Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Introduction
The present Reissue application U.S. Application No. 17/675,916, filed February 18, 2022, is apparently a reissue continuation of Reissue U.S. Application No. 14/608,801, issuing as U.S. Patent No. RE48,952 E to Tatsuya Haga et al. (hereinafter the "Haga Reissue" patent) on March 1, 2022, which itself is a reissue of underlying U.S. Patent No. 8,363,349 (hereinafter the “Original Haga” patent), filed March 14, 2014 as U.S. Application No. 13/047,757 (claiming foreign priority to Japanese Patent Application No. 2010-124898, filed December 1, 2011).
The Haga Reissue patent issued with original claims 1-39.
A preliminary amendment was filed concurrently with the present reissue application (hereinafter the “Preliminary Amendment”) and a subsequent Amendment on September 9, 2024 (hereinafter the “Amendment”). The Amendment added new claim 10-23. Thus, claims 10-23 are currently pending.
Reissue Reminders
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding in which the Haga patent is or was involved. These proceedings would include interferences, reissues, reexaminations, other post-grant proceedings, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56 to timely appraise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Objection to Improper Amendment
Said Amendments do not comply with 37 CFR 1.177(b). The claims must be renumbered starting after the last claim number of the original Haga Reissue patent.
Objection - Defective Reissue Declaration
The reissue oath/declaration filed with this application on May 25, 2022 is defective (see 37 CFR 1.175 and MPEP § 1414) because the error statement appears to be substantive copy of the error statement provided in declaration filed April 20, 2015 in the earlier Reissue Application No. 14/877608,801 of the same underlying patent, where the claims correcting that particular error were allowed October 13, 2021 and then issued as said Haga Reissue patent on March 1, 2022. Thus, the present error statement is defective for identifying an error that has already been corrected by said Haga Reissue patent.
35 USC ¶ 251
Claims 10-23 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect is set forth in the discussion above in this Office action.
Informal Amendment
Said Amendments, filed February 18, 2022 and September 13, 2024, do not comply with 37 CFR 1.173. Specifically, amended claims do not comply with 37 CFR 1.173(b)2 & (c).
The remarks accompanying said Amendment do not show the specific teachings to the specific amended limitations of the claims. Rather, the Patent Owner offers no specific statement of support regarding new claims 10-23. The illustrative statement of written description support for new claim 10 is reproduced below (from said February 18, 2022 Amendment, 5 & 6):
New claim 10 is fully supported by the specification by at least Figs. 1, 4, and 8 (and associated text at, for example, col. 2, lines 41-47, col. 4, lines 28-40, and col. 7, line 57 to col. 8, line 24); New claim 11 is fully supported by the specification by at least col. 5, lines 12-14; New claim 12 is fully supported by the specification by at least col. 5, lines 14-17.; New claim 13 is fully supported by the specification by at least Fig. 4 and associated description at col. 4, lines 30-33.
Any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(c) (emphasis added):
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
As seen in MPEP 1453 V. D. Amendment of New Claims, the status of a claim shows specific claims limitations amended and specifically maps those new and amended limitations to the sections of the specification that teach the amended claim limitation. The following is an example from MPEP 1453 V. D. Amendment of New Claims:
First Amendment (wherein claim 11 was first presented):
Claim 11 (New). A knife comprising a handle portion and a notched blade portion.
In the Remarks (supplied on a separate page):
Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has added new independent claim 11. Support for this new claim is found in column 4, lines 26-41, column 5, lines 3-18, and column 6, lines 5-15.
Second Amendment (wherein claim 11 is amended):
Claim 11 (New, amended). A fishing knife comprising a bone handle portion and a notched blade portion.
In the Remarks (supplied on a separate page):
Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has amended new independent claim 11 as described below.
Claim 11: Claim 11 is amended to add "fishing" before "knife" and "bone" before "handle". Support for these changes is found in column 4, lines 34-41 and column 6, lines 5-8, respectively.
If the next response does not comply with 37 CFR 1.173, the response will be held “Non-Compliant” and a shortened statutory period for reply to this letter is set to expire TWO (2) MONTHS from the mailing date of the next Office Action.
