Ex Parte Goodman et al

Patent Trials and Appeals BoardJan 29, 2019

15272303 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/272,303 09/21/2016 Brian G. Goodman 50548 7590 01/31/2019 ZILKA-KOTAB, PC- IBM 1155 N. 1st St. Suite 105 SAN JOSE, CA 95112 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 ATTORNEY DOCKET NO. CONFIRMATION NO. TUC1P322/TUC920160102US1 4804 EXAMINER BIRKHIMER, CHRISTOPHER D ART UNIT PAPER NUMBER 2136 NOTIFICATION DATE DELIVERY MODE 01/31/2019 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 BRIAN G. GOODMAN, JOSE G. MIRANDA-GA VILLAN, and KENNYN. QIU Appeal2018-003594 Application 15/272,303 Technology Center 2100 Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 appeal from the Examiner's decision to reject claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part, and enter a new ground of rejection. STATEMENT OF THE CASE Appellants' invention stores a snapshot of one or more logs in memory by (1) receiving an input from a designated mechanism of an 1 Appellants identify the real party in interest as International Business Machines Corporation. App. Br. 2. Appeal2018-003594 Application 15/272,303 automated data storage library in response to the designated mechanism being triggered; and (2) capturing the snapshot in response to receiving the input from the designated mechanism. See generally Abstract. According to one embodiment, the designated mechanism may be a physical mechanism. Spec. ,r 79. The designated physical mechanism may be triggered without performing any other preliminary or subsequent steps, e.g., such as a system login, access verification, library commands, software navigation, data collection prompts, etc. Rather, the designated physical mechanism . . . may be triggered simply by providing a physical input ( e.g., an external force or touch). Id. ,r 84. Claims 1 and 15 are illustrative: 1. A computer-implemented method, comprising: receiving an input from a designated mechanism of an automated data storage library in response to the designated mechanism being triggered, with a proviso that the designated mechanism is triggerable without performing any preliminary steps, wherein the designated mechanism is accessible at the automated data storage library; capturing a snapshot of one or more logs in response to receiving the input from the designated mechanism; and storing the snapshot in memory. 15. A system, comprising: a processor; and logic integrated with the processor, executable by the processor, or integrated with and executable by the processor, the logic being configured to: receive, by the processor, an input from a designated mechanism of an automated data storage library in response to the designated mechanism being triggered, wherein the designated mechanism is accessible at the automated data storage library; determine, by the processor, whether a maximum number of snapshots have been captured in a given amount of time; 2 Appeal2018-003594 Application 15/272,303 ignore, by the processor, the input received in response to determining that the maximum number of snapshots have been captured in the given amount of time; capture, by the processor, a snapshot of one or more data logs in direct response to receiving the input from the designated mechanism and determining that the maximum number of snapshots have not been captured in the given amount of time; determine, by the processor, whether a total amount of snapshots stored in the automated data storage library exceeds a threshold; overwrite, by the processor, a selected snapshot stored in the automated data storage library with the captured snapshot in response to determining that the total amount of snapshots stored in the automated data storage library exceeds the threshold; store, by the processor, the snapshot in memory in response to determining that a total amount of snapshots stored in the automated data storage library does not exceed a threshold; establish, by the processor, a connection with a remote location; and transmit, by the processor, a redundant copy of the snapshot to a remote location, wherein the snapshot includes a preconfigured set of information, wherein the preconfigured set of information is selected from a group consisting of: trace information, diagnostic information, statistical information, configuration information, backup information and database information, wherein the automated data storage library is a magnetic tape library. 3 Appeal2018-003594 Application 15/272,303 THE REJECTIONS The Examiner provisionally rejected claims 1, 2, 4--9, and 11-14 on the ground of non-statutory obviousness-type double patenting over claims 1, 2, 4, 6-8, and 10 of Application No. 15/272,294. Final Act. 4--5. 