Ex Parte Torrey et al

Board of Patent Appeals and Interferences

Jun 20, 2011

10982279 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM W. TORREY and CURTIS C. BALLARD
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Appeal 2009-006952
Application 10/982,279
Technology Center 2100
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Before ROBERT E. NAPPI, JASON V. MORGAN, and ERIC B. CHEN,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006952
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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 –29. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
8. A method for providing menu data to a storage
automation library, comprising:
via a remote host, periodically polling the storage
automation library to extract therefrom a remote menu
mode status and stored user input, if any; and
via the remote host, providing menu data to the storage
automation library, in response to a determination by the
remote host that an extracted remote menu mode status is
“active”, and in response to the remote host’s processing
of the extracted user input, if any.
(App. Br. 19, Claims App’x).
Rejections and Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 102(e) as being anticipated by Reilly (US 2006/0014523 A1)
because:1
1. “Reilly has nothing whatsoever to do with a storage automation
library” (App. Br. 11) and
2. Reilly does not teach the recitation of “‘polling’ a storage
automation library . . . . to extract a remote menu mode status” (id.).

1 Separate patentability is not argued for claims 9 and 10, rejected under 35
U.S.C. § 103(a) as being unpatentable over Reilly and Anderson (US
5,157,783).
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Appellants contend that the Examiner erred in rejecting claims 1, 2, 4,
6, 7, 11 – 16, and 20 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Zellweger (US 6,131,100) and Reilly because:2
1. “Zellweger and Reilly have nothing whatsoever to do with storage
automation libraries” (App. Br. 12);
2. “Zellweger . . . does not discuss receiving remote menu data from a
remote host when a local menu structure in the ‘storage automation library’
does not provide access to updated features for the ‘storage automation
library’” (App. Br. 13); and
3. Zellweger does not “teach or even suggest capturing input to a
storage automation library” (id.).
Appellants contend that the Examiner erred in rejecting claims 21, 22,
and 25 – 29 under 35 U.S.C. § 103(a) as being unpatentable over Zellweger
and Reilly because:3
1. “It is not reasonable to interpret a data structure or user interface of
Zellweger or mobile terminal of Reilly as an automation storage library”
(App. Br. 15) and
2. “Zellweger . . . does not discuss activating a remote menu mode
when a local menu structure in the storage automation library does not
provide access to updated features for the storage automation library” (id.).

2 Separate patentability is not argued for claims 3 and 5, rejected under 35
U.S.C. § 103(a) as being unpatentable over Zellweger, Reilly, and Bixler
(US 6,507,351 B1). Separate patentability is also not argued for claim 17,
rejected under 35 U.S.C. § 103(a) as being unpatentable over Zellweger,
Reilly, and Kitada (US 2002/0156834 A1).
3 Separate patentability is not argued for claims 23 and 24, rejected under 35
U.S.C. § 103(a) as being unpatentable over Zellweger, Reilly, and Kitada.
Appeal 2009-006952
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ISSUES
1. Did the Examiner err in rejecting claim 8 as being anticipated
because Reilly does not teach a storage automation library?
2. Did the Examiner err in rejecting claim 8 as being anticipated
because Reilly does not teach or suggest polling a storage automation library
to extract therefrom a remote menu mode status?
3. Did the Examiner err in rejecting claims 1 – 7, 11 – 17, and 20 as
being obvious because the combination of Zellweger and Reilly does not
teach or suggest an automation storage library?
4. Did the Examiner err in rejecting claims 1 – 7, 11 – 17, and 20 as
being obvious because the combination of Zellweger and Reilly does not
teach or suggest receiving remote menu data from a remote host when a
local menu structure in a storage automation library does not provide access
to updated features for the storage automation library?
5. Did the Examiner err in rejecting claims 1 – 7, 11 – 17, and 20 as
being obvious because the combination of Zellweger and Reilly does not
teach or suggest capturing user input to a storage automation library for
processing by a remote host?
6. Did the Examiner err in rejecting claim 8 as being an anticipated
and claims 9, 10, and 21 – 29 as being obvious because Reilly does not teach
or suggest polling a storage automation library to extract therefrom a remote
menu mode status?

