Ex Parte Sutardja et al

Patent Trial and Appeal Board

Apr 25, 2016

12032221 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/032,221 02/15/2008
26703 7590 04/27/2016
HARNESS, DICKEY & PIERCE PLC (Marvell)
5445 CORPORA TE DRIVE
SUITE 200
TROY, MI 48098
Se hat Sutard ja
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.
MP0525I2Il 3955
EXAMINER
PARIKH, KALPIT
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
sstevens@hdp.com
troydocketing@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEHAT SUTARDJA and ALAN ARMSTRONG 1
Appeal2014-006285
Application 12/032,221
Technology Center 2100
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY, III, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3--46, 48, 49, 51, 53-55, and 57, which are all the
pending claims. Final Act. 1. Claims 2, 47, 50, 52, and 56 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Marvell World Trade
Ltd. App. Br. 3.
2 Our decision refers to the Final Office Action mailed June 20, 2013 ("Final
Act."); Appellants' Appeal Brief filed January 2, 2014 ("App. Br."); the
Examiner's Answer mailed March 3, 2014 ("Ans."); Appellant's Reply Brief
filed May 5, 2014 ("Reply Br."); and the Specification filed February 15,
2008 ("Spec.").
Appeal2014-006285
Application 12/032,221
STATUS OF THE CLAHvIS
In the Appeal Brief and the Reply Brief, Appellants state claims 1 and
3-56 are pending. App. Br. 3; Reply Br. 3. This is incorrect. On December
3, 2012, Appellants filed a Response to Examiner's Answer of October 2,
2012, and Request for Continued Examination, which stated (page 19):
Claims 1 and 3-56 were pending in the application.
Claims 47, 50, 52 and 56 have been cancelled. Claim 57 has
been added. Accordingly, claims 1, 3--46, 48--49, 51, 53-55
and 57 are now pending in the application.
The Claims Appendix originally filed with the Appeal Brief contained
claims 1 and 3-56 and did not reflect amendments made to the claims. In
response, a Notification of Non-Compliant Appeal Brief mailed December
24, 2013, was issued which stated, "The Claims Appendix is deficient as it
does not match the last entered amendment filed 12/3/12." In response,
Appellants provided a new Claims Appendix which contained pending
claims 1; 3--46; 48; 49; 51; 53-55; and 57. Response to Notification ofNon-
Compliant Appeal Brief filed January 2, 2014. Although Appellants filed a
new Claim Appendix, no new Appeal Brief was filed.
The Appeal Brief and Reply Brief refer to, and provide argument in
support of, claims that have been cancelled. App. Br. 7 (claims 2, 50, and
52), 14 (claims 47, 50, 52, and 56), 16 (claim 56); Reply Br. 4 (claims 2, 50,
and 52), 16 (claim 56), 18 (claim 56). The Appeal Brief and Reply Brief do
not refer to, or provide any argument in support of, pending claim 57.
REJECTIONS ON APPEAL
The Appeal Brief and the Reply Brief both include a section entitled,
"Grounds of Rejection to be Reviewed on Appeal." App. Br. 6; Reply Br. 3.
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Application 12/032,221
Neither the Appeal Brief nor the Reply Brief accurately set forth the
rejections contained in the Final Office Action. Final Act. 2--42. In this
appeal, we have jurisdiction over the rejections in the Final Office Action.
See 41.31 ( c) ("An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office."). Thus, we consider the
arguments of the Appellants as they apply to the rejections in the Final
Office Action and to the pending claims. The rejections on appeal are:
Claims 1, 9, 10, 13-15, 20, 31-33, 40, 41, 44--46, 48, 49, 51, 55, and
57 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Wilke
(US 6,633,445 Bl, issued Oct. 14, 2003) ("Wilke") and Skaar (US
2005/0152670 Al, published July 14, 2005) ("Skaar"). Final Act. 2.
Claims 3 and 34 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, and Auerbach et al. (US 7 ,4 72,222 B2,
issued Dec. 30, 2008) ("Auerbach"). Final Act. 13.
Claims 4--8 and 35-39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilke, Skaar, and Hand, III et al. (US
2006/0004957 Al, published Jan. 5, 2006) ("Hand"). Final Act. 15.
Claims 11, 12, 42, and 43 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Wilke, Skaar, and Bohrer et al. (US 6,925,529 B2,
issued Aug. 2, 2005) ("Bohrer"). Final Act. 21.
Claims 16, 20, and 26-30 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Wilke, Skaar, and Nicholson et al. (US
2006/0248387 Al, published Nov. 2, 2006) ("Nicholson"). Final Act. 25.
Claims 17, 18, and 21-25 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Wilke, Skaar, Nicholson, and Hand. Final Act. 31.
