INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jun 23, 2021

2020001761 (P.T.A.B. Jun. 23, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/220,471 03/20/2014 Chen-Yong Cher YOR920130787US1
(163-749)
5961
49267 7590 06/23/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
WARREN, TRACY A
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
06/23/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEN-YONG CHER,
MICHELE M. FRANCESCHINI, and
ASHISH JAGMOHAN
Appeal 2020-001761
Application 14/220,471
Technology Center 2100
Before ALLEN R. MACDONALD, GREGG I. ANDERSON, and
CHRISTA P. ZADO, Administrative Patent Judges.
ZADO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, 11–17, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corp. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The Specification generally relates to managing high performance
storage systems with hybrid (e.g., mix of flash and magnetic disk storage)
technology. Spec. ¶¶ 1–2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for managing a solid state storage system with
hybrid storage technologies, comprising:
monitoring one or more storage request streams to identify
operating mode characteristics therein from among a set of
possible operating mode characteristics, the set of possible
operating mode characteristics corresponding to a set of available
operating modes of the hybrid storage technologies, the set of
available operating modes including at least one of write
intensive, read intensive, or light storage use;
identifying a current operating mode from among the set of
available operating modes responsive to the identified operating
mode characteristics;
predicting a likely future operating mode responsive to variations
in workload requirements to generate at least one future
operating mode prediction, the workload variations including a
time evolution of the current operating mode; and
controlling, using a controller, at least one of data placement,
wear leveling, garbage collection, and read performance of the
storage system, responsive to the at least one future operating
mode prediction, the controller being configured for improving
the read performance of the storage system by placing duplicate
data in the storage system.
Appeal Br. 47 (Claims App.).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sinclair US 7,450,420 B2 Nov. 11, 2008
Goss US 2012/0124273 A1 May 17, 2012
Franceschini US 2012/0226962 A1 Sept. 6, 2012
Hamilton US 8,375,190 B2 Feb. 12, 2013
Iyigun US 8,812,744 B1 Aug. 19, 2014
Calderbank US 2015/0248325 A1 Sept. 3, 2015

REJECTIONS
Claims 1, 3–9, 11–17, 19, and 20 are rejected under 35 U.S.C.
§ 112(b) as indefinite;
claims 1, 9, and 17 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Hamilton;
claims 3, 11, and 19 are rejected under 35 U.S.C. § 103 as obvious
over Hamilton combined with Sinclair;
claims 4, 12, and 20 are rejected under 35 U.S.C. § 103 as obvious
over Hamilton combined with Goss;
claims 5, 8, 13, and 16 are rejected under 35 U.S.C. § 103 as obvious
over Hamilton combined with Iyigun;
claims 6 and 14 are rejected under 35 U.S.C. § 103 as obvious over
Hamilton combined with Franceschini; and
claims 7 and 15 are rejected under 35 U.S.C. § 103 as obvious over
Hamilton combined with Franceschini, Sinclair, and Calderbank.
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OPINION
Indefiniteness of Claims 1, 3–9, 11–17, 19, and 20
Appellant contends the Examiner erred in rejecting claims 1, 3–9, 11–
17, 19, and 20 as indefinite under 35 U.S.C. § 112(b). Appeal Br. 12–20.
Specifically, Appellant submits the terms “intensive,” “light,” and “likely,”
do not render the claims indefinite. Id. For reasons that follow, we sustain
the Examiner’s indefiniteness rejections.
Under 35 U.S.C. § 112(b), the specification must conclude with “one
or more claims particularly pointing out and distinctly claiming the subject
matter” the applicant regards as the invention. The test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The definiteness requirement is more than a mere formality.
Because patent claims delineate the right to exclude, the patent statute
requires that the scope of the invention be sufficiently definite to inform the
public of the bounds of the protected invention; otherwise, competitors
cannot avoid infringement, thereby defeating the public notice function of
patent claims. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1249 (Fed. Cir. 2008).
