Ex Parte Chang et al

Patent Trial and Appeal Board

Sep 25, 2012

10678893 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/678,893 10/02/2003 Robert C. Chang 10519/810
(SDK0439.001US)
2329
67813 7590 09/26/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2186
MAIL DATE DELIVERY MODE
09/26/2012 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 PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ROBERT C. CHANG, BAHMAN QAWAMI, and
FARSHID SABET-SHARGHI
_____________

Appeal 2010-005225
Application 10/678,893
Technology Center 2100
______________

Before ALLEN R. MacDONALD, BRYAN F. MOORE, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/678,893

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 3, 4, 6-11, 13, 16-21, 23, 26-28, and 30-34. Claims 1, 2,
5, 12, 14, 15, 22, 24, 25, 29, and 35-45 are cancelled. Br. 1-2.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of these claims.

INVENTION
The invention is directed to enabling algorithms used to encode
data that is to be written into blocks of a non-volatile memory to be
dynamically switched. See Spec. 1. Abstract.
Claims 4 and 6 are representative of the invention and are
reproduced below:
4. A method for storing data within a non-volatile memory
comprised of a plurality of blocks in an array formed on a
semiconductor substrate, each of the plurality of blocks having an
indicator indicative of whether the block is a reclaimed block, the
method comprising:
identifying a first block of the plurality of blocks into which the
data is to be stored;
responsive to the indicator associated with the first block
meeting a criterion, encoding the data using a first error detection
algorithm;
then writing the encoded data into the first block;
identifying a second block of the plurality of blocks into which
data is to be stored;

1 Throughout this decision we refer to the Appeal Brief dated July 4, 2007
(“Br.”).
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responsive to the indicator associated with the second block not
meeting the criterion, encoding the data using a second error detection
algorithm, the second error detection algorithm having a higher error
detection capability than the first error detection algorithm; and
then writing the encoded data into the second block.

6. A method for storing data within a non-volatile memory,
comprised a plurality of blocks in an array formed on a semiconductor
substrate, of a memory system, the method comprising:
identifying one of the plurality of blocks into which the data is
to be stored;
obtaining an indicator associated with the identified block, the
indicator having a value indicative of a number of times the first block
has been erased;
determining whether the indicator is less than a threshold value,
responsive to the indicator being less than the threshold value,
encoding the data using the first algorithm and then writing the data
encoded using a first error detection algorithm into the identified
block;
responsive to the indicator not being less than the threshold
value, encoding the data using a second algorithm and then writing the
data encoded using a second error detection algorithm into the
identified block, the second error detection algorithm having a higher
error detection capability than the first error detection algorithm;
repeating the identifying, obtaining, determining, encoding, and
writing steps for another block in the array; [and]
wherein, as a result of the repeating step, a first block in the
array stores data encoded according to the first algorithm, and a
second block in the array stores data encoded according to the second
algorithm.

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REFERENCES
Bruce US 5,956,743 Sept. 21, 1999
Kramer US 6,182,239 B1 Jan. 30, 2001
Yada US 2002/0032891 A1 Mar. 14, 2002
Bassett US 6,747,827 B1 Jun. 8, 2004

REJECTIONS AT ISSUE
Claims 4, 6-7, 9, 11, 16-17, 19, 21, 26, 28 and 31-33 stand rejected
under 35 U.S.C. 103(a) as being unpatentable over the combination of
Bassett and Yada. Ans. 3-13.2
Claims 3, 13, 23 and 30 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Bassett, Yada, and Applicants’
admitted prior art (“AAPA”). Ans. 13-14.
Claims 9, 10, 19-20, 27 and 34 stand rejected under 35 U.S.C. 103(a)
as being unpatentable over the combination of Bassett, Yada, and Kramer.
Ans. 14.
Claims 7, 8 and 18 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Bassett, Yada, and Bruce. Ans. 15-16.

ISSUES
1. Should the preamble of claim 4 be given patentable weight and did
the Examiner err in finding that Yada teaches or suggests the

2 Throughout this decision we refer to the Answer dated August 28, 2009
(“Ans.”).
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preamble limitation to “an indicator indicative of whether the
block is a reclaimed block [?]” (Independent claim 4).3
2. Did the Examiner err in finding that Yada teaches or suggests “an
indicator associated with the identified block, the indicator having
a value indicative of a number of times the first block has been
erased [?]” (Independent claim 6).4

ANALYSIS
35 U.S.C. 103(a) – Bassett and Yada
Claims 4, 6-7, 9, 11, 16-17, 19, 21, 26, 28 and 31-33
Claim 4
We discern error in the Examiner’s rejection of claim 4. Independent
claim 4 requires “an indicator indicative of whether the block is a reclaimed
block [.]” Independent claim 21 contains a similar limitation.
Appellants argue that the claimed phrase above, which appears in the
preamble of claim 4, should be given patentable weight. Rep. Br. 2-3. We
agree. “Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[ ] … patent to gain an understanding
of what the inventors actually invented and intended to encompass by the
claim.”’ Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo

