Atsushi Abe et al.Download PDFPatent Trials and Appeals BoardApr 2, 20212020000633 (P.T.A.B. Apr. 2, 2021) Copy Citation 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. 13/376,151 12/02/2011 Atsushi Abe IBM1P227/ JP920080333US1 2762 50548 7590 04/02/2021 ZILKA-KOTAB, PC- IBM 1155 N. 1ST ST. SUITE 105 SAN JOSE, CA 95112 EXAMINER LOONAN, ERIC T ART UNIT PAPER NUMBER 2137 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ATSUSHI ABE, TAKASHI KATAGIRI, MOTOKO OE, SETSUKO MASUDA, YUTAKA OISHI, NORIKO YAMAMOTO, and KATSUMI YOSHIMURA ____________ Appeal 2020-000633 Application 13/376,151 Technology Center 2100 ____________ Before ERIC S. FRAHM, JOHN P. PINKERTON, and CARL L. SILVERMAN, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 11, 15, 21, 22, 31–33, and 38–43, which are all of the claims pending in this application. Claims 12–14, 16–20, 23–30, and 34–37 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal 2020-000633 Application 13/376,151 2 STATEMENT OF THE CASE Introduction Appellant states that the present invention “relates to a tape recording system including multiple tape storage apparatuses, which improves writing performance in the case of a host requesting writing of multiple data clusters and frequently providing synchronization requests.” Spec. ¶ 2.2 Illustrative Claim Claims 11 and 21 are independent. Claim 11 is illustrative of the subject matter on appeal and is reproduced below: 11. A tape storage system, comprising: a first tape storage apparatus having a first buffer divided into fixed-length segments, the first tape storage apparatus configured to: receive at the first tape storage apparatus a first data cluster from a host operatively coupled thereto; receive at the first tape storage apparatus a synchronization request from the host, where the synchronization request is received after the first data cluster; in response to receiving the first data cluster and the synchronization request from the host: add the first data cluster to one of the fixed-length segments of the first buffer of the first tape storage apparatus, where the first buffer is separate from a first tape; transmit the first data cluster and the synchronization request from the first tape storage apparatus to 2 Our Decision refers to the Final Office Action mailed Jan. 18, 2019 (“Final Act.”); Appellant’s Appeal Brief filed June 14, 2019 (“Appeal Br.”) and Reply Brief filed Nov. 4, 2019 (“Reply Br.”); the Examiner’s Answer mailed Oct. 3, 2019 (“Ans.”); and the original Specification filed Dec. 2, 2011 (“Spec.”). Appeal 2020-000633 Application 13/376,151 3 a second tape storage apparatus operatively coupled to the first tape storage apparatus; receive, at the first tape storage apparatus, a writing completion report from the second tape storage apparatus indicating that the first data cluster is written onto a second tape in the second tape storage apparatus; and send the writing completion report received from the second tape storage apparatus from the first tape storage apparatus to the host; receive at the first tape storage apparatus a second data cluster from the host; in response to receiving the second data cluster from the host: add the second data cluster to the one of the fixed- length segments of the first buffer of the first tape storage apparatus; and transmit the second data cluster from the first tape storage apparatus to the second tape storage apparatus; determine that the one of the fixed-length segments of the first buffer of the first tape storage apparatus is completely filled; and write the first data cluster and the second data cluster from the one of the fixed-length segments of the first buffer of the first tape storage apparatus onto the first tape, in response to determining that the one of the fixed-length segments of the first buffer of the first tape storage apparatus is completely filled. Appeal Br. 21–22 (Claims App.). Rejections on Appeal Claims 11, 15, 21, 22, 31, 33, 38–41, and 43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jaquette (US 2004/0133737 A1; published July 8, 2004) and Shiratori (US 2007/0053091 A1; published Mar. 8, 2007). Final Act. 3–13. Appeal 2020-000633 Application 13/376,151 4 Claim 32 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jaquette, Shiratori, and Greco et al. (US 2008/0066192 A1; published Mar. 13, 2008) (“Greco”). Final Act. 13–14. