Ex Parte Battaglia et al

Patent Trial and Appeal Board

Nov 16, 2012

10994271 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL S. BATTAGLIA, ADDISON M. FISCHER,
RANDAL J. MARTIN, and STEVE ARMFIELD
____________

Appeal 2010-006608
Application 10/994,271
Technology Center 2100
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT,
and DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-9, 11-14, 16-20, 49-58, and 60-65. See App. Br.1 2. Claims 10 and
15 are objected to as dependent on a finally rejected claim. See id. Claims

1 Throughout this opinion, we refer to the Appeal Brief filed October 19,
2009, the Examiner’s Answer mailed January 25, 2010, and the Reply Brief
filed March 24, 2010.
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21-48 and 66-75 are withdrawn. See id. Claim 59 is cancelled. See id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to equipping a portable hard drive with
an electronic display for displaying information about the device (such as a
time of last user write to the device and available storage space on the
device). Claim 1, which is illustrative of the invention, reads as follows:
1. A portable hard drive of a size which may
be held in the palm of a hand for communicating with a
host device comprising:
at least one port configured to communicate with a
host device;
a mass storage hard disk;
processing circuitry operatively coupled to said
port and said hard disk and configured to calculate
information relating to a time of last user write in
response to a message indicating the ejection of the hard
disk from the host device; and
a display operatively coupled to said processing
circuitry and configured to display the calculated
information relating to a time of last user write and
information relating to the amount of available storage
space on the hard disk.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Hessing U.S. 5,276,564 Jan. 4, 1994
Bardmesser U.S. 5,986,992 Nov. 16, 1999
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Ledain U.S. 6,021,408 Feb. 1, 2000
McGowan U.S. 2002/0118165 A1 Aug. 29, 2002
Stephan U.S. 2005/0027976 A1 Feb. 3, 2005
(filed July 30, 2004)
Szolyga U.S. 2005/0125566 A1 Jun. 9, 2005
(filed Dec. 9, 2003)
Huang U.S. 2005/0193188 A1 Sep. 1, 2005
(filed Dec. 9, 2004)
Rothman U.S. 2005/0228963 A1 Oct. 13, 2005
(filed Apr. 13, 2004)
Harada U.S. 7,093,049 B2 Aug. 15, 2006
(filed June 25, 2003)
Claims 1, 2, 4-6, 11, 60, and 61 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Szolyga, Bardmesser, and Harada. See
Ans. 4-7.
Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, and Huang. See Ans. 7-8.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, and Hessing. See Ans. 8-9.
Claims 12-14, 16, 49, 50, 53, 54, and 58 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Szolyga, Bardmesser, Harada,
and Ledain. See Ans. 9-13.
Claims 9 and 62-65 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, and McGowan. See Ans.
13-14.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, and Stephan. See Ans.
14-17.
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Claim 51 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, Ledain, and Stephan. See
Ans. 17-18.
Claims 52 and 55-57 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, Ledain, and McGowan.
See Ans. 18-19.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szolyga, Bardmesser, Harada, Stephan, and Rothman.
See Ans. 19.

ISSUE
Appellants argue claims 1, 2, 4-6, 11, 60, and 61 as a group, focusing
their arguments on claim 1. See App. Br. 6-9. Appellants do not separately
argue claims 3, 7-9, 12-14, 16-20, 49-58, or 62-65. See App. Br. 9.
For claim 1, the Examiner finds that Szolyga discloses a portable hard
drive with at least one port configured to communicate with a host device, a
mass storage hard disk, processing circuitry operatively coupled to the port
and the hard disk and configured to calculate information, and a display
operatively coupled to the processing circuitry for displaying the calculated
information. See Ans. 4-5. However, the Examiner concedes that Szolyga
does not disclose (1) that the calculating is responsive to a message
indicating the ejection of the hard drive from the host; and (2) that the
calculated information is related to the time of last write to the hard disk.
See Ans. 5. The Examiner finds that Bardmesser discloses (1) and Harada
discloses (2), and that a person of ordinary skill in the art would have
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combined them with Szolyga to allow users of a hard drive to access the
information relevant to them. See Ans. 5-6.
The issue is whether, under Section 103(a), the Examiner erred in
finding that Bardmesser teaches “processing circuitry . . . configured to
calculate information . . . in response to a message indicating the ejection of
the hard disk from the host device.” See App. Br. 7-9.

