Ex Parte Ishizaki

Patent Trial and Appeal BoardSep 27, 2012

10974955 (P.T.A.B. Sep. 27, 2012)

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. 10/974,955 10/28/2004 Tsutomu Ishizaki NE327-US 5059 21254 7590 09/28/2012 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER CHOE, YONG J ART UNIT PAPER NUMBER 2185 MAIL DATE DELIVERY MODE 09/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TSUTOMU ISHIZAKI ____________________ Appeal 2010-004634 Application 10/974,955 Technology Center 2100 ____________________ Before: ROBERT E. NAPPI, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004634 Application 10/974,955 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 3, 5-9, and 11-23. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A disk drive device comprising: a disk drive comprising a plurality of physical disks each comprising a storage area; and a controller which performs reading and writing of data to said storage areas of the physical disks according to an instruction from a host device, wherein in each of the physical disks, said storage area is divided into a plurality of storage areas, wherein said plurality of divided storage areas of one of said plurality of physical disks are set to make pairs with a plurality of divided storage areas of other of said plurality of physical disks, wherein the controller stores correlation data for corresponding a pair of storage areas to each other, and has a managing function of maintaining same data on the pair of storage areas, based on the correlation data, wherein the controller has a function of recognizing a replacement physical disk in said plurality of physical disks, 1 Claims 4 and 10 are canceled. Appeal 2010-004634 Application 10/974,955 3 and upon recognition of the replacement physical disk, functions to copy previously paired data stored on a storage area of another physical disk, to a storage area of the replacement physical disk, and wherein one of the pair of storage areas is set as a data writing area and another of the pair of storage areas is set as a data copying area. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Matoba 5,880,955 Mar. 9, 1999 Watanabe US 7,024,526 B2 Apr. 4, 2006 Orsley US 7,076,606 B2 Jul. 11, 2006 REJECTIONS AT ISSUE 2 The Examiner made the following rejections: Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Orsley, Matoba, and Watanabe. Ans. 4. 2 Appellant collectively argues the rejection of claims 1, 16, and 18 under 35 U.S.C. § 103(a). Separate patentability is not argued for 2, 3, 5-9, 11-15, 17, and 19-23. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence). In view of the foregoing, we select claim 1 as representative of all the argued claims and base our decision on claim 1. Appeal 2010-004634 Application 10/974,955 4 ISSUE 1: PROPRIETY OF COMBINATION Issue: Under 35 U.S.C. §103(a): Did the Examiner err in combining Orsley, Matoba, and Watanabe? Appellant contends that the Examiner has failed to establish a factual basis to support the legal conclusion of obviousness by failing to make the factual determinations set forth in Graham and to provide a reason why one of ordinary skill in the art would have made the combination. Appellant further contends that the Examiner has not articulated a reason for combining the cited references. App. Br. 8-9. We disagree. Other than alleging that the Examiner errs in combining Orsely, Matoba, and Watanabe (App. Br. 9), Appellant provides no persuasive argument why the combination is not obvious. To the contrary, we find that the Examiner's fact findings were sufficient to (i) determine the scope and content of the prior art, and (ii) ascertain the differences between the prior art and the claims at issue. See Ans. 4-5. Appellant does not dispute that a person of ordinary skill in the art would have had the skill to understand the Orsley, Matoba, and Watanabe disclosures, and to have used Matoba’s disk controller in the disk array system of Orsely and incorporate copying data from the primary storage into the secondary storage as taught by Watanabe into the disk array system of Orsley as modified by Matoba, the third Graham factor. (See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). We agree with the Examiner’s Graham findings. Furthermore, the Examiner is only required to give “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), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner gave “sufficient reliability for the large amounts of data can be ensured without Appeal 2010-004634 Application 10/974,955 5 decreasing the data transfer speed” for combining Orsley and Matoba (Ans. 6) and “in order to prevent the loss of data in the event of storage failure by mirroring the data” as a reason for “copying data from the primary storage into the secondary storage” as taught by Watanabe into the disk array system of Orsley (Ans. 7). Those reasons have rational underpinnings. Therefore, we find that the Examiner has established a prima facie showing of obviousness. We note that the Appellant does not rebut the Examiner’s findings or rationale, but merely argues that the Examiner has not articulated the required findings or rationale. Therefore, on this record, we are not persuaded of Examiner error. ISSUE 2: TEACHINGS OF THE PRIOR ART Issue: Under 35 U.S.C. §103(a): Does the combination of Orsley, Matoba, and Watanabe render claim 1 obvious? Appellant contends that the combination of Orsley, Matoba, and Watanabe fails to “teach or suggest, ‘wherein one of the pair of storage areas is set as a data writing area and another of the pair of storage areas is set as a data copying area’, as recited in exemplary claim 1 and similarly recited in exemplary claims 16 and 18.” (App. Br. 9, 10). While Appellant concedes that Watanable “discloses a primary storage subsystem and a secondary storage subsystem where certain data from the primary storage subsystem is copied into the secondary storage system,” (App. Br. 11), Appellant contends that Watanabe fails to teach or suggest: (i) “a physical disc that is divided into a plurality of storage areas,” (ii) “sets of pairs of data storage areas,” or Appeal 2010-004634 Application 10/974,955 6 (iii) “one of the allegedly disclosed pairs of storage areas is set as a data writing area while another of the pair is set as a data copying area.” (App. Br. 11). In connection with claim language (i) and (ii) above, the Examiner relies on Orsley, not Watanabe, for disclosing these elements. See Ans. 5. Thus, these contentions of Appellant do not persuade us of error on the part of the Examiner because Appellant is responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In connection with claim language (iii), Appellant provides no persuasive reasons or argument that Watanabe is deficient. Contrary to Appellant’s assertions, we find that Watanabe discloses paired primary and secondary storage areas (Data #0 and Data #3 in both Primary and Secondary Memory). Since Appellant admits that Watanabe discloses a primary storage subsystem and a secondary storage subsystem where certain data from the primary storage subsystem is copied into the secondary storage system (see supra citing to App. Br. 11), it follows that it also discloses “wherein one of the pair of storage areas is set as a data writing area and another of the pair of storage areas is set as a data copying area.” Thus, we agree with the Examiner that Watanabe discloses one of the pair of storage areas is set as a data writing area and another of the pair of storage areas is set as a data copying data. See Ans. 13. Therefore, on this record, we are not persuaded of Examiner error. Appeal 2010-004634 Application 10/974,955 7 Accordingly, we sustain the Examiner’s rejection of claim 1 and of independent claims 16 and 18 under 35 U.S.C. § 103(a) and of dependent claims 2, 3, 5-9, 11-15, 17 and 19-23, which are not argued separately. DECISION The decision of the Examiner to reject claims 1-3, 5-9, and 11-23 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)(2011). AFFIRMED dw