Ex Parte PEREZ et alDownload PDFPatent Trial and Appeal BoardMay 19, 201612464748 (P.T.A.B. May. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/464,748 05/12/2009 49080 7590 05/23/2016 DALE F REGELMAN QUARLES & BRADY, LLP-Attn: IP Docket ONE SOUTH CHURCH A VENUE, STE. 1700 TUCSON, AZ 85701-1621 FIRST NAMED INVENTOR MIGUEL ANGEL PEREZ 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. TUC920080109US 1 2195 EXAMINER BANSAL, GURTEJ ART UNIT PAPER NUMBER 2139 NOTIFICATION DATE DELIVERY MODE 05/23/2016 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): reena.mendez@quarles.com pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIGUEL ANGEL PEREZ, DAVID CHARLES REED, and MAX DOUGLAS SMITH Appeal2014-007317 Application 12/464,748 Technology Center 2100 Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. Dissenting Opinion filed by MORGAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2014-007317 Application 12/464,748 STATEMENT OF THE CASE Appellants' invention is directed to an apparatus and method for minimizing data storage media fragmentation. (Spec i-f 1 ). Claim 1, reproduced below with the disputed limitations in italics, is illustrative of the claimed subject matter: 1. A method for minimizing data storage media fragmentation, compnsmg: providing a host computer comprising a storage management module and external to and in communication with a data storage library comprising (N) data storage media, wherein (N) is greater than or equal to 1; determining, for each value of (i), an actual fragmentation index for an (i)th data storage medium, wherein (i) is greater than or equal to 1 and less than or equal to (N); receiving a data set from a host computer in communication with said data storage library; establishing by an owner of said data set a data storage medium threshold fragmentation index for said data set; identifying by said storage management module a data storage medium having an actual fragmentation index that falls within a selected fragmentation index range; writing by said storage management module the data set to said identified data storage medium. 2 Appeal2014-007317 Application 12/464,748 REJECTIONS 1 Claims 1-3, 8-10, 15, and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Rothman et al. (US 2005/0228963 Al; published Oct. 13, 2005). Claims 4, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Rothman and Hu (US 2006/0095707 Al; published May 4, 2006). Claims 5-7, 12-14, and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Rothman, Hu, and Lui et al. (US 6,487,569B1; issued Nov. 26, 2002). ANALYSIS The Examiner finds the objects described in Rothman disclose the claimed data storage media as recited in independent claim 1. (Final Act. 3, citing Rothman i-f 9). In support, the Examiner finds Appellants do not clearly define in the Specification the meaning of a data storage medium. (Ans. 2). Therefore, giving the term its broadest reasonable interpretation in light of the Specification, the Examiner finds a data storage medium can encompass both non-transitory and transitory subject matter. (Ans. 3; Final Act. 8). According to the Examiner, Rothman describes an object as a file and further describes in paragraph 12 that an object may store bytes. (Final 1 In the Final Rejection dated July 1, 2013, claims 1-20 were rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. (Final Act. 2). Although the Examiner did not withdraw these rejections in the Answer dated April 17, 2014 (Ans. 2), in an Advisory Action dated March 27, 2014, the Examiner indicated that these rejections were withdrawn. (Adv. Act. 2). 3 Appeal2014-007317 Application 12/464,748 Act. 8, citing Rothman iii! 8, 12). The Examiner concludes an object which stores bytes of data is reasonably construed as a data storage medium. (Id.). Further, the Examiner finds the data storage medium could reasonably be interpreted as a file. (Ans. 3). Appellants contend Rothman sets a "fragmentation index" for an object rather than a storage medium. (App. Br. 9). According to Appellants, one of ordinary skill in the art would not interpret Rothman's object to be a data storage medium. (App. Br. 10). Specifically, Appellants argue Rothman describes "the object in the storage medium" and "objects in storage," which precludes any notion or argument that such objects can themselves be storage. (Id.; Reply Br. 3) We are persuaded by Appellants' arguments. Rothman describes an object as a "file, program, directory, folder or other data structures known in the art." (Rothman if 9, emphasis added). We are persuaded by Appellants' arguments that the Examiner's