Ex parte BROWN

Board of Patent Appeals and Interferences

Sep 25, 1997

08109982 (B.P.A.I. Sep. 25, 1997)

Application for patent filed August 23, 1993. According
to the appellant, it is a continuation application of application
07/827,911, filed on January 31, 1992, now abandoned, which is a
continuation application of application 07/292,195, filed on
December 30, 1988, also now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NANETTE BROWN
____________
Appeal No. 95-1955
Application 08/109,9821
____________
ON BRIEF
____________
Before URYNOWICZ, KRASS and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 10-12, all of which are
independent claims. No claim has been allowed.
Reference Relied on by the Examiner
Nibby, Jr. et al. Patent No. 4,527,251 Jul. 2, 1985
(Nibby)
Appeal No. 95-1955
Application 08/109,982
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Hills et al. Patent No. 4,713,769 Dec. 15, 1987
(Hills)
The Rejection on Appeal
Claims 10-12 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on new matter added to the disclosure
subsequent to the filing of the application. We regard the
rejection as being for lack of adequate written description in
the specification as is required by § 112, first paragraph.
Claims 10-12 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out what the
appellant regard as her invention.
Claims 10-12 also stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nibby and Hills.
The Invention
The invention is directed to a method for organizing data in
a postage meter microcontrol system. Claim 10 is representative
and reads as follows:
10. A method for organizing data in a postage
meter microcontrol system, said postage meter
microcontrol system having a plurality of non-volatile
memory, a CPU and a Read Only Memory (ROM) comprising
the steps of:
(a) allocating a plurality of data stores for a
first one of said non-volatile memories, each data
store having a plurality of buffers, said plurality of
buffers containing related data items;
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Application 08/109,982
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(b) allocating a plurality of data stores for a
second one of said non-volatile memories, each data
store having a plurality of buffers containing
redundant data to a respective one of said buffers in
said first one of said non-volatile memory;
(c) providing a data store in each of said non-
volatile memories which data store includes a bit map
buffer having first data therein relating to the status
of each of a plurality of buffers of said respective
non-volatile memory and said respective bit map buffers
includes status data only for that respective non-
volatile memory wherein said first data has a first
state and a second state;
(d) providing and entry table of addresses in said
ROM for accessing the data store in each of said
respective non-volatile memories;
(e) determining a current buffer address for
accessing said respective non-volatile memories in
accordance with the data in said ROM table and said
non-volatile memory bit map;
(f) calculating and storing an associated CRC for
only those data stores having said respective first
data in a first state in each of said buffers of said
respective non-volatile memories wherein said CRC has a
first state representing a good data store buffer and a
second state representing a bad data store buffer;
(g) setting said first data to said first state
when said CRC is in a first state or to said second
state when said CRC is in said [second] state; [and],
(h) programing said microcontrol system to access
only those data stores wherein said first data is in
said first state.
Note that claims 11 and 12 do not require that the second
non-volatile memory contain redundant data with respect to the
buffers in the data stores of the first non-volatile memory.
Appeal No. 95-1955
Application 08/109,982
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Note also that claim 12's steps (g) and (h) appear to be
duplicative to each other. The appellant or the examiner may
want to take up this matter upon return of the application to the
examining group upon termination of this appeal.
Opinion
The appellant's reply brief (Paper No. 37) was not entered
by the examiner (See Paper No. 38). Therefore, it is not a part
of the record in this appeal and has not been considered.
The rejection under
35 U.S.C. § 112, first paragraph
We do not sustain the rejection of claims 10-12 under
35 U.S.C. § 112, first paragraph, as being without adequate
written description support in the specification.
Claim 10 recites the step of "calculating and storing an
associated CRC for only those data stores having said respective
first data in a first state in each of said buffers of said
respective non-volatile memories wherein said CRC has a first
state representing a good data store buffer and a second state
representing a bad data store buffer." Essentially the same
feature is recited in claims 11 and 12 as well. The acronym
"CRC" is defined on page 8 of the specification and it means
"cyclic redundancy code."
According to the claimed invention, the CRC is not
Appeal No. 95-1955
Application 08/109,982
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calculated and stored for every data store in the non-volatile
memories, but only for those stores whose corresponding first
data in the bit map buffer is in a first state. The claimed
invention includes a bit map buffer in one of the data stores of
each non-volatile memory, which has first data therein relating
to the status of each buffer in the associated non-volatile
memory. The first data has a first state and a second state.
In the specification, evidently the only place where the
generation of CRC is explicitly discussed is on page 8:
For best results, each data buffer will have an
attached cyclic redundancy code (CRC) calculated. A
single CRC is computed across all of the data items
within the buffer. If the buffer contains unused
space, the CRC calculation does not include such unused
bytes. It will be appreciated that the calculation of
a single CRC for the entire buffer will save
considerable space over that required for CRC's for
each data item. (Emphasis added.)
The examiner correctly notes that the above-quoted language
uses the word "each" to describe which data store will have its
CRC calculated. For reasons discussed below, we agree with the
appellant that the specification as filed does have written
description support for calculating and storing the CRC only for
the good data buffers and not the buffers already marked bad.
The rejection of claims 10-12 under 35 U.S.C. § 112, first
paragraph, is erroneous.
Appeal No. 95-1955
Application 08/109,982
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The function of the description requirement is to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him. In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90,
98 (CCPA 1976). How the specification accomplishes this is not
material, and it is not necessary that the specification describe
the claim limitations exactly. Id. Under the written
description requirement, a specification need not describe the
claimed invention in ipsis verbis to comply with 35 U.S.C. § 112,
first paragraph. In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ
465, 467 (CCPA 1978). The test is whether the originally filed
specification reasonably conveys to a person having ordinary
skill that applicant had possession of the subject matter later
claimed. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). Here, we think it does.
The examiner may not limit a review of the specification to
only a single paragraph in the disclosure. Rather, the entire
document must be considered as a whole in determining what it
would convey to one with ordinary skill in the art. In that
regard, we note several other portions of the specification:
Page 1, lines 24-32
Random events may cause data within non-volatile
memories to be incorrectly read or written. In postage
Appeal No. 95-1955
Application 08/109,982
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meter operation, it is extremely important that such
events be detected and the READ or WRITE operation be
retried. If the incorrect READ or WRITE is determined
to be a result of a problem with the memory device, the
data must be reconstructed, for instance in the case of
a failed read, and then relocated to a different part
of the non-volatile memory.
Page 2, lines 10-13
Also, as brought out in the teaching of [another]
application, each data item stored in the block
requires its own CRC for determination of whether the
register data is corrupt.
The foregoing sets up the context in which memory fault
corruptions are detected or determined as a part of each memory
READ and WRITE operation, and in which corruption is determined
on the basis of calculating the corresponding CRC.
As is described on page 15 and shown in the flow chart on
Figure 10A, the READ is "tested" at decision block 1280, after
the READ operation takes place in block 1270. Similarly, as is
described on page 17 and shown in the flow chart in Figure 11,
the WRITE is tested at decision block 1470, after the WRITE
operation takes place in block 1450. One with ordinary skill in
the art would understand that the testing referred to concerns
the detection of memory fault or corruption and thus relates to
the generation of the CRC. Evidently, the appellant argues the
same. (Br. page 6, line 30 to page 7, line 2).
Figure 10A reveals that the READ operation is not performed
Appeal No. 95-1955
Application 08/109,982
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for those buffers which have already been marked bad (box 1260).
Figure 11 reveals that the WRITE operation is not performed for
those buffers which have already been marked bad (box 1440).
Figure 10A indicates that if there is no READING, there is no
corresponding testing for READING (box 1280). See also the
description on page 15 of the specification. Similarly,
Figure 11 indicates that if there is no WRITING, there is no
corresponding testing for WRITING (box 1470). See also the
description on pages 16-17 of the specification. Given that the
testing referred to involves the generation of the CRC, the
specification as filed does have adequate written description
support for generating and storing the CRC only for the good
buffers. The good buffers, in that regard, are those whose
corresponding first data in the bit map buffer have been set to a
first state as opposed to a second state.
In our view, the examiner failed to address and explain the
implication and significance of other description in the
specification tending to support the appellant's position, and
merely focused on a single paragraph of text to the exclusion of
other relevant evidence. Upon consideration of the entirety of
the specification as a whole, and as discussed above, we find
that the rejection of claims 10-12 under 35 U.S.C. § 112, first
Appeal No. 95-1955
Application 08/109,982
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paragraph, as lacking adequate written description support in the
specification is without merit.
Accordingly, the rejection of claims 10-12 under 35 U.S.C.
§ 112, first paragraph, as being without adequate written
description support in the specification cannot be sustained.
The rejection under
35 U.S.C. § 112, second paragraph
We do not sustain the rejection of claims 10-12 under
35 U.S.C. § 112, second paragraph, as being indefinite or failing
to particularly point out and distinctly claim that subject
matter which the applicant regards as her invention.
The test for compliance with 35 U.S.C. § 112, second
paragraph, is:
[W]hether the claim language, when read by a person of
ordinary skill in the art in light of the
specification, describes the subject matter with
sufficient precision that the bounds of the claimed
subject matter are distinct. In re Merat, 519 F.2d
1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
The purpose of the statutory section is to provide reasonable
notice as to the boundaries of the patent protection involved.
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). Only a reasonable degree of certainty is required.
Appeal No. 95-1955
Application 08/109,982
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In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA
1977).
The only reason articulated by the examiner in support of
the indefiniteness rejection under 35 U.S.C. § 112, second
paragraph, is that the claims as recited are without adequate
written description in the specification under 35 U.S.C. § 112,
first paragraph. See examiner's answer at page 3.
Even assuming that the claims are without written
description support in the specification, that does not establish
that the appellant has failed to particularly point out the
subject matter which she regards as the invention. The examiner
does not assert and has no reasonable basis to assert that one
with ordinary skill in the art, upon reading the claims, would
not know the scope of the claimed invention or what has been
claimed. The written description requirement of 35 U.S.C. § 112,
first paragraph, and the definiteness requirement of 35 U.S.C.
§ 112, second paragraph, have entirely different purposes and are
independent of each other. In any event, we have also found
above that the rejection of claims 10-12 under 35 U.S.C. § 112,
first paragraph, as being without adequate written description
support in the specification cannot be sustained.
Accordingly, we do not sustain the rejection of claims 10-12
Appeal No. 95-1955
Application 08/109,982
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under 35 U.S.C. § 112, second paragraph.
The rejection of claims 10-12 as
being obvious under 35 U.S.C. § 103
We do not sustain the rejection of claims 10-12 under
35 U.S.C. § 103 as being unpatentable over Nibby and Hill.
The examiner found as follows (answer at 3):
To test a data store's memory segment, Nibby, Jr. et
al's method performs a test on each storage location
associated with each addressable location of the memory
segment. After each addressable location in a memory
segment has been tested, the results of these tests is
used to determine whether or not the entire segment of
the data store is good or bad. If the memory segment
of the data store contains at least one bad addressable
location, then that entire segment of the data store is
marked as bad. Otherwise that segment of the data
store is marked as good. The results of this
determination is then used to create a bit map buffer,
which inherently has two states, i.e., a state
representing a good area and the alternative state
representing a bad area.
None of the foregoing is disputed by the appellant.
However, two issues are in apparent dispute. First, the claimed
invention requires that the bit map buffer be contained in a data
store of a non-volatile memory. Secondly, the claimed invention
recites that the cyclic redundancy code CRC is calculated only
for those data stores whose corresponding first data in the bit
map are in a first state and not for all data stores.
The appellant correctly asserts (Br. at 11-12) that Nibby
puts its bit map in a static RAM which is a volatile memory,
Appeal No. 95-1955
Application 08/109,982
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whereas the claimed invention requires a non-volatile memory for
storing the bit map. The appellant further explains (Br. at 11)
the significance of putting the bit map in a non-volatile memory
in noting that it becomes unnecessary to reconstruct the bit map
during each subsequent power up and it is only necessary to test
those segments previously tested as good during the last write
cycle to that address. The non-volatile memory feature is a
substantial and meaningful feature of the claimed invention.
Also, the claims recite that the cyclic redundancy code CRC is
calculated only for those data stores whose corresponding first
data in the bit map are in a first rather than a second state.
In stating the rejection (answer at 3), the examiner did not
explain where in Nibby is the disclosure or suggestion for
storing the bit map in a non-volatile memory. Even if Nibby's
ROM which is a non-volatile memory stores the starting addresses
of the bit map or other data stores, the bit map itself with
first data having either a first state or a second state is
stored in a volatile memory (column 3, lines 11-15 and 40-52).
In responding to the appellant's argument, the examiner
erroneously states (answer at 8, ¶ 10): "appellant agrees that
Nibby, Jr. et al uses a ROM (I.E., A NON-VOLATILE MEMORY) to
store a bit map to [indicate] which buffer sections of a memory
Appeal No. 95-1955
Application 08/109,982
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are either good or bad." We do not see that the appellant has
made any such representation. The appellant consistently
asserted that in Nibby, the bit map is stored in a volatile
memory. (Br. at 11, line 23 and at 12, lines 3-8). Indeed, the
appellant stated (Br. at 12, lines 7-10):
Appellant places the bit map for the respective
nonvolatile memories in a portion of the respective
nonvolatile memory. Therefore, it is unnecessary to
remap the respective memories during power-up. It is
only necessary to check the previously marked memory
area designated as good.
The examiner also has not pointed to anything in Nibby and
we have not located any teaching in Nibby which reasonably
suggests doing a memory check, whether by calculating the CRC or
by any other method, only for those data stores whose first data
in the bit map are in a first rather than a second state. Each
of the appealed claims includes that feature in the form of
calculating and storing a CRC.
Hill has been relied on by the examiner in connection with
that feature of the claimed invention which requires a second
non-volatile memory containing redundant data to that stored in
the first non-volatile memory. In the manner as applied by the
examiner, Hill does not make up for the deficiencies of Nibby as
discussed above.
It should be noted that the mere fact that the prior art may
Appeal No. 95-1955
Application 08/109,982
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be modified in the manner as suggested by the examiner does not
make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). Here, the
examiner has demonstrated no such suggestion stemming from the
prior art.
For the foregoing reasons, the rejection of claims 10-12
under 35 U.S.C. § 103 as being unpatentable over Nibby and Hill
cannot be sustained.
Appeal No. 95-1955
Application 08/109,982
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Conclusion
The rejection of claims 10-12 under 35 U.S.C. § 112, first
paragraph, as being without adequate written description support
in the specification is reversed.
The rejection of claims 10-12 under 35 U.S.C. § 112, second
paragraph, as being indefinite or failing to particularly point
out and distinctly claim that subject matter which the applicant
regards as her invention is reversed.
The rejection of claims 10-12 under 35 U.S.C. § 103 as being
unpatentable over Nibby and Hill is reversed.
REVERSED
STANLEY M. URYNOWICZ )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-1955
Application 08/109,982
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Charles G. Parks, Jr.
Pitney Bowes Inc.,
Intellectual Property and
Technology Law Department
World Headquarters
One Elmcroft Road
Stamford, Connecticut 06926-0700