Ex Parte Starr et alDownload PDFPatent Trial and Appeal BoardJan 30, 201512058228 (P.T.A.B. Jan. 30, 2015) Copy Citation 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. 12/058,228 03/28/2008 Matthew Thomas Starr 3023745 US04 2732 67070 7590 01/30/2015 Spectra Logic Corporation 6285 Lookout Road Boulder, CO 80301 EXAMINER RIGOL, YAIMA ART UNIT PAPER NUMBER 2135 MAIL DATE DELIVERY MODE 01/30/2015 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 MATTHEW THOMAS STARR, RICHARD DOUGLAS RECTOR, MARK LORIN LANTRY, JOHN DAVID BARR, and NATHAN CHRISTOPHER THOMPSON Appeal 2012-00102111 Application 12/058,228 Technology Center 2100 ____________________ Before JEAN R. HOMERE, KEN B. BARRETT, and CATHERINE SHIANG, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Spectra Logic Corp. App. Br. 2. Appeal 2012-010211 Application 12/058,228 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a method and system for allowing a host computer (102) to store and retrieve data from a mobile media storage system (114, 116) coupled thereto via a communications interface (107) intended for a tape library. Spec. ¶ 2, Fig. 1. In particular, each mobile storage element (114, 116) is paired with an associated docking station (108, 112), which upon being switched, causes the docked mobile storage to appear to the host computer as a virtual tape library, and to be mapped as such. Spec. ¶ 7. Representative Claim Independent claim 1 is representative. It reads as follows: 1. A storage system comprising: an interface processor device that interfaces between said storage system and a host; a first mobile storage element; a first docking station adapted to receive said first mobile storage element to form a functional pair wherein said functional pair can perform storage operations; a switch system capable of switching said first docking station to appear virtually to said host as a first tape storage system; a map system that is adapted to map said first docking station as either said docking station or said virtual tape Appeal 2012-010211 Application 12/058,228 3 storage system based on the switching state of said switch system. Prior Art Relied Upon Kaneda et al. US 6,490,648 B1 Dec. 3, 2002 Leonhardt et al. US 2004/0177228 A1 Sep. 9, 2004 Kitamura et al. US 2005/0033911 A1 Feb. 10, 2005 Nourmohamadian et al. US 7,747,816 B1 Jun. 29, 2010 Rejections on Appeal The Examiner rejects the claims on appeal as follows: Claims 1-6, 8, 9, 11, 12, and 14-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kitamura and Kaneda. Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kitamura, Kaneda, and Leonhardt. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kitamura, Kaneda, and Nourmohamadian. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 7-40 and the Reply Brief, pages 4-6.2 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed January 9, 2012), the Reply Brief (filed July 12, 2012), and the Answer (mailed March 28, 2012) for the respective details. We have considered in this Decision only those arguments Appellants actually raised in the Brief. Any other arguments Appellants Appeal 2012-010211 Application 12/058,228 4 Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the combination of Kitamura and Kaneda teaches or suggests switching a docking station to cause a mobile storage device paired therewith to appear as a virtual tape library to a host computer coupled thereto, as recited in claim 1? Appellants argue the proffered combination does not teach or suggest the disputed limitations emphasized above. App. Br. 8-13. We have reviewed the Examiner’s rejection in light of Appellants’ arguments. We are unpersuaded by Appellants’ contentions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and as detailed in the Examiner’s Answer in response to Appellants’ Appeal Brief. See Ans. 21-27. However, we highlight and address specific arguments and findings for emphasis as follows. Appellants argue while Kitamura discloses a fixed array of magnetic disks, which can function as virtual tapes, Kitamura does not teach a mobile storage element paired with a docking station capable of being switched to appear as a virtual tape to a host computer. App. Br. 9-11. Likewise, Appellants argue although Kaneda discloses mobile storage elements inserted in slots of a changer, Kaneda’s docked storage element cannot simply be substituted in Kitamura to teach the disputed limitations because the resulting combination would be conjectural at best. Id. at 12-13. could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-010211 Application 12/058,228 5 In response, the Examiner finds Kaneda’s disclosure of a changer having a plurality of cells for holding removable storage media would have complemented Kitamura’s virtual tape library system, thereby allowing to switch the docking station by making it appear as a virtual tape to a host computer. Ans. 23-26. On the record before us, we find no error in the Examiner’s obviousness rejection of claim 1. In particular, we agree with the Examiner that Appellants’ attack of the references individually, as opposed to the combination thereof, is ineffective to show non-obviousness. Ans. 23. Further, Appellants do not challenge the Examiner’s finding that Kaneda’s disclosure of a changer having a plurality of cells for housing storage elements teaches a docking station for receiving a mobile storage element. Rather, Appellants argue Kitamura’s disclosure does not teach the latter limitation. Thus, Appellants’ response fails to squarely rebut the Examiner’s specific finding on this point. As admitted by Appellants, Kitamura teaches fixed storage elements appearing as a virtual tape to a host. App. Br. 13. Therefore, we echo the Examiner’s finding that, upon replacing Kitamura’s fixed storage elements with Kaneda’s docking station-storage element pair, the host computer would have been able to view a virtual tape storage system. Ans. 24. Accordingly, we agree with the Examiner that because Kitamura and Kaneda disclose prior art elements that perform their ordinary functions to predictably result in storage pairs being perceived by a host computer as a virtual tape, the combination is properly supported by sufficient rationale underpinning (reducing cost and time). KSR Int'l Co. v. Appeal 2012-010211 Application 12/058,228 6 Teleflex, Inc., 550 U.S. 398, 416 (2007). For these same reasons, we do not agree with Appellants’ argument that the mere existence of removable drives in Kaneda is not sufficient to justify the combination of the cited references to map a docking station to the virtual tape. App. Br. 12. Hence, we find the cumulative weight and the totality of the evidence on this record reasonably support the Examiner’s finding that the combined disclosures of Kitamura and Kaneda would have taught or suggested the disputed limitations. For at least the aforementioned reasons, we find no error in the Examiner’s conclusion that the combination of Kitamura and Kaneda renders claim 1 unpatentable. Regarding the rejections of claims 2-20, to the extent Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2-20 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Further, to the extent Appellants have raised additional arguments for patentability of these claims (App. Br. 13-40), we find that the Examiner has rebutted in the Answer each and every one of those arguments by a preponderance of the evidence. Answer 27-42. We adopt the Examiner’s findings and underlying reasoning, which we incorporate herein by reference. Because Appellants have failed to persuasively rebut the Examiner’s findings regarding the rejections of claims 2-20, Appellants have failed to show error in the Examiner’s rejections of these claims. Appeal 2012-010211 Application 12/058,228 7 DECISION We affirm the Examiner’s rejections of claims 1-20 as set forth above. 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 lv Copy with citationCopy as parenthetical citation