Appeal 2009-006952
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions with respect to claims 1 – 7
and 11 – 20. Except as detailed herein, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. With the exception of
claims 8 – 10 and 21 – 29, we concur with the conclusion reached by the
Examiner.
(1) Whether the Examiner erred in rejecting claim 8 because Reilly does not
teach a storage automation library
We agree with the Examiner that “[i]t is reasonable to interpret the
mobile terminal in Reilly as an automation library since the storage
capability of the device provides the same functionality as the automation
library” (Ans. 14 – 15). Appellants’ arguments do not persuade us that the
Examiner’s definition of a “storage automation library” is unreasonably
broad.
Furthermore, Appellants do not identify claim language that specifies
additional limiting features of a “storage automation library,” such as device
size. The Specification’s disclosure that “the library 100 may be a magnetic
tape library or optical disk library” (Spec. 5, ¶ [0012]; fig. 1) (emphasis
added) does not demonstrate error in the Examiner’s construction of a
“storage automation library” because this disclosure is given merely “[b]y
way of example” (id.).
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As such, we find that an artisan of ordinary skill would not interpret a
“storage automation library” as having a minimum size. Therefore, we do
not find persuasive Appellants’ further contention that Reilly does not teach
a “storage automation library” because “Reilly teaches providing content to
‘a mobile terminal’ such as a handheld device” and “[h]andheld devices are
very small (i.e., able to be held in a hand of a person)” (Reply. Br. 2).
Accordingly, we do not find Appellants’ arguments persuasive with respect
to this issue.
(2) Whether the Examiner erred in rejecting claim 8 as being an anticipated
because Reilly does not teach or suggest polling a storage automation
library to extract therefrom a remote menu mode status
Claim 8 recites “periodically polling the storage automation library to
extract therefrom a remote menu mode status and stored user input, if any”
(Claims App’x 19). We find Appellants’ arguments (App. Br. 11)
persuasive with respect to this issue.
More specifically, we find that claim 8 requires polling or code to poll
the storage automation library. However, the Examiner relies on disclosures
in Reilly—“[s]election of one of these headlines will cause the mobile
terminal to connect to the remote data 220 store to download the content
(text, audio, video, etc.)” and “it is necessary for the terminal to receive
episodic[] updates of data content to be stored locally and hyperlinks, along
with any associated content, to refer to remotely stored content” (Ans. 16; ¶¶
[0013, 0015])—that relate to the mobile terminal polling a remote data store
220 and receiving episodic updates. These teachings relate to polling by or
receipt of data by the mobile terminal, not polling of the mobile terminal
(i.e., the storage automation library).
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Accordingly, we find Appellants’ arguments with respect to this issue
persuasive of error in the Examiner’s rejections of claim 8, and we will not
sustain this rejection. As the Examiner’s obviousness rejections of
dependent claims 9 and 10 similarly rely upon Reilly as teaching the
limitations of independent claim 8, we will not sustain the rejection of
claims 9 and 10.
(3) Whether the Examiner in rejecting claims 1 – 7, 11 – 17, and 20 as being
obvious because the combination of Zellweger and Reilly does not teach or
suggest an automation storage library
We do not find Appellants’ arguments persuasive because, for the
reasons discussed earlier with respect to claim 8, Reilly teaches an
automation storage library. As such, we find that the combination of
Zellweger and Reilly teaches or suggests an automation storage library.
Accordingly, we do not find Appellants’ arguments persuasive with respect
to this issue.
(4) Whether the Examiner erred in rejecting claims 1 – 7, 11 – 17, and 20 as
being obvious because the combination of Zellweger and Reilly does not
teach or suggest receiving remote menu data from a remote host when a
local menu structure in a storage automation library does not provide
access to updated features for the storage automation library
As discussed previously with respect to claim 8, Reilly teaches an
automation storage library. Furthermore, Appellants do not provide any
persuasive arguments showing error in the Examiner’s finding that because
“Zellweger discloses ‘the local computer 12 is electronically linked to one or
more computers like remote computer 15, through network communications
[and] [m]enu data from external sources of data include files on both the
local computer 12 and remote computer 15’” (Ans. 18; col, 3, ll. 3 – 7), the
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combination of Reilly and Zellweger teaches or suggests the claimed
recitations. As such, we do not find Appellants’ arguments persuasive with
respect to this issue.
(5) Whether the Examiner erred in rejecting claims 1 – 7, 11 – 17, and 20 as
being obvious because the combination of Zellweger and Reilly does not
teach or suggest capturing user input to a storage automation library for
processing by a remote host
As discussed previously with respect to claim 8, Reilly teaches an
automation storage library. Furthermore, Appellants do not provide any
persuasive arguments showing error in the Examiner’s finding that because
“Zellweger discloses ‘a menu developer connects to a database or file that
stores a representation of an open hierarchical data structure from a scrolling
list of available databases and files under the ‘Menu Source’ label [and]
[n]ext, the developer selects an existing content menu or creates a new one’”
(Ans. 19; col. 4, ll. 28 – 36), the combination of Reilly and Zellweger
teaches or suggests the claimed recitations. As such, we do not find
Appellants’ arguments persuasive with respect to this issue.
(6) Whether the Examiner erred in rejecting claims 21 – 29 as being obvious
because Reilly does not teach or suggest polling a storage automation
library to extract therefrom a remote menu mode status
Similar to claim 8, claim 21 recites “code to periodically poll a
command I/O interface of the storage automation library to extract therefrom
a remote menu mode status and stored user input” (Claims App’x 22). As
discussed supra with respect to claim 8, we find Appellants’ arguments
persuasive with respect to this issue and thus, we do not find that Reilly
teaches or suggests this feature.
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The Examiner does not show that Anderson, Zellweger, or Kitada
cure this deficiency. Accordingly, we find Appellants’ arguments with
respect to this issue persuasive of error in the Examiner’s rejection claim 21,
and dependent claims 22 – 29.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
claims 1 – 7 and 11 – 20 are unpatentable because the Examiner did not err
in finding:
1. that Reilly teaches a storage automation library;
2. that the combination of Zellweger and Reilly teaches or suggests an
automation storage library;
3. that the combination of Zellweger and Reilly teaches or suggests
receiving remote menu data from a remote host when a local menu structure
in a storage automation library does not provide access to updated features
for the storage automation library; and
4. that the combination of Zellweger and Reilly teaches or suggests
capturing user input to a storage automation library for processing by a
remote host.
We conclude that the Examiner has not demonstrated that claims 8 –
10 and 21 – 29 are unpatentable because the Examiner erred:
5. in finding that Reilly teaches or suggests polling a storage
automation library to extract therefrom a remote menu mode status.
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DECISION
We affirm the Examiner’s decisions rejecting claims 1 – 7 and 11 –
20.
We reverse the Examiner’s decisions rejecting claims 8 – 10 and 21 –
29.
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-IN-PART

KMF