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Appeal2014-006285
Application 12/032,221
Claim 19 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, Nicholson, and Auerbach. Final Act. 36.
Claim 53 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, and Liu et al. (US 6,922,754 B2, issued July
26, 2005) ("Liu"). Final Act. 37.
Claim 54 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, Liu, and Tash (US 7,036,138 Bl, issued
Apr. 25, 2006) ("Tash"). Final Act. 38.
Claim 53 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, and Nicholson. Final Act. 39.
Claim 54 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Wilke, Skaar, Nicholson, and Tash. Final Act. 41.
THE CLAIMED INVENTION
According to Appellants, "[ t ]he present disclosure relates to data
storage systems, and more particularly to removable non-volatile
semiconductor memory modules that can be externally plugged into low-
power hard disk drives for caching data." Spec. i-f 3. Independent claim 1 is
directed to a hard disk drive, independent claim 16 is directed to a hard disk
controller integrated circuit, and independent claim 31 is directed to a hard
disk assembly. App. Br. 19, 23-24, 27-28. Claim 1 recites:
A hard disk drive comprising:
a hard disk assembly comprising:
a magnetic medium,
a spindle motor configured to rotate the magnetic
medium,
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Appeal2014-006285
Application 12/032,221
a preamp configured to receive data from a
read/write channel module,
a read/write element configures to write the data to
and read the data from the magnetic medium, and
a first connector (i) arranged on the hard disk
assembly and (ii) configured to receive a non-volatile
semiconductor memory module, wherein portions of the data
stored on the magnetic medium are selectively cached in the non-
volatile semiconductor memory module, wherein the non-
volatile semiconductor memory module plugs into the first
connector and is removable from the hard disk assembly via the
first connector;
a hard disk drive printed circuit board (i) separate from the
hard disk assembly, and (ii) comprising
the read/write channel module,
a non-volatile memory configured to store control
information for the hard disk drive, and
a hard disk control module configured to control the
hard disk assembly based on the control information; and
a flex cable configured to connect between (i) the hard disk
control module, and (ii) the spindle motor, the preamp, the first
connector, the non-volatile semiconductor memory module, and
the read/write element,
wherein the flex cable is configured to (i) connect between
the hard disk assembly and the hard disk drive printed circuit
board, and (ii) connect the hard disk assembly to the hard disk
drive printed circuit board, and
wherein the flex cable includes an electrical line
connecting the hard disk control module to the first connector.
App. Br. 19-20.
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Application 12/032,221
ANALYSIS
We have reviewed the rejections of claims 1, 3--46, 48, 49, 51, 53-55,
and 57 in light of Appellants' arguments presented in the Appeal Brief and
the Reply Brief. We are not persuaded by Appellants' arguments that the
Examiner erred. We agree with and adopt the Examiner's findings,
reasoning, and conclusions as set forth in Final Office Action (Final Act. 2-
46) and the Examiner's Answer (Ans. 2-12). We highlight the following for
emphasis.
Claim 1
Appellants argue the cited art fails to disclose a connector as recited in
claim 1. App. Br. 7-10. The Appeal Brief states, "[ o Jn page 3 of the Final
Office Action, the Examiner alleges that col. ~' lines 40-50 of Wilke
disclose the claimed connector." This is incorrect. The Examiner cited
Figure 3, ref. nos. 186 and 187, and column 11, lines 40-50, of Wilke. Final
Act. 3. As a result, Appellants' argument is misdirected. Nonetheless, we
have considered the arguments of Appellants as to why the cited art fails to
disclose a connector as recited in claim 1 and find these arguments non-
persuasive.
Figure 3 of Wilke depicts an information storage device and host
system. Wilke 3: 14--15. The cited passage of Wilke states, "[t]he bridge
circuit 231 is coupled through lines 246 and the connectors 71-72 to the
lines 187 for the ROM 186. This permits the bridge circuit 231 to read out
the information which is stored in the ROM 186." Wilke 11: 41--45. As
shown in Figure 3, Wilke discloses a first connector arranged on a hard disk
assembly which connects to memory module ROM 186.
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Application 12/032,221
In addition to citing Wilke, the Examiner cites Skaar as teaching or
suggesting features of the connector recited in claim 1. The Examiner cites
paragraph 68 of Skaar as teaching, "portions of the data stored on the
magnetic medium are selectively cached in the non-volatile semiconductor
memory module," as recited in claim 1. App. Br. 4. Paragraph 68 of Skaar
states:
the memory in the auxiliary memory element 300 may be used
for purposes relating to the data and/ or the media associated with
the tape cartridge 200 .... The memory element may be used as
a cache buffer, for example, to store a copy of the portions of
data on the tape media, for example that may be expected to be
accessed in the near future.
