sources such
as Wikipedia. For the purpose of examination, Examiner is
interpreting such an electromagnetic sensor to refer to a sensor
capable of sampling sound, as indicated in claims 38 and 39.

(Answer 4). We disagree with the Examiner's finding of a lack of
enablement due to the apparent construction of "electromagnetism to
encompass sound, pressure, and temperature. In particular, Applicant should
be made aware that sound is an aspect of modulated air, which is not
electromagnetic." (id.)

The Examiner’s analysis has not considered each of the noted factors
set forth in In re Wands above. Consequently, the Examiner has not shown
that undue experimentation would be required in order to make or use the
claimed invention.We find therefore that the Examiner has not identified
how the Specification, as a whole, fails to enable the invention of claims 37-
40 to those skilled in the art. It appears the Examiner's problem is based
upon a lack of particularity and agreement between the Specification and the
claim language, but the Examiner has not identified how each claim alone
lacks enablement. Therefore, we find Examiner has not set forth a sufficient
showing of a lack of enablement of claims 37-40.

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35 U.S.C. §103

With respect to independent claim 21, Appellants maintain that the
Gross reference teaches away from the proposed combination and that the
combination of Brant with Gross would change the principle of operation of
the prior art invention in the Gross reference since there would be no need
for triangulation. (Reply Br. 3-4). We disagree with Appellants’
contentions. We find no express teaching away (see generally Teaching A
Way is not Teaching Away, J. of the Patent and Trademark Office Society,
December 1997, vol. 79, no. 12, page 867-882.) “A reference may be said
to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in original) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). The prior art’s mere disclosure
of more than one alternative does not constitute a teaching away from any of
the alternatives when the disclosure does not criticize, discredit, or otherwise
discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). What the prior art teaches and whether it teaches toward or away
from the claimed invention are determinations of fact. Para-Ordnance Mfg.,
73 F.3d at 1088.
Furthermore, we agree with the Examiner that the principle of
operation in the Gross reference is identifying a failing disk drive rather than
the use of triangulation. (Ans. 26). Therefore, Appellants' have not shown
error in the Examiner's showing of obviousness.
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Appellants argue that the proposed combination of Gross and Brant
would not be made by those skilled in the art due to "the need for low-cost
computer system products which would weigh against combining the Gross
and Brant approaches, and the additional costs associated with using
additional sensors in each disk drive which would necessarily make the
systems more expensive and difficult to manufacture." (Reply Br. 4).
Appellants further contend that "the 'cost' and 'complexity' considerations
weigh against the proposed combination." (Reply Br. 4). We disagree with
Appellants' contention and find that there would be no unpredictable
additional costs, savings, or complexity with having a sensor in each disk
drive. Furthermore, Appellants' Specification does not disclose any
additional costs or complexity nor have Appellants presented any extrinsic
evidence thereof. Therefore, Appellants' argument is not persuasive of error
in the Examiner’s showing of obviousness.
With respect to Appellants' argument concerning "without tearing off
part of the Gross puzzle piece to make it fit with Brant" (Reply Brief 5; see
generally App. Br. 15), we disagree with Appellants’ contention, and we
find that one of the principles set forth in KSR is that a person of ordinary
skill often will be able to fit the teachings of multiple patents together like
pieces of a puzzle. (“Common sense teaches, however, that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.”) KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007).
Each part of a patent can be deemed to be a collection of separate and
distinct teachings in addition to the overall combination of the collection of
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teachings. We find both to be variations of different puzzles and pieces
therein depending upon the relative context with which the person of
ordinary skill in the art appreciates them. Appellants contend that there are
cost and manufacturing complexity factors that may be part of the puzzle
pieces that may prevent the combination of teachings and the Examiner has
not considered these factors (App. Br. 15), but Appellants have not
submitted any extrinsic evidence to support this contention. Therefore, we
disagree with Appellants that the Examiner is "tearing off" part of a puzzle
piece. Therefore, Appellants' argument is not persuasive of error in the
Examiner's showing of obviousness of independent claim 21. Since
Appellants have not set forth separate arguments for patentability of claims
22 and 25-29, we group those claims as falling with independent claim 21.
(App. Br. 8)
With respect to dependent claims 23 and 24, we adopt the Examiner's
arguments as our own with respect to these claims. Therefore, Appellants
have not set forth an error in the Examiner's showing of obviousness.
With respect to independent claims 30 and 37, Appellants merely
contend that Radomski in combination with the teachings of Gross and Brant
"actually teach away from the claimed invention by disclosing external
microphones." (App. Br. 17). We disagree with Appellants as discussed
above and addressed by the Examiner in the Answer in the responsive
arguments. (See generally, App. Br. 22-28). Therefore, Appellants'
argument is not persuasive of error in the Examiner's showing of
obviousness of independent claims 30 and 37. Since Appellants have not set
forth separate arguments for patentability of claims 31-33, 35, 39, and 40,
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we group those claims as falling with independent claims 30 and 37. (App.
Br. 8).
With respect to dependent claims 36 and 38, we adopt the Examiner's
arguments as our own with respect to these claims. Therefore, Appellants
have not set forth an error in the Examiner's showing of obviousness.
With regards to claim 34, Appellants contend that the Examiner's
reliance upon the Board's decision in Appeal Number 2007-3033 (BPAI
April 29, 2008 ) conflicts with the Examiner's admission in the non-final
office action at page 20. (Reply Br. 5). We find Appellants' argument to be
without merit since Appellants merely provide a portion of the Examiner's
finding and line of reasoning in the argument. The Examiner relies upon the
teachings of Gross concerning the various well known mechanical failures
that developed over time due to the wear in spindle bearing as one of the
most common disk drive failures. Therefore, it would have been readily
apparent to those skilled in the art that an acoustic model representing a
defective spindle motor profile would have been one of the most desirable
failures to prevent. Since dependent claim 34 sets forth the profiles in the
alternative, we find the Examiner's initial showing to be reasonable and
fairly suggested by the teachings of Gross. If Appellants desire to argue that
the totality of the references should be relied upon by the Examiner in one
argument, Appellants cannot then dissect out the prior art teachings of the
references in another argument. Here, the prior art teachings of the Gross
reference clearly show spindle bearing as one of the most common disk
drive failures. Therefore, Appellants have not shown error in the Examiner's
showing of obviousness, and we will sustain the rejection of dependent
claim 34.
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CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner's showing of obviousness of claims 21-40.

VII. ORDER
We affirm the obviousness rejections of claims 21-40.

AFFIRMED

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