Ex Parte Wolford

Patent Trial and Appeal Board

Jul 30, 2013

11396848 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFF W. WOLFORD
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Appeal 2011-001351
Application 11/396,848
Technology Center 2400
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Before THU A. DANG, JAMES R. HUGHES, and
JEFFERY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001351
Application 11/396,848

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
A. INVENTION
According to Appellant, the invention relates to securing access to a
hard disk drive of a computer system with an enhanced security mode (Spec.
1).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. Method of enhancing security of a storage component
communicating with a host processor over a bus, said method comprising:

receiving from the bus by the storage component one of a security
unlock command, set password command, security disable command and
security erase command along with a password associated therewith;

determining a security state in which the storage component is
operating at reception of the received command;

determining if an enhanced security mode is enabled at reception of
the received command; and

performing security steps of the received command based on the
determined security state and the determined security mode.

Appeal 2011-001351
Application 11/396,848

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C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Little US 2005/0193220 A1 Sept. 1, 2005
Therene US 7,340,576 B1 March 4, 2008

Claims 1-6, 8, 10, and 12-16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Therene.
Claims 7, 9, 11, and 17-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Therene and Little.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that Therene teaches “determining a security state in which the
storage component is operating at reception of the received command” and
“determining if an enhanced security mode is enabled at reception of the
received command” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Therene
In Therene, if a power-on-reset (POR) or hard reset occurs while the
disk drive is in an unlocked/enabled state, the disk drive will transition into a
‘locked/enabled’ state, wherein while in this locked state, the disk drive will
abort read and write commands to ensure that unauthorized entities do not
perform data transfer operations (col. 5, ll. 27-42).
Appeal 2011-001351
Application 11/396,848

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IV. ANALYSIS
Appellant contends that “Therene does not disclose ‘determining if an
enhanced security mode is enabled at reception of the received command,’
as claimed” but instead “merely asks if security is enabled” (App. Br. 10).
Upon review of the record before us, we agree with Appellant. In particular,
we cannot find any teaching or suggestion in the sections of Therene
referenced by the Examiner of “determining a security state in which the
storage component is operating at reception of the received command” and
“determining if an enhanced security mode is enabled at reception of the
received command” as required by claim 1.
In the sections of Therene cited by the Examiner, Therene discloses
that if a power-on-reset (POR) or hard reset occurs while the disk drive is in
an unlocked/enabled state, transitioning the disk drive into a
‘locked/enabled’ state wherein read and write commands are aborted to
ensure that unauthorized entities do not perform data transfer operations
(FF). That is, in Therene, the state of the disk drive is determined, and then
a command aborting step is performed on the determined state.
Thus, although we agree with the Examiner that Therene discloses a
determination step for “determining a security state in which the storage
component is operating” at reception of a command, we find no teaching in
the cited portions of Therene of also “determining if an enhanced security
mode is enabled at reception of the received command”, as required by
claim 1.
Accordingly, we find that the Examiner has failed to meet the initial
burden of proof required for the rejection pursuant to 35 U.S.C. § 102(e).
Appeal 2011-001351
Application 11/396,848

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Therefore, we are constrained to reverse the Examiner’s rejection of
representative claim 1 over Therene. Independent claim 13 recites similar
limitations and thus stands with claim 1. Therefore, we also reverse the
rejection of independent claim 13 and claims 2-6, 8, 10, 12, and 14-16
depending respectively from claims 1 and 13 over Therene. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 7, 9, 11, and 17-20
The Examiner does not explain how Little would have cured the
deficiencies of Therene discussed above with respect to claims 1 and 13.
Accordingly, we are also constrained to reverse the Examiner’s rejection of
claims 7, 9, 11, and 17-20 depending respectively therefrom over Therene in
view of Little.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-6, 8, 10, and 12-16 under 35
U.S.C. § 102(b) and of claims 7, 9, 11, and 17-20 under 35 U.S.C. § 103(a)
is reversed.

REVERSED

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