interpretation of a computer file as a data storage medium is inconsistent with Appellants' Specification. (Reply Br. 4--5, citing Spec. if 20). All of the embodiments of data storage media provided by Appellants in the Specification are tangible data storage mediums, rather than data structures, such as a file. (Spec. if 20, describing "magnetic data storage medium," "optical data storage medium," "electronic data storage medium," and "holographic data storage medium"). Moreover, throughout the specification, Rothman describes that the object is stored in the storage medium or is in storage. (See e.g., Rothman, Title, Abstract, iii! 1, 9, 11, 12, 13, 15, 18). Rothman also describes a file as being stored on a disk. (Rothman if 2). In the Answer, the Examiner acknowledges that the object is stored. (Ans. 3). The Examiner states "a 4 Appeal2014-007317 Application 12/464,748 person of ordinary skill in the art would surely recognize the part of the disk drive used to store the 'object' would reasonably be construed to be a data storage medium since it is a medium used to store the data of the object." (Ans. 3). However, the Examiner then finds that the data storage media can also be the object itself, a file, and that object is what the Examiner contends discloses Appellants' claimed data storage media. (Ans. 3). We agree with Appellants that we cannot see how the data storage media as claimed can be both the hard disk and the object stored on the hard disk. (See Reply 3; see Rothman ,-r 1 ("When an object, such as a file, program, folder, directory, etc., is initially written to a storage medium, such as a hard disk drive ... ")). We also disagree with the Examiner that paragraph 12 of Rothman describes that an object may store bytes. (See Final Act. 8). Paragraph 12 states "[ t ]he amounts of fragmentation may comprise a percentage of the object that is not stored at continuous locations," indicating that the object itself is stored. Paragraph 12 also refers to the object being "comprised of ... bytes," indicating the size of the object stored. (See also Rothman ,-r 1 ("When an object, such as a file, program, folder, directory, etc., is initially written to a storage medium, such as a hard disk drive, the data is written to sequential blocks or bytes.")). Accordingly, we agree with Appellants that the Examiner erred in finding Rothman's objects disclose the claimed data storage media. Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. For the foregoing reasons, we do not sustain the Examiner's 35 U.S.C. § 102(b) rejection of independent claim 1. For the same reasons, we also do not sustain the Examiner's 35 U.S.C. § 102(b) rejection of independent 5 Appeal2014-007317 Application 12/464,748 claims 15 and 18, which recite similar limitations, and dependent claims 2, 3, 8-10, and 16, which depend from claims 1 and 15, and the Examiner's 35 U.S.C. § 103(a) rejections of dependent claims 4--7, 11-14, and 17-20. DECISION For the above reasons, the Examiner's rejection of claims 1-20 is reversed. REVERSED 6 Appeal2014-007317 Application 12/464,748 MORGAN, Administrative Patent Judge, DISSENTING I write separately because I would affirm the Examiner's rejections of the claims. The majority correctly finds that an abstract data structure, such as a file disembodied from a storage medium, does not disclose the claimed data storage media. However, the Examiner does not rely on a file in the abstract---on information alone-to disclose this recitation. Rather, the Examiner correctly relies on "the part of the disk drive used to store the 'object"' (Ans. 3) as disclosing a data storage media. Rothman explicitly discloses an object in storage medium 14. Rothman i-f 8. Thus, I agree with the Examiner that the part of the storage medium on which a file is stored is itself a storage medium, given a broad but reasonable interpretation of the claimed storage medium. See Ans. 3; Spec. i-f 20. Similarly, I agree with the Examiner that a fragmentation index for an object in a storage medium discloses a fragmentation index for the portion of the storage medium on which the object is stored, thus disclosing afragmentation index for a storage medium in the manner claimed. See Final Act. 4 (citing, e.g., Rothman i-f 11, Fig. 2); Ans. 3. Therefore, I would affirm the Examiner's 35 U.S.C. § 102(b) rejection of independent claims 1, 15, and 18 and dependent claims 2, 3, 8-10, and 16, which depend from claims 1 and 15. For the same reasons, I would affirm the Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 4--7, 11-14, and 17-20. 7 Copy with citationCopy as parenthetical citation