Ex Parte Yun et al

Patent Trial and Appeal BoardSep 24, 2012

11060601 (P.T.A.B. Sep. 24, 2012)

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. 11/060,601 02/18/2005 Sung-joong Yun 1793.1524 8686 21171 7590 09/25/2012 STAAS & HALSEY LLP SUITE 700 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER REHMAN, MOHAMMED H ART UNIT PAPER NUMBER 2116 MAIL DATE DELIVERY MODE 09/25/2012 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 SUNG-JOONG YUN and JIN-WAN JUN ____________________ Appeal 2010-003372 Application 11/060,601 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, BRYAN F. MOORE, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003372 Application 11/060,601 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4, 5, 8, 9, 11-13, 20, 22 and 231. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to method of controlling an idle mode of hard disc drive and apparatus therefor. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of controlling an idle operation mode of a hard disc drive (HDD) and having a power saving operation mode, the method comprising: detecting a power source being used when a host system is initialized and/or when the power source being used is changed, wherein the host system performs the detection; if a power source used by the host system combined with the HDD is a general-use power source other than a battery, prohibiting the use of the power saving operation mode even though the HDD is in an idle state; and if the power source used by the host system is the battery, allowing the use of the power saving operation mode when the HDD is in the idle state and permitting a head of the HDD to be unloaded in the idle state. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kitamura Parrish Kawano 5,652,891 6,704,879 B1 7,203,804 B2 Jul. 29, 1997 Mar. 9, 2004 Apr. 10, 2007 1 Claims 3 and 10 are cancelled; claims 6, 7, 14-19 and 21 are withdrawn from consideration. Appeal 2010-003372 Application 11/060,601 3 REJECTIONS2 The Examiner made the following rejections: Claims 1,2,4,8,9,12,13,20,22 and 23 stand rejected under 35 U.S.C §103(a) as being unpatentable over Kitamura and Parrish. Ans. 3. Claims 5 and 11 stand rejected under 35 U.S.C §, 103(a) as being unpatentable over Kitamura, Parrish and Kawano. Ans. 10. APPELLANTS’ CONTENTIONS 1. Appellants contend that claim 1 together with the remaining independent claims require detecting “whether a power source used for a host system is a general-use power source or a battery only when the host system is initialized and/or only when the power source being used is changed” (App. Br. 13, emphasis in original) in contrast to the prior art in which “Parrish does not teach preventing Kitamura from performing the task of detecting a power source if a command corresponding to a power save command of Kitamura is received after the power source has been detected.” App. Br. 14. 2 Appellants collectively argue the patentability of independent claims 1, 8, 13, 20, 22 and 23. App. Br. 13-16. Separate patentability is not argued for claims 2, 4, 5, 9, 11 and 12. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence). Further, merely restating with respect to a second claim an argument, previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. In view of the foregoing, we select claim 1 as representative of all the claims 1, 2, 4, 5, 8, 9, 11-13, 20, 22 and 23 on appeal and, except for our ultimate decision, claims 2, 4, 5, 8, 9, 11-13, 20, 22 and 23 are not substantively discussed further herein. Appeal 2010-003372 Application 11/060,601 4 2. Appellants additionally contend that the Examiner has not articulated a reason for combining the cited references. App. Br. 15. ISSUE Did the Examiner err in forming and finding that the resultant combination of Kitamura and Parrish teaches or suggests “detecting a power source being used when a host system is initialized and/or when the power source being used is changed, wherein the host system performs the detection?” ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (App. Br. 13-16) and the Reply Brief (Reply Br. 3-6) that the Examiner has erred. We disagree with Appellants’ contentions and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (see Ans. 3-10) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 10-13). Furthermore, Appellants' argument distinguishing the invention over the applied combination of references fails because it argues limitations not present in the disputed claims. The disputed step of claim 1 does not include the “only” language argued by Appellants. Nor do Appellants argue that any other claim language would effectively “prevent . . . the task of detecting a power source if a command corresponding to a power save command . . . is received after the power source has been detected.” (App. Br. 14.) Thus, it is irrelevant to patentability of the claims at issue whether the prior art would Appeal 2010-003372 Application 11/060,601 5 detect a power source in response to events in addition to those recited in the disputed claim language so long as the prior art teaches or suggests detection at least in response to the recited events. Since Appellants do not effectively argue that the applied prior art teaches at least the step of “detecting a power source being used when a host system is initialized and/or when the power source being used is changed, wherein the host system performs the detection”, we are not persuaded of Examiner error in the rejection of independent claim 1 or of claims 8, 13, 20 and 23 collectively argued therewith. Appellants’ statements in connection with independent claim 12 (App. Br. 14-15) merely recite claim language that is alleged to be absent from the applied combination of Kitamura and Parrish without further explanation. Such a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. Therefore we do not consider these statements to be an argument for the patentability of claims 12. Appellants’ argument that the combination of Kitamura and Parrish is improper is likewise unpersuasive. See App. Br. 15, reply Br. 4-5. Contrary to Applicants’ argument, the Examiner has provided the requisite reasoning with rational underpinning to support the legal conclusion of obviousness as articulated at Page 3 of the Feb. 26, 2009 Final Office Action under appeal and repeated in the Examiner’s Answer at page 4 and further addressed at page 13. Therefore, on this record, we are again not persuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of claim 1 and of corresponding independent claims 8, 12, 13, 20, 22 and 23 under 35 U.S.C. Appeal 2010-003372 Application 11/060,601 6 § 103(a) and of dependent claims 2, 4, 5, 9, and 11, which were not argued separately. DECISION The decision of the Examiner to reject claims 1, 2, 4, 8, 9, 12, 13, 20, 22 and 23 is affirmed. 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)(2010). AFFIRMED ke