2 The Examiner rejected claims 1-14 under 35 U.S.C. Â§ 112(b) as being indefinite. Final Act. 5---6. The Examiner rejected claims 1--4, 6-11, 13, and 14 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Sundrani (US 2013/0097397 Al; Apr. 18, 2013). Final Act. 6-12. The Examiner rejected claims 5 and 12 under 35 U.S.C. Â§ 103 as being unpatentable over Sundrani and Official Notice. Final Act. 13-16. The Examiner rejected claims 15-19 under 35 U.S.C. Â§ 103 as being unpatentable over Sundrani, Per (US 8,074,035 Bl; Dec. 6, 2011), and Official Notice. Final Act. 16-22. The Examiner rejected claim 20 under 35 U.S.C. Â§ 103 as being unpatentable over Sundrani, Per, Official Notice, and Wayda (US 2008/0281875 Al; Nov. 13, 2008). Final Act. 22-23. THE PROVISIONAL DOUBLE PATENTING REJECTION Appellants do not contest the Examiner's rejection of claims 1, 2, 4--9, and 11-14 under non-statutory obviousness-type double patenting. See App. Br. 38-39. We, therefore, summarily sustain this rejection. See MANUAL OF 2 Throughout this opinion, we refer to (1) the Final Rejection mailed May 5, 2017 ("Final Act."); (2) the Appeal Brief filed Oct. 6, 2017 ("App. Br."); (3) the Examiner's Answer mailed Dec. 15, 2017 ("Ans."); and (4) the Reply Brief filed Feb. 14, 2018 ("Reply Br."). 4 Appeal2018-003594 Application 15/272,303 PATENT EXAMINING PROCEDURE (MPEP) Â§ 1205.02 (9th ed. Rev. 08.2017, Jan. 2018). THE INDEFINITENESS REJECTION The Examiner finds the term "preliminary steps" recited in claim 1 renders the claim indefinite because it raises questions of what is a preliminary step and what is not. Final Act. 5. Appellants assert, among other things, that claim 1 is definite because if a product receives an input from a data storage library's designated mechanism in response to triggering the designated mechanism in the manner claimed, then a skilled artisan knows the claim is infringed. App. Br. 33. Appellants further assert paragraphs 84 and 104 of the Specification provide an adequate description to apprise one skilled in the art of the scope of claim 1. App. Br. 34; Reply Br. 18. ISSUE UnderÂ§ 112(b ), has the Examiner erred in rejecting claim 1 by finding that the term "preliminary steps" renders the claim indefinite? ANALYSIS We begin by noting that claim 1 recites, in pertinent part, that the designated mechanism is triggerable without performing any preliminary steps. Because this dispute turns on this capability, it is crucial to determine what a "preliminary step" is in this context. 5 Appeal2018-003594 Application 15/272,303 To this end, we first note that the term "preliminary step" is not defined in the Specification. The Specification, however, does explain that a designated physical mechanism may be triggered without performing any other preliminary or subsequent steps, e.g., such as a system login, access verification, library commands, software navigation, data collection prompts, etc. Spec. ,r,r 84, 104. Our emphasis underscores that these machine-based functions are merely exemplary, and provided in an open- ended list. The term "etc." at the end of this list is telling in this regard. Appellants' Specification further explains that an operator may trigger a push-button designated physical mechanism by depressing the mechanism with a finger upon arriving at a storage library. Id. ,r 84. Our emphasis highlights the fact that the user must arrive at the storage library before the button can be depressed-a necessary preliminary physical step. The Specification adds that, responsive to the user depressing the button, the system may capture a snapshot without requiring any further action, e.g., system login, access verification, library commands, software navigation, data collection prompts, etc. Id. These exemplary machine-based subsequent steps are the same as the exemplary machine-based preliminary steps listed above. See id. Although this description informs our understanding of the recited "preliminary steps," it is not limiting. We, therefore, construe the term "preliminary steps" under its plain meaning. A general-purpose dictionary defines the term "preliminary" as "coming before," MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 919 (adj.) (10th ed. 1993); and the term "step" is defined as "an action ... often occurring as one in a series," id. at 1152 (n. def. 7). Based on these definitions, the Examiner's difficulty in determining 6 Appeal2018-003594 Application 15/272,303 the meaning of a "preliminary step," namely what particular actions that precede triggering the mechanism qualify as "preliminary steps" is understandable given the sheer breadth of this term, and the exemplary, open-ended description of "preliminary steps" in the Specification. To be sure, breadth is not indefiniteness. See In re Miller, 441 F.2d 689, 693 (CCP A 1971 ). But given the scope and breadth of this term, it is unclear whether a "preliminary step" is limited to ( 