35 USC ¶ 251
Claims 10-23 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent was discussed in the objection to the claim amendment above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of said Haga Reissue patent (U.S. Reissue Patent No. RE48,952). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 10-13 are merely broader than claim 1 of the Haga Reissue patent, specifically missing claim limitations that rendered claim 1 of the Haga Reissue patent patentable. It would have been obvious to one of ordinary skill in the art to remove limitations in order to make the claimed invention broader. For example, instant claim 10 is missing the limitation “at a physical location in the write area” that was present in claim 10 of the Haga Reissue patent. Claim 10 by virtue of dependent claim 12 encompasses non-shingled recording, which is another manner in which claim 10 is merely broader than clam 1 of the Haga Reissue patent. Regarding dependent claim 11, clam 1 of the Haga Reissue patent recited shingled recording. As discussed in the indefiniteness rejection below, dependent claim 13 must be interpreted broadly to be understood and does add any substantial narrowing to parent claim 10.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
Independent claim 10 is directed to a “recording medium controller.”
However, regarding a “recording medium controller”, the specification states the recording medium controller is distinct from a CPU and further the recording medium controller is implemented in software. Specifically, the “CPU 26 controls the entire magnetic disk device 1 in accordance with firmware pre-stored . . . . [t]his firmware comprises . . . controlling firmware used for regular operations. The controlling firmware further comprises a magnetic disk controlling program . . . .” Original Haga patent, col. 3, ll. 26-42. The specification describes a “hard disk controller (HDC) 31,” but this is disclosed as distinct from the recording medium controller because the HDC 31 merely “controls data transmissions and receptions performed between the magnetic disk device 1 and a host computer . . .” Col. 3, ll. 43-52.
Thus, claims 10-13 are directed to a “recording medium controller” that does not have a physical or tangible form and thus the subject claims are not directed to any of the statutory categories. MPEP 2106.03.I.
Claim Interpretation – Means Plus Function
Claims 10-23 are interpreted to invoke mean-plus-function.
The examiner will apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP 2181.I.
Regarding the first prong, the claims fails to use the term “means” or “step”, thus a rebuttable presumption is made that the claims were not intended to invoke means-plus-function. MPEP 2181.I.A. The presumption may be overcome if the claim limitation uses a generic placeholder (a term that is simply a substitute for the term "means"), such as “module.” Id. Here for example, claim 10 recites an “a reading module configured to. . . ,” and a “writing module configured to. . . .” Claim 14 recites “a writing part configured to . . . .” and a controller configured to . . . .” The specification provides a description insufficient to inform one of ordinary skill in the art that the terms denotes structure. Specifically, Fig. 3, which is reproduced below, illustrates the claim terms discussed above:
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However, the specification admits that Fig. 3 is directed to a “software configuration” and no corresponding algorithms are disclosed. Original Haga patent, col. 1, ll. 57-60 and col. 3, ll. 53-61. Thus, the terms “input,” “reading” and “writing” fail to impart structure to the term “module.”
The term “controller” is also equated to software (see the 101 rejection above) and not imparted in structure.
Regarding the second prong, the “module” and “controller” placeholders are modified by functional language linked by the transition word "configured to.”
Regarding the third prong, the generic placeholder are not modified by sufficient structure or acts for performing the recited functions.
For similar reasons, the phrase “a write head” and “a controller circuit configured to . . . .” I claim 18 is interpreted to invoke means-plus-function.
Once the examiner determines that a claim limitation is a means-plus-function limitation invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the examiner should determine the claimed function and then review the written description of the specification to determine whether the corresponding structure, material, or acts that perform the claimed function are disclosed. Note that drawings may provide a written description of an invention as required by 35 U.S.C. 112. MPEP 2181.III. The corresponding structure, material, or acts may be disclosed in the original drawings, figures, tables, or sequence listing.
The examiner has inspected the specification, but fails to find any corresponding structure, material or acts that perform the claimed functions. As discussed above, the means are disclosed in Fig. 3, but Fig. 3 is described in the specification as corresponding to non-structural software. Moreover, the specification fails to disclose any corresponding software algorithms, steps or acts, including to the controller.
