Ex Parte Dayan et al

Patent Trial and Appeal BoardDec 17, 2012

11760821 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD ALAN DAYAN and JAMES FRANKLIN MACON JR. ____________________ Appeal 2010-005711 Application 11/760,821 Technology Center 2100 ____________________ Before: ST. JOHN COURTENAY III, CARL W. WHITEHEAD JR., and JAMES R. HUGHES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005711 Application 11/760,821 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-20. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. INVENTION Appellants’ claimed invention is generally related to the field of data processing devices, and more specifically, to data processing devices that employ fixed disk storage. (Spec. 1, ll. 15-16.) Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method of loading data from disk in a data processing system comprising: comparing a current sequence of disk requests to data indicative of a previous sequence of disk requests; responsive to detecting a match between the current sequence and the previous sequence, storing a copy of data blocks accessed during the current sequence in a contiguous portion of the disk; and responsive to a subsequent request for data in the disk sequence, mapping the request to the sequential portion of the disk and servicing the request from data in the sequential portion. (disputed limitation emphasized) REJECTIONS 1. Claims 1, 3, 6-8, 10, 1l, 13-15, 17, 18, and 20 stand rejected under 35 U S.C. § 103(a) as being unpatentable over the combination of “Desai” (U.S. Pat. No. 6,789,171 B2, issued Sept. 7, 2004) and Burr Appeal 2010-005711 Application 11/760,821 3 (U.S. Pat. App. Pub. No. 2004/0225874 A1, published Nov. 11, 2004). (Ans. 3-5.) 2. Claims 4, 5, 12, and 19 stand rejected under 35 U .S.C. § 103(a) as being unpatentable over the combination of Desai, Burr, and Lee (U.S. Pat. App. Pub. No. 2004/0260909 A1, published Dec. 23, 2004). (Ans. 5-6.) 3. Claims 2, 9, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Desai, Burr, Zwiegincew (U.S. Pat. No. 6,663,968 B2, issued Oct. 14, 2003), and Hung (U.S. Pat. No. 5,247,653, issued Sept. 21, 1993). (Ans. 6-7.) GROUPING OF CLAIMS Based on Appellants’ arguments, we will decide the appeal of the first-stated rejection of claims 1, 3, 6-8, 10, 1l, 13-15, 17, 18, and 20 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We address the second and third-stated rejections separately, infra. APPELLANTS’ CONTENTIONS Appellants contend, inter alia: T]he Examiner takes the position “boot flash memory or Burr as a whole is considered as a contiguous portion of memory of the flash memory. In other words, even if the data is stored non-continuously in the flash memory, it is still within the contiguous (whole) portion of the boot flash memory (from the first address to the last address).” Office Action at page 8. Appellants respectfully note in response, however, that such an interpretation is inconsistent with what is claimed and described in the present application. As a practical matter, interpreting Burr’s entire boot flash memory to be a contiguous portion of memory removes the limitation “contiguous portion of the disk” from Appellants’ claim as data stored anywhere in a Appeal 2010-005711 Application 11/760,821 4 computer memory would qualify as data stored in a contiguous portion of a disk. Such an interpretation is overly broad and inconsistent with Appellants’ disclosure. Appellants further note that claim 1 recites a storing data in a contiguous portion of a disk. The inclusion of the term “portion” would convey to one of skill in the art that claim 1 is directed to storing data in a targeted area of a disk that is smaller than the entirety of the disk - not storing data anywhere in a storage medium. Furthermore, the term “contiguous” must be given patentable weight such that storing in a non- continuous, fragmented fashion cannot be said to disclose storing of data in a contiguous portion of a disk. In fact, the term “contiguous” is introduced in the present application by noting that “it would be desirable if the repeated nature of the requests could be recognized by creating an entirely sequential (contiguous) copy of the requested data.” Appellants’ original application at page 2, lines 20-21. Not only does this reference point in Appellants’ original specification indicate that the term “contiguous” is intended to be given it’s commonly understood and standard definition, but the cited passage also highlights the difference between what is claimed in the present application and what is disclosed in Burr. The present application is directed to a method organizing data within computer storage in such a way