Ex Parte Nicholson et al

Patent Trial and Appeal Board

Aug 17, 2016

12789751 (P.T.A.B. Aug. 17, 2016)

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.
12/789,751 05/28/2010 John W. Nicholson RPS920100027USNP(710.138) 9213
58127 7590 08/17/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
SNIEZEK, ANDREW L
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
08/17/2016 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 JOHN W. NICHOLSON, JEFFREY R. HOBBET, and
PHILIP J. JAKES
____________________

Appeal 2015-004501
Application 12/789,751
Technology Center 2600
____________________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and JUSTIN T.
ARBES, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
Final Rejection of claims 1–6, 8–14, and 16–21.2 We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision makes reference to Appellants’ Reply Brief (“Reply Br.,”
filed March 9, 2015) and Appeal Brief (“App. Br.,” filed October 20, 2014),
and the Examiner’s Answer (“Ans.,” mailed January 9, 2015) and Final
Office Action (“Final Act.,” mailed May 20, 2014).
2 Claims 7 and 15 were canceled previously.
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INVENTION
Appellants’ invention is directed to preventing damage to hard drives
due to sudden impact. Spec. ¶¶ 1–2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. An apparatus comprising:
one or more processors;
a display which displays output generated by the one or
more processors; and
a hard disk drive assembly operatively connected to the
one or more processors, the hard disk drive assembly comprising:
one or more platters;
one or more heads configured to read and write data
from the one or more platters; and
a drive controller configured to control said hard
disk drive assembly;
wherein, responsive to an indicator including a temporary
non-use indicator, the one or more heads configured to be placed
in a persist unload heads state in which the one or more heads:
are parked as a baseline setting but are permitted to
float over the one or more platters for completing requests
without transitioning to a suspend mode;
the completing requests including performing one
or more limited reading and limited writing of buffered
requests responsive to one or more predetermined
conditions without transitioning to a suspend mode;
wherein, responsive to an indicator of impending impact,
unload heads commands are issued to place the one or more
heads in a parked state.
REFERENCES
Asoh et al. US 7,480,813 B2 Jan. 20, 2009
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Karakas US 7,751,142 B2 July 6, 20103

REJECTIONS4
Claims 1–5, 8–13, and 16–21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Asoh. Final Act. 3–6; Ans. 2–5.
Claim 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Asoh and Karakas. Final Act. 7; Ans. 6.

ISSUES
The issue of whether the Examiner erred in rejecting claims 1‒5, 8–
13, and 16–21 under 35 U.S.C. § 102(b) turns on whether Asoh discloses
(a) a “persist unload heads state,” and (b) heads within a hard disk drive
assembly that are permitted to float over a drive platter “without
transitioning to a suspend mode,” as required in independent claims 1, 9, 16,
and 19.
The issue of whether the Examiner erred in rejecting claims 6 and 14
under 35 U.S.C. § 103(a) turns on whether the Examiner improperly
combined Asoh and Karakas.

ANALYSIS
Claims 1–5, 8–13, and 16–21 rejected under 35 U.S.C. § 102(b) as
anticipated by Asoh
Independent claim 1 recites “one or more heads . . . configured to be
placed in a persist unload heads state.” Independent claims 9, 16, and 19

3 Application filed March 22, 2006.
4 The rejection of claims 1, 9, 16, and 19 under 35 U.S.C. § 112, second
paragraph, was withdrawn. See Final Act. 2; Ans. 7.
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recite similar limitations. Appellants argue that Asoh fails to teach this
limitation. App. Br. 14–15; Reply 15–16. Appellants’ argument only
consists of replicating paragraph 245 of the Specification and summarily
asserting that Asoh fails to disclose “a persist unload heads state.”
Appellants do not explain why the cited portion of the Specification shows
that the Examiner was incorrect in finding the limitation disclosed by Asoh.
App. Br. 14–15; Reply 15–16 (citing Spec. ¶ 24; Asoh 6:61–7:14). We do
not consider Appellants’ general statements to constitute an argument of
patentability because Appellants’ statements are tantamount to a recitation of
the claim language and a naked assertion that the claim language is not
found in the prior art. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Additionally, Appellants’ argument is unpersuasive because it fails to
address the specific findings of the Examiner based upon what occurs in the
Asoh notebook PC hard disk drive before the transition to suspend mode.
The Examiner finds Asoh discloses a hard disk drive assembly containing
one or more platters and one or more heads to read/write to the platters.
Final Act. 3 (citing Asoh Fig. 4). The Examiner further finds that in Asoh’s
transfer mode, the heads are placed in a persist unload state that temporarily