ANALYSIS
REJECTION OF CLAIMS 1, 2, 4-6, 11, 60, AND 61 UNDER 35 U.S.C. § 103(a)
Appellants contend that the calculation the Examiner cites to in
Bardmesser is performed on the host device rather than on the portable hard
drive connected to the host. See App. Br. 8. In contrast, Appellants argue,
the hard drive of the claimed invention, rather than the host, calculates and
displays information without burdening the host or requiring that special
software be installed on the host. See id.
The Examiner responds that Bardmesser is not being cited to show
circuitry operatively coupled to a port and a hard disk. See Ans. 21. Instead,
Szolyga discloses that. See id.; see also Ans. 4. What the Examiner finds
missing from Szolyga but present in Bardmesser is a “calculation being
responsive to a message indicating the ejection of the storage device from
the system.” Ans. 21 (emphasis in original); accord Ans. 5. Thus, the
Examiner concludes that a person of ordinary skill in the art would modify
Szolyga’s circuitry, which is coupled to the port and hard disk, to perform a
calculation responsive to a message indicating the ejection of the hard drive,
as taught by Bardmesser. See Ans. 5, 21.
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In reply, Appellants raise two arguments that were not raised in their
Appeal Brief. First, Appellants argue that Szolyga does not describe that its
“suitable circuitry” is “coupled to a port configured to communicate with a
host device as well as to a hard disk,” and instead “is merely described as
being able to update a capacity indicator . . . .” Reply Br. 3-4. Appellants
present this argument as a response to the Examiner’s “clarification” of the
rejections, Reply Br. 3, implying that the Examiner had not previously cited
Szolyga for a description of processing circuitry operatively coupled to a
port and a hard disk. In fact, in both the September 17, 2008, Final
Rejection (at 3) and the Answer (at 4), the Examiner cites to Szolyga, not
Bardmesser, as disclosing processing circuitry operatively coupled to a port
and a hard disk. Appellants could have challenged this finding in their
Appeal Brief. Thus, Appellants have waived this argument. See, e.g., Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”).
Second, Appellants argue that the calculation the Examiner cites to in
Bardmesser is performed “when an eject command is detected,” and thus
occurs “before ejection.” Reply Br. 4 (emphasis in original). According to
Appellants, “the claimed device performs the calculation after the ejection of
the hard disk has taken place (e.g. in response to the ejection), while the
calculation performed by the combination of Szolyga and Bardmesser is
performed before the ejection has taken place (e.g. in response to the
ejection message).” Id. (emphasis in original). Appellants could have, but
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did not make this argument in their Appeal Brief. Accordingly, this
argument is also waived. See Borden, 93 USPQ2d at 1474.
Appellants’ argument is also unpersuasive, as it is not commensurate
with the broadest reasonable interpretation of Claim 1. Claim 1 does not
recite performing a calculation “in response to the ejection.” Instead, it
recites performing a calculation “in response to a message indicating the
ejection of the hard disk from the host device.” Appellants cite to no support
for their position that claim 1 requires performing the calculation only after
the hard disk has been ejected. The Specification simply states that the
“processing occurs when the external hard drive[] is transitioning from the
online state where it is accessible by the host to the offline state where it can
be disconnected from the host.” Spec. ¶ 00138. This suggests that the
processing occurs before the hard drive is ejected, or at least while the hard
drive is being ejected. It does not support a requirement that the processing
occur only after the hard drive has been ejected. Appellants admit that a
calculation performed per Bardmesser by Szolyga’s “suitable circuitry”
would be “performed in response to a message indicating that an eject
command has been issued.” Reply Br. 4. We conclude the recited “a
message indicating the ejection of the hard disk” encompasses Bardmesser’s
eject command. Thus, we agree with the Examiner’s finding that
Bardmesser teaches processing “in response to a message indicating the
ejection of the hard disk from the host device.” Ans. 5.
Accordingly, we sustain the rejection of (1) claim 1; (2) claim 60,
which includes recitations substantially the same as claim 1; (3) claims 2, 4-
6, and 11, which depend on claim 1; and (4) claim 61, which depends on
claim 60.
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REMAINING REJECTIONS
As explained above, Appellants do not separately argue claims 3, 7-9,
12-14, 16-20, 49-58, or 62-65. See App. Br. 9. Thus, we sustain the
Examiner’s rejections of these claims over the combinations of Szolyga,
Bardmesser, and Harada with Huang, Hessing, Ledain, McGowan, Stephen,
and/or Rothman for the same reasons as given for claim 1, above, and as
stated in the Answer, at pages 7-19. See MPEP § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”).

ORDER
The decision of the Examiner to reject claims 1-9, 11-14, 16-20, 49-
58, and 60-65 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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