During patent prosecution, the Patent Office plays an important role in
ensuring that proposed patent claims are clear, unambiguous, and drafted as
precisely as the art allows. In re Packard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014) (per curium). As the Federal Circuit has stated, “the patent
drafter is in the best position to resolve the ambiguity in the patent claims,
and it is highly desirable that patent Examiners demand that applicants do so
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in appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.”
Halliburton, 514 F.3d at 1255. Given that this proceeding involves pre-
issuance claims in the prosecution stage, we apply the approach for
assessing indefiniteness approved by the Federal Circuit in Packard, i.e.,
“[a] claims is indefinite when it contains words or phrases whose meaning is
unclear.” Ex parte McAward, Appeal 2015-006416, at 5 (PTAB Aug. 25,
2017) (precedential) (citing Packard, 751 F.3d at 1310, 1314 (Fed. Cir.
2014)). Put differently, “claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” Id.; see also MPEP § 2173.02(I).
The Examiner carries the initial burden of presenting a prima facie
case that a pending claim is indefinite. Hyatt v. Dudas, 492 F.3d 1365,
1369–70 (Fed. Cir. 2007); In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). In so doing, the Examiner determines the scope of the claims
based not only on the claim language, but also upon giving the claims their
broadest reasonable interpretation (BRI) in light of the specification as
would be interpreted by an ordinarily skilled artisan. Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Once a prima facie case of
indefiniteness has been established, the burden of coming forward shifts to
the applicant to overcome the prima facie case with evidence and argument.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he Examiner
bears the initial burden, on review of the prior art or on any other grounds, of
presenting a prima facie case of unpatentability. If that burden is met, the
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burden of coming forward with evidence or argument shifts to the
applicant.”).2
1. “write intensive,” “read intensive,” and “light use”
The claims recite, with regard to hybrid storage technology, operating
modes including “write intensive,” “read intensive,” and “light storage use.”
47, 49, 51 (Claims App.) (emphasis added). The Examiner finds that the
terms “intensive” and “light” are relative terms that render the claims
indefinite. Final Act. 3. The Examiner explains that the Specification does
not provide a standard for measuring the degree required by these terms, and
an ordinarily skilled artisan would not be reasonably apprised of the scope of
the invention because they would not be able to determine to what degree a
read/write must be intensive or what degree of storage use would be
considered light. Id.

2 We note Appellant asserts that the office action from which this appeal is
taken (Office Action) is “incomplete as to all matters,” on the grounds that
the Office Action did not, according to Appellant, adequately respond to an
earlier traversal by Appellant. Appeal Br. 16–17 (citing 37 C.F.R.
§ 1.104(b)). Appellant submits that as a result, the Office Action is arbitrary
and capricious, and therefore invalid under the Administrative Procedure
Act. Id. at 17 (citing 5 U.S.C. § 706). We decline to address Appellant’s
objection to the Office Action as being “incomplete,” as it is an objection for
which we defer to the Director as a petitionable, rather than an appealable,
matter. MPEP 1201 (“Ordinarily, an objection is petitionable, and a
rejection is appealable”). However, we note Appellant has had a full
opportunity in this appeal to address any specific arguments made in the
traversal that it believes the Examiner has overlooked, by making such
arguments in the Appeal Brief. 35 U.S.C. § 134(a); 35 U.S.C. § 6(b)(1).
Arguments not presented in the Appeal Brief are waived and will not receive
Board consideration. 37 C.F.R. § 41.37(c).
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Appellant neither denies that the terms are terms of degree nor that the
Specification fails to disclose a standard for measuring the degree required
by these terms. Appeal Br. 16. However, Appellant argues that the terms
“write intensive,” “read intensive,” and “light storage use” are terms of art
that would be readily understood by an ordinarily skilled artisan. Id.
Appellant submits as evidence a hyperlink to what Appellant asserts is a
website that discusses “what is known to those of ordinary skill in the art
regarding the terms-of-art ‘intensive’ and ‘light’ with respect to computing.”
