Robert Dale. Murphy et al.

Patent Trials and Appeals Board

Jul 31, 2019

13803015 - (R) (P.T.A.B. Jul. 31, 2019)

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.
13/803,015 03/14/2013 Robert Dale Murphy 1000-STL17420 4794
12675 7590 07/31/2019
Setter Roche LLP - Seagate
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
EXAMINER
GOLDSCHMIDT, CRAIG S
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
melissa@setterroche.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROBERT DALE MURPHY and
ROBERT WILLIAM DIXON1
________________

Appeal 2018–007573
Application 13/803,015
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The present Panel of the Board previously affirmed the Examiner’s
rejection of claims 1, 2, 4, and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Hanebutte (US 2008/0082743 A1; pub. Apr. 3, 2008) and
Puckette (US 6,385,721 B1; issued May 7, 2002). See Decision on Appeal
mailed May 2, 2019 (“Decision”) 15 (designating our reasoning for
affirming the rejection as constituting a new ground of rejection pursuant to
41.50(b)).2 Appellants now file a Request for Rehearing (dated June 21,
2019) (“Req. for Reh’g”) requesting under 37 C.F.R. §§ 41.50(b)(2) and

1 Appellants list Seagate Technology LLC as the real party in interest.
Appeal Brief filed February 7, 2018 (“Appeal Br.”) 2.
2 In our Decision, we also reversed the Examiner’s rejection of claims 5–7,
11, 12, 14–17, and 20. Decision 15.
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41.52(a) that the Board reconsider the decision affirming the rejection of the
noted claims.
We grant Appellants’ request to modify our decision, and we now
reverse the obviousness rejection of claims 1, 2, 4, and 10.

ANALYSIS
Claim 1 recites, inter alia, a data storage device (DSD) configured to
determine a first memory location of hibernation data “without receiving an
indication of the first memory location from a host.” Appeal Brief Filed
Feb. 7, 2018 (“Appeal Br.”) 20 (Claims Appendix). In our Decision, we
determined that Hanebutte teaches this limitation because it teaches saving
hibernation data to a memory location in a non-volatile (NV) cache (the first
memory location) without that address “being known to the OS.”
Decision 6–7 (citing Hanebutte ¶ 29). Specifically, we determined that
Hanebutte teaches in Figure 5, a memory table used to “hide the non-volatile
cache from the OS” by including information that maps locations on the
hard disk (received from the OS) to locations on the NV cache where data is
to be stored. Decision at 7. Because we modified the Examiner’s reasoning
for affirming the rejection, we designated the rejection as constituting a new
ground pursuant to our discretionary authority under 37 C.F.R. § 41.50(b).
Id. at 10.3
In their Request, Appellants argue that we misapprehended or
overlooked the relevant teachings of Hanebutte because we incorrectly
interpreted the term “host” in claim 1. Req. for Reh’g 7–12. Appellants

3 In our Decision, we also reversed the Examiner’s rejection of claims 5–7,
11, 12, 14–17, and 20. Decision 15.
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assert that the term “host” in claim 1 “does not simply refer to a host
operating system (OS),” but rather “[a] ‘host’ includes a series of
operational layers, of which the OS is only one.” Req. for Reh’g 7. In
support of this contention, Appellants point to Figure 1 and their
Specification showing “a host 102 with a distinctly identified OS 104, rather
than having an OS be the host by itself.” Id. at 12.
In the context of Hanebutte, Appellants argue that the “host” includes
not only the operating system, but also “the bus 480 and everything above it
in FIG. 4,” including the BIOS 455 and OS/Original Equipment
Manufacturer (OEM) disk driver 435 that manages the operations of the NV
cache. Req. for Reh’g at 8, 10. Thus, Appellants argue, “the components
that create and use the mapping table” of Hanebutte “are part of the host,
whether or not they are operating transparent to an OS of the host.” Id.
at 10.
Upon consideration of Appellants’ arguments and evidence, we agree
that the proper construction of the term “host” in claim 1 includes all of the
elements and layers of the host computer, and that the term is not limited to
the host’s operating system, and modify our construction accordingly. This
construction of the term “host” affects our application of Hanebutte’s
teachings.
As we previously determined (Decision 6–7), Hanebutte teaches
determining a first memory location of hibernation data without receiving an
indication of the first memory location from the host’s operating system due
to the mapping table of Figure 5. Hanebutte ¶ 29. However, other elements
of Hanebutte’s host, including the BIOS 455 and OS/OEM disk driver 435,
manage the caching operations of the mapping table and, thus, do provide an
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indication of the location of the hibernation data in the NV cache (first
memory location). Id. ¶¶ 23, 26, 28–28; Fig. 4. For this reason, we agree
that the Examiner’s rejection and our original decision misapprehended
these teachings of Hanebutte, and we reverse the Examiner’s obviousness
rejection of claim 1. We, likewise, reverse the rejection of claims 2, 4, and
10, which are dependent on claim 1.

DECISION
We modify our prior Decision and now reverse the Examiner’s
decision rejecting claims 1, 2, 4, and 10.

REHEARING GRANTED