Atsushi Abe et al.

Patent Trials and Appeals Board

Apr 2, 2021

2020000633 (P.T.A.B. Apr. 2, 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.
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.
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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.”).
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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.
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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.
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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
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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
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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).
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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
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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