Ex Parte Starr et al

Patent Trial and Appeal Board

Oct 17, 2013

11626745 (P.T.A.B. Oct. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/626,745 01/24/2007 Matthew Thomas Starr 3023736 US03 1750
67070 7590 10/18/2013
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
EDWARDS, ANTHONY Q
ART UNIT PAPER NUMBER
2846
MAIL DATE DELIVERY MODE
10/18/2013 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, WALTER WONG,
MICHEAL EDWARD FIGERO, RONALD GREGORY DUREN,
MATTHEW JOHN NINESLING, JOSHUA DANIEL CARTER, and
SCOTT EDWARD BACOM
____________

Appeal 2011-003819
Application 11/626,745
Technology Center 2800
____________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003819
Application 11/626,745

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The Appellants1 seek our review under 35 U.S.C. § 134(a) of a
rejection of claims 12-16 and 18-20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

BACKGROUND
The invention relates to a data storage unit and to a method of
operating it, wherein the storage unit “is useful in storing data to any one of
a plurality of storage elements supported by a drawer-like structure that can
be moved at least partially out of the storage unit without power and
communication interruption to the storage elements.” Specification
(“Spec.”) ¶ 6.
Representative claim 12 is reproduced below:
12. A method of operating a data storage unit wherein
the data storage unit comprises a frame that defines an interior
space, the method comprising the steps of:
receiving a first data package from a host;
storing the first data package on at least one of a plurality
of data storage elements that are supported by a first storage
media support structure, wherein at least one of said plurality of

1 The Appellants identify the real party in interest as “Spectra Logic Corp.”
having an office address in Boulder, Colorado. Appeal Brief filed August 9,
2010 (“Br.”) at 2.
2 The Appellants are not appealing the rejections of claims 1-8, 10, and 11.
Id.
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Application 11/626,745

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storage elements is opposing another of said plurality of
storage elements;
moving the first storage media support structure along a
guided pathway adapted for the first storage media support
structure from a first position that is substantially within the
interior space to a second position that is less than substantially
within the interior space without interrupting the storing.
Br. 17 (Claims App’x; italics added to show the disputed limitation).
The Examiner rejected claims 12-16 and 18-20 as follows:
I. Claims 12-14, 16, and 18-20 under 35 U.S.C. § 102(b) as
anticipated by Carteau;3 and
II. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Carteau in view of Honda.4
Examiner’s Answer entered September 7, 2010 (“Ans.”) 4, 7, 10-12.

DISCUSSION
The Appellants state that claims 12-16 and 18-20 do not stand or fall
together. Br. 9. The Appellants, however, rely on the same argument for all
the claims – i.e., Carteau does not anticipate because Carteau’s disk drives
do not oppose one another as required by claim 12. Id. at 9-13. Therefore,
the sole issue in this appeal is whether the Appellants’ argument
demonstrates reversible error in the Examiner’s finding that Carteau
describes the disputed claim limitation. In re Jung, 637 F.3d 1356, 1365

3 U.S. Patent 6,459,571 B1 issued October 1, 2002.
4 U.S. Patent 7,359,186 B2 issued April 15, 2008.
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Application 11/626,745

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(Fed. Cir. 2011) (explaining that even if the examiner had failed to make a
prima facie case, the Board would not have erred in framing the issue as one
of reversible error because it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections).
Specifically, the Appellants’ argument appears to be based on the
belief that the term “opposing” in claim 12 must be read in the context of
disk drives that oppose one another on either side of a media blade. Br. 10.
In support, the Appellants rely on Figures 2A and 2B and the description in
¶ 6 of the Specification. Id.
We cannot agree with the Appellants. Figure 2A is said to depict “one
commercial configuration of a storage media blade 200 populated with ten
3.5 inch form factor disc drives 206 . . . .” Spec. ¶ 16. Figure 2B is said to
show the back view of the same storage media blade. Id. at ¶ 17. We find
nothing in either of these non-limiting drawings and description in paragraph
16 that would constitute a special definition for the term “opposing.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation. As this court has discussed, this
methodology produces claims with only justifiable breadth.”).
Absent any special definition or other enlightenment that justifies a
narrow construction, we find no error in the Examiner’s construction of the
term “opposing” based on its ordinary usage as concisely set forth in the
Answer. Ans. 11-12. As stated by the Examiner, “the word ‘opposing’ is
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Application 11/626,745

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defined as ‘to place opposite or against something’ (see Merriam-Webster’s
Collegiate Dictionary, 10th Edition, 1993).” Under that definition, we agree
with the Examiner that Carteau’s storage elements 24A in Fig. 7 (located at
R1,C1 and R2,C1in the Examiner’s annotated version at page 5 of the
Answer) are “opposing” one another, as required by claim 12.
For these reasons, we uphold the Examiner’s rejections.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 12-14,
16, and 18-20 as anticipated by Carteau is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claim 15 as
unpatentable over Carteau in view of Honda 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).
AFFIRMED

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