Id. (citing https://en.wikipedia.org/wiki/Data-intensive_computing).
“Definiteness problems often arise when words of degree are used in a
claim.” Seattle Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d 818,
826 (Fed. Cir. 1984). We agree with the Examiner’s finding that the terms
“intensive” and “light” are words of degree, because the amount, level, or
extent of these terms may vary along a spectrum. However, this does not
necessarily render the claims indefinite. “When a word of degree is used the
[factfinder] must determine whether the patent’s specification provides some
standard for measuring that degree. The [factfinder] must decide, that is,
whether one of ordinary skill in the art would understand what is claimed
when the claim is read in light of the specification.” Id. Here, we agree with
the Examiner that the Specification fails to inform an ordinarily skilled
artisan as to the degree encompassed by the claims.
The Specification uses the term “write intensive” only three times,
and each of the terms “read intensive” and “light storage use” only once.
Spec. ¶ 11 (“we isolate a number of modes of operation (e.g., write
intensive, read intensive, mixed, light storage use, etc.”) (emphasis added);
id. ¶ 12 (“knowledge of the mode of operation and its immediate future
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changes are then used to drive . . . garbage collection (such as, for example,
proactive garbage collection to prepare the system for an imminent change
to a write intensive mode of operation”) (emphasis added); id. ¶ 16 (“check-
pointing storage and file-system storage have very different requirements on
physical attributes. For example, check-pointing is write-intensive.”)
(emphasis added). In each instance, the Specification refers to write
intensive, read intensive, and light storage use as modes of operation, but
provides no definition or explanation as to what degree of writing or reading
is required to be considered “intensive” or what degree of storage use would
be considered “light.” Id. ¶¶ 11, 12, 16.
Although the Specification does not provide any description regarding
the requisite degree of read and write intensity and light storage use required
to fall within the scope of the claims, a claim may still be definite if it is a
term of art that has a well-known meaning to a person of ordinary skill in the
art at the time of invention. Here, Appellant has not provided any
substantive argument in the Appeal Brief or Reply Brief for us to consider.
As we discussed above, Appellant provides a hyperlink to a document that,
according to Appellant, sheds light on the meanings of the terms “write
intensive,” “read intensive,” and “light storage use.” Appeal Br. 16.
However, Appellant, neither cites nor quotes in the Appeal Brief or Reply
Brief any particular portion of the linked document, nor provides any
substantive arguments regarding the contents of the document, and more
specifically, how the document reflects the understanding of an ordinarily
skilled artisan in the relevant technical field at the time of invention. Id. As
the Examiner points out, the hyperlinked website does not include any date,
and therefore has not been shown to be contemporaneous with the date of
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invention. Ans. 5–6. As such, this hyperlinked document is not reliable
evidence as to what a skilled artisan would have understood in the relevant
time frame. Id. Moreover, this document is from a Wikipedia website, for
which Appellant provides no evidence or argument as to why it reflects the
knowledge of a person of ordinary skill in the relevant technical field.
Appeal Br. 16.
For the above reasons, based on the entirety of the record before us,
we find no error in the Examiner’s determination that the claims are
indefinite as a result of their use of the terms “write intensive,” “read
intensive,” and “light storage use.”
2. “[a predictor for] predicting a likely future operating mode”
The claims recite “[a predictor for] predicting a likely future operating
mode responsive to variations in workload requirements to generate at least
one future operating mode prediction, the workload variations including a
time evolution of the current operating mode.” Appeal Br. 47, 49, 51
(Claims App.) (emphasis added). The Examiner finds that the term “likely”
is a relative term that renders the claims indefinite. Final Act. 3–4. The
Examiner explains that the Specification does not provide a standard for
measuring the degree required by this term, and an ordinarily skilled artisan
would not be reasonably apprised of the scope of the invention because they
would not be able to determine the degree to which a future operating mode
must be likely. Id.
