Ex parte Ogawa et al.

Board of Patent Appeals and Interferences

May 23, 2001

08573582 (B.P.A.I. May. 23, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HITOSHI OGAWA, MOTOYASU TSUNODA, AKIRA KOJIMA,
EISAKU SAIKI and YUKARI KATAYAMA
_____________
Appeal No. 1999-0264
Application No. 08/573,582
______________
HEARD: April 26, 2001
_______________
Before HAIRSTON, FLEMING, and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 5, 6, 10, 13, 14, 23, and 27, the only claims
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Application No. 08/573,582
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pending in the application.
The invention relates to a disk storage device for
recording and reproducing data in accordance with a command
given by a higher ranking device (i.e., a host computer). A
data transfer control circuit transfers data to and from the
higher ranking device (Specification, page 40, lines 16-18).
Identification information is provided on the storage medium
itself (Specification, page 42, lines 23-26), and/or in a
separate memory within the disk storage device (Specification,
page 42, lines 2-3), indicating whether data is permitted to
be, or is inhibited from, being written into a predetermined
area of the storage medium. The disk storage device includes
a microprocessor which collates a state of the data write
command with identification information for a predetermined
sector of the storage medium (Specification, page 42, line 27
to page 43, line 21); and when at least one of the data write
command and the identification information indicates data
write inhibition when a data write operation is requested by
the higher ranking device, the microprocessor informs the
higher ranking device of a write inhibition error. A state
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display device including a counter displays a data write
inhibition error when commanded by the microprocessor
(Specification, page 46, lines 15-22). When a data write
command and a data write inhibition are both provided by the
higher ranking device, data is written into the predetermined
sector, and then the predetermined sector is set to data write
inhibition.
Claim 1 is reproduced as follows:
1. A disk storage device for recording and reproducing data
to and from a storage medium according to a command given by a
higher rank device, comprising:
data transfer control means for transferring data from
said higher rank device to said storage medium and
transferring data from said storage medium to said higher rank
device;
identification means having identification information
present in the disk storage device for determining whether
data is permitted or inhibited to write into a predetermined
recording area of said storage medium;
data transfer command means responsive to a data write
command together with data write inhibition from the higher
rank device for transferring data from the higher rank device
to the storage medium, the data being recorded on the storage
medium, and identification information indicating the data
write inhibition being set in a separate memory in the disk
storage device from the storage medium for data management;
wherein said data transfer command means includes a
microprocessor in the disk storage device, said microprocessor
collates a state of said data write command with said
Appeal No. 1999-0264
Application No. 08/573,582
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identification information possessed by the predetermined
sector of said storage medium, and when at least one of said
data write command and said identification information
indicates data write inhibition and a data write operation is
requested by the higher rank device, said microprocessor
informs said higher rank device of a write inhibition error;
a state display means including a counter connected to
said microprocessor, said microprocessor collates whether the
predetermined sector of said storage medium indicated by said
data write command is already set in said data write
inhibition, and when at least one of said data write command
and said identification information indicates data write
inhibition, said counter on the disk storage device displays a
data write inhibition error of said predetermined sector in
response to an order given by said microprocessor; and
wherein when a data write command comes together with a
data write inhibition from the higher rank device, the
predetermined sector of the storage medium is decided whether
or not the sector is permitted to write data by said
identification means, the data is written into the
predetermined sector when the predetermined sector is a data
write permission, and the predetermined sector is set to a
data write inhibition.
The Examiner relies on the following references:
Purvis 4,549,295 Oct. 22,
1985
Kobayashi et al. (Kobayashi) 4,760,566 Jul.
26, 1988
Director Re 33,328 Sep. 11,
1990 Saldanha et al. (Saldanha) 5,265,230 Nov.
23, 1993
Ottesen et al. (Ottesen) 5,369,533 Nov.
29, 1994
(filed Dec. 30, 1992)
Nakajima et al. (Nakajima) 5,525,902 Jun. 11,
1996
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Application No. 08/573,582
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(filed Oct. 5,
1994)
Claim 1, 6, 10, 13, 14, 23, and 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nakajima, Saldanha,
Kobayashi, Director, and Purvis. Claim 5 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Nakajima,
Saldanha, Kobayashi, Director, Purvis, and Ottesen.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the Briefs and the Answer for
the details thereof.
OPINION
We will not sustain the rejection of claims 1, 5, 6, 10,
13, 14, 23, and 27 under 35 U.S.C. § 103.
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 or suggestions. In re Sernaker, 702 F.2d 989, 995,
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217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
'heart' of the invention." Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
On pages 8-18 of the Brief, Appellants argue that
Nakajima, being directed to a magnetic tape storage device,
solves a different problem than Appellants' invention, and
that Nakajima teaches "identification means" that cannot be
changed during use. Appellants further argue that Saldanha
does not teach a separate memory for storing identification
information, that neither Nakajima nor Saldanha teaches a
microprocessor in the disk storage device, and that Saldanha
teaches a more complicated approach because of his desire to
be interchangeable with both a WORM medium and a magneto-
optical medium. Appellants dispute the Examiner's expressed
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motivation for combining Nakajima and Saldanha with Kobayashi,
to "write data more efficiently," questioning any efficiency
gain from the Kobayashi system and alleging that the
motivation is unrelated to the feature for which the Examiner
relies on Kobayashi (a microprocessor). Finally, Appellants
contest the Examiner's conclusion that one of ordinary skill
in the art would have been motivated to combine the references
to come up with the instant invention.
In the Answer, the Examiner asserts that Nakajima remains
applicable to the instant invention, because numerous
references teach interchangeability between disk and tape
drives. The Examiner further asserts that Kobayashi does
indeed teach more efficient writing of data, because Kobayashi
ensures that the intended data is written into a valid
location.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the
claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
