Ex Parte Perez et al

Patent Trial and Appeal Board

May 19, 2016

12464748 (P.T.A.B. May. 19, 2016)

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.
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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).
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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
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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
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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
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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.
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