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jaquette, Shiratori, and Itagaki et al. (US 2007/0079059 A1; published Apr. 5, 2007) (“Itagaki”). Final Act. 14 ANALYSIS Based on Appellant’s arguments in the Briefs, the dispositive issue before us is whether the combined disclosures of Jaquette and Shiratori teach or suggest “in response to receiving the first data cluster and the synchronization request from the host: . . . transmit the first data cluster and the synchronization request from the first tape storage apparatus to a second tape storage apparatus operatively coupled to the first tape storage apparatus” (“the disputed limitation”), as recited in claims 11 and 21.3 Examiner’s Findings, and Appellant’s Arguments In the Final Office Action, the Examiner finds that Jaquette discloses the disputed limitation. Final Act. 3–4 (citing Jaquette ¶¶ 67, 75; Fig. 6). In particular, the Examiner finds that paragraph 67 of Jaquette discloses “the deferred sync logic receives the data to be synchronized and stores the data of the transaction in non-volatile store 25.” Id. at 4 (italics omitted). The Examiner also finds that paragraph 67 of Jaquette discloses “the deferred sync logic 80 supplies the data of the transaction and a synchronize 3 Appellant makes other arguments in the Briefs with respect to claims 11 and 21, but we do not address them because our decision of this issue is dispositive with respect to these claims. Appeal 2020-000633 Application 13/376,151 5 command to the magnetic tape drive 15 for writing to the magnetic tape 11.” Id. (italics omitted). In the Appeal Brief, Appellant argues that although Jaquette discloses the deferred sync logic receives transaction data and a synchronize command, Jaquette also discloses that “[t]he data of the transaction is supplied to a magnetic tape drive for writing to the magnetic tape, but the synchronize command is stripped from the data.” Appeal Br. 12 (citing Jaquette ¶ 54). According to Appellant, “receiving transaction data and a synchronize command, storing the transaction data in a non-volatile store . . . and supplying only the data to a magnetic tape drive, as in Jaquette, fails to teach ‘in response to receiving the first data cluster and the synchronization request from the host . . . transmit[ting] the first data cluster and the synchronization request from the first tape storage apparatus to a second tape storage apparatus operatively coupled to the first tape storage apparatus,’” as claimed. Id. In the Answer, the Examiner finds that paragraph 55 of Jaquette discloses that instead of sending the synchronize command with the data, “a deferred synchronize command is provided to the tape drive.” Ans. 5 (citing Jaquette ¶ 55). The Examiner also finds that the disputed limitation “is not limited to transmitting the data cluster and the synchronization command simultaneously.” Id. The Examiner notes that, as found in the Final Office Action, paragraph 67 of Jaquette discloses the transmission of a “synchronize command,” which the Examiner finds is “analogous to the recited ‘synchronization request.’” Id. (citing Jaquette ¶ 67). The Examiner further finds that Jaquette teaches the disputed limitation because Jaquette discloses “the data cluster and the synchronization command are transmitted Appeal 2020-000633 Application 13/376,151 6 from the first storage apparatus then subsequently the data cluster and the synchronization command are received by the second storage apparatus (although not necessarily at the same time).” Id. at 5–6. In response, Appellant argues that Jaquette discloses the “deferred sync logic . . . receives the data to be synchronized, which could be in the form of a transaction and a Synchronize Command following the transaction, and stores the data of the transaction to the non-volatile store,” where “[t]he deferred sync logic . . . also supplies the data of the transaction to the magnetic tape drive . . . for writing to the magnetic tape.” Reply Br. 8 (citing Jaquette ¶ 67). Appellant also argues that Jaquette discloses: “[t]he data of the transaction is supplied to a magnetic tape drive for writing to the magnetic tape, but the synchronize command is stripped from the data” (Paragraph [0054] – emphasis added) and that “in a new function, a Deferred Synchronize Command is provided to the magnetic tape drive,” where such command “is not a typical synchronize command (Paragraph [0055] – emphasis added).” Id. at 