1) solely a machine-based function, such as the five exemplary functions listed in the Specification's paragraph 84; (2) a physical step, such as a step performed by a user, performed by another person, and/or involving another device or apparatus; or (3) both. And even if preliminary steps were limited to machine-based functions, what types of machine-based functions are included? Are they limited to software-based functions, or can they also include those involving hardware? Indeed, it is difficult to envision the recited mechanism being triggerable without performing some form of machine-based preliminary step, including, among other things, simply turning on electrical power to the machine hosting the automated storage library to enable the library to be used in the first instance. Whether these necessary preliminary steps are encompassed by the term "preliminary steps" is, at best, unclear on this record as the Examiner indicates. Ans. 11. Nor is it clear whether these "preliminary steps" also include some physical step performed by a user or another person and/or whether they involve other device or apparatus. Accordingly, we find claim 1 is indefinite because not only are the boundaries of the claim not reasonably ascertainable on this record, the claim is also amenable to at least two plausible claim constructions 7 Appeal2018-003594 Application 15/272,303 discussed above, namely that a "preliminary step" is limited to (1) solely a machine-based function, such as the five exemplary functions listed in the Specification's paragraph 84; (2) a physical step, such as a step performed by a user or another person and/or involving other device or apparatus; or (3) both. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also MPEP Â§ 2173.0S(b )(II) ( citing Miyazaki). That claim 1 's "proviso" requires that the mechanism is triggerable without any preliminary steps only further underscores the need for clarity as to what exactly these steps are----clarity that is lacking on this record. We are, therefore, not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2-14 not argued separately with particularity. 3 THE ANTICIPATION REJECTION The Examiner finds Sundrani discloses every recited element of independent claim 1 including, among other things, receiving an input from a "designated mechanism" (physical mouse button and logical button) of an "automated data storage library" (multiple computing product system 100) in response to the designated mechanism being triggered, with a proviso that the designated mechanism is triggerable without performing any preliminary steps. Final Act. 6-7 ( citing Sundrani ,r 18; Fig. 1 ). According to the Examiner, when Sundrani' s mouse is already aligned with a desired button 3 Although Appellants nominally argue independent claim 8 separately with respect to the Examiner's indefiniteness rejection (App. Br. 34--37), Appellants' arguments are similar to those raised in connection with claim 1. We, therefore, group those claims accordingly. 8 Appeal2018-003594 Application 15/272,303 on a screen, there is no preliminary step of moving the mouse before the mouse's button is activated. Ans. 3. The Examiner further finds when Sundrani' s mouse requires movement to align with a desired button on a screen, then "[the] backup method is started once the mouse button is activated." Id. at 4. Appellants argue, among other things, that Sundrani' s user must move the mouse-a preliminary step----to orient a cursor over a display' s graphical user interface (GUI) before the mouse's button is activated. App. Br. 7; Reply Br. 3. ISSUE Under Â§ 102, has the Examiner erred by finding that Sundrani discloses a proviso that a designated mechanism is triggerable without performing any preliminary steps? ANALYSIS It is well settled that the burden of establishing a prima facie case of anticipation resides with the United States Patent and Trademark Office (USPTO). See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). That burden includes pointing out where each element of the claimed invention, arranged as required by the claim, is described identically in a single prior art reference, either expressly or under the principles of inherency. See generally In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v. Am. Hoist and Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). 