Appellant neither denies that “likely” is a term of degree nor that the
Specification fails to disclose a standard for measuring the degree required
by this term. Appeal Br. 13, 17–18. However, Appellant responds that
“likely” is a term that would be readily understood by a person of ordinary
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skill in the art. Id. According to Appellant, an ordinarily skilled artisan
would have understood the term “likely” to mean “greater than 50% chance
of occurring” or “more than 50% probability of occurring.” Id. at 13, 17–18.
We agree with the Examiner’s finding that the term “likely” as recited
in the claims is a word of degree because the amount, level, or extent of
likelihood may vary along a spectrum. Specifically, the Specification does
not define the term “likely,” and therefore this term is given the broadest
reasonable interpretation that is consistent with its plain and ordinary
meaning. In determining ordinary and customary meaning as viewed by a
person of ordinary skill in the art, it is appropriate to consult a general
dictionary definition for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). For example, Merriam-Webster’s Collegiate
Dictionary defines the term “likely” as “having a high probability of
occurring or being true: very probable.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY, 11th Ed. (2003).
However, as we discussed above, use of a term of degree does not
necessarily render the claims indefinite. We must next consider whether one
of ordinary skill in the art would understand what is claimed in light of the
specification. Seattle Box Co., 731 F.2d at 826. Here, we agree with the
Examiner that the Specification fails to inform an ordinarily skilled artisan
as to the degree encompassed by the claims.
The Specification uses the phrase predicting [at least one] “likely
future operating mode” in five instances. Spec. ¶¶ 3, 4, 5, 22, 30. In each
instance, the Specification does not quantify, or even suggest, a degree of
likelihood of a future operating mode. Id. Rather, the Specification merely
states that prediction of a likely future operating mode occurs, without any
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detail or explanation regarding any standard as to how to measure the degree
of likelihood. Id.
Although the Specification does not provide any description regarding
the requisite degree of likelihood required to fall within the scope of the
claims, a claim may still be definite if it is a term of art that had a well-
known meaning to a person of ordinary skill in the art at the time of
invention. Here, Appellant has not identified or provided sufficient evidence
and argument to persuade us that the term “likely” had a well-known
meaning such that the degree of likelihood would have been ascertainable to
an ordinarily skilled artisan in the relevant art at the time of invention.
Appellant presents a “chart,” ostensibly taken from the website located at
www.analyzemath.com, that Appellant submits shows that an event with a
more that 50% chance or more probability is “likely to occur” and an event
with a less than 50% chance probability is “not likely to occur.” Appeal
Br. 13. Appellant presents no evidence or argument to show that the chart is
contemporaneous with the time of invention. Id. Nor does Appellant
explain why or how the information in the chart—which appears to be from
a math website—applies to the technical field of the invention. Id.
Also, in light of Appellant’s lack of evidence and explanation
concerning the relevance of the cited chart, we view Appellant’s evidence as
circumspect, as there are other definitions of the term “likely.” As we noted
above, Merriam-Webster’s Intercollegiate Dictionary defines “likely” as
“having a high probability of occurring or being true: very probable.”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY, 11th Ed. (2003) (emphasis
added). This definition, which refers to a “high” probability that something
is true, itself requires interpretation as to what degree of “high” is required
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for something to be highly probable. This illustrates the impossibility of
ascertaining the degree of likelihood required by the claims at issue, in light
of the Specification’s absolute silence and failure to provide any insight
concerning the requisite degree.
For the above reasons, we find the evidence does not support
Appellant’s contention that a skilled artisan would have understood that the
claims presented in this appeal are clear and unambiguous. As the drafter of
the claims at issue, Appellant is in the best position to resolve the above-
discussed lack of precision by including claim language explicitly specifying
that the degree of likelihood is more than 50%, if indeed that is the
invention. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008).
For the above reasons, based on the entirety of the record before us,
we find no error in the Examiner’s determination that the claims are
indefinite as a result of their use of the term “[a predictor for] predicting a
likely future operating mode.”