The findings of the Examiner based on paragraph 68 of Skaar are well-
supported.
The Examiner cites Figure 10, ref. no. 300, and paragraph 31 of Skaar
as teaching, "the non-volatile semiconductor memory module plugs into the
first connector and is removable from the hard disk assembly via the first
connector," as recited in claim 1. Final Act. 5. Figure 10 of Skaar is
reproduced below.
Figure 10 of Skaar depicts a memory cartridge 200 with a removable
memory module 300 that plugs into a connector. Skaar i-f 60. Paragraph 31
of Skaar states, "the memory element 300 is removable and housed
internally to the cartridge housing 204 of the tape cartridge 200." The
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Appeal2014-006285
Application 12/032,221
findings of the Examiner based on Figure 10 and paragraph 31 of Skaar are
well-supported.
Appellants argue the cited art fails to teach or suggest a flex cable as
recited in claim 1. App. Br. 10-13. The Examiner cites the flex circuit
depicted in Figure 6, ref. no. 311, and described in column 14, lines 5-25, of
Wilke. Final Act. 4. The cited passage in Wilke states:
FIG. 6 is a diagrammatic view of the cartridge 11,
showing the same basic internal structure as FIG. 3. According
to a feature of the present invention, the connector 71 is
electrically coupled to all components within the cartridge 11
by a single flex circuit, which is indicated diagrammatically in
FIG. 6 by a broken line 311. In the disclosed embodiment, this
flex circuit 311 has mounted on it the integrated circuits for the
preamplifier 111, the buffer 112, the ROM 186, and the hour
meter 191. The flex circuit 311 is coupled at one end to the
connector 71, and at its other end to the spin motor 92, the head
107, and the coil 117.
Wilke; 14: 6-17. We agree with the Examiner that the flex circuit of Wilke
includes all the elements of the flex cable recited in claim 1.
Appellant argues that the flex circuit of Wilke is not a cable. App.
Br. 11. Specifically, the Appeal Brief, states, "[t]he flex circuit 311 is a
flexible substrate on which circuit elements of the cartridge 11 are
mounted." Appellants cite no support for this statement. Appellants'
unsupported attorney argument cannot take the place of evidence in the
record or a reasoned analysis based on evidence in the record. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997). The Examiner responds:
The flex circuit constitutes a flex cable as recited in the claims
because the flex circuit communicatively couples the cartridge
elements to the cradle elements via the connectors (see Wilke
FIG 3 and COL 14 LINES 7-26). Numerous prior art
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Application 12/032,221
references use the term flex cable and flex circuit
interchangeably. For example, Paragraph [0004] of
200600504293 discloses, with regard to hard disk drives, a flex
assembly that provides power, control and data signal to hard
disk assembly elements may be referred to as a printed circuit
cable, or a flex circuit.
Ans. 7. Appellants fail to respond in the Reply Brief. See Reply Br. 9-10.
We agree with the Examiner the broadest reasonable interpretation of "flex
cable" as used in claim 1 includes the "flex circuit" as taught by Wilke.
Thus, we are not persuaded by Appellants' argument relating to the flex
cable limitations of claim 1.
Appellants' argument is also not persuasive because it fails to
consider the combined teachings and suggestions of the cited references.
One cannot show nonobviousness by attacking references individually when
the rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981). Each reference cited by the Examiner must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). We are not persuaded of error in the rejection of claim 1.
Claims 16 and 31
With regard to independent claims 16 and 31, Appellants rely on the
arguments presented in support of claim 1. App. Br. 13-14. We affirm the
3 Gunderson et al. (US 2006/0050429, published Mar. 9, 2006)
("Gunderson"). Paragraph 4 of Gunderson states, "[t]he actuator assembly
may receive power, control, and data signals through a flexible interconnect
called a flex assembly (and may also [be] referred to as a flexible flat circuit
cable, a printed circuit cable, flex circuit, or flat wiring harness)."
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Application 12/032,221
rejection of claims 16 and 31 for the reasons discussed with regard to claim
1.
Claims 3-15, 17--46, 48, 49, 51, and 53-55
Appellants rely on previous arguments as to independent claim 1 as
purportedly establishing the patentability of dependent claims 3-15, 17--46,
48, 49, 51, and 53-55. App. Br. 14--17. We affirm the rejection of
dependent claims 3-15, 17--46, 48, 49, 51, and 53-55 for the reasons
discussed with regard to claim 1.
Claim 57
Appellants do not present any argument in support of claim 57. As
indicated above, Appellants fail to acknowledge claim 57 is pending.
Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we affirm the rejection of claim 57.
DECISION
The rejections of claims 1, 3--46, 48, 49, 51, 53-55, and 57 are
affim1ed.
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 )(iv).
AFFIRMED
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