Ex Parte Winarski et al

Board of Patent Appeals and Interferences

May 18, 2012

10824901 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL JAMES WINARSKI, ROBERT GEORGE EMBERTY,
CRAIG ANTHONY KLEIN, and NILS HAUSTEIN
____________

Appeal 2010-003676
Application 10/824,901
Technology Center 2100
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Before LANCE LEONARD BARRY, THU A. DANG, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/824,901

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-10 and 13-32. (App. Br. 2.) Claims 11-12 , 33, and 34 were
cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A method for writing data on a data storage device,
comprising:
said data storage device receiving a write
command;
obtaining a starting logical block addresses (LBA)
and a LBA transfer length from said write command;
obtaining a first write once ready many (WORM)
pointer from a WORM pointer memory, said WORM
pointer providing an inventory of LBAs where WORM
data can be written within said data storage media; and
in response to said starting LBA being greater than
or equal to said WORM pointer, executing said write
command.

The Examiner rejected claims 13, 14, 19, 21, and 22 under 35 U.S.C.
§ 102(b) as being anticipated by Basham ( U. S. Patent Application
Publication No. 2002/0035665 A1 (filed Oct. 15, 2001)). (Ans. 3.)
The Examiner rejected claims 1-5, 15, and 23-28 under 35 U.S.C.
§ 103(a) as being unpatentable over Basham in view of Sokolov (U.S. Patent
No. 6,018,789 (filed Nov. 24, 1997)). (Ans. 4-6.)
The Examiner rejected claims 6-8, 29, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Basham in view of Sokolov and Gill
(U.S. Patent No. 6,469,854 B1 (filed Dec. 1, 1999)). (Ans. 6.)
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Application 10/824,901

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The Examiner rejected claims 9, 10, 31, and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over Basham in view of Sokolov and
Mimatsu (U.S. Patent Application Publication No. 2004/0111485 A1 (filed
Feb. 26, 2003)). (Ans. 7.)
The Examiner rejected claims 16-18 under 35 U.S.C. § 103(a) as
being unpatentable over Basham in view of Non-volatile Memory (“Non-
volatile Memory Chips,” NPL). (Ans. 7-8.)

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Does Basham disclose a “WORM pointer providing an
inventory of LBAs where WORM data can be written within said data
storage media,” as recited in independent claim 1, and as similarly recited in
independent claims 13, 21, and 24?
2. Does Basham teach or suggest sending a device type or worm
pointer to a host computer as required by claims 9 and 31, or claims 10 and
32 respectively?
ANALYSIS
We disagree with Appellants’ conclusion regarding the Examiner’s
rejections of claims 1-10 and 13-32. 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 (Ans. 3-8) in response to Appellants’ Appeal Brief. We concur with
the conclusion reached by the Examiner. Nonetheless, we highlight and
address specific findings and arguments as discussed below.
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Application 10/824,901

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Appellants contend that Basham does not disclose “a WORM pointer
which provides an inventory of LBAs where WORM data can be written
within a data storage media.” (App. Br. 5.) But as explained by the
Examiner, Basham discloses a write append limiter that points to an area on
a storage medium where data can be written. (Ans. 4.) Indeed, the WORM
pointer disclosed in Appellants’ Specification also points to an area on a
storage medium where data can be written. (Spec. ¶ [008].) Thus, we find
that the Examiner, giving the claim its broadest reasonable meaning
consistent with the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997), properly relies on the write append limiter of Basham to provide
an inventory of LBAs where WORM data can be written, as required by
claims 1, 13, 21, and 24. Accordingly, we sustain the Examiner’s rejections
of those claims.
Appellants also contend that the combination of Basha, Sokolov, and
Mimatsu does not teach or suggest “in response to receiving a first inquiry
command from a host computer, sending a device type to the host computer,
as required by claim 9 and 31 or . . . sending a worm pointer to the host
computer as required by claims 10 and 32.” (App. Br. 6.) As explained by
the Examiner, however, it would have been obvious to send a device type or
worm pointer to a host computer because Mimatsu teaches “device type
information being sent in response to an inquiry command.” (Ans. 9.)
Accordingly, we sustain the Examiner’s obviousness rejections of claims 9,
10, 31, and 32.
Appellants also contend that claims 16-18 are not obvious because the
use of the EPROM, PROM, and FLASH types of memory recited in those
claims “is not disclosed or suggested by the combination of Basham with the
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common practice set forth by the Examiner.” (App. Br. 7.) As explained by
the Examiner, however, the use of these memories would have been obvious
at the time the invention was made because any of them would offer the
benefits of nonvolatile storage. (Ans. 8.) Thus, we will sustain the
Examiner’s obviousness rejection of claims 16-18. We will also sustain the
Examiner’s rejections of the remaining claims on appeal because Appellants
did not set forth any separate patentability arguments for them. (See App.
Br. 4-7.)

DECISION
We affirm the Examiner’s decision rejecting claims 1-10 and 13-32.
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

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