9 Appeal2018-003594 Application 15/272,303 A key aspect of claim 1 is a proviso that a designated mechanism is triggerable without performing any preliminary steps. The Examiner finds Sundrani' s mouse may be clicked without performing any physical movement of the mouse. Final Act. 6-7 ( citing Sundrani ,r 18). According to the Examiner, Sundrani' s mouse does not require movement when the mouse happens to be aligned with the desired button on the screen before clicking the desired button on the screen. Ans. 3. The Examiner further finds that even assuming Sundrani' s mouse requires movement to align with the desired button on the screen, such movement is not part of "the method of performing the backup" because the method starts once the mouse button is clicked. Id. at 4. We find this position problematic on this record. According to Sundrani, "[a] user may be able to initiate automatic snapshot creation and backups through a single computer interface action, such as activating a GUI button via a mouse-button 'click."' Sundrani ,r 18. Sundrani, however, does not say whether the mouse is moved or not before activating the GUI button using the mouse-button "click." To be sure, it is possible that Sundrani's mouse may not need to be moved before clicking because a cursor on the screen is already aligned with desired button to activate an associated function. But it is also possible that the mouse may require movement to align the cursor with the button before clicking the button. That is, the cursor is either pre-aligned with the button or it is not. But the mere fact that a certain thing may result from a given set of circumstances is not sufficient to anticipate under Â§ 102. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981); see also Hansgirg v. Kemmer, 102 F .2d 212, 214 (CCP A 1939). And even if it were probable that the 10 Appeal2018-003594 Application 15/272,303 cursor was already aligned with the GUI button before clicking the mouse, that, too, is insufficient to anticipate. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (noting that inherency may not be established by probabilities or possibilities). Therefore, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claim 8 that recites commensurate limitations; and (3) dependent claims 2--4, 6, 7, 9-11, 13, and 14 for similar reasons. Because this issue is dispositive regarding our reversing the Examiner's rejection of these claims, we need not address Appellants' other associated arguments. THE OBVIOUSNESS REJECTION OVER SUNDRANI, PER, AND OFFICIAL NOTICE The Examiner finds that Sundrani discloses many recited elements of independent claim 15 including, among other things, receiving an input from a "designated mechanism" (physical mouse button and logical button) of an "automated data storage library" (multiple computing product system 100) in response to the designated mechanism being triggered. Final Act. 16-17. The Examiner also finds that Sundrani' s multiple computing product system 100 is a "magnetic tape library." Id. at 3. Although the Examiner acknowledges that Sundrani does not disclose (1) ignoring the input received in response to determining that a maximum number of snapshots have been captured in a given amount of time, and (2) capturing a snapshot of one or more data logs in direct response to determining that the maximum number of snapshots have not been captured in the given amount of time, the Examiner cites Per for teaching this feature. 11 Appeal2018-003594 Application 15/272,303 Id. at 19-20. The Examiner also acknowledges that although Sundrani does not disclose a snapshot including a preconfigured set of information selected from a group consisting of: trace information, diagnostic information, statistical information, configuration information, backup information and database information, such a snapshot is well known. Id. at 20-21. Given these findings, the Examiner concludes that claim 15 would have been obvious. Id. Appellants argue that the Examiner's reliance on Sundrani is misplaced because, among other things, Sundrani' s backup tape device is not a magnetic tape library as claimed. App. Br. 28. Appellants further argue paragraph 33 of Sundrani does not suggest that Sundrani's computing product system 100 is the backup tape device. Id. ISSUES I. Under Â§ 103, has the Examiner erred by finding that Sundrani, Per, and Official Notice collectively would have taught or suggested: ( 1) an automated data storage library is a magnetic tape library as recited in claim 15? (2) a proviso that a designated mechanism is triggerable without performing any other preliminary steps as recited in claim 19? (3) the designated mechanism is a logical button on a screen, wherein the screen is integrated in a housing of the automated data storage library as recited in claim 17? ( 4) the designated mechanism is a physical push button integrated in a housing of the automated data storage library, wherein providing input for 12 Appeal2018-003594 Application 15/272,303 capturing a snapshot is the sole function of the physical push button upon being triggered as recited in claim 16? II. Is the Examiner's proposed combination supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? ANALYSIS Claims 15, 18, and 20 We begin by construing a disputed