Ex Parte McNeal et al

Patent Trial and Appeal BoardApr 23, 2013

10153116 (P.T.A.B. Apr. 23, 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. 10/153,116 05/22/2002 Frank Joseph McNeal 281450/197 7368 7590 04/24/2013 Katten Muchin Zavis Rosenman Attention: Patent Administrator Suite 1600 525 West Monroe Street Chicago, IL 60661-3693 EXAMINER AL HASHEMI, SANA A ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 04/24/2013 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 APPEALS BOARD ____________ Ex parte FRANK JOSEPH McNEAL, BENARD SETIOHARDJO, MICHAEL LEBEDEV, and BRIAN ALLEN KIBLER ____________ Appeal 2011-000290 Application 10/153,116 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and MIRIAM L. QUINN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000290 Application 10/153,116 2 Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 2, and 4-15, which are all the claims pending in this application as claim 3 has been canceled and claims 16-24 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ invention relates to data recording systems (see Spec. ¶¶ [0002] and [0017]). Claim 1 is illustrative of the invention and reads as follows. 1. A data recording system which minimizes the risk of loss of data resulting from a loss of power, the recording system comprising: a recording subsystem for recording data on a disk drive, said data having a file size less than the maximum file storage capability of said disk drive, the recording subsystem including a system for breaking down said data into a plurality of segmented files that are relatively smaller than said file size of said data and storing said segmented files on said disk drive and closing each of said segmented files after each of said segmented files has been stored on said disk drive, wherein the size of said segmented files is user-selectable. Claims 1, 2, and 4-15 stand rejected under 35 U.S.C. § 102(e) as anticipated by Ballantyne (US 6,693,869 B1). (See Ans. 2-6).1 1 We observe that claims 4 and 5 improperly depend from the canceled claim 3. Appeal 2011-000290 Application 10/153,116 3 ANALYSIS Appellants contend that Ballantyne merely describes selecting where on a removable disk a file is to be stored to maximize the data transfer rate based on the location distance from the center of the disk (App. Br. 4-5). Appellants specifically assert that Ballantyne’s disclosure indicates that “the file size is fixed” and the user only selects the location of the file (App. Br. 5; Reply Br. 3-4).2 We agree with Appellants’ contentions above. We specifically agree that Ballantyne does not disclose “a system for breaking down said data into a plurality of segmented files that are relatively smaller than said file size of said data and . . . closing each of said segmented files after each of said segmented files has been stored on said disk drive,” as recited in claim 1. The Examiner’s discussion of element 70 in Figure 7 of Ballantyne (see Ans. 6-7) merely indicates that the movement of a file location is graphically illustrated by movement of the file’s graphical representation on the virtual master CD 72 (see Ballantyne, col. 15, ll. 45-56). As such, the Examiner has not clearly identified how changing the order of files by dragging and dropping them in a different location, as depicted in Figures 6 and 7 of Ballantyne, results in the disputed claim limitation. CONCLUSION On the record before us, because the Examiner has not identified in Ballantyne all the disputed claim limitations, we find that the Examiner erred in rejecting claim 1, as well as the other claims dependent thereon. 2 We do not address the other arguments raised by Appellants because we find this contention to be dispositive of the issue on appeal. Appeal 2011-000290 Application 10/153,116 4 Therefore, we do not sustain the rejection of claims 1, 2, and 4-15 under 35 U.S.C. § 102(e) over Ballantyne. DECISION The decision of the Examiner to reject claims 1, 2, and 4-15 is reversed. REVERSED msc