Ex Parte Kim et al

Patent Trials and Appeals BoardJan 29, 2019

15179424 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 15/179,424 81505 ORACLE 7590 FILING DATE 06/10/2016 01/31/2019 (Oracle formerly d/b/a Sun Microsystems) 8055 East Tufts A venue Suite 450 Denver, CO 80237 FIRST NAMED INVENTOR Hyoungjin Kim 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. ORA140225-US-CNT-l 1079 EXAMINER OBERLY, ERIC T ART UNIT PAPER NUMBER 2184 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): ptomail@mfblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HYOUNGJIN KIM, ALEXANDER EDWARD AMADOR, and STEPHANIE LYNN RUSSELL 1 Appeal2018-004922 Application 15/179,424 Technology Center 2100 Before CARLA M. KRIVAK, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Oracle International Corporation. See App. Br. 1. Appeal2018-004922 Application 15/179,424 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 2 THE INVENTION The claims are directed to media and drive validation in a storage library. Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A storage library system, comprising: a plurality of tangible storage media; a plurality of media drives that operate to receive the plurality of tangible storage media for reading or writing; and at least one processor that operates to communicate with at least one host application, and to perform steps comprising: instructing at least one media drive of the plurality of media drives to execute a validation of at least one tangible storage medium of the plurality of tangible storage media; permitting access to the at least one tangible storage medium by the at least one host application during the validation; and maintaining visibility of the at least one tangible storage medium by the at least one host application during the validation. 2 We refer to the Specification, filed June 10, 2016 ("Spec."); the Final Office Action, mailed July 6, 2017 ("Final Act."); the Appeal Brief, filed December 8, 2017 ("App. Br."); the Examiner's Answer, mailed April 5, 2018 ("Ans.") and the Reply Brief filed April 9, 2018 ("Reply Br."). 2 Appeal2018-004922 Application 15/179,424 REFERENCES The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Bolt Goodman et al. ("Goodman") us 6725394 US 2008/0065582 Al REJECTIONS The Examiner made the following rejections: Apr. 20, 2004 Mar. 13, 2008 Claims 1-12 and 16-20 stand rejected under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Goodman. Final Act. 2---6. Claims 13-15 stand rejected under 35 U.S.C. Â§ 103 as obvious over Goodman in view of Bolt. Final Act.7-10. ISSUE ON APPEAL Based on Appellants' arguments in the Appeal Brief (App. Br. 3-8) and Reply Brief (Reply Br. 2-5), a dispositive issue presented on appeal is whether Goodman's data storage device is visible to a host computer application while the data storage media is loaded in a "phantom load mode" during background operations. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred in rejecting independent claims 1-20 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Goodman. We agree with Appellants' conclusions as to this rejection of the claims. 3 Appeal2018-004922 Application 15/179,424 The Examiner finds, by aborting a background operation upon reception of a media load request from a host, Goodman's device avoids disrupting host computer processes "which implies the media/cartridges of the library remain visible to the host application." Final Act. 3 (emphasis omitted). Appellants contend, operating in a phantom load mode, Goodman hides the media status of the data storage device from the host computer such that the host may be unaware the data storage media has been loaded into the data storage device. App. Br. 5. "Appellant respectfully asserts that visibility of the media in Goodman cannot be maintained by the host computer during the background operations if the host computer is unaware of the media being loaded in the drive in the first place." Id. The Examiner responds that Appellants' Specification discloses maintaining visibility of a storage medium by interrupting execution of a media validation in response to an access request in a manner that is effectively transparent to the host system. Ans. 3--4. Thus, according to the Examiner, the host perceives the media as being available and is unaware of the media or drive validation (MDV) operation. Id. Appellants reply by arguing "no ordinary artisan would interpret hiding the media status of a data storage drive from a host as in Goodman to mean maintaining visibility of a tangible storage medium by the host as required in the present claims." Reply Br. 2 (underlining omitted). Appellants' argument is persuasive of Examiner error. As argued by Appellants, Goodman's "phantom load mode operates to hide the media status of the data storage drives from host computers during background operations involving the data storage drives." Ans. 4; Goodman, Abstract. Goodman hides this background operation to avoid disrupting host computer 4 Appeal2018-004922 Application 15/179,424 processes "because, from the perspective of the host computer, the data storage drive unexpectedly shows up with data storage media loaded therein." Goodman ,r 6. Although Goodman further discloses "abort[ing] the background operation upon reception of a media load request for the selected data storage drive" (Goodman ,r 10 (emphasis added); see also id. ,r 13), it is not clear that media status is available until the background operation is terminated, i.e., that media status is available during the validation as required by the claims. Accordingly, we do not sustain the rejection of independent claims 1, 8, and 16 under 35 U.S.C. Â§ 102(a)(l) as being anticipated by Goodman or the rejection of dependent claims 2-7, 9- 12, and 17-20. We also do not sustain the rejection of claims 13-15 under 35 U.S.C. Â§ 103 as obvious over Goodman in view of Bolt as the Examiner's applications of the Bolt reference fails to cure the deficiency in the base rejection addressed supra. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. DECISION We reverse the Examiner's decision to reject claims 1-20. REVERSED 5