Ex Parte Evans

Patent Trial and Appeal Board

Sep 25, 2012

10832466 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RHYS WYN EVANS

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Appeal 2009-015306
Application 10/832,466
Technology Center 2100
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Before SCOTT R. BOALICK, DENISE M. POTHIER, and BRUCE R.
WINSOR, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 6-9, 11, 12, 14, 16, 18, 19, 21, 29-36, 46, and 47.
Claims 3-5, 10, 13, 15, 17, 20, 22-28, and 37-45 have been canceled. App.
Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellant’s invention relates to a technique for identifying the most
recent write to a data storage medium of plural data storage media. See
Abstract. Claim 1 is reproduced below:
1. Apparatus for use in transferring data to and/or from a plurality of
storage media, comprising:
a controller operable to identify a most recently written to data
storage medium of said plurality of data storage media and operable to
store, for plural computer entities for which the apparatus stores
backup data, data that includes a rack or carousel location of one or
more cartridges for which the backup data is stored for one of the
plural computer entities that failed and requires the backup data for
recovery.

The Examiner relies on the following as evidence of unpatentability:
Dewey US 5,740,061 Apr. 14, 1998
Gold WO 00/08561 Feb. 17, 2000
Tsurumaki US 6,507,889 B1 Jan. 14, 2003
Slater US 2003/0014605 A1 Jan. 16, 2003

The Rejections
1. The Examiner rejected claims 1, 2, 6-9, 12, 14, 18, 19, 35, 36, 46,
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and 47 under 35 U.S.C. § 103(a) as unpatentable over Dewey and Slater.
Ans. 3-11.1
2. The Examiner rejected claims 29, 30, 33, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Dewey, Gold, and, Slater. Ans. 11-14.
3. The Examiner rejected claims 11, 16, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Dewey, Slater, and Tsurumaki. Ans. 14-15.
4. The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103(a)
as unpatentable over Dewey, Gold, Slater, and Tsurumaki. Ans. 16.

THE OBVIOUSNESS REJECTION OVER DEWEY AND SLATER
Regarding representative claim 1, Appellant argues that Dewey
teaches a host processor – not a tape library or drive – that keeps track of the
frequently-used cartridges and that the information for restoring the hard
drive is located in this processor. App. Br. 15-16; Reply Br. 3. Appellant
further contends that Slater does not teach a tape drive that stores backup
data and data to determine which tape has most recent data for restoring a
failed host. Id.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Dewey and Slater collectively would have taught or suggested an
apparatus comprising a controller operable to: (1) identify a most recently
written to a data storage medium and (2) store data that includes a location
of one or more cartridges for which backup data is stored?

1 Throughout this opinion, we refer to: (1) the Appeal Brief filed March 23,
2009; (2) the Examiner’s Answer mailed June 19, 2009; and (3) the Reply
Brief filed August 19, 2009.
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ANALYSIS
We begin by construing claim 1 and noting that the claim recites,
“[an] apparatus for use in transferring data to and/or from a plurality of
storage media, comprising: a controller . . .” (emphasis added). Noticeably
absent from this claim are the terms, “library” or “tape library.” We
therefore give the recited term, “[a]pparatus,” its broadest reasonable
construction in light of the disclosure and will not read a particular
embodiment appearing in the disclosure (e.g., Spec. 3:18-26, 8:4-28) into a
claim when the claim language is broader than the disclosed embodiment, as
is the case here. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004); see also SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004). There is also nothing in claim 1 limiting
the apparatus to a single device. Thus, Appellant’s arguments concerning
Dewey failing to teach the current information for restoring the hard drive is
located on the tape library or the combination of Dewey and Slater does not
teach a library for identifying the most recently written to storage device, are
not commensurate with the scope of the claim. See App. Br. 14-15; Reply
Br. 3.
Additionally, Appellant contends that Slater does not teach the tape
drive stores both back up data or data to determine which tape has the most
recent data for restoring a failed host. App. Br. 16; Reply Br. 3. Once
again, this argument is not commensurate with the claim scope since claim 1
does not recite a tape drive for storing both back up data. Also, the
Examiner has relied on Dewey – not Slater – to teach storing data in
cartridges and determining the most recent write. The Examiner has cited to
Slater for the specific purpose of teaching that backing up data for plural
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computer entities is well known and that, when combined with Dewey,
teaches a controller operable to store data for plural computer entities for
which the apparatus stores backup data including cartridge location data for
which the backup data is stored for a computer entity that has failed and
requires the backup data for recovery. See Ans. 4, 18.
We therefore are not persuaded that Appellant has adequately
demonstrated that Dewey and Slater collectively fail to teach a controller
operable to (1) identify a most recently written to data storage medium and
(2) store data that includes a cartridge location for which the backup data is
stored for one of the plural computer entities that has failed and requires the
backup data for recovery as recited.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 and claims 2, 7-9, 35, and 36 not
separately argued with particularity.