Thus, all claim limitations reciting “configured” are interpreted to invoke means-plus-function.
Claim Rejections - 35 USC § 112 (2nd Paragraph)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 10-23, as discussed in the means-plus-function, claim interpretation section above, the claim limitations, such as “input module configured to . . . ,” “a reading module configured to. . . ,” a “writing module configured to. . . ,” and “a controller configured to . . . .” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Also, as discussed in the means-plus-function discussion above, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Rather, the specification appears to only illustrate black-box figures. See again, e.g., Fig. 3 (also reproduced above). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Further regarding claims 10-13, the independent claim 10 phrase “rewrite merged data” as no antecedent basis for the phrase “merged data.” Indeed, there is no act of merging recited. Thus, the claim also omits essential steps necessary to a basic understanding of the claim (e.g., what is being “merged” and how it being “merged”).
Further regarding dependent claim 12, it is not understood how the data writing technique could be “non-shingled” when parent claim 10 recites writing “using a shingled recording technique.” Claim 12 also contains the typographical error “escaper.”
Further regarding dependent claim 13, the phrase “the same surface” lacks antecedent basis. The Examiner thus reasonably and broadly interprets “surface” to include the overall component surfaces although the claim omits essential steps defining how a surface may be the “same” as an undefined earlier surface.
Further regarding claims 14-17, the independent claim 14 phrase “write the consecutive data to the cache area instead of the user data writing area which is specified by the logical address, if the write request is the sequential write request and the spare writing area is not available” is not understood. First, the emphasized portion of the limitation contains the word “instead of.” It is not clear if any language included in the “instead of” clause should have patentable weight. Similarly, it is not clear if any language after the conditional statement “if” should be afforded patentable weight. It is also not clear whether the phrase “which is specified by the logical address” refers to writing to the cache area or to the “instead of” clause. The ambiguity is further compounded by the “if” statement in that it is not clear whether this condition references to the “user data writing area . . . specified by the logical address, to the “instead of” clause, or to “write the consecutive data to the cache area.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites the limitation “written data written to the escape area is written by using the shingled recording technique.” This limitation appears to have already been substantively recited in parent, claim 10. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112 (1st Paragraph)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-13 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide written description or enablement support for the computer-implemented invention phrases “recording medium controller,” a “reading module,” and “writing module” (claim 10), especially “non-shingled recording” (claim 12). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
As discussed in the 101 rejection and the 112, second paragraph rejection above, the phrase “recording medium controller” is disclosed in the specification as software per se and there is no corresponding structure or algorithm for “reading module” and “writing module.” Thus, claims 10-13 are directed to a generalized computer-implemented invention.
Computer-implemented invention claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. MPEP 2161.01.I. Here, the claims merely recite functional results with no structural detail regarding a “reading module” and “writing module as discussed above.
Moreover, when a claim is not limited to any particular structure for performing a recited function and does not invoke 35 U.S.C. 112(f), any claim language reciting the ability to perform a function per se would typically be construed broadly to cover any and all embodiments that perform the recited function. However, the specification fails to teach those skill in the art how to make and use the full scope of the claimed invention without “undue experimentation.” For example, claim 10 encompasses (by virtue of dependent claim 12) “non-shingled” recording. However, the specification is entirely directed to solving the problem of slow, shingled recording (as discussed in the original patent requirement rejection infra for additional details). Thus, the breadth of the claims is large (covering non-shingled recording) and the amount of direction provided by the inventor for making or using non-shingled recording is non-existent. See MPEP 2161.01.II. and In re Wands, 858 F.2D 731 (Fed. Cir. 1988).
Recapture
Claims 10-23 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue, which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Said Amendments broaden the claims over the scope of the claims of the Haga patent to be reissued.
A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim. See MPEP § 1412.03. Said Amendment deletes limitations from the originally issued claims and broadens over the scope of the original claims, as admitted to in said Patent Owner's Declaration.
