Ex Parte Nemazie et al

Board of Patent Appeals and Interferences

Jan 11, 2002

08434457 (B.P.A.I. Jan. 11, 2002)

1 Application for patent filed May 2, 1995.
1
The opinion in support of the decision being entered today
was not written for publication and not binding precedent of the
Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SIAMACK NEMAZIE and JOHN SCHADEGG
_____________
Appeal No. 99-0243
Application 08/434,4571
______________
ON BRIEF
_______________
Before FLEMING, KRASS and DIXON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 63, 64 and 67-74, all of the claims pending in the present
application. Claims 1-62 have been canceled. Claims 65, 66 and
75-76 have been withdrawn from consideration by the Examiner as
directed to a nonelected invention.
Appeal No. 1999-0243
Application 08/434,457
2
The invention relates to a hard disk drive controller with
defect management for automatic track processing (specification,
page 15, lines 17-19). Defect information for tracks are written
into the header of every sector disk sector (specification, page
15, lines 17-19; figure 13). Physical sector number information
is provided by the storage system and not stored within any of
the sectors. A logical sector number within a track is
determined by taking a physical sector number provided by the
system, reading the defect list from a sector of a track, and
generating a corresponding logical sector number corresponding to
the physical sector number (specification, page 20, line 31 to
page 23, line 28).
Independent claim 63 is reproduced as follows:
63. In a data storage system comprising multiple media
surfaces, each surface having a plurality of concentric tracks
divided into a plurality of sectors each having a sequential
physical sector number representing the number of the sector on a
respective one of the plurality of concentric tracks, a plurality
of cylinders each being formed from a given location of tracks on
different media surfaces, physical sector number information
provided by the storage system and not stored within any of the
plurality of sectors, each sector comprising:
an identifier portion including a head number and a
defective sector list of sector numbers for all sectors on a
respective one of the plurality of concentric tracks which are to
be skipped; and
a data portion for storing data,
Appeal No. 1999-0243
Application 08/434,457
2 The Brief was received May 5, 1997.
3 The Examiner's Answer was mailed July 17, 1997.
3
the data storage system further comprising:
means for receiving a physical sector number from the data
storage system and for reading the defect list from a sector of a
track and for outputting a logical sector number corresponding to
the physical sector number.
The Examiner relies on the following references:
Greenberg et al. (Greenberg) 4,656,532 Apr. 7, 1987

Hikita JP-58-219658 Dec. 21, 1983
Claims 63, 64 and 67-74 stand rejected under 35 U.S.C. § 103
as being unpatentable over Greenberg in view of Hikita.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief2 and the Examiner's
Answer3 for the respective details thereof.
OPINION
We will not sustain the rejections of claims 63, 64 and
67-74 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It
is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such teachings
Appeal No. 1999-0243
Application 08/434,457
4 Brief, page 10.
5 Pages 3-4.
4
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). The Federal Circuit states that “[t]he mere
fact that the prior art may be modified in the manner suggested
by Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification.” In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984).
Appellants argue that neither Greenberg nor Hikita teaches
or suggests generating logical sectors from physical sectors, as
set forth in each of the pending independent claims on appeal.
Appellants point out that Hikita teaches a technique for
generating target sector numbers and not for locating actual
sector numbers. In addition, Appellants assert4 that Hikita is
useful in the operation of multiple hard drives of differing
formats and is not for translating sectors within a track or
segment to compensate for defective sectors.
In the answer5, the Examiner admits that Greenberg does not
translate a physical sector number into a logical sector number,
Appeal No. 1999-0243
Application 08/434,457
5
but teaches providing both the cylinder information and the
actual physical sector number within the sector. The Examiner
then points to Hikita's disclosure of a circuit 15 for converting
a physical sector number into a logical sector number, and
asserts that it would have been obvious to one of ordinary skill
in this art to have applied Hikita's teaching to Greenberg in
order to enable a computer to access a disk solely on the basis
of logical addresses.
In response to Appellants' argument that neither Greenberg
nor Hikita teaches or suggests generating logical sectors from
physical sectors, the Examiner asserts that Hikita clearly
teaches physical to logic sector conversion, and element 15 of
Hikita is marked as a physical-logical sector number conversion
circuit.
"Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor." Para-
Ordnance, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239, citing W. L.
Gore & Assocs., 721 F.2d 1551, 1553, 220 USPQ 311, 312-13. In
addition, our reviewing court requires the PTO to make specific
findings on a suggestion to combine prior art references. In re
Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d 1614, 1617-19 (Fed.
Appeal No. 1999-0243
Application 08/434,457
6
Cir. 1999).
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8
(CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). Furthermore, our reviewing court states in In re
Piasecki, 745 F.2d at 1472, 223 USPQ at 788 (Fed. Cir. 1984) the
following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted
as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103". Citing In re Warner, 379 F.2d 1011,
1020, 154 USPQ 173, 177 (CCPA 1967).
Turning first to Appellants' claim 63, we note that lines
7-9 of the preamble of this claim recite, "physical sector number
information provided by the storage system and not stored within
any of the plurality of sectors". Lines 1-4 of the first
Appeal No. 1999-0243
Application 08/434,457
6 See, inter alia, figures 1 and 2, and column 3.
7
subparagraph of this claim recite "a defective sector list of
sector numbers for all sectors on a respective one of the
plurality of concentric tracks which are to be skipped". The
final subparagraph of this claim recites "means for receiving a
physical sector number from the data storage system and for
reading the defect list from a sector of a track and for
outputting a logical sector number corresponding to the physical
sector number".
As regards the preamble recitation of "physical sector
number information provided by the storage system and not stored
within any of the plurality of sectors", we note that Greenberg
does not store the physical number information in the "storage
system" but provides the information in sectors on the tracks6.
Although Hikita shows physical sectors disk attributes stored in
register 16, it does not provide for "a defective sector list of
sector numbers for all sectors on a respective one of the
plurality of concentric tracks which are to be skipped" as
recited in first subparagraph of claim 63.
We find, after a careful review of the record, no teaching
or suggestion why one of ordinary skill in this art with these
Appeal No. 1999-0243
Application 08/434,457
7 Answer, page 4.
8
references before him would have been motivated to modify
Greenberg's sector identification method by using a physical
sector disk attribute register as shown by Hikita, while using
the defective sector list on the sectors of the disk as disclosed
by Greenberg. These are two distinct modes of information
storage, and without Appellants' disclosure as a guide, it is not
apparent why one skilled in this art would modify the teachings
of Greenberg by changing only the physical sector number
information storage means and not the storage means of other
data. Similarly, it is also not apparent why one skilled in the
art who did adopt physical sector number information storage
means outside of the disk per se, would not adopt external
storage as taught by Hikita to the defect list, and place both
types of information on the same storage media.
In addition, the sole motivating factor presented by the
Examiner7 for combining the references is to enable a computer to
access a disk solely on the basis of logical addresses. This
motivation is contrary to Greenberg's approach which uses
cylinder data and physical sector numbers within the sector for
the derivations of logical sectors on physical sectors.
Appeal No. 1999-0243
Application 08/434,457
9
In regard to independent claims 64 and 67, we note that
these claims contain substantially the same dispositive
limitations discussed above in regard to independent claim 63.
Since the Examiner's rejection is the same for these claims, the
rejection of these claims falls with the rejection of claim 63.
Therefore, we will not sustain the rejections of claims 63,
64 and 67-74 under 35 U.S.C. § 103 as being unpatentable over
Greenberg in view of Hikita.
Accordingly, the Examiner's decision is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1999-0243
Application 08/434,457
10
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