limitation of claim 15 which recites, in pertinent part, a "magnetic tape library." As known in the art, the term "tape" is defined as "intended for use with recording ( as magnetic) tape," MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 1205 (adj. def. 2); and a "library" is defined as "a place in which ... reference materials ( as ... recordings ... ) are kept for use," id. at 671 (n. def. la). Therefore, a "magnetic tape library" encompasses a place in which recordings are kept on magnetic tape. The Specification discloses the automated data storage library 1002 illustrated in Figure 10 is a magnetic tape library. Spec. ,r 87; Fig. 10. Although this description informs our understanding of the recited "magnetic tape library," it does not limit our interpretation. With this construction, we see no error in the Examiner's finding that Sundrani's backup tape device corresponds to a magnetic tape library. Final Act. 19 (citing Sundrani ,r 33; Fig. 1); Ans. 7, 10. Sundrani creates a backup target across guest operating systems. Sundrani ,r 6. Sundrani' s backup target is the storage used to store backup data. Id. ,r 22. Sundrani's guest operation systems trigger the creation of the backup target on a backup tape device. Id. ,r 33. Contrary to Appellants' arguments (Final Act. 28; Reply 13 Appeal2018-003594 Application 15/272,303 Br. 14), Sundrani's backup tape device, then, at least suggests being a place where backup data is kept on magnetic tape. Nor do we see error in the Examiner's finding that Sundrani's multiple computing product system 100 ( the claimed "automated data storage library") is the backup tape device. Final Act. 19 ( citing Sundrani ,r 33; Fig. 1); Ans. 7, 10. Sundrani's Figure 3 shows a block diagram of a multiple computing product system and is reproduced below: 310 1-., 3rd party backup application I OS copy 312 110-., ' Applica!ion GuestOS1 114 112 D8emon 116 r ! .------ .. 1---~---:--j1 -ff~~~-~j sgapshot : Snapshot : ~1~~ca I v~ew ; 0$1 I : 160 ' J.Â§.1. ] - ~ -- ... .,. " ,-., 3rd party backup application I OS copy 322 120-., 0 Applicalion Guest OS2 124 -/22 Daemon 126 ' Hypervlsor H.Q Storage Controller with snapshol featlJre 150 -------~, ---~-:.~1-~-~~-~1 Snapshot 1 Source : for â€¢ OS2 : :1lQ ' Snapshot: view : ' . J72 ~ ... - ~ ~ -.... ro "-.. 3rd party backup applicat10<1 I OS copy 332 130--.,. Application Guest OS3 134 132 Daemon 136 I FIG. 3 Sundrani's Figure 3 showing a block diagram of a multiple computing product system Sundrani' s Figure 3 illustrates representing multiple computing product system 1004 by a freestanding arrow. A freestanding arrow 4 Sundrani does not refer to reference numeral 300 (see generally Sundrani ,r,r 1-46), let alone in the description of Figure 3 (id. ,r,r 33-34). Sundrani's 14 Appeal2018-003594 Application 15/272,303 indicates the entire section towards which it points. See 37 C.F.R. Â§ 1.84(r). Thus, Sundrani' s Figure 3 illustrates storage controller 150 as being included in multiple computing product system 100. Sundrani creates a backup target on storage "controlled by the storage controller 150 or on ... a backup tape device ... connected to multiple computing product system 100." Sundrani ,r 33 (emphasis added). We emphasize "connected to" because the storage controller 150 included in multiple computing product system 100 is "connected to" multiple computing product system 100. Thus, Sundrani at least suggests the backup tape device, also "connected to" multiple computing product system 100, is also included in multiple computing product system 100. And, contrary to Appellants' arguments (Final Act. 28; Reply Br. 15), Sundrani at least suggests the multiple computing product system 100 is the backup tape device because the multiple computing product system 100 includes the backup tape device's functionality. Nor do we find availing Appellants' contention that because Sundrani is already capable of maintaining data integrity, it would not have been obvious to one of ordinary skill in the art to combine Sundrani and Per. App. Br. 29-30; Reply Br. 15-16. On this record, we see no reason why providing Per' s teachings would not at least contribute to provide an additional level of data integrity as the Examiner proposes-a predictable result. Ans. 9-10. Such an enhancement merely uses prior art elements description of Figure 3 refers to multiple computing product system 100. Id. We, therefore, presume reference numeral 300 is multiple computing product system 100. 