Ex Parte Marks

Patent Trial and Appeal Board

Apr 26, 2016

12641738 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/641,738 12/18/2009 Scott Chesser Marks
12675 7590 04/28/2016
Cesari & Reed, LLP -
Seagate Technology LLC
1114 Lost Creek Boulevard
Suite 430
Austin, TX 78746
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.
1000-STL14066 1186
EXAMINER
HASSAN, AURANGZEB
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT CHESSER MARKS
Appeal2014-007471
Application 12/641,738
Technology Center 2100
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Appeal2014-007471
Application 12/641,738
STATEMENT OF THE CASE
The Claims
Appellant's claims 1, 10, 18, and 21 are independent. Claim 1,
reproduced below with the disputed limitations italicized, is illustrative of
the subject matter on appeal:
1. A data storage device comprising:
an interface configured to receive a data storage command,
first data associated with the data storage command, and a data
processing command from a host;
a data storage medium;
at least one processor coupled to the interface and the data
storage medium, the at least one processor comprising:
a first instruction set comprising data storage and
retrieval instructions;
a second instruction set comprising data processing
instructions not related to data storage and retrieval, the
data processing instructions comprising a mathematical
operation;
wherein the at least one processor is configured to
execute at least one instruction from the first instruction
set to perform the data storage command;
wherein the at least one processor is configured to
execute an instruction from the second instruction set to
peiform the mathematical operation on second data
associated with the data processing command to produce
a result; and
wherein the at least one processor is configured to
transmit the result to a host processor via the interface.
App. Br. 18 (emphasis added).
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Application 12/641,738
The Examiners Rejections
Claims 1-22, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Winarski et al. (US 2008/0270843 Al; published Oct. 30,
2008) ("Winarski") and Gorishek, IV et al. (US 2002/0013892 Al;
published Jan. 31, 2002) ("Gorishek"). See Non-Final Act. 2-7.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Winarski, Gorishek, and Kontola (US 6,792,035 B2; issued Sept. 14,
2004). See Non-Final Act. 7.
ANALYSIS
Claims 1, 3, 7-9, 18, and 21
Appellant contends the Examiner's cited combination of Winarski and
Gorishek fails to teach or suggest the disputed limitations of claim 1 and
"the Examiner has failed to establish a prima facie case of obviousness
because the Examiner has merely recited the claim language while providing
paragraph and figure citations" without "an articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." See
App. Br. 6. Appellant does not, however, substantively address the evidence
cited by the Examiner.
"There has never been a requirement for an examiner to make an on-
the-record claim construction of every term in every rejected claim and to
explain every possible difference between the prior art and the claimed
invention in order to make out a prima facie rejection." In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Rather, the Examiner must "adequately
explain the shortcomings [the Examiner] perceives so that the applicant is
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Application 12/641,738
properly notified and able to respond" to the rejection. Hyatt v. Dudas, 492
F.3d 1365, 1370 (Fed. Cir. 2007).
Here, the Examiner has identified (1) that claim 1 is rejected as
obvious over the Winarski and Gorishek references (see Non-Final Act. 2);
(2) "where each limitation of the rejected claim[] is shown in the prior art
reference[s] by specific [paragraph] number" (Jung, 637 F.3d at 1363; see
also Non-Final Act. 2--4); and (3) a motivation to combine Winarski and
Gorishek that comes directly from the cited prior art (see Non-Final Act. 4
(citing Gorishek i-f 13)). Accordingly, we find the Examiner adequately put
Appellant on notice of the rejection of claim 1 and thereby established a
prima facie case of obviousness. See Jung, 637 F.3d at 1363.
Because Appellant's arguments do not address substantively the
Examiner's findings and conclusions and point out with particularity the
Examiner's purported error, we find Appellant's arguments unpersuasive.
Cf 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (explaining that an appellant must advance substantive arguments
beyond mere recitation of the claim elements and naked assertions that the
corresponding elements were not found in the prior art); In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.").