Moreover, the broadening aspects of the reissue claim relate to subject matter that the Patent Owner previously surrendered during the prosecution of the original reissue application (U.S. Reissue Application No. 14/608,801) (issuing as said Haga Reissue patent) (U.S. Patent No. RE48,952).
In the 14/608,801 Application, the Patent Owner filed an amendment on June 9, 2020 in response to the Examiner's final Office action mailed December 9, 2019. The amendment introduced the limitation “a first area having first and second trackgroups that are in different physical locations on the recording medium from each other” (claim 10) or similar limitations into every independent claims.
The claim were subsequently allowed by the Examiner in a Notice of Allowance, mailed October 13, 2021 discussing specifically how this newly introduced limitation distinguished over the applied, prior art of record. Notice of Allowance, 5, 6.
The present said Amendments entirely eliminates this surrender generating limitation from all independent claims.
Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. MPEP 1412.02.II.C
Finally, the Patent Owner's After-final Amendment has not presented arguments of record as to whether and how the claims are materially narrowed in a manner that relates to the surrendered subject matter.
The Examiner has inspected the amended claims and cannot determine what particular limitations are intended to materially narrow the claims in a manner that relates to the surrendered subject matter.
Claim Rejections - 35 USC § 251 (Original Patent Requirement)
Claims 10 and 12 are rejected under 35 U.S.C. 251 as not being directed to the same general invention as the original patent.
Dependent claim 12 recites “using a non-shingled recording technique.” Thus, parent, independent claim 10 can be reasonably be interpreted to encompass non-shingled recording.
The originally filed specification however is clearly and wholly directed to an embodiment that uses a shingled recording technique. Haga Reissue patent, Abstract, Figs. 5, 6., 1:26-50. Haga teaches no alternative embodiment using a “non-shingled” recording technique.
If a different embodiment is claimed during reissue prosecution, that different embodiment must be disclosed in the specification in an “explicit and unequivocal manner.” MPEP 1412.01.I, citing Antares Pharma Inc. v. Medac Pharma Inc. (Fed. Cir. 2014). Here, the Patent Owner has introduced new claims by amendment that utilized a “non-shingled” recording technique.
However, and as discussed above, the specification appears to disclose no embodiment where a non-shingled recording technique is used.
Indeed, a shingled recording technique appears to be a necessary, critical and essential part of the invention because the patent is wholly directed to shingled recording. The technical solution set forth in Haga is to improve the “long time to write data [shingled] data because the writing must be performed per unit track group.” 1:46-49.
Reissue claims broadening a limitation (see the Reissue Declaration) to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical or essential part of the invention do not meet the original patent requirement. In re Float’N’Grill. 2202-1438 (Fed. Cir. 2023).
Claim Interpretation – “Escape Area”
Various claims recite “escape area.” See, e.g., claim 10. The specification fails to impart any special meaning to the term escape area. For example, the specification states regarding Fig. 4 that the “escape area 401 [is] used as temporary storage area for the data” that “temporarily stores therein data to be written to the write area 402” and that “escape area 401 is comprised in the magnetic disk 11 . . . .” Original Haga patent, col. 4, ll. 32, 33, 60, 61, 65 and 66. Thus, “escape area” is interpreted reasonably broadly consistent with the specification as an area on the disk for temporary storage.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 10-13, as they can best be understood (see the indefiniteness rejections above), are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over United States Patent No. 7,965,465 B2 to Sanvido et al. (hereinafter “Sanvido”) in view of US Patent Application No. 2004,0128470 A1 to Hetzler et al. (hereinafter “Hetzler”).
Regarding independent claim 10,
A recording medium controller, comprising:
a recording medium comprising a write area having a plurality of track groups and an escape area for temporarily storing data therein
Sanvido discloses a recording apparatus (Hard Disk Drive 110) comprising a recording medium (disk 122). The recording medium (disk 122) includes a first area (illustrated as “overlapping tracks”). See Fig. 1, which is reproduced below.
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Sanvido also discloses an escape area (e.g., a second area for storing data) specifically cache memory 116 (see Fig. 1, reproduced above).
