Western Digital Technologies, Inc.

Patent Trials and Appeals Board

Jun 2, 2021

2020000834 (P.T.A.B. Jun. 2, 2021)

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.
15/197,183 06/29/2016 Ajith Kumar Battaje WDT-1299
(H20151216US1)
8478
136965 7590 06/02/2021
LOZA & LOZA LLP/WDT
305 North Second Ave., #127
Upland, CA 91786-6064
EXAMINER
CHOE, YONG J
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
gabe-pto@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJITH KUMAR BATTAJE, TANAY GOEL, and
RAJENDRA PRASAD MISHRA
Appeal 2020-000834
Application 15/197,183
Technology Center 2100
Before CARL W. WHITEHEAD, JR., MICHAEL J. STRAUSS, and
IRVIN E. BRANCH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–12 and 20–27.2 See Final Act. 1.

1 We refer to the Specification, filed June 29, 2016, as amended August 9,
2018 (“Spec.”); the Final Office Action, mailed December 12, 2018 (“Final
Act.”); Appeal Brief, filed May 31, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed September 23, 2019 (“Ans.”); and the Reply Brief, filed
November 12, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Western Digital Corporation and its subsidiary
Western Digital Technologies Inc. as the real party in interest. Appeal Br. 2.
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Application 15/197,183

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Claims 1, 7, and 20 are independent; claims 13–19 are canceled. Appeal Br.
16–21 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to “translation lookup and garbage collection
optimizations on storage system with [a] paged translation table.” Spec.,
Title. Claim 1, reproduced below with a disputed limitation emphasized in
italics, is illustrative of the claimed subject matter:
1. A method comprising:
receiving a request for garbage collection;
identifying a range of physical blocks in a storage device;
querying a bitmap, the bitmap having a bit for each
physical block in the range of physical blocks;
determining a status associated with a first bit from the
bitmap;
in response to determining the status associated with the
first bit is a first state, adding a first physical block associated
with the first bit to a list of physical blocks for relocation; and
using the list of physical blocks, to relocate data stored at
the first physical block.
REJECTION
Claims 1–12 and 20–27 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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OPINION
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2018).