We are also unpersuaded by Appellant's contentions regarding claims
18 and 21, in which Appellant repeats the arguments made for claim 1 and
further argues the Examiner erred by not providing specific citations or
reasoning to reject certain limitations of claims 18 and 21 that differ from
those of claim 1. See App. Br. 7-9; Non-Final Act. 2--4. The disputed
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Application 12/641,738
limitations of claim 18 differ from those of claim 1 in that claim 18 's storage
device is removable and claim 18 's processor is claimed as receiving the
result from the data storage device rather than transmitting the result to a
host processor. Compare App. Br. 22 (claim 18), with App. Br. 18 (claim
1 ). Regarding the removable storage device, as the Examiner finds,
Winarski teaches this limitation. See Non-Final Act. 6 (citing Winarski i-f
69, which recites removable computer readable media such as removable
computer diskettes and optical disks). With respect to "receiv[ing] the result
from the data storage device," contrary to Appellant's arguments, we find
the Examiner addressed this limitation in finding that Gorishek teaches
"transmit[ ting] the result to a host processor via the interface." See Non-
Final Act. 4 (citing Gorishek i-fi-154--56, Fig. 2). For example, as cited by the
Examiner, Gorishek teaches the communication of various data between
host and emulation processors over a command interface. See Non-Final
Act. 4; Gorishek i-fi-1 55 (disclosing that the host processor receives context
information from the emulation core processor), 56 (disclosing that the host
processor receives messages from the emulation core processor), Fig. 2
(items 48, 50, 54). Appellant presents no evidence that these cited passages
of Gorishek do not teach or suggest "receiv[ing] the result from the data
storage device."
Further, contrary to Appellant's arguments, we agree with the
Examiner that claim 21 recites limitations that are substantially similar to
and not patentably distinct from limitations in claim 1. Compare App. Br.
22 (claim 21), with App. Br. 18 (claim 1); see Non-Final Act. 2--4.
Accordingly, for these reasons and those discussed above regarding claim 1,
we find Appellant's arguments regarding claims 18 and 21 unpersuasive.
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Application 12/641,738
Having considered the Examiner's rejections in light of Appellant's
arguments and the evidence of record, we are unpersuaded of error and
adopt as our own the Examiner's findings, conclusions, and reasoning
consistent with the above. See Non-Final Act. 2---6; Ans. 2-3. Accordingly,
we sustain the Examiner's rejection of independent claims 1, 18, and 21; as
well as dependent claims 3 and 7-9, which were not argued separately with
particularity beyond the arguments advanced for claim 1. See App. Br. 10,
12-13.
Claims 2, 4-6, 19, 20, and 25
Appellant argues the Examiner erred by providing contradictory
reasoning that "Winarski does not explicitly teach the second processor and
instruction set therein," with respect to claim 1, but then relying on Winarski
to teach claim 2 's "wherein the second data associated with the data
processing command is stored on the data storage medium prior to receiving
the data processing command." See App. Br. 10. Appellant explains
because the Examiner had already stated that Winarski does not teach the
second command set, Winarski cannot teach the elements of claim 2. See
App. Br. 10.
We find Appellant's arguments unpersuasive. The Examiner found
the combination of Winarski and Gorishek suggests claim 2, yet Appellant
attacks Winarski individually without addressing substantively what a
person of ordinary skill would have understood from the combined
teachings, as cited by the Examiner. See Non-Final Act. 2-7; App. Br. 9-11,
13-14; Ans. 5---6. "[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
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Additionally, we find Appellant's arguments unpersuasive because the
arguments are not commensurate with the broadest reasonable interpretation
of claim 2. Claim 1, from which claim 2 depends, recites "at least one
processor" and, therefore, the claimed method can be performed by a single
processor, without a "second processor," as argued by Appellant. See App.
