Ex Parte MillerDownload PDFPatent Trial and Appeal BoardAug 31, 201814032382 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/032,382 09/20/2013 73462 7590 09/05/2018 Hall Estill Attorneys at Law (Seagate Technology LLC) 100 North Broadway, Suite 2900 Oklahoma City, OK 73102-8820 FIRST NAMED INVENTOR Michael Howard Miller 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. STL17363 4471 EXAMINER BARTELS, CHRISTOPHER A ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 09/05/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): danderson@hallestill.com okcipdocketing@hallestill.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL HOWARD MILLER1 Appeal2018-002213 Application 14/032,382 Technology Center 2100 Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and MICHAEL J. ENGLE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Seagate Technology LLC. See App. Br. 1. Appeal2018-002213 Application 14/032,382 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 2 THE INVENTION The claims are directed to a data storage system with a pre-boot interface. Spec., Title. Claim 9, reproduced below with a dispositive limitation emphasized in italics, is representative of the claimed subject matter3: 9. A method comprising: connecting independent first and second interfaces of a data storage device respectively with a host controller and an auxiliary controller; and providing pre-boot system information to the data storage device from the auxiliary controller prior to a synchronized connection between the data storage device and the host controller. 2 We refer to the Specification, filed Sept. 20, 2013("Spec."); the Final Office Action, mailed Dec. 15, 2016 ("Final Act."); Appeal Brief, filed June 21, 2017 ("App. Br."); the Examiner's Answer, mailed Oct. 20, 2017 ("Ans."); and the Reply Brief filed Dec. 20, 2017 ("Reply Br."). 3 Although Appellant asserts "[t]he claims do not stand or fall together, but are argued under separate subheadings as set forth [in the Appeal Brief]" (App. Br. 4), Appellant selects a single independent claim as representative (App. Br. 5) and substantively argues only those limitations (App. Br. 5-8; Reply Br. 2-3). Furthermore, although both Appellant and the Examiner refer to the argued representative independent claim as "claim 1 O" (App. Br. 2, 5; Ans. 3), claim 10 is dependent from independent claim 9 which recites all of the argued limitations. Accordingly, consistent with Appellant's arguments, we select independent claim 9 as representative. 2 Appeal2018-002213 Application 14/032,382 REFERENCE The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Lambert et al. US 2007/0186086 Al ("Lambert") REJECTION Aug.9,2007 The Examiner rejected claims 1-20 under 35 U.S.C. § I02(a)(l) as being anticipated by Lambert. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred in rejecting independent claims 1, 9, and 16 under 35 U.S.C. § I02(a)(l). We agree with Appellant's arguments as to this rejection of the claims. The Examiner finds Lambert's BIOS 1 sector 388a-388n contained in memory ROM 3 84 discloses the pre-boot code of the independent claims. Ans. 3. Appellant disagrees (App. Br. 7), directing attention to the definition of pre-boot code provided in the Specification as "'[information] used by a data storage device prior to booting operations such as the loading of an operating system and network communication protocol"' (Reply Br. 2 (citing Spec. 7, 11. 13-21 4)). Appellant argues the explicitly provided 4 Spec. 7, 11. 13-21 recites: It is to be understood that throughout the present disclosure the term "pre-boot information" means information that is used by a system component without initializing booting operations. For example, pre-boot information like clock values, encryption keys, and network address information can be considered pre- 3 Appeal2018-002213 Application 14/032,382 definition for the pre-boot information is controlling. Reply Br. 2 ( citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en bane); MPEP § 2111 ). According to Appellant, "the ordinary artisan would interpret the vague scope and use of 'firmware images' in Lambert as insufficient to disclose the pre-boot information sent prior to a synchronized connection with a host controller 'arranged in the same way as in the claim."' Reply Br. 3 (citing Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987); In re Bond, 910 F.2d 831 (Fed. Cir. 1990); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); MPEP § 2131). We agree with Appellant. During examination, claim terms are given their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, when the Specification of a patent contains a "special definition given to a claim term by the patentee," that definition controls interpretation of the term as it is used in the claim. Phillips, 415 F.3d at 1316. Herein, the term "pre-boot information" has been explicitly defined by Appellant. However, the Examiner fails to provide sufficient evidence or technical reasoning explaining why, contrary to Appellant's assertion, Lambert's BIOS data discloses pre-boot information, i.e., "information that is used by a system component without initializing booting operations." Spec. 7, 11. 14-- 15. For example, we are unaware of any evidence that Lambert's BIOS data boot information because they are used by a data storage device prior to booting operations such as the loading of an operating system and network communication protocol. As such, the pre- boot system information can be executed, stored, and delayed by a data storage device to initialize device function prior to connection with a network that enables full device operation. 4 Appeal2018-002213 Application 14/032,382 is used without booting or that such a feature is otherwise in inherent property of BIOS data. Accordingly, on the record before us, we do not sustain the rejection of independent claim 9 or, for the same reason, the rejection of independent claims 1 and 16 which include the same pre-boot information limitation. Furthermore, we do not sustain the rejection of dependent claims 2-8, 10-15, and 17-20 which stand with their respective base claims. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant's other arguments. DECISION We reverse the Examiner's decision to reject claims 1-20 under 35 U.S.C. § 102(a)(l). REVERSED 5 Copy with citationCopy as parenthetical citation