Ex Parte Scherzer

Patent Trial and Appeal BoardSep 25, 2012

11298158 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HELMUT SCHERZER ____________ Appeal 2010-005399 Application 11/298,158 Technology Center 2100 ____________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-3, 5-8, 10-13, and 15, which are all the remaining claims in the application. Claims 4, 9, and 14 were canceled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-005399 Application 11/298,158 2 Invention Appellant’s invention relates to a mobile computer system and a method to operate a mobile computer system, especially a notebook or a laptop, which is driven alternatively by an external power supply or by battery, comprising a data processing unit and a hard drive to store data. (Spec. ¶ [0002].)1 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method comprising: in response to a computing system operating on battery power, and in response to a write command being directed to a hard disk that is associated with said computing system, writing a new data, said new data being directed by said write command to be written on said hard disk, to a non-volatile memory that is associated with said hard disk; and, in response to said computing system being coupled to an external power supply, moving old data stored in said non- volatile memory to said hard disk and disabling said non- volatile memory. Rejections on Appeal 1. The Examiner rejects claims 1, 2, 6, 7, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Auerbach (U.S. Pat. Pub. No. 2006/0080501 A1, published Apr. 13, 2006) Ghosh (U.S. Patent Pub. No. 1 We refer to Appellant’s Specification (“Spec.”), Reply Brief (“Reply Br.”), filed Aug. 25, 2009; and Appeal Brief (“App. Br.”) filed Mar. 16, 2009 (correcting the Appeal Brief filed February 9, 2009). We also refer to the Examiner’s Answer (“Ans.”) mailed December 15, 2009. Appeal 2010-005399 Application 11/298,158 3 2002/0194440 A1 published Dec. 19, 2002), and Coffman (U.S. Patent No. 5,491,809, issued Feb. 13, 1996). 2. The Examiner rejects claims 3, 8, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Auerbach, Ghosh, Coffman, and Douglis (U.S. Patent No. 5,493,670, issued Feb. 20, 1996). 3. The Examiner rejects claims 5, 10, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Auerbach, Ghosh, Coffman, and Olsen (U.S. Patent Pub. No. 2005/0071561 A1, published Mar. 31, 2005). ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, we have determined that the following issue is dispositive in this appeal: Under § 103, did the Examiner err in finding that the combination of Auerbach and Ghosh would have collectively taught or suggested: in response to a computing system operating on battery power, and in response to a write command being directed to a hard disk that is associated with said computing system, writing a new data, said new data being directed by said write command to be written on said hard disk, to a non-volatile memory that is associated with said hard disk; (emphasis added) within the meaning of independent claims 1, 6, and 11? Appeal 2010-005399 Application 11/298,158 4 ANALYSIS Claims 1, 2, 6, 7, 11, and 12 Appellant contends that the cited references fail to disclose or suggest in response to the computer system operating on battery power, writing new data to be written on the hard disk to a non-volatile memory that is associated with the hard disk, as claimed. (App. Br. 4-5.) Appellant argues that according to Auerbach, new data is always written to DRAM. (App. Br. 4.) The Examiner finds that even though Auerbach writes data to a DRAM cache, the DRAM is not the final destination for the new data from the write command that was directed to the hard disk. (Ans. 12.) We disagree with the Examiner’s findings. While we find that claim 1 does not require that the new data be written directly to the non-volatile memory, the claim language requires that the new data, that was intended to be written to the hard disk, is written to the non-volatile memory when the system operates on battery power (“in response to a computing system operating on battery power” (claim 1)). We find that the cited portion of Auerbach (Fig. 2) discloses that new data is written to DRAM (volatile memory), which is the final destination of the new data, and then the hard disk drive (disk). Data that is destined for the DRAM may be sent to flash memory (non-volatile memory) only when the DRAM is full and the disk is not spinning. (Id.) Based on this record, we conclude that the Examiner erred in rejecting claim 1 for essentially the same reasons argued by Appellant discussed supra. In particular, we find not description in Auerbach of the new data, discussed supra, being sent to the flash memory responsive to the system Appeal 2010-005399 Application 11/298,158 5 operating on battery power as required in the claim. Independent claims 6 and 11 recite commensurate limitations and thus stand with claim 1. Accordingly, we reverse the Examiner’s rejection of independent claims 1, 6, and 11 and associated dependent claims 2, 7, and 12. Claims 3, 5, 8, 10, 13, and 15 As noted above, the Examiner rejected dependent claims 3, 5, 8, 10, 13, and 15 as being unpatentable over different combinations of references. We do not find, nor has the Examiner established, that the remaining references cure the deficiencies of Auerbach and Ghosh discussed supra. Accordingly, we reverse the Examiner’s rejections of claims 3, 5, 8, 10, 13, and 15 for the same reasons discussed supra. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1-3, 5-8, 10-13, and 15 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1-3, 5-8, 10-13, and 15 under 35 U.S.C. § 103(a). REVERSED tkl