Br. 18. This is consistent with Appellant's claims and Specification, which
differentiate an embodiment with "at least one processor" from an
embodiment with "a first processor ... and a second processor." Compare
Br. 18 (Appellant's claim 1 ), and Spec. i-f 4, with Br. 20 (Appellant's claim
10), and Spec. i-f 5. Further, given a broad but reasonable interpretation of
claim 2, the "second data" can be stored prior and unrelated to the
implementation of the claimed "second set of instructions." See App. Br. 18
(reciting, as per claim 2, that the "second data ... is stored ... prior to
receiving the data processing command," and as per claim 1, "a second
instruction set comprising data processing instructions not related to data
storage and retrieval"); Spec. i-f 26. Accordingly, we disagree with Appellant
that the Examiner provided contradictory reasoning by citing Winarski' s
data storage techniques to teach or suggest the disputed limitation of claim 2.
Having considered the Examiner's rejections in light of Appellant's
arguments and the evidence of record, we are unpersuaded of error and
adopt as our own the Examiner's findings, conclusions, and reasoning
consistent with the above. See Non-Final Act. 2-7; Ans. 5-6. Accordingly,
we sustain the Examiner's rejection of claim 2. We also sustain the
Examiner's rejection of claims 4--6, 19, 20, and 25, as Appellant makes
similar arguments that attack Winarski individually without addressing
substantively what a person of ordinary skill would have understood from
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Application 12/641,738
the combined teachings of Winarski and Gorishek, as cited by the Examiner.
See Non-Final Act. 2-7; App. Br. 10-11, 13-14; Ans. 5---6; Keller, 642 F.2d
at 426; cf Baxter Travenol, 952 F.2d at 391.
Claims 10-17 and 22-24
Claims 10 and 22 recite limitations that differ from those of claim 1.
Compare App. Br. 20, 22, with App. Br. 18; see also App. Br. 6-7, 8-9. For
example, claim 10 differs from claim 1 by reciting a "second processor ...
configured to ... execute multiple process threads in parallel ... [and] send
an instruction to the data storage device ... to execute at least one process
thread of the multiple process threads at the first processor." Compare App.
Br. 20, with App. Br. 18; see also App. Br. 6-7. Claim 22 also differs from
claim 1 by reciting "a read command" and that "the data processing
command identifies the mathematical operation." Compare App. Br. 22,
with App. Br. 18; see also App. Br. 8-9.
But, in rejecting claims 10 and 22, the Examiner relies on the same
findings, reasoning, and conclusion used to reject the limitations of
independent claim 1, without specifically identifying the portions of
Winarski or Gorishek that teach or suggest each of the limitations recited in
claims 10 and 22. See Non-Final Act. 2--4. Appellant argues the Examiner
erred by not providing any specific citations or reasoning to reject those
limitations of claims 10 and 22 that differ from claim 1. See App. Br. 6-7,
8-9.
Having reviewed the passages of Winarski and Gorishek cited by the
Examiner with respect to claims 10 and 22, we agree with Appellant that the
Examiner erred. With respect to claim 10, the Examiner does not provide
findings or reasoning to show that Winarski or Gorishek teaches or suggests
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Application 12/641,738
a second processor that is "configured to ... execute multiple process
threads in parallel ... [and] send an instruction to the data storage device ...
to execute at least one process thread of the multiple process threads at the
first processor." See Non-Final Act. 2--4; Ans. 3. Similarly, with respect to
claim 22, the Examiner does not provide findings or reasoning to show that
Winarski or Gorishek (or Kontola as per claim 23) teaches or suggests "a
read command" and that "the data processing command identifies the
mathematical operation." See Non-Final Act. 2--4; Ans. 3. Accordingly, we
reverse the Examiner's rejection of claims 10 and 22, as well as claims 11-
17, 23, and 24, which depend from claims 10 and 22 and include the same
deficiencies.
DECISION
The decision of the Examiner to reject claims 1-9, 18-21, and 25 is
affirmed.
The decision of the Examiner to reject claims 10-17 and 22-24 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
See 3 7 C.F.R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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