Ex Parte Tanaka

Board of Patent Appeals and Interferences

Apr 21, 2004

09042334 (B.P.A.I. Apr. 21, 2004)

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written for publication and is not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RYUTA TANAKA
_____________
Appeal No. 2002-2100
Application No. 09/042,334
______________
ON BRIEF
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Before RUGGIERO, DIXON, and GROSS, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1, 2, 6, 8, 10, and 11. Claims 3-5, 7, 9, and 12 have
been indicated by the Examiner to be allowable subject to being
rewritten in independent form. An amendment filed June 14, 2001
after final rejection was approved for entry by the Examiner.
The claimed invention relates to a system and method for
storing data in which a processor controls an access schedule for
storing redundant data on a redundant data disk. According to
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Application No. 09/042,334
2
the access schedule, the writing of redundant data to the
redundant data disk is performed during an idle period when a
data storing device is not accessed for writing data to or
reading data from the storage device.
Claim 1 is illustrative of the invention and reads as
follows:
1. A system for storing data, comprising:
a data storing device;
a redundant data storing device;
a redundant data controller, having
a redundant data calculating unit which calculates
redundant data of data written to said data storing device,
and
a redundant data storing unit which stores the
redundant data calculated by said redundant data calculating
unit;
a processor controlling an access schedule so that
writing of the redundant data to said redundant data storing
device is performed during a period that said data storing
device is not accessed for the writing of the data to or for
the reading of the data from said data storing device.
The Examiner relies on the following prior art:
Wilkes et al. (Wilkes) 5,720,025 Feb. 17, 1998
(filed Jan. 18, 1996)
Appeal No. 2002-2100
Application No. 09/042,334
1 The Appeal Brief was filed February 14, 2002 (Paper No. 24). In
response to the Examiner’s Answer dated April 9, 2002 (Paper No. 25), a Reply
Brief was filed July 16, 2002 (Paper No. 28), which was acknowledged and
entered by the Examiner as indicated in the communication dated August 14,
2002 (Paper No. 29).
3
Claims 1, 2, 6, 8, 10, and 11, all of the appealed claims,
stand finally rejected under 35 U.S.C. § 102(e) as being
anticipated by Wilkes.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
anticipation relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the Wilkes reference does not fully meet the invention as
set forth in claims 1, 2, 6, 8, 10, and 11. Accordingly, we
reverse.
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Application No. 09/042,334
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Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore &
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to each of the appealed claims 1, 2, 6, 8, 10,
and 11, the Examiner attempts to read the various limitations on
the disclosure of Wilkes. In particular, the Examiner points to
the illustration in Figure 1 of Wilkes along with the
accompanying description beginning at column 6, line 15.
Appellant’s arguments in response assert a failure of Wilkes
to disclose every limitation in the appealed claims as is
required to support a rejection based on anticipation. After
reviewing the Wilkes reference in light of the arguments of
record, we are in general agreement with Appellant’s position as
expressed in the Briefs.
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Application No. 09/042,334
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As emphasized by Appellant at pages 2 and 3 of the Reply
Brief, the language of each of the claims on appeal makes a
distinction between the data storing device and the redundant
data storing unit. As argued by Appellant, the claims require
the calculating and storing of redundant data in a data storing
unit, which data is then transferred to the data storing device
during a period when the data storing device is not scheduled to
be accessed for reads or writes.
Our interpretation of the disclosure of Wilkes coincides
with that of Appellant, i.e., during a deferral period, in which
redundant parity calculation is deferred until disk “idle” is
determined, only “marker” information (identifying areas of
unprotected data on the disk storing device 24), not calculated
redundant data as claimed, is stored in data storing unit 13.
During Wilkes’ disk “idle” period, redundant parity data is
calculated and transferred directly to data storing device 24
while the “marker” information in data storing unit 13 is cleared
(Wilkes, column 8, lines 49-57).
We recognize that the Examiner, apparently recognizing that
in Wilkes’ described invention there is no explicit disclosure of
the storing of calculated redundant data in memory 13,
nevertheless suggests (Answer, pages 6 and 9) that even the
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temporary storing of calculated parity data in Wilkes’ memory
13 during parity calculation would satisfy the claimed
requirement. In our view, however, even assuming, arguendo, that
the temporary storing of calculated parity data in Wilkes’ memory
13 would satisfy the limitations of the appealed claims, there is
no indication from the disclosure of Wilkes that any such
temporary storing of calculated redundant parity data takes
place. To whatever extent the Examiner is asserting that such
temporary storing would necessarily occur, we find no evidence
forthcoming from the Examiner to support such a position. The
Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the asserted conclusion. See
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002).
In view of the above discussion, in order for us to sustain
the Examiner’s rejection, we would need to resort to
impermissible speculation or unfounded assumptions or rationales
to supply deficiencies in the factual basis of the rejection
before us. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
Appeal No. 2002-2100
Application No. 09/042,334
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(CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied,
390 U.S. 1000 (1968). Accordingly, since all of the claim
limitations are not present in the disclosure of Wilkes, we do
not sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
appealed claims 1, 2, 6, 8, 10, and 11. Therefore, the decision
of the Examiner rejecting claims 1, 2, 6, 8, 10, and 11 is
reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JFR/hh
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Application No. 09/042,334
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