9 (citing Jaquette ¶¶ 54–55). As in the Appeal Brief, Appellant again argues that, “[h]owever, receiving transaction data and a synchronize command, storing the transaction data in a non-volatile store . . . and supplying only the data to a magnetic tape drive, as in Jaquette, fails to teach ‘in response to receiving the first data cluster and the synchronization request from the host . . . transmit[ting] the first data cluster and the synchronization request from the first tape storage apparatus to a second tape storage apparatus operatively coupled to the first tape storage apparatus.’” Id. Appellant also argues that “[m]oreover, Jaquette also discloses that a deferred command is later sent to the tape drive, but such deferred command is different from the synchronize Appeal 2020-000633 Application 13/376,151 7 command, and is also not sent ‘in response to receiving the first data cluster and the synchronization request from the host.’” Id. Applicable Law “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.”). “A rejection based on section 103 clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Claims 11, 15, 21, 22, 31–33, and 38–434 We determine the Examiner’s findings concerning the disputed limitation of claim 11 fail to meet this standard because they are conclusory and do not provide a reasoned or adequate explanation of how Jaquette, either alone or in combination with Shiratori, teaches or suggests “in response to receiving the first data cluster and the synchronization request 4 Appellant argues claim 11 together with claims 15, 33, 38–40, and 43. Appeal Br. 7–14. Appellant asserts that claims 21 and 22 are not met by the prior art for similar reasons as argued with respect to claim 11. Id. at 14. Accordingly, we select claim 11 as representative, and the remaining claims stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appeal 2020-000633 Application 13/376,151 8 from the host: . . . transmit the first data cluster and the synchronization request from the first tape storage apparatus to a second tape storage apparatus operatively coupled to the first tape storage apparatus.” Instead, we agree with Appellant’s argument that Jaquette’s disclosure of receiving transaction data and a synchronize command, storing the transaction data in a non-volatile store, stripping the synchronize command from the data, and supplying only the data to a magnetic tape drive fails to teach “in response to receiving the first data cluster and the synchronization request from the host . . . transmit[ting] the first data cluster and the synchronization request from the first tape storage apparatus to a second tape storage apparatus.” See Appeal Br. 12 (citing Jaquette ¶ 54); Reply Br. 8–9 (citing Jaquette ¶¶ 54, 67). We agree with the Examiner that the disputed limitation of claim 11 does not require transmitting the data cluster and synchronization request or command simultaneously. We also agree with the Examiner’s finding that paragraph 55 of Jaquette discloses a “deferred synchronize command” is provided to the magnetic tape drive. However, we agree with Appellant’s argument that Jaquette’s “deferred synchronize command” is different from the “synchronize command,” and is also not sent “in response to receiving the first data cluster and the synchronization request from the host.” In other words, regardless of the “deferred synchronize command” being sent after the data cluster (i.e., not simultaneously), the Examiner has not shown that Jaquette discloses it is sent “in response to receiving the first data cluster and the synchronization request from the host.” Accordingly, on this record, we are constrained to find the Examiner erred because the Examiner has not shown that the combination of Jaquette Appeal 2020-000633 Application 13/376,151 9 and Shiratori teaches or suggests the disputed limitation of claim 11 by a preponderance of the evidence. See Caveney, 761 F.2d at 674. Thus, we do not sustain the Examiner’s rejections of claims 11 and 21, and dependent claims 15, 22, 31–33, and 38–43, for obviousness under § 103(a). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11, 15, 21, 22, 31, 33, 38–41, 43 103(a) Jaquette, Shiratori 11, 15, 21, 22, 31, 33, 38–41, 43 32 103(a) Jaquette, Shiratori, Greco 32 42 103(a) Jaquette, Shiratori, Itagaki 42 Overall Outcome 11, 15, 21, 22, 31–33, 38–43 REVERSED Copy with citationCopy as parenthetical citation