15 Appeal2018-003594 Application 15/272,303 predictably according to their established functions-an obvious improvement. See KSR Int'] Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Lastly, we find unavailing Appellants' contention that the rejection does not address why an ordinarily skilled artisan would have a reasonable expectation of success in modifying or combining the references as proposed to arrive at the invention as embodied in claim 15. App. Br. 31; Reply Br. 16-17. First, "[ o ]bviousness does not require absolute predictability of success." In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Second, we find that the systems in Sundrani and Per are in predictable art and would behave in accordance with known computer and data processing principles. Third, adding Per's method to verify the integrity of backup data to Sundrani' s backup data does not conflict with known computer and data processing principles, and, thus, one skilled in the art would have had a reasonable expectation of success. See Ans. 10. Fourth, Appellants provide no evidence, other than a mere assertion, that one ordinarily skilled in the art would not reasonably expect success in modifying or combining the references. Mere conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Therefore, we are not persuaded that the Examiner erred in rejecting claim 15, and claims 18 and 20 not argued separately with particularity. Claim 19 We sustain the Examiner's obviousness rejection of claim 19 (Final Act. 7; Ans. 27-28), which recites a proviso that a designated mechanism is triggerable without performing any other preliminary steps. 16 Appeal2018-003594 Application 15/272,303 Appellants reiterate similar arguments made in connection with claim 1-Sundrani's user must move the mouse to orient a cursor over a display's GUI before the mouse's button is activated. App. Br. 25. We disagree. A claim can be obvious under Â§ 103 even where all of the claimed features are not found in a specific prior art reference, where "there is a showing of a suggestion or motivation to modify the teachings of [the prior art] to the claimed invention." Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006) (quoting SIEJA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000)). Although Sundrani does not state explicitly that the mouse is not moved before the mouse's button is activated, Sundrani nonetheless at least suggests as much given that ordinarily skilled artisans would understand the mouse can be triggered without moving it. As noted previously, it is possible that Sundrani's mouse may not need to be moved before clicking because a cursor on the screen is already aligned with the desired button to activate an associated function. But it is also possible that the mouse may require movement to align a cursor with the button before clicking. That is, the cursor is either pre-aligned with the button or it is not. Given these two possibilities, the Examiner's position- although problematic for anticipation as noted previously-nonetheless has merit here. Therefore, we are not persuaded that the Examiner erred in rejecting claim 19. 17 Appeal2018-003594 Application 15/272,303 Claim 17 We do not sustain the Examiner's obviousness rejection of claim 17 (Final Act. 21-22; Ans. 4--6, 9), which depends from claim 19 and recites, in part, a screen integrated in a housing of an automated data storage library. The Examiner finds that Sundrani' s GUI button on a screen is integrated into a storage library's housing "through which ever connection connects the display to the library allowing the library to react to the selection of the GUI button." Final Act. 21-22 ( emphasis omitted). In response to Appellants' arguments, the Examiner discusses why a logical button is displayed and why a user's input is responded to. Ans. 4--5. Appellants argue that Sundrani lacks the recited integration of a screen with an automated data storage library's housing. App. Br. 26-27. We agree the Examiner has not shown the recited integration. See Final Act. 21-22; Ans. 4--6, 9. Rather, Sundrani discloses a multiple computing product system 100 including computing products 110, 120, and 130. Sundrani ,r 26; Fig. 1. Sundrani's user initiates a snapshot creation and backup by clicking a mouse button to select a GUI button. See id. ,r,r 18, 32. To the extent Sundrani at least suggests a screen for displaying the GUI button, that alone does not teach or suggest the screen is integrated with multiple computing product system 100. Thus, the Examiner has not identified a screen integrated in a housing of an automated data storage library, as claimed. Accordingly, we are persuaded that the Examiner erred in rejecting claim 17. 