3. “imminent” (claim 3)
Appellant argues the Examiner found incorrectly that the term
“imminent” rendered claim 3 indefinite. Appeal Br. 18. However, this
argument is moot, as Appellant has amended claim 3 so as to delete the word
“imminent,” thereby obviating the Examiner’s indefiniteness rejection based
on the use of this term. Id. at 48 (Claims App.).
Anticipation of Claims 1, 9, and 17
Appellant contends that claims 1, 9, and 17 are not anticipated by
Hamilton. Appeal Br. 21–29. Below, we address Appellant’s arguments in
support of this contention.
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1. “a set of possible operating mode characteristics” that
“corresponds to a set of available operating modes” including “at least one
of write intensive, read intensive, or light storage use”
Appellant submits that high, middle, and low performance memory
systems are memory types, not “operating modes” as recited in claims 1, 9,
and 17. Appeal Br. 25–26. Appellant’s arguments are not persuasive
because the Examiner does not equate high, middle, and low performance
memory systems with operating modes. Final Act. 5–7, 9–10; Ans. 9.
Rather, the Examiner finds that certain operating modes in Hamilton, such as
high I/O and low I/O density modes, correspond with the “operating modes”
recited in the claims. Final Act. 7; Ans. 9. Specifically, the Examiner finds
that the operating modes in Hamilton include “relatively high I/O” density
modes (i.e., “write intensive” and “read intensive”) when high performance
media is used; and “limited I/O density” (e.g., “light storage use”) when low
performance storage media is used. Final Act. 7; Ans. 9. As the Examiner
points out, Hamilton need not use the exact terminology in the claims in
order to anticipate. Ans. 8 (citing In re Bond, 910 F.2d 831 (Fed. Cir. 1990;
MPEP § 2132) (“one cannot show that claim elements are not taught . . .
based on the terminology of the reference. The elements must be arranged
as required by the claim, but this is not an ipsissimis verbis test, i.e.,
terminology is not required”). Moreover, as further explained by the
Examiner, neither the claims nor Specification define the term “operating
mode,” and the term therefore is given its broadest reasonable interpretation
in light of the Specification. Id. at 8. As such, “operating mode” may
encompass a broad range of modes, of which the Examiner enumerates a
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non-exhaustive list. Id. We agree with the Examiner’s reasoning, and find
that I/O density modes are reasonably interpreted as “operating modes.” Id.
Appellant also submits that Hamilton does not disclose operating
modes including at least one of “write intensive, read intensive, or light
storage use.” Appeal Br. 26. However, Appellant does not provide any
additional substantive argument, but rather argues Hamilton does not
disclose this claim recitation for the same reason Hamilton does not disclose
“operating modes.” Id. For the reasons given above, this argument does not
persuade us of Examiner error.3
Appellant further submits that high, medium, and low page reference
rates are not disclosed in Hamilton (Appeal Br. 24), and even if they were,
they are not “operating mode characteristics” (Appeal Br. 25). For example,
high performance systems would be “suitable to hold data with” any
reference rate, low, medium, and high, according to Appellant. Id. at 24.
Appellant’s arguments are unpersuasive. As the Examiner points out,
neither the claims nor Specification define the term “operating mode
characteristics,” and this term therefore is given its broadest reasonable

3 Our determination regarding indefiniteness does not prevent us from
sustaining the Examiner’s 102 rejection. We review the Examiner’s 102
rejection for error in light of the arguments identified by Appellant in the
Appeal Brief. 35 U.S.C. § 6(b)(1); 37 C.F.R. § 41.37(c); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). Here, Appellant does not
raise any arguments regarding the imprecision of the claim terms “intensive”
and “light,” or address the Examiner’s findings that high I/O and low I/O
density modes satisfies the claim language. Rather, Appellant’s argument
merely incorporates by reference arguments made as to claim language that
has not been found to render the claims indefinite. Our review for Examiner
error does not include arguments that are not raised by Appellant in this
appeal.