Hetzler is relied upon to teach that a recording medium, such as a disk, would have obviously physically incorporated cache. Specifically, Hetzler teaches a disk-based recording system (abstract and Fig. 1) , where the write cache “is preferably implemented in the main storage medium” (abstract and paragraph 8).
The suggestion/motivation for adding a write cache to the main hard disk storage medium would have been to reduce cost of manufacture and design by integrating the main storage component and cache component into the same recording medium. Making components integral would have also been recognized as a common practice, which the court has held normally require only ordinary skill in the art and hence are considered routine expedients. MPEP 2144.04.V.B. Moreover, as discussed above, Hetzler provides evidence (“The write cache is preferably implemented in the main storage medium”) that one of ordinary skill would recognize certain that it is preferable at least in some cases to implement cache into the main storage medium (disk).
Thus, to one of ordinary skill in the art at the time the invention was made, it would have been obvious for the recording medium (disk) of Sanvido to include (physically incorporate) the second area (cache) as taught by Hetzler.
Sanvido discloses the first area (shingled, overlapping tracks 302) includes a first and second track groups (shingled overlapping tracks 302 comprise track group A and track group B). See Fig. 3, reproduced below and col. 3, ll. 37-51. Each of the overlapping tracks is also writeable. Col. 3, ll. 48-60. Each of the track groups A or B may also be correspond to a single shingle block or multiple shingle blocks. Col. 4, ll. 23-28 and 34-37.
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a reading module configured to read data from a first track group in the plurality of track groups, the first track group including data to be updated by an update command for data recorded in the write area
Sanvido discloses controller 114 (see Fig. 1, reproduced above) comprising a reading module to read data from just those shingle blocks containing data to be updated in response to a write command. Fig. 4B. step 411 and col. 5, ll. 40-43. See also col. 2, ll. 5-17 regarding the above reading operation being in response to a write command. As discussed above, a shingle block or blocks corresponds to a first track group (e.g., track group A). Thus, the data to be updated corresponds to those shingle block(s) containing data targeted for update in response to the write command.
a writing module configured to write the data to be updated by the update command to the escape area after receiving the update command and to rewrite merged data obtained by merging data read from the escape area and the data read from the first track group to a second track group in the plurality of track groups by using a shingled recording technique.
The controller includes a writing module for data to be updated is the actual updated data in response to the write command. The second data is written solid-state cache memory circuit 116 (second area) in Fig. 4B, step 412. See also col. 4, ll. 43-45. The actual updated data (second data) is then written to a portion of cache memory circuit 116 (second area). Fig. 4B, step 413. See also col. 4, ll. 45-48.
As discussed above, the actual updated data is overwritten into a portion of the memory circuit 116 (second area) containing the original data (shingle blocks) (first track group) that included the data originally read from the disk. Thus, the updated data (second data) is merged with the first data from the first track group. See again Fig. 4B, step 413 and col. 5, ll. 45-47. The hard drive then writes the merged data onto hard disk 122 (Fig. 4B, step 414) resulting in a second track group that differs from the first track group (e.g., the updated or merged data would include additions or deletion of data). Moreover, cache memory 116 can be used for write-cache functions, thus cache memory 116 can store on or more shingle blocks of data in cache memory 116 before the shingle blocks are written (col. 5, ll. 52-58). The merged data is written to a second track group (delayed or cached write of all accumulated updates) that is different from the first track group (read for single update operation).
Regarding claims 11-13, Sanvido as modified teaches both shingled and non-shingled recorded. As discussed in the indefiniteness rejection above regarding claim 13, the phrase “the same surface” lacks antecedent basis and the Examiner thus reasonably and broadly interprets “surface” to include the overall component surfaces.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Roland Foster whose telephone number is (571) 272-7538. The examiner can normally be reached on Mon-Fri., 9:30 AM – 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ROLAND G FOSTER/Primary Examiner, Art Unit 3992
Conferee(s):/DAVID E ENGLAND/ Primary Examiner, Art Unit 3992 /MICHAEL FUELLING/Supervisory Patent Examiner, Art Unit 3992