18 Appeal2018-003594 Application 15/272,303 Claim 16 We do not sustain the Examiner's obviousness rejection of claim 16 (Final Act. 21 ), which depends from claim 19 and recites the designated mechanism is a physical push button integrated in a housing of the automated data storage library, wherein providing the input for capturing a snapshot is the sole function of the physical push button upon being triggered. The Examiner finds that Sundrani' s mouse button is integrated into a storage library's housing through either a physical wire or wireless connection. Id. Sundrani discloses a multiple computing product system 100 including computing products 110, 120, and 130. Sundrani ,r 26; Fig. 1. Sundrani' s user initiates a snapshot creation and backup by clicking a mouse button to select a GUI button. See id. ,r,r 18, 32. But that alone does not teach or suggest the mouse is integrated in a housing of the multiple computing product system 100. Thus, the Examiner has not identified a physical push button integrated in a housing of an automated data storage library, as claimed. Even assuming that Sundrani' s mouse were integrated in a housing of the multiple computing product system 100, which it is not, we agree with Appellants (App. Br. 23-24) the Examiner has not explained sufficiently why Sundrani' s input for capturing a snapshot is the sole function of a mouse button upon being triggered (Final Act. 21; Ans. 8-9). Sundrani discloses snapshot creation and backup upon clicking a mouse button. See Sundrani Abstract; ,r,r 18, 22, 30, and 34. Thus, Sundrani's input for capturing a snapshot is not the sole function of a mouse button upon being triggered. 19 Appeal2018-003594 Application 15/272,303 Accordingly, we are persuaded that the Examiner erred in rejecting claim 16. THE OBVIOUSNESS REJECTION OVER SUNDRANI AND OFFICIAL NOTICE We sustain the Examiner's obviousness rejection of claims 5 and 12. Final Act. 14, 16. Although Appellants nominally argue these claims separately, Appellants reiterate arguments similar to those made in connection with, respectively, claims 1 and 8 rejected underÂ§ 102. See App. Br. 37-38. But, as noted previously concerning claim 19, the Examiner's position regarding claim I-although problematic for anticipation- nonetheless has merit here under Â§ 103. That is, although it is possible that the mouse may require movement to align a cursor on a screen with a desired button before clicking the mouse to activate an associated function, it is nevertheless also possible that the mouse need not be moved to align the cursor with the button before clicking because the cursor on the screen is already aligned with desired button. Nor do Appellants persuasively rebut the Examiner's findings based on Official Notice. See App. Br. 37-38. Accordingly, we are not persuaded of error in this rejection for the reasons previously discussed. THE OBVIOUSNESS REJECTION OVER SUNDRANI, PER, OFFICIAL NOTICE, AND WA YDA We sustain the Examiner's obviousness rejection of claim 20. Final Act. 22-23. Although Appellants nominally argue this claim separately, 20 Appeal2018-003594 Application 15/272,303 Appellants reiterate arguments similar to those made in connection with claim 15. See App. Br. 38. We are not persuaded of error in this rejection for the reasons previously discussed. NEW GROUND OF REJECTION We enter a new ground of rejection of claims 16, 17, and 19 under 35 U.S.C. Â§ 112(b ), pursuant to our authority under 37 C.F.R. Â§ 41.50(b ). Claim 19 recites limitations commensurate in scope to claim 1 that are indefinite for the reasons previously discussed. Thus, claim 19, and dependent claims 16 and 17, are rejected for similar reasons. CONCLUSION UnderÂ§ 112, the Examiner did not err in rejecting claims 1-14. UnderÂ§ 102, the Examiner erred in rejecting claims 1--4, 6-11, 13, and 14. UnderÂ§ 103, the Examiner did not err in rejecting claims 5, 12, 15, and 18-20, but erred in rejecting claims 16 and 17. The Examiner's decision to provisionally reject claims 1, 2, 4--9, and 11-14 on the ground of non-statutory obviousness-type double patenting is summarily affirmed. DECISION The Examiner's decision to reject claims 1-15 and 18-20 is affirmed. The Examiner's decision to reject claims 16 and 17 is reversed. We enter a new ground of rejection under 35 U.S.C. Â§ 112(b) for claims 16, 17, and 19 as indefinite. 21 Appeal2018-003594 Application 15/272,303 This decision contains new grounds of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. 37 C.F.R. Â§ 4I.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. Â§ 4I.50(b) 22 Application/Control No. Applicant(s)/Patent Under Patent Appeal No. 15/272,303 2018-003594 Notice of References Cited Examiner Art Unit 2136 U.S. PATENT DOCUMENTS * Document Number Date Name Country Code-Number-Kind Code MM-YYYY A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Date Country Name Country Code-Number-Kind Code MM-YYYY N 0 p Q R s T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) Merriam Webster's Collegiate Dictionary, Tenth Edition, Copyright 1993 by Merriam-Webster, Incorporated. u V w X *A copy of this reference 1s not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. 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