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1523, 1529 (Fed. Cir. 1998).
Appellants' claim 1 recites a disk storage device for
recording and reproducing data to and from a storage medium
according to a command given by a higher rank device,
comprising data transfer control means (between the higher
rank device and the storage medium); identification means
having information present in the disk storage device for
determining write permission or inhibition for a predetermined
recording area of the storage medium; data transfer command
means responsive to a data write command together with data
write inhibition from the higher rank device; identification
information indicating write inhibition being set in a
separate memory within the data storage device; a
microprocessor that collates the state of the data write
command with identification information for a predetermined
sector, and which informs the higher rank device of a write
inhibition error when appropriate; a state display means that
displays a data write inhibition error when so instructed by
the microprocessor; and when a data write command and data
write inhibition are both sent by the higher rank device, the
microprocessor determines whether the predetermined sector is
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write-permitted, and if so, data is written to the
predetermined
sector followed by setting of the predetermined sector to data
write inhibition.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
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). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d at
1551, 1553, 220 USPQ at 311, 312-13.
Upon a careful review of Nakajima, Saldanha, Kobayashi,
Director, and Purvis, we fail to find any persuasive
suggestion or reason to combine the references in the manner
suggested by the Examiner, in order to achieve the claimed
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invention.
We agree with the Examiner that Nakajima teaches a
magnetic tape storage apparatus including data transfer
control means, and identification means for determining
whether data is permitted or inhibited to write into a
predetermined recording area of the storage medium.
Specifically, Nakajima teaches a "System Area" on the tape
medium (column 5, lines 13-22), containing information
relevant to whether data should be written to certain parts of
the tape (i.e., whether that portion of the tape is
functioning properly to hold information). The data contained
in the "System Area" are read into the "Data" portion of
memory 5 when the tape is loaded into the drive unit, and
corresponding data are written from memory 5 back to the tape
when it is unloaded (column 5, lines 18-37). Nakajima does
not teach a disk storage device, nor a microprocessor
contained within a data storage device to determine whether an
area of a disk is write inhibited and report back to the host
computer if a write inhibition error occurs.
We further agree with the Examiner that Saldanha teaches
a disk storage device, including identification information
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stored on the disk to indicate write permission or inhibition
(column 3, line 66 to column 4, line 24). Like Nakajima,
Saldanha does not teach a microprocessor as part of the disk
storage device, interposed between a host computer and the
storage medium.
We further agree with the Examiner that Kobayashi teaches
a microprocessor that informs a higher rank device of a write
inhibition error (column 8, lines 25-62). The microprocessor
of Kobayashi determines whether the recording mode specified
by the higher rank device is "update write" or "initial
write." If initial write is requested and information has
previously been recorded in the data field, the microprocessor
does not write the data, and informs the higher rank device
that the data field has been written to.
We disagree with the Examiner that the person having
ordinary skill in the art would have been motivated to combine
Nakajima, Saldanha, Kobayashi, (Director, and Purvis) to
achieve the claimed invention. The Examiner cites column 4,
lines 63-68 of Saldanha as motivation for the combination.
Here, Saldanha suggests the advantage of "distinguish[ing]
between erased and written sectors on standard MO media," a
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capability that is "useful in a system that performs erased
sector management where sectors are pre-erased during times of
low user activity, thus enabling better write transfer rates."
We presume that the better write transfer rates contemplated
by Saldanha result from the fact that overwriting MO media
takes more time than initial writes to MO media. This
disadvantage is not shared by tape drives, such as disclosed
in Nakajima, or hard disk drives, such as the instant
invention; thus, the person having ordinary skill in the art
would not have been led by Saldanha's expressed improvement in
write transfer rates to make the proposed combination. The
Examiner cites (column 3, lines 7-9) of Kobayashi as further
motivation to make the proposed combination: Kobayashi
discloses here "a write operation control method capable of
writing information efficiently in a rotating type recording
medium." Assuming arguendo that Kobayashi's use of a
microprocessor to interrogate whether an incoming write
instruction is an initial write or an update write, and to
inhibit data recording when an initial write is requested in a
data field that has previously been written, promotes the
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efficient writing of information on a "rotating type recording
medium" such as a hard disk, the Examiner has not provided
evidence that would have suggested to the person having
ordinary skill in the art the desirability of modifying
Nakajima's tape drive system to include the microprocessor
taught by Kobayashi within the drive. Kobayashi does not
teach a system that fully inhibits writing to a given sector
of the drive: Kobayashi teaches that "when information having
been recorded in the initially specified block is determined
to be useless, the high-ranking apparatus can again issue a
write instruction in such a manner that the high-ranking
apparatus specifies the initially specified block once more
but now specifying the update write mode" (column 9, lines 1-
7). The microprocessor of Kobayashi thus does not inhibit
writing, but acts only to require the
"proper" mode from the higher rank device before permitting
writing to the desired sector.
Director and Purvis are relied upon for indicating when a
protected device is selected, and for a device monitoring
errors from a microprocessor, respectively, and do not supply
the motivation missing from Nakajima, Saldanha, and Kobayashi,
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supra. Ottesen is relied upon to teach switching to permit
manual mode or continuous mode for the purpose of optimizing
recording density, and also does not supply the needed
motivation to make the claimed combination. Because we find
that the evidence submitted by the Examiner would not have
motivated the person having ordinary skill in the art to make
the claimed combination, we will not sustain the rejection of
claim 1, and the remaining claims which all depend therefrom,
under 35 U.S.C. § 103.
In view of the foregoing, the decision of the Examiner
rejecting claims 1, 5, 6, 10, 13, 14, 23, and 27 under 35
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U.S.C. § 103 is reversed.

REVERSED

)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
MRF:lbg
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