that the relative positioning of data blocks facilitates quicker access times. In contrast, Burr is directed towards taking data stored in one medium and storing that data in another medium with quicker access times to reduce the time required to access stored data, without any real disclosure relating to how data is organized within a given storage medium. As such, the cited reference point in Burr cannot reasonably be said to teach or suggest storing a copy of data blocks accessed during the current sequence in a contiguous portion of the disk as claimed in the present application. Because the proposed combination of Desai and Burr does not teach or suggest storing the data in a contiguous portion of a disk, the proposed combination of Desai and Burr cannot be used to establish a prima facie case of obviousness against Appeal 2010-005711 Application 11/760,821 5 Appellants’ claims and the rejection of claim 1 under 35 U.S.C. § 103 should be withdrawn. (App. Br. 7-8, emphasis added). ANALYSIS CLAIMS 1, 3, 6-8, 10, 11, 13-15, 17, 18, AND 20 We observe that the Examiner takes “Official Notice” that the disputed limitation would have been obvious: As described above, the combination of Desai and Burr discloses about storing/copying and then servicing boot data into a flash memory separate from the hard drive. However, it is well-known in the art that the flash memory is a lot more expensive than the disk drive so it would have been obvious to one of ordinary skills in the art at the time of the current invention was made to copy the sequence of boot data into a separate partition of the disk drive of Desai instead of the expensive flash memory and servicing the subsequent request from that partition to reduce the cost. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice made in the previous Office Action (see MPEP 2144.03 (C)). (Ans. 4. emphasis added). In the “Response to Arguments” portion of the Answer, the Examiner more particularly clarifies that: Further even if for sake of argument, it is assumed that the Burr reference failed to teach storing data on a continuous portion of the disk, it is well known and notorious old in the art that storing data contiguously significantly reduces the data retrieval/access time. For example, if the data is stored non- contiguously on a disk, then the read/write head of the disk needs to be moved radially between different p[l]atters and/or inwardly or outwardly within the desired platter seeking desired track in order to read/retrieve the desired data, which relatively Appeal 2010-005711 Application 11/760,821 6 takes longer time compare to if the data is stored contiguously on the disk. (Ans. 8-9, emphasis added). Even if we assume arguendo (without deciding) that Appellants are correct in their characterization of the teachings and suggestions of Burr’s flash memory (paras. [0029]-0030]), we observe that the Brief is silent regarding any rebuttal of the Examiner’s alternative reliance on “Official Notice.” In particular, we find no statement in Appellants’ Brief that it was not well known to store data contiguously to improve access time, as found by the Examiner. (See Ans. 8-9.) Thus, Appellants have not made an express demand for evidence from the Examiner, or otherwise traversed the Examiner’s alternative reliance on “Official Notice.” See MPEP § 2144.03(C): 1 To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. Here, because Appellants have not met the requisite burden, we are not persuaded of Examiner’s error. Therefore, we sustain the Examiner’s rejection of representative claim1 as being obvious over the combination of Desai and Burr. Claims 3, 6-8, 10, 11, 13-15, 17, 18, and 20 (not separately argued) fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). 1 MPEP, Eighth Edition, August 2001, Rev. 9, August 2012. Appeal 2010-005711 Application 11/760,821 7 CLAIMS 2, 4, 5, 9, 12, 16, AND 19 Regarding the second and third-stated rejections, Appellants urge that these remaining claims are patentable by virtue of their respective dependencies from independent claims 1, 8, and 14, which were rejected over the base combination of Desai and Burr. (App. Br. 9-10.) However, because we do not agree that base claims 1, 8, and 14 are patentable over Desai and Burr, we find Appellants’ arguments unavailing for the same reasons discussed above regarding claim 1. Accordingly, we sustain the Examiner’s rejections of the remaining dependent claims that stand rejected under the second and third-stated rejections. DECISION We affirm the Examiner’s § 103 rejections of claims 1-20. No time for taking any action connected 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). ORDER AFFIRMED llw