5 The cited paragraph in Appellants’ Specification is misidentified as
paragraph 29.
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parks the heads and unloads them, while remaining capable of completing
read/write requests. Id. (citing Asoh 7:24–26, 9:24–30, 9:64–10:5). The
Examiner then finds that the hard disk drive assembly transitions from
transfer mode to suspend mode when a timer limiting how long the drive can
be in transfer mode expires. See Ans. 7 (citing Asoh 10:4–5).
In response to the Examiner’s findings in the Answer, Appellants also
argue that Asoh fails to disclose that the head(s) “are parked as a baseline
setting but are permitted to float over the one or more platters for completing
requests without transitioning to a suspend mode.” Reply Br. 15–16
(emphasis in original). Asoh’s hard disk drive has its heads clear read/write
requests and then shifts the drive’s operating mode to suspend. Asoh 9:66–
10:5. As such, the heads do not transition to a suspend mode when clearing
read/write requests. Thus, we do not find Appellants’ argument persuasive
because the limitations required by the persist unload head state, including
parking the head(s) over the platter(s) so that they may complete requests,
are met prior to transitioning to a suspend mode. See Ans. 7–8; Asoh 9:66–
10:5.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 9, 16, and 19. Appellants argue that dependent claims 2–5, 8, 10–
13, 17, 18, 20, and 21 are patentable for the same reasons as their respective
independent claims. See App. Br. 13. As such, we sustain the Examiner’s
rejection of these claims for the reasons discussed above in our analysis of
claims 1, 9, 16, and 19.
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Claims 6 and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over
Asoh and Karakas
Appellants argue that the Examiner improperly combined Asoh and
Karakas. See App. Br. 15–16. Specifically, Appellants argue that one of
ordinary skill in the art would not have been motivated to combine the
teachings of Asoh and Karakas, and the Examiner fails to provide an
explanation for the combination. Id. We disagree.
The Examiner finds Asoh teaches a notebook PC containing heads
that are placed into a persist unload heads state without transitioning to a
suspend mode, and teaches the use of sensors to prevent data from being
destroyed. See Final Act. 3; Ans. 2, 7–8. The Examiner further finds that
Karakas teaches that it was known in the disk drive art to unload/park heads
to prevent imminent impacts to the hard disk drive, such as those detected
using accelerometers. See Final Act. 7 (citing Karakas 1:39–56); Ans. 6–9.
The Examiner then concludes that it would have been obvious to one of
ordinary skill in the art to look to similar references (such as Karakas)
disclosing sensors used to prevent data from being destroyed, and to
combine Asoh’s hard disk drive assembly with Karakas’ teaching of the use
of an accelerometer “in an effort to find a way to implement a sensed
arrangement for preventing data from being destroyed.” Ans. 8–9. As such,
the Examiner provides an articulated reasoning with some rational
underpinning to support the conclusion of obviousness, and Appellants have
not explained sufficiently why the Examiner’s analysis is incorrect. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
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Accordingly, we sustain the Examiner’s rejection of dependent claims
6 and 14.
CONCLUSION
The Examiner did not err in rejecting claims 1–5, 8–13, and 16–21
under 35 U.S.C. § 102(b) as being anticipated by Asoh.
The Examiner did not err in rejecting claims 6 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Asoh and Karakas.
DECISION
To summarize, the rejection of claims 1–6, 8–14, and 16–21 is
affirmed.
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).

AFFIRMED