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interpretation. Ans. 9. Moreover, to the extent the Specification enumerates
examples of “operating mode characteristics,” such is for illustrative
purposes and does not limit the claims. Id. (citing In re Van Geuns, 988
F.2d 1181 (Fed. Cir. 1993) (“Although the claims are interpreted in light of
the specification, limitations from the specification are not read into the
claims.”). As found by the Examiner, Hamilton discloses “monitoring one
or more storage request streams to identify operating mode characteristics
from among a set of operating mode characteristics” because Hamilton
discloses monitoring storage unit operations and acquiring storage
characteristics, and in particular, reference rates that relate to data recorded
in storage. Id. at 7 (citing Hamilton 2:10, 6:57–62); Final Act. 6–7.
Accordingly, we find no error with the Examiner’s finding that Hamilton
discloses the recitation at issue because Hamilton discloses, e.g., storage unit
operations and storage characteristics such as reference rates, which are
properly interpreted as “operating mode characteristics, i.e., are
characteristics that may be associated with particular “operating modes”
such as certain defined “I/O density” modes such as high I/O and low I/O.
2. “[a predictor for] predicting a likely future operating mode
responsive to variations in workload requirements to generate at least one
future operating mode prediction”
Appellant does not provide substantive argument to support its
contention that Hamilton does not disclose “[a predictor for] predicting a
likely future operating mode responsive to variations in workload
requirements to generate at least one future operating mode prediction,” as
recited in claims 1, 9, and 17. Appeal Br. 26–27. Appellant submits that the
Examiner makes the following conclusory statement:
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changes in reference rates correspond to variations in workload
requirements; The inference provided is capable of being used
for the intended use of generating a future operating mode
prediction.
Id. at 26. Appellant proceeds to argue that because the Examiner’s
determination is based on an “inference,” the Examiner in effect took
Official Notice without following the procedures required for taking Official
Notice. Id. at 26–27.
Appellant’s arguments fail for several reasons. First, Appellant does
not provide any citation to the alleged quote by the Examiner. Id. at 26. We
do not find this quote in the office action from which this appeal is taken
(dated April 23, 2019). Nor do we find it in the Advisory Action (dated June
26, 2019). Accordingly, this quote does not form part of the rejection from
which this appeal is taken. Nor can we confirm the context in which the
Examiner made such statement, given that it is not clear where in the record
this statement appears.
Next, the argument that the Examiner took Official Notice stems from
the alleged quote by the Examiner—a quote that is not part of the office
action on appeal—and, therefore, is not part of the rejection on appeal.
Appellant also makes a conclusory assertion, without supporting
argument or evidence, that “Hamilton does not, and cannot discuss any
‘prediction’ with respect to operating modes, and clearly does not generate
any predictions responsive to variations in workload requirements in any
way whatsoever.” Appeal Br. 26. Such bare assertion, without underlying
argument and evidence is insufficient to persuade us of Examiner error.
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For the foregoing reasons, we are not persuaded of Examiner error
regarding the “predicting” claim limitations of claims 1, 9, and 17.4
3. “improving read performance,” “time evolution of the current
operating mode,” and “improving the read performance of the storage
system by placing duplicate data in the storage system”
Rather than provide substantive argument, Appellant merely asserts,
incorrectly and without any explanation, that the Examiner “does not even
attempt to apply any prior art to the feature regarding ‘improving read
performance’ of the system’ but rather states that this is an intended use, and
then completely ignores the explicitly recited feature.” Appeal Br. 28.
