Ex Parte Karp et al

Patent Trial and Appeal Board

Dec 27, 2016

13761095 (P.T.A.B. Dec. 27, 2016)

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.
13/761,095 02/06/2013 James M. Karp TUC1P126A/TUC920120038US2 4320
50548 7590 12/29/2016
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
RANKIN, CANDICE A
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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 JAMES M. KARP, TAKASHI KATAGIRI, YUHKO MORI, and
YUTAKA OISHI
Appeal 2015-005518
Application 13/761,095
Technology Center 2100
Before CARL W. WHITEHEAD JR., KEVIN C. TROCK, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 13—15, and 17—19. Claims 2 (Final
Act. 21) and 16 (Ans. 5) have been indicated as being allowable. Claim 9
has been allowed. Ans. 4. Claims 3—8 and 10-12, depend from claim 2 and,
therefore, are allowable based on their dependence from claim 2. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal 2015-005518
Application 13/761,095
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to data storage systems, such
as a tape-based data storage system, and “using a best setting determined
according to select tape operating parameters during a write procedure
(WP).” Spec. H2, 22. Claim 1, which is illustrative, reads as follows:
1. A method, comprising:
receiving a request for a write operation to be performed
in a tape drive;
determining an expected transaction size of a next write
operation;
comparing the expected transaction size of the next write
operation to each of a first transaction size threshold and a second
transaction size threshold in response to receiving the request;
determining an optimum a write procedure based at least
in part on the comparison; and
invoking the optimum write procedure in response to
determining the optimum write procedure,
wherein the first transaction size threshold is greater than
the second transaction size threshold, and
wherein the optimum write procedure is selected from the
group consisting of a backhitch write procedure, a same wrap
backhitchless flush (SWBF) write procedure, and a recursively
accumulating backhitchless flush (RABF) write procedure.
2
Appeal 2015-005518
Application 13/761,095
Rejections2
Claims 1—20 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1—11 and 21—29 of co-pending Application No. 13/449,219. Final
Act. 3-21.
Claims 1, 14, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Katagiri et al. (US
2009/0296268 Al; published Dec. 3, 2009) (“Katagiri”) and Amundsen et
al. (US 7,900,011 B2; issued Mar. 1, 2011) (“Amundsen”). Final Act. 21—
26.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Katagiri, Amundsen, and Jauette et al.
(US 2003/0142428 Al; published July 31, 2003) (“Jauette”). Final Act. 27-
29.
Claims 17—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Katagiri, Amundsen, and Mau et al.
(US 6,469,967 Bl; issued Oct. 22, 2002) (“Mau”). Final Act. 30-32.
ANALYSIS
Provisional Non-statutory Obviousness-type Double Patenting Rejection
We acknowledge Appellants arguments (App. Br. 22) against the non-
statutory obviousness-type double patenting rejection of claims 1—20.
However, the decision to maintain the rejection, to enter additional
2 Because the Examiner indicates that claims 2, 9, and 16 (Final Act. 21;
Ans. 4—5), and claims 3—8 and 10-12 based upon their dependency from
claim 2, are allowable, we treat the rejections of these claims as withdrawn.
Accordingly, we do not address the rejections of claims 2—12 and 16 herein.
3
Appeal 2015-005518
Application 13/761,095
rejections against the claims of this application, or to withdraw the
provisional rejection lies with the Examiner. Under these circumstances, we
do not find the Examiner’s provisional double-patenting rejection ripe for
our review and, therefore, do not reach the provisional double-patenting
rejection of claims 1—20. See In re Mott, 539 F.2d 1291, 1296 (CCPA
1976).
§103 Rejection of Claim 1
Appellants contend the Examiner err in rejecting claim 1 because the
combination of Katagiri and Amundsen does not teach or suggest
“comparing the expected transaction size of the next write operation to each
of a first transaction size threshold and a second transaction size threshold in
response to receiving the request,” as recited in claim 1. App. Br. 9—11;
Reply Br. 3—6. Appellants contend “Katagiri is completely silent, and leaves
no room for implication that expected transaction sizes should be compared
against first and second transaction size thresholds, and that the comparisons
should be used to determine an optimum write procedure.” App. Br. 9.
Appellants further contend:
Katagiri’s tape drive system operates, not according to
Appellant’s claim 1, but rather by (1) determining an ideal tape
speed at which to perform a next write operation, and (2) in
response to determining the ideal tape speed for the next write
operation, determining whether to perform a backhitch (BH)
write procedure or a same wrap backhitchless flush (SWBF)
write procedure based on the determined ideal tape speed.
App. Br. 9. Appellants further contend Katagiri fails to teach the disputed
limitation because “Katagiri determines whether or not to enforce a
backhitch without regard to transaction size, since the transactions
4
Appeal 2015-005518
Application 13/761,095
corresponding to FIGS. 4—6 all have ‘the same transaction size.’” App.
Br. 10 (citing Katagiri, Figs. 4—6; 47—51).
The Examiner finds:
Katagiri teaches an “expected transaction size” compared
to 2 transaction size threshold in order to determine an optimum