Principles of Law
Section 112(a) of the Patent Laws states “[t]he specification shall
contain a written description of the invention.” 35 U.S.C. § 112(a). “[T]he
hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly
and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Federal
Circuit has consistently held that 35 U.S.C. § 112(a) contains a written
description requirement separate from enablement. Id. The purpose of the
written description requirement is to ensure that a patent’s claims “do[ ]not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent [S]pecification.” Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000).
The Federal Circuit has explained “[t]he test for the sufficiency of the
written description ‘is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.’” Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015)
(quoting Ariad at 1351). The test requires objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art. Ariad Pharms., 598 F.3d at 1351. The written description
requirement does not require claimed subject matter to be described
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identically (id. at 1352); however, “[t]he appearance of mere indistinct
words in a specification or a claim, even an original claim, does not
necessarily satisfy” section 112, paragraph one, if it does not put others on
notice of the scope of the claimed invention and demonstrate possession of
that invention. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968
(Fed. Cir. 2002).
“A ‘mere wish or plan’ for obtaining the claimed invention is not
adequate written description.” Centocor Ortho Biotech, Inc. v. Abbott Labs.,
636 F.3d 1341, 1348 (Fed. Cir. 2011). However, it is well-established that a
patent Specification need not re-describe known prior art concepts.
Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1064 (Fed. Cir. 2020); see
also Zoltek Corp. v. United States, 815 F.3d 1302, 1308 (Fed. Cir. 2016)
(“The written description ‘need not include information that is already
known and available to the experienced public.”’); Capon v. Eshhar, 418
F.3d 1349, 1358 (Fed. Cir. 2005) (“The ‘written description’ requirement
must be applied in the context of the particular invention and the state of the
knowledge.”).
Whether the Specification contains a written description of the claims
is a question of fact. Ariad Pharms., 598 F.3d at 1355. However, as with
any rejection, the Examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.”).
“Insofar as the written description requirement is concerned, that burden is
discharged by ‘presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined
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by the claims.”’ In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (quoting
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976)).
Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds “[t]he applicant’s original disclosure clearly
describes the limitation of ‘relocating the list of physical blocks.’ However,
the amended limitation of ‘using the list of physical blocks, to relocate data
stored at the first physical block’ is not described by the [A]pplicant’s
original disclosure.” Final Act. 2.
Appellant contends the rejection is improper, arguing:
a person of ordinary skill in the art reading the entire disclosure
would reasonably understand and conclude that the limitation
“using the list of physical blocks, to relocate data stored at the
first physical block” meets the written description requirement
and is supported in the [S]pecification through express,
implicit, or inherent disclosure.
Appeal Br. 6. According to Appellant “the [S]pecification clearly states that
garbage collection involves relocating data stored at a physical block.
Moreover, Appellant submits that a person of ordinary skill in the art reading
the entire application would reasonably conclude that garbage collection
involves relocating data stored at a physical block.” Id. at 7. Appellant
contends the written description requirement for the disputed limitation is
satisfied because:
I. the specification describes a list of physical blocks;
II. the specification describes using a list of physical blocks,
to relocate a physical block, during garbage collection;
III. the specification describes that a physical block stores
data; and
IV. a person of ordinary skill in the art would reasonably
conclude that using a list of physical blocks, to relocate a
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physical block, as described in the specification, includes
using a list of physical blocks, to relocate data stored at a
physical block.
Id. at 9. Appellant directs attention to paragraph 215 of the Specification in
support of contention I. Id. at 9–10. In connection with contention II,
Appellant directs attention to text describing the flowchart depicted in
Figure 14B of the drawings. Id. at 10. Appellant argues the description that
“method 1450 proceeds to block 1464 where the list of physical blocks
identified in block 1462 are relocated 1464” (id. at 10 (citing Spec. ¶ 216))
discloses that plural blocks included in a list of physical blocks to be
relocated (step 1462) are relocated. Id. at 10–11. According to Appellant,
paragraph 55 of the Specification supports contention III describing that a
physical block stores data. Id. at 11. In support of contention IV, Appellant
argues as follows:
Appellant submits that when analyzed in view of the entire
application, the limitation “using the list of physical blocks, to
relocate data stored at the first physical block” meets the written
description requirement and is supported by the specification
through express, implicit, or inherent disclosure.
First, since a physical block stores data, as described in
Section III, then a person of ordinary skill in the art would
reasonably understand that relocating a physical block, as
described in the specification, inherently includes relocating
data stored at the physical block.
Second, as described above in Sections I and II, the
specification clearly and explicitly describes using a list of
physical blocks, to relocate physical blocks. Since relocating a
physical block includes relocating data stored at a physical
block, a person of ordinary skill in the art would reasonably
understand that during garbage collection, using a list of
physical blocks, to relocated a physical block, inherently
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includes using a list of physical blocks, to relocate data stored
at a physical block.
Id. at 12. Appellant further contends an implicit or inherent disclosure of the
