This decision concerns an invention related to a storage device supporting periodic writes while in a low-power mode, based on the host’s power-saving mode. The first instance considered the subject-matter was not inventive. The Board agreed with the applicant that adjusting the power-saving behaviour of the storage device to the host’s power-saving behaviour, without affecting performance if the host is in active mode is technical. Therefore, the subject-matter was considered inventive since the skilled person would not have had any motivation to even consider the above problem, and even if they had, in the absence of any hint towards the claimed condition, it was not apparent that the skilled person would have arrived at the same solution as the inventors.
Here are the practical takeaways from the decision T 0409/21 (Activating a storage’s “power up in standby mode” depending on the host’s power savings mode / WD) of May 4, 2023, of the Technical Board of Appeal 3.5.05.
Key takeaways
Adjusting the power-saving behaviour of the storage device to the host’s power-saving behaviour, without affecting performance if the host is in active mode is technical.
Subject-matter of the claim is inventive, as the skilled person would not have had any motivation to even consider the above problem. And even if they had, in the absence of any hint towards the claimed condition, it is not apparent that the skilled person would have arrived at the same solution as the inventors
The invention
The Board summarised the invention as follows:
The present application concerns activating a “power up in standby mode” for a host’s non-volatile memory (e.g. its hard drive disc or solid state disc) when the host is detected to be in a “low power periodic update mode”.
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Claim 1 of the Main Request
Is it patentable ?
In the decision under appeal, the examining division held that the subject-matter of claim 1 lacked inventive step starting from document D1 (US 2012/042182 A1).
In the preliminary opinion, the Board considered that the feature of “placing the storage device in a power-up in standby mode” did not provide a technical effect as the claim did not specify that the storage device was in a different mode beforehand.
The applicant, amended the claim that the host was operable in active mode or low power mode, and the controller adjusted the storage device to power up in standby mode based on the determination of the host’s power-saving behavior, and argued as follows:
The appellant argued that the distinguishing features achieved the technical effect of adjusting the power-saving behaviour of the storage device to the host’s power-saving behaviour. The claimed solution was inventive since the skilled person would not have foreseen the claimed auto-detection of the host’s mode, nor would they have implemented this as a condition for placing the storage device in a “power up in standby mode”. The condition would notably ensure that the “power up in standby mode” was not activated when the host was in active mode, thus avoiding performance issues in that case.
Based on the amendments, the Board considered that the reformulated problem was technical and the skilled person would have no motivation to consider the problem, or have a hint towards the claimed solution, thus decided as follows:
The board holds that the distinguishing features achieve the technical effect of adjusting the power-saving behaviour of the storage device to the host’s power-saving behaviour, without affecting performance if the host is in active mode. The objective technical problem thus lies in how the system of document D1 can be modified such that the power-saving behaviour of the storage device is adjusted to the host’s power-saving behaviour, without affecting performance if the host is in active mode. Since document D1 neither mentions the host’s “low power periodic update mode” nor the disc’s “power up in standby mode”, the board considers that the skilled person would not have had any motivation to even consider the above problem. And even if they had, in the absence of any hint towards the claimed condition, it is not apparent that the skilled person would have arrived at the same solution as the inventors.
Thus, the board holds that, starting from document D1, the skilled person would not have arrived at the distinguishing features without employing inventive skills. Therefore, the subject-matter of claim 1 involves an inventive step over the disclosure of document D1.
Therefore, the Board decided that the subject-matter of the claims was inventive and remitted to the examining division with the order to grant a patent on the basis of the allowable claim of the Main Request.
More information
You can read the full decision here: T 0409/21 (Activating a storage’s “power up in standby mode” depending on the host’s power savings mode / WD) of May 4, 2023, of the Technical Board of Appeal 3.5.05