Claim 6
Appellant repeats that Dewey and Slater fail to teach a library that
identifies the most recently written to storage medium (App. Br. 17) and
additionally assert the combination fails to teach a library that stores the
plural storage media wherein the library stores the backup data, identifies the
most recently written to storage medium, and stores data that includes
location of a cartridge where the backup data is stored (App. Br. 16). The
issue before us then is, under § 103, has the Examiner erred in rejecting
claim 6 by finding that Dewey and Slater collectively would have taught or
suggested an apparatus “configured as a library for storing said plurality of
storage media.”
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ANALYSIS
Based on the evidence of record, we find no error in the Examiner’s
rejection. We agree with Appellant (Reply Br. 2) that claim 6 does not
recite an intended use limitation (see Ans. 17-18) but, rather, recites a
functional limitation indicating that the apparatus is configured or is capable
of being a library for storing the storage media. In this sense, claim 6 differs
in scope from claim 1.
Even so, Dewey teaches an automated super library 200 that includes
all the elements shown in Figure 2. See Abstract, col. 3, ll. 22-23; Fig. 2.
All the components, including the host processor 250, in Dewey are thus
part of a “library.” See Fig. 2. That is, the host processor 250, used to
perform routines on behalf of the main picker 206, is a component of the
super library. See Abstract, col. 3, ll. 22-23, col. 4, ll. 14-16; Fig. 2. Dewey
as such teaches and suggests an apparatus configured as a library for storing
the storage media as recited.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 6.

Claims 12, 14, 18, 19, 46, and 47
Representative claim 12 recites “[a] data storage device” having
physical locations for receiving data storage media cartridges that store
backup data for computer entities, non-volatile memory operable to store
data relating to a location of the data storage media cartridge, and data
relating to a time at and to which the data storage media cartridge was last
written. Once again, Appellant repeats the argument made when addressing
claim 1 concerning Dewey failing to teach the current information for
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restoring the hard drive being located in the tape library and Slater failing to
teach a tape drive storing both backup data and data to determine which tape
has the most recent data for restoring a failed host. App. Br. 17-18. We are
not persuaded for the reasons previously discussed in connection with
claim 1.
Additionally, to extent that the term, “data storage device” in the
preamble is considered to be synonymous with defined term, “data storage
unit” (Spec. 6:28-30 ), Dewey teaches a super library, such as that shown in
Figure 2 and discussed in connection with claim 6, is a data storage system
having interchangeable data storage media. See col. 1, ll. 16-28, 56-57.
Appellant also asserts, without any credible evidence, that Dewey and
Slater fail to teach or suggest various limitations in claim 12. See App.
Br. 17-18. However, a mere assertion without any further argument that
these references do not teach or suggest recited limitations is not considered
a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 12 and claims 14, 18, 19, 46, and 47 not
separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER DEWEY,
GOLD, AND SLATER

Representative claim 29 recites, in pertinent part, a method of
operating a data storage unit comprising maintaining a list of data storage
media cartridges corresponding to computer entities using the data storage
unit for backup. Appellant admits that Dewey teaches maintaining a list that
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tracks which cartridges are most or least frequently used by single computer
entity but fails to teach or suggest maintaining a data storage media
cartridges list corresponding to plural computer entities using the data
storage unit for backup. App. Br. 18-19.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 29 by finding
that Dewey, Gold, and Slater collectively would have taught or suggested
maintaining a list of data storage media cartridges corresponding to
computer entities using the data storage unit for backup?

ANALYSIS
Based on the evidence of record, we find no error with the Examiner’s
rejection. First, we note that Appellant admits that Dewey teaches
maintaining a list that tracks which cartridges are most or least frequently
used by single computer entity. See App. Br. 18-19. Thus, without dispute,
Dewey teaches maintaining a cartridge list corresponding to a single
computer entity.
Second, the Examiner also relies on Slater to teach backing up data
for multiple computer entities. See Ans. 12-13. Appellant fails to discuss
Slater in the arguments or dispute the Examiner’s findings in Slater
regarding claim 29. See App. Br. 18-19. Cited paragraphs 0002 and 0077 in
Slater additionally support this position by discussing backing up data in a
wide area network (¶ 0002) and backing multiplexing data (¶ 0077). Slater
also teaches multiplexing data in Figure 6 from various input/output lines
with different memory units fed to a multiplexor. ¶ 0146; Fig. 6. These
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passages, at a minimum, suggest data coming from multiple sources is being
backed up and thus plural computer entities using the data storage unit for
back up.
Third, Appellant does not dispute the combined teachings of Slater
with Dewey (see App. Br. 18-19), as presented by the Examiner (see Ans.
12-13). That is, combining Slater’s teaching or suggestion of backing up
data from multiple sources/computing entities with Dewey does no more
than predictably yield maintaining a list of data storage media cartridges
corresponding to plural computer entities using the data storage unit for
backup as recited. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 29 and claims 30, 33, and 34 not
separately argued with particularity.

THE REMAINING OBVIOUSNESS REJECTIONS
The Examiner finds that: (1) Dewey, Slater, and Tsurumaki teach all
the limitations in claims 11, 16, and 21 (Ans. 14-15) and (2) Dewey, Gold,
Slater, and Tsurumaki teach all the limitations of claims 31 and 32
(Ans. 16). For each of these rejections, Appellant refers to the previous
arguments made for the independent claims 1, 12, and 29. See App. Br. 19.
The issues before us, then, are the same as those in connection with claims 1,
12, and 29, and we refer Appellant to our previous discussions. We also
need not address whether Tsurumaki cures any deficiency. For the above
reasons, Appellant has not persuaded us of error in the rejections of claims
11, 16, 21, 31, and 32.
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CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 6-9, 11, 12, 14, 16,
18, 19, 21, 29-36, 46, and 47 under § 103.

DECISION
The Examiner’s decision rejecting claims 1, 2, 6-9, 11, 12, 14, 16, 18,
19, 21, 29-36, 46, and 47 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)(iv).

AFFIRMED

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