write procedure in many ways. See [Katagiri’s] teachings of
different writing processes and how these processes are chosen
based on capacity in which the transaction size has to be
compared to in order to accommodate the transaction and also by
an ideal speed. The speed corresponds the transaction size of the
last transaction so it can be interpreted that the when comparing
it to a speed you are also comparing it to an additional transaction
size. Amundsen Fig. 5 is brought is for further clarification
wherein the object is first compared to a first threshold at step
#514 and then again to a second threshold at step #519.
Ans. 3^4 (citing Katagiri, Fig. 8; Tfl[ 6, 44—54, 62, and 84; Amundsen, Fig. 5)
(internal citations omitted).
We find Appellants’ contentions persuasive. Katagiri relates to
controlling the traveling of a tape in a tape drive which temporarily stores
data to be written to the tape in a buffer and then writes the data from the
buffer to the tape in response to receiving a synchronous command, referred
to as synchronization. Katagiri || 2, 4. Katagiri teaches that if the tape is
not stopped after synchronization, a gap occurs between the data written
during the synchronization and the next data written to the tape thereby
reducing the storage capacity of the tape. Katagiri | 5. To recover this lost
storage capacity, Katagiri teaches that a backhitch operation is performed.
Id. Katagiri teaches that because subsequent data cannot be written to the
tape until after the backhitch operation is performed, performing the
backhitch operation has a significant influence on the performance of the
tape drive. Katagiri | 5. Katagiri teaches that to improve performance, the
5
Appeal 2015-005518
Application 13/761,095
subsequent data can be written to the tape without performing a backhitch
operation (referred to as “backhitchless writing”) but that this improvement
comes at the cost of a reduced storage capacity of the tape. Katagiri 139.
To balance the costs associated with backhitchless writing, Katagiri teaches
that upon receipt of a synchronous command, determining whether to
perform backhitchless writing based on the remaining capacity of the tape
(e.g., determining whether the remaining storage capacity of the tape is
sufficient for storing the data if the data is written using a backhitchless
writing operation). Katagiri 144.
As such, we agree with the Examiner (Ans. 3 4) that Katagiri teaches
or suggests that this initial determination includes comparing the expected
transaction size of the next write operation to a first transaction size
threshold (e.g., a transaction size threshold related to the remaining storage
capacity of the tape) in response to receiving the request. However, the
Examiner’s findings do not support the Examiner’s assertions that Katagiri
teaches or suggests comparing the expected transaction size of the next write
operation to each of a first transaction size threshold and a second
transaction size threshold in response to receiving the request,” as recited in
claim 1.3 (Emphasis added).
Katagiri’s determination of an ideal tape speed, which the Examiner
finds teaches or suggests the claimed second transaction size threshold
3 “[R]ejecti°ns on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
6
Appeal 2015-005518
Application 13/761,095
(Ans. 3—4), is not made with respect to this initial determination. Instead,
Katagiri teaches that after the determination is made to perform the
backhitchless writing process, an ideal tape speed is determined to determine
whether a current tape speed will result in performing a backhitch during the
backhitchless writing process. Katagiri || 51—52. If so, Katagiri discloses
changing the tape speed to the ideal tape speed by performing a backhitch
prior to performing the backhitchless writing. Katagiri | 52.
However, Katagiri does not teach that the ideal tape speed is
determined based on comparing an expected transaction size of a next write
operation to each of a first transaction size threshold and a second
transaction size threshold. Amundsen does not address this deficiency.
Instead, Amundsen teaches that comparing a size of an object stored in
memory to a single threshold for the purpose of determining whether the
object is to be assigned from a second memory category (that is checked by
a garbage collection module to determine whether to perform a garbage
collection process on objects assigned to the second memory category
(Amundsen 10:41—45)) or third memory category (that is not checked by the
garbage collection module (id.)). Amundsen, Fig. 5; 10:46—62. As such, we
are persuaded that the Examiner erred in finding the combination of Katagiri
and Amundsen teaches or suggests the disputed limitation.
Accordingly, we do not sustain the Examiner’s rejection of claim 1;
independent claim 20, which recites commensurate limitations; and claims
14 and 15, which depend from claim 1.
Claims 13 and 17—19 depend from claim 1 and stand rejected under
35 U.S.C. § 103(a) based on Katagiri, Amundsen, and various additional
references. The Examiner does not find that these additional references cure
7
Appeal 2015-005518
Application 13/761,095
the above noted deficiencies in the teachings of Katagiri and Amundsen.
Accordingly, we do not sustain the rejections of claims 13 and 17—19 for the
reasons discussed supra with respect to claim 1.
DECISION
We decline to reach the provisional non-statutory obviousness-type
double patenting rejection of claims 1—20.
We reverse the Examiner’s rejections of claims 1, 13—15, and 17—19
under 35 U.S.C. § 103(a).
REVERSED
8