3 Appellants make additional arguments regarding claim 4. App. Br. 13.
We do not reach these additional issues since this issue is dispositive as to
claim 4.
4 Appellants make additional arguments regarding claim 6. App. Br. 15.
We do not reach these additional issues since this issue is dispositive as to
claim 6.
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Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “In general, a
preamble limits the invention if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim. Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999)). Conversely, a preamble is not limiting “where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.” Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
The court in Catalina noted that although no litmus test exists for
determining whether to treat a preamble as a limitation, several “guideposts”
have emerged from the case law in this area. Id. In particular, guideposts
tending to show that the preamble is a claim limitation include: Jepson
claiming, dependence on a particular disputed preamble phrase for
antecedent basis, when the preamble is essential to understand limitations or
terms in the claim body, and when the preamble recites additional structure
or steps underscored as important by the specification. Id. On the other
hand, the preamble might not constitute a claim limitation when the claim
body describes such a structurally complete invention that deleting the
preamble phrase does not affect the structure or steps of the claimed
invention. Id. at 809. Also, “preambles describing the use of an invention
generally do not limit the claims because the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
purpose of that structure.” Id.
The Examiner asserts that the term “’a reclaimed block’ only appears
as part of preamble stating the purpose and intended use of claim 4, and the
context of the body of the claim does not even refer to ‘a reclaimed block’ at
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all . As such, the element ‘a reclaimed block’ does not carry weight.” A
close review of claim 4, however, evidences that the second and fourth
limitations in the claim’s body depend on the preamble for antecedent basis
for the language, “the indicator.” The “indicator” is defined in the preamble
as being “indicative of whether the block is a reclaimed block.” Therefore,
the body of claim 17 sufficiently depends on the claim’s preamble to find
that the preamble is an additional limitation of the claim.
Appellants argue “that none of the asserted reference[s] disclose or
suggest the existence of an indicator, associated with a block of a non-
volatile memory, that is indicative of whether that block has been reclaimed,
much less select an error detection algorithm responsive to this indicator, as
claimed.” App. Br. 9-10. We are persuaded by this argument.
As noted above, claim 4 requires that “an indicator indicative of
whether the block is a reclaimed block.” The Examiner defines “reclaimed”
as a “reused block.” Ans. 18-19. We find that the Examiner’s interpretation
is overly broad and inconsistent with Appellants’ Specification. The
Specification discloses that “reclaimed blocks may be in use. That is, blocks
which were previously considered to be unusable blocks may be reclaimed
for use after a rigorous testing process, particularly in the event that a pool of
spare, usable blocks is insufficient.” Spec. p. 18, ll. 10-13. Thus, the
Specification discloses that reclaimed blocks are blocks that were previously
unusable. In addition, we find the plain English meaning of “reuse” is not
equivalent to the meaning of “reclaim” at least because reuse does not
encompass the concept of “claiming” something. The Examiner also
equates reuse to “rewrite.” Ans. 19. Again, we find that the plain meaning
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of reclaim is not equivalent to the meaning of rewrite. We construe the term
“reclaimed block” to mean a block that was previously considered unusable.
Given the above construction, we find that one of ordinary skill in the
art at the time of the invention would not recognize that Yada has an
indicator of reclaimed blocks. Yada discloses that data that is likely to be
frequently rewritten is stored in a specified storage area. Yada ¶ 29; see
Ans. 18-19. However, whether data is frequently rewritten does not indicate
whether a block of storage was previously considered unusable. Thus, we
cannot sustain the Examiner’s rejection of claim 4.
Claim 6
We discern error in the Examiner’s rejection of claim 6. Independent
Claim 6 requires that “an indicator associated with the identified block, the
indicator having a value indicative of a number of times the first block has
been erased [.]” Independent claims 16, 26, and 33 contain a similar
limitation.
Appellants argue that “none of the asserted references teaches or
suggests the encoding of data . . . responsive to an indicator having a value
indicative of a number of times the block has been erased” App. Br. 13.
Specifically, Appellants argue,
The “frequently-written” modifier [in Yada and relied on by the
Examiner] . . . refers to how often one might expect that the data will
be rewritten [rather than]…the physical block to which this data is to
be written, much less to the previous history of such a block.
Id. at 14. We are persuaded by this argument.
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The Examiner finds that “Yada teaches the selection of a particular
ECC method depends on the frequency of reuse of a memory block.” Ans.
23-24 (citing Yada ¶¶ 29, 42). We disagree. For example, the frequently-
rewritten parameter in Yada refers to data that is likely to be rewritten (see
Yada ¶ 16) rather than to a particular block of storage that has actually been
rewritten a certain number of times as recited in claim 6. Id. Thus, we do
not sustain the Examiner’s rejection of claim 6.
35 U.S.C. 103(a) – Bassett, Yada, and AAPA
Claims 3, 13, 23 and 30
Claims 3 and 13 and 23 and 30 depend from claims 4, 6, and 21
respectively. They are rejected based on the same section of Yada discussed
above. Thus, for the reasons stated above, we do not sustain the Examiner’s
rejection of claims 3, 13, 23, and 30 under 35 U.S.C. 103(a) as being
unpatentable over the combination of Bassett, Yada, and AAPA.

35 U.S.C. 103(a) – Bassett, Yada, and Kramer
Claims 9, 10, 19, 20, 27 and 34
Claims 9, 10, 19 and 20, and 27 and 34 depend from claims 6 and 21
respectively. They are rejected based on the same section of Yada discussed
above. Thus, for the reasons stated above, we do not sustain the Examiner’s
rejection of claims 10, 20, 27 and 34 under 35 U.S.C. 103(a) as being
unpatentable over the combination of Bassett, Yada, and Kramer.

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35 U.S.C. 103(a) – Bassett, Yada, and Bruce
Claims 7, 8 and 18
Claims 7, 8 and 18 depend from claim 6. They are rejected based on
the same section of Yada discussed above. Thus, for the reasons stated
above, we do not sustain the