disputed limitation, arguing “garbage collection necessarily involves the
relocation of data in memory blocks in order to free up memory in a solid
state drive.” Id. at 13 (citing https://en.wikipedia.org/wiki/Write_
amplification#Garbage_collection; and U.S. Patent Publication
2011/0283049, ¶ 1).
The Examiner responds, agreeing with Appellant that the
Specification describes a list of physical blocks (contention I) and that
physical blocks store data (contention III). Ans. 6, 7. However, the
Examiner disputes Appellant’s contentions II and IV. Id. at 6–8.
In connection with Appellant’s contention II asserting the
Specification describes using a list of physical blocks to relocate a physical
block during garbage collection, the Examiner responds as follows:
According to the [A]ppellant’s original disclosure (Fig.14B and
paragraphs [0055], [0215], [0216]), the whole blocks in the list
should be relocated. Therefore, the newly amended limitation
of “to relocate the data stored at the first physical block
CANNOT be interpreted as “to relocate the list of physical
blocks” as described in the appellant’s original disclosure
(Fig.14B: block 1464).
Id. at 6. Therefore, the Examiner concludes “the [S]pecification does not
describe using a list or physical blocks, to relocate a physical block, during
garbage collection.” Id. at 7.
In connection with Appellant’s contention IV, the Examiner responds
as follows:
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The garbage collection technique is very well known and it just
simply collects the list of invalid (or valid) blocks and
relocates (or removes) the whole blocks in the list. Thus, the
newly amended limitation of “to relocate the data stored at
the first physical block CANNOT be interpreted as “to
relocate the list of physical blocks[,]” as described in the
[A]ppellant’s original disclosure (Fig.14B [(block 1464)]).
Id. at 7.
Appellant replies, inter alia, challenging the Examiner’s (i)
description of garbage collection and (ii) finding that garbage collection
includes relocating whole blocks. Reply Br. 10–11. In particular,
“Appellant submits that the Examiner’s Answer does not provide proper
support and rationale as to why it is well known in the art that using garbage
collection includes using a list of invalid (or valid) blocks.” Id. at 10.
Appellant further argues the Examiner neither provides proper support for
finding it was “well known in the art that using garbage collection includes
relocating ‘whole’ blocks” nor what is meant by the asserted “whole blocks”
characterization. Id. at 11.
Analysis
Appellant’s contentions are persuasive of reversible Examiner error.
“[T]he level of detail required to satisfy the written description requirement
varies depending on the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Ariad, 598 F.3d
at 1351. In particular, the written description requirement does not demand
any particular form of disclosure “or that the [S]pecification recite the
claimed invention in haec verba.” Id. at 1352. Thus, as long as “a person of
ordinary skill in the art would have understood the inventor to have been in
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possession of the claimed invention at the time of filing, even if every
nuance of the claims is not explicitly described in the specification, then the
adequate written description requirement is met.” Alton, 76 F.3d at 1175.
Based on a preponderance of the evidence, we are persuaded by
Appellant’s argument that the Specification describes using a list of physical
blocks to relocate physical blocks of memory during garbage collection. See
Appeal Br. 10–11. A block to be relocated (i.e., moved) would therefore
include the recited “first physical block” included in the recited list of the
physical blocks for relocation of claim 1.3 We further find persuasive
Appellant’s conclusion (Appeal Br. 12) that a list of blocks to be moved
would be used to move the listed blocks wherein one skilled in the art would
have understood moving a physical block, i.e., a section of memory, means
moving the data stored in or at the physical block. See, e.g., Spec. ¶ 3 (“As
[memory or storage] device capacities increase . . . the number of logical
blocks (user data) that can be stored on the device increases.”)
We are unpersuaded by the Examiner’s finding that the Specification
describes relocating whole blocks and, therefore, according to the Examiner,
the disputed limitation of relocating data stored at a first physical block
cannot be interpreted as relocating the list of physical blocks as originally
claimed. Ans. 6. To the extent claim 1 as originally filed recited “relocating
the list of physical blocks,” (Spec. 82 (Claims App.)) the limitation might
have been found to be ambiguous in either meaning relocating the: (i) list of
physical blocks or, alternatively; (ii) blocks (of memory) identified in the list

3 “[I]n response to determining the status associated with the first bit is a
first state, adding a first physical block associated with the first bit to a list
of physical blocks for relocation.” Appeal Br. 16, (Claims App.) (claim 1).
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therefore rendering the claim indefinite.4 However, Appellant’s Amendment
filed August 9, 2018 clarified that the claim requires relocating the data
stored in the list-identified physical blocks, not relocating the list itself.
Such amendment to the claim language not only finds written description
support in the Specification as filed for the reasons discussed above but is
also consistent with the accepted meaning of garbage collection in the
computer arts, as follows:
garbage collection n. A process for automatic recovery of heap
memory. Blocks of memory that had been allocated but are no
longer in use are freed, and blocks of memory still in use may
be moved to consolidate the free memory into larger blocks.
MICROSOFT COMPUTER DICTIONARY 232 (5th ed. 2002).
For the reasons discussed above, the Examiner erred in finding a lack
of written description support for the disputed claim language reciting using
the list of physical blocks, to relocate data stored at the first physical block.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–12 and
20–27 under 35 U.S.C. § 112(a).
CONCLUSION
We reverse the Examiner’s rejection of claims 1–12 and 20–27 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement.

4 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”)
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 20–27 112(a) Written Description 1–12, 20–27
REVERSED