Appellant’s assertion is contrary to the evidence of record, which clearly
shows the Examiner explicitly applies Hamilton’s Figure 8 and Hamilton at
column 4, line 53, to the claim feature at issue. Final Act. 9. The Examiner
includes a detailed explanation as to how Hamilton is applied, pointing out
Hamilton’s steps of analyzing a data reference rate, determining an
appropriate storage medium based on the data rate, as well as Hamilton’s
disclosure that high I/O rates (including read rates) being better suited to
media such as flash memory. Id. Therefore, the Examiner provides specific

4 Our determination above regarding indefiniteness does not prevent us from
sustaining the Examiner’s 102 rejection. We review the Examiner’s 102
rejection for error in light of the arguments identified by Appellant in the
Appeal Brief. 35 U.S.C. § 6(b)(1); 37 C.F.R. § 41.37(c); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). Here, Appellant does not
raise any arguments regarding the imprecision of the claim term “likely.”
Rather, Appellant’s argument comprises bare assertions and reliance on a
whether the Examiner improperly took Official Notice. Our review for
Examiner error does not include arguments that are not raised by Appellant
in this appeal.
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citation to the prior art that supports the finding that read performance is
improved as recited in the claims.
Appellant also asserts, without any evidence or substantive argument,
that “Hamilton is clearly silent” regarding the recited claim limitations “the
workload variations including a time evolution of the current operating
mode” and “the controller being configured for improving the read
performance of the storage system by placing duplicate data in the storage
system.” Id. Appellant’s assertion is conclusory, made without any
explanation or citation to evidence, and therefore fails to persuade us of
Examiner error. We note the Examiner cites to specific portions of
Hamilton and provides a detailed explanation as to how Hamilton is being
applied. Final Act. 8–9. Appellant’s Appeal Brief fails to identify any
errors in the Examiner’s findings or provide any arguments of substance
regarding the Examiner’s evidence and findings. Appeal Br. 28.
4. Conclusion
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 9, and 17 under 35 U.S.C. § 102 as anticipated by Hamilton.
Obviousness of Claims 3–8, 11–16, 19, and 20
Appellant contends that claims 3–8, 11–16, 19, and 20, which depend
from either claim 1, 9, or 17, are patentably distinct and non-obvious over
the asserted prior art. Appeal Br. 31–45. In support of these contentions,
Appellant submits that the art, in addition to Hamilton, does nothing to cure
the deficiencies of Hamilton. Id. We note that Appellant’s submissions are
insufficient because they are conclusory, as Appellant does not support them
with sufficient underlying evidence and argument. Id. However, the
insufficiency of Appellant’s assertions are of no moment because, as we
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discussed above, we find no deficiencies in Hamilton with regard to
claims 1, 9, and 17.
CONCLUSION
The Examiner’s rejections are sustained.
More specifically, we affirm the rejections of
claims 1, 3–9, 11–17, 19, and 20 under 35 U.S.C. § 112(b) as
indefinite;
claims 1, 9, and 17 under 35 U.S.C. § 102(a)(1) as anticipated by
Hamilton;
claims 3, 11, and 19 under 35 U.S.C. § 103 as obvious over Hamilton
combined with Sinclair;
claims 4, 12, and 20 under 35 U.S.C. § 103 as obvious over Hamilton
combined with Goss;
claims 5, 8, 13, and 16 under 35 U.S.C. § 103 as obvious over
Hamilton combined with Iyigun;
claims 6 and 14 under 35 U.S.C. § 103 as obvious over Hamilton
combined with Franceschini; and
claims 7 and 15 under 35 U.S.C. § 103 as obvious over Hamilton
combined with Franceschini, Sinclair, and Calderbank.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 11–
17, 19, 20
112(b) Indefiniteness 1, 3–9, 11–
17, 19, 20

1, 9, 17 102(a)(1) Hamilton 1, 9, 17
3, 11, 19 103 Hamilton, Sinclair 3, 11, 19
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4, 12, 20 103 Hamilton, Goss 4, 12, 20
5, 8, 13, 16 103 Hamilton, Iyigun 5, 8, 13, 16
6, 14 103 Hamilton,
Franceschini
6, 14
7, 15 103 Hamilton,
Franceschini,
Sinclair,
Calderbank
7, 15
Overall
Outcome
1, 3–9, 11–
17, 19, 20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED