11068322 (B.P.A.I. Dec. 15, 2011)

Ex Parte Challener et al

Board of Patent Appeals and InterferencesDec 15, 2011

11068322 (B.P.A.I. Dec. 15, 2011)

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. 11/068,322 02/28/2005 David Carroll Challener RPS920040267US1 6206 63203 7590 12/15/2011 ROGITZ & ASSOCIATES 750 B STREET SUITE 3120 SAN DIEGO, CA 92101 EXAMINER THAI, TUAN V ART UNIT PAPER NUMBER 2185 MAIL DATE DELIVERY MODE 12/15/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DAVID CARROLL CHALLENER and ROD DAVID WALTERMANN ____________________ Appeal 2009-012072 Application 11/068,322 Technology Center 2100 ____________________ Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and DAVID M. KOHUT, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012072 Application 11/068,322 2 STATEMENT OF CASE1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-20, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Appellants invented a controller that that writes data into a portion of a write-only region and designates the portion containing the data as no access region to which any further write events are prevented absent the input of a predetermined security code. Specification 1-2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]: 1. A controller for a memory device having at least one write- only region, the controller executing logic comprising: [1] executing data writes into a portion of the write-only region; and [2] designating the portion containing the data as a no access region to which any further write events and read events are prevented absent the input of a predetermined security code, the no access region growing at the expense of the write-only region in response to the execution of each of said data writes. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Nov. 6, 2007) and Reply Brief (“Reply Br.,” filed Feb. 1, 2008), and the Examiner’s Answer (“Ans.,” mailed Jan. 29, 2008), and Final Rejection (“Final Rej.,” mailed Nov. 1, 2007). Appeal 2009-012072 Application 11/068,322 3 REFERENCES The Examiner relies on the following prior art: Nagasoe et al. US 2004/0268038 Al Dec. 30, 2004 Yu US 5,276,840 Jan. 4, 1994 Geerlings WO 2004/102362 Al Nov. 25, 2004 REJECTIONS Claims 1-6 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention. Ans. 3-4. Claims 1-3, 7-9, 13-15, and 19-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe and Geerlings. Ans. 4-9. Claims 4-6, 10-12, and 16-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe, Geerlings, and Yu. Ans. 9-11. ISSUES The issue of whether the Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention, turns on whether a person with ordinary skill in the art would have understood whether the Appellants were claiming a controller, the logic executed by the controller, or the steps that comprise the logic recited in claims 1-6. The issue of whether the Examiner erred in rejecting claims 1-3, 7-9, 13-15, and 19-20 under 35 U.S.C. § 103(a) as unpatentable over Nagasoe Appeal 2009-012072 Application 11/068,322 4 and Geerlings turns on whether the combination of Nagasoe and Geerlings teaches or suggests the limitations recited in claims 1 and 7. The issue of whether the Examiner erred in rejecting claims 4-6, 10- 12, and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Nagasoe, Geerlings, and Yu turns on whether the combination of Nagasoe, Geerlings, and Yu describes the limitations of dependent claim 4. ANALYSIS Claims 1-6 rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention The Examiner found that claim 1-6 recite logic steps that a controller executes and it is unclear whether what is being claimed is the logic, the steps, or the controller. Ans. 3-4. The Appellants contend that it is clear from the recited claim language it is the controller that executes the logic that is being claimed. App. Br. 9-10. We agree with the Appellants. Claim 1 recites “a controller” for “executing logic” where the logic includes steps. It is clear from the claim language that the claim is directed towards a controller. As such, a person with ordinary skill in the art would have understood what is being claimed. Claims 1-3, 7-9, 13-15, and 19-20 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe and Geerlings The Appellants first contend that the combination of Nagasoe and Geerlings describes that the no access region is static, whereas claim 1 requires that the no access region grows at the expense of the write-only Appeal 2009-012072 Application 11/068,322 5 region in response to the execution of each of plural data writes. App. Br. 4- 5 and Reply Br. 1-2. The Appellants reiterate this argument in support of claim 7. App. Br. 5. The Examiner found that the combination of Nagasoe and Geerlings teaches a fixed medium that includes a read only region, a write only region, a read and write region, and a no read and no write region. Geerlings 4-5 and Ans. 4-5. The Examiner further found that in a memory with a fixed size, as a write only region reduces, the no access region increases. Ans. 11- 12. We agree with the Examiner. Claim 1 requires “the no access region growing at the expense of the write-only region.” In other words, the portion to which data is written becomes a no access region. Specification 4-5 and Figs. 4-5. Geerlings teaches a data medium, such as a magnetic tape, compact disc, or hard disk. Geerlings 11. The data medium can include read, write, read and write, or no read and no write regions. Geerlings 4-5. This suggests that for a data medium with a known capacity, as one region increases in size another region must decrease in size. That is, a person with ordinary skill in the art would have understood that the no read and no write region of a fixed medium grows at the expense of a write only region, based on the teachings of Geerlings. The Appellants further contend that the combination of Nagasoe and Geerlings fails to teach or suggest that the data written to the write-only region cannot by overwritten without the provision of a predetermined code, as required by claim 13. App. Br. 5-6. We disagree with the Appellants. As found by the Examiner (Ans. 7-8), Nagasoe teaches an access attribute control table that maintains permission passwords. Nagasoe ¶ 0068. Appeal 2009-012072 Application 11/068,322 6 Permission passwords are set in advance and authenticate a user to read or write permissions. Nagasoe ¶¶ 0068-0069. That is, when a user produces a password or code, that is set in advance, the user is enabling read or write access. As such, we find that the combination of Nagasoe and Geerlings describe this feature of claim 13. Claims 4-6, 10-12, and 16-18 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe, Geerlings, and Yu The Appellants also contend that claims 4, 10, and 16 require a particularly defined string of blocks wherein writes are executed to a write- only region starting at the next block to be written, whereas Yu merely describes free lists or pointers. App. Br. 8-9. We agree with the Appellants. Claims 4, 10, and 16 require the “series of blocks defines a beginning block, an ending block, and a next block to be written, wherein initially the next block to be written is the beginning block, writes being executed to the write-only region starting at the next block to be written.” As noted by the Examiner (Ans. 9-10), Yu teaches that prior art file systems use a free list or a linked list of pointers to free blocks that may be in adjacent areas. Yu 1:55-60. However, while the linked list points to the next free blocks, the Examiner has failed to establish how such a teaching or suggestion is the same as defining a beginning, end, and next block where writes are to be executed. As such, we find that the Examiner has failed to establish a prima facie case of obviousness. Since this issue is dispositive as to the rejections against claims 4-6, 10-12, and 16-18, we need not reach the remaining arguments raised by the Appeal 2009-012072 Application 11/068,322 7 Appellants against these rejections. As such, we do not sustain the rejection of claims 4-6, 10-12, and 16-18. CONCLUSIONS OF LAW The Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention. The Examiner did not err in rejecting claims 1-3, 7-9, 13-15, and 19-20 under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe and Geerlings. The Examiner erred in rejecting claims 4-6, 10-12, and 16-18 under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe, Geerlings, and Yu. DECISION To summarize, our decision is as follows.  The rejection of claims 1-6 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention, is not sustained.  The rejection of claims 1-3, 7-9, 13-15, and 19-20 under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe and Geerlings is sustained.  The rejection of claims 4-6, 10-12, and 16-18 under 35 U.S.C. § 103(a) as being unpatentable over Nagasoe, Geerlings, and Yu is not sustained. Appeal 2009-012072 Application 11/068,322 8 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-IN-PART msc