Ex Parte Lau et al

Patent Trial and Appeal Board

Nov 27, 2013

11352766 (P.T.A.B. Nov. 27, 2013)

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.
11/352,766 02/13/2006 Kenneth Dean Lau 3023824 US02 5790
67070 7590 11/27/2013
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
DRAVININKAS, ADAM B
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
11/27/2013 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 KENNETH DEAN LAU
and MATTHEW THOMAS STARR
____________

Appeal 2011-004806
Application 11/352,766
Technology Center 2600
____________

Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to a data storage library
comprising a plurality of docking stations adapted to receive a disc drive
magazine wherein the magazine has a plurality of disc drives. The disc
drive magazine is capable of changing from a fully active state to at least
one quiescent state when storage operations as performed by the magazine
requires less than a fully active magazine. Abstract.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A data storage library comprising:
at least one of a plurality of docking stations adapted to
receive a drive magazine wherein the magazine comprises a
plurality of drives;
a loading device adapted to automatically engage the
magazine with the at least one docking station to establish a
communication link between the magazine and the at least one
docking station;
a retaining device adapted to retain the magazine when
engaged with the at least one docking station and when the
magazine is in at least an active state;
at least one interface adapted to establish a
communication link capable of transferring data between at
least one data consumer and the library;
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the magazine capable of storing data received by the at
least one data consumer when linked with the at least one
docking station;
the magazine when engaged responsive to a controller
residing in the data storage library that controls the power
supplied individually to each of the plurality of drives and
thereby capable of changing from a fully active state wherein
the controller sends a fully operational power level to each of
the plurality of drives to at least one quiescent state wherein the
controller sends a reduced operational power level to at least
one of the plurality of drives when storage operations
performed by the magazine require less than a fully active
magazine.

REFERENCES and REJECTIONS
1. The Examiner rejected claims 1, 2, 5, 6, 8-11, and 21 under 35 U.S.C.
§ 103 as unpatentable over Yip (U.S. Patent Pub. 2004/0181388 A1,
Sep. 16, 2004) in view of Shoji (U.S. Patent 4,583,133, Apr. 15,
1996).
2. The Examiner rejected claims 3, 4, 7, 12-20, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Yip in view of Shoji, and further
in view of Searle (U.S. Patent 5,235,474, Aug. 10, 1993).
3. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Yip in view of Shoji and Searle, and further in view
of Huser (Alois Huser, Power Management With Windows Server
2003, Energie Schweiz, Federal Office for Energy (Apr. 2004),
http://www.bfe.admin.ch/php/modules/publikationen/stream.php?extl
ang=en&name=en_667716303.pdf).

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ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Yip in view of Shoji teaches the limitation of:
the magazine when engaged responsive to a controller
residing in the data storage library that controls the power
supplied individually to each of the plurality of drives and
thereby capable of changing from a fully active state wherein
the controller sends a fully operational power level to each of
the plurality of drives to at least one quiescent state wherein the
controller sends a reduced operational power level to at least
one of the plurality of drives when storage operations
performed by the magazine require less than a fully active
magazine.

Claim 1.

THE PRINCIPLE OF LAW
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” Id. at
425.

ANALYSIS
Claims 1, 2, 9-11, and 21
Appellants argue that the references in combination are non-obvious
and, furthermore, there would be no expectation of success based on the fact
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that a) Shoji and Yip use fundamentally different technologies so a skilled
artisan cannot rely on transposing a specific function associated with a
device from one reference to a like device in another reference, and b) the
Office has failed to at least show some pattern within the two references by
substantially aligning their pertinent features (Br. 14).
We do not agree with Appellants’ argument. We agree with the
Examiner that both Yip and Shoji disclose magnetic disks being inserted into
drives for reading the magnetic disks and sending data to a central computer
(Ans. 19). Thus, we agree with the Examiner that there is no fundamental
difference in these two technologies as stated by Appellants, but rather the
only difference is the way in which the disks and drives are controlled by
way of differing power control schemes (id.).
We further agree with the Examiner that there need not be a
one-to-one correspondence of the elements in order to combine the
references (Ans. 20). The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference, but rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.
Keller, 642 F.2d at 425.
The Examiner relied on the teaching of Shoji’s power controller for
the teaching of a controller (12) capable of controlling power individually to
each of a plurality of drives (40, 42, 44, 46) for changing from a fully active
state, wherein the controller sends a fully operational power level (IN USE)
to each of the plurality of drives, to at least one quiescent state, wherein the
controller sends a reduced operational power level (DRIVE SELECT) to at
least one of the plurality of drives when storage operations performed by the
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magazine require less than a fully active magazine (Fig. 1; col. 2, ll. 16-32,
col. 4, ll. 35-50). The Examiner combined Yip’s teaching of a disk drive
system with Shoji’s teaching of a power controller to reduce the power
requirement of the entire storage data (Shoji’s col. 1, ll. 46-51). See Keller,
642 F.2d at 425.
Accordingly, we affirm the Examiner’s rejections of claim 1 and, for
the same reasons discussed above, the rejections of claims 2, 9-11, and 21.
Claim 5
Appellants argue that Yip discloses only a retaining device that only
senses the insertion of an electrical connector in a socket (Br. 17).
Appellants assert that there is no mention in Yip of a sensing system for the
retaining device that monitors when the magazine is engaged and active with
a docking station, as featured in Appellants’ claim 5 (id.).
We agree with the Examiner that Yip’s paragraph [0047], discloses
connectors of the socket which mechanically actuate in response to the
insertion of the electrical connector of the cartridge (Ans. 20). When the
electrical connector is inserted, the cartridge has at least some power, which
places the cartridge in at least a low-power state of activity (id.). Therefore,
when the electrical connector is inserted, the sensor would be able to detect
when the magazine is both engaged and active (id. at 20-21).
Accordingly, we affirm the Examiner’s rejection of claim 5.
Claim 6
Appellants argue that the combination of Yip and Shoji does not teach
the limitation of claim 6 (Br. 18-19). Appellants in particular argue that
even if Yip’s gripper is equivalent to an ejection switch, Yip is still silent
about an eject switch activated to eject a magazine based on a sensing
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system, let alone when a sensing system that determines a magazine is
substantially inactive, as required by Appellants’ claim 6.
We agree with the Examiner’s finding that the gripper actuates a lever
which controls the clamping and releasing of the cartridge as described in
Yip (¶ [0047]). We further agree with the Examiner that Shoji teaches a
motor control circuit (48) (col. 4, ll. 53-60), which receives IN USE signals
from the IN USE circuits in order to determine when the drives are spinning
and in use. Therefore, it would have been obvious to one of ordinary skill in
the art at the time of the invention to use the motor control circuit described
in Shoji to determine when the drives were spinning and in use in
combination with an eject switch mechanism so that while the disks were in
use, the disks would not be ejected (Ans. 21). We agree with the Examiner’s
conclusion that one of ordinary skill would have been motivated to modify
Yip with Shoji’s teaching to prevent damage to the disks by being ejected
while they were still spinning and in use (id.).
Accordingly, we affirm the Examiner’s rejection of claim 6.
Claim 7
Appellants argue that claim 7 recites, “‘the at least one quiescent state
is a state wherein less than all of the drives are dormant in the magazine,’”
and Searle’s magazine does not have the capacity to be in any kind of active
or dormant state resembling Appellants’ claimed invention because Searle is
merely a mobile media shelf system (Br. 19).
We do not agree. The Examiner relied upon Shoji, not Searle, for the
teaching of a controller which controls power individually to the drives to
create at least one quiescent state wherein less than all of the drives are
dormant in the magazine (Ans. 22).
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Accordingly, we affirm the Examiners rejection of claim 7.
Claim 8
Appellants argue that Yip does not disclose “at least one quiescent
state being a state wherein all of the drives are dormant,” as required by
claim 8 (Br. 20).
We do not agree. We agree with the Examiner (Ans. 5) that Yip
discloses at least one quiescent state wherein all of the disc drives are
dormant and the magazine is in a substantially inactive state when the
cartridge 30 is removed from the socket, the power connection is broken,
thereby leading to all disc drives being dormant in the magazine (see Fig. 4;
¶ [0047]).
Accordingly, we affirm the Examiner’s rejection of claim 8.
Claims 3 and 4
Appellants argue that there is no one-to-one correspondence between
Searle’s magazine and Appellants’ magazine, and thus, one skilled in the art
would not have combined the references of Searle, Yip, and Shoji (Br. 16).
Appellants raise similar arguments with respect to claim 4 (id.).
We do not agree, because the test is what the combined teachings of
the combined references would have suggested to those of ordinary skill in
the art. See Keller, 642 F.2d at 425.We affirm the Examiner’s rejection of
claims 3 and 4.
Claims 12-20, 22, and 23
We have considered Appellants’ arguments raised with respect to
claims 12-20, 22, and 23. We direct Appellants’ attention to the Examiner’s
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findings and conclusions as articulated in the Answer which we adopt as our
own without repetition herein (Ans. 23-24).
We further note that we do not agree with Appellants’ argument
regarding claim 17, that the Examiner did not identify the “means for
automatically drawing a mobile drive magazine towards a connecting
surface of one of a plurality of docking stations comprised by the library.”
The Examiner addressed the same feature with respect to claim 1 regarding
automatically engaging the magazine with the docking station establishing a
communication link (Ans. 4; Yip, Fig. 8, ¶ [0067]).
Accordingly, we affirm the Examiner’s rejections of claims 12-20, 22,
and 23.
CONCLUSION
The Examiner did not err in finding that the combination of Yip in
view of Shoji teaches the limitation of:
the magazine when engaged responsive to a controller
residing in the data storage library that controls the power
supplied individually to each of the plurality of drives and
thereby capable of changing from a fully active state wherein
the controller sends a fully operational power level to each of
the plurality of drives to at least one quiescent state wherein the
controller sends a reduced operational power level to at least
one of the plurality of drives when storage operations
performed by the magazine require less than a fully active
magazine

Claim 1.

DECISION
The Examiner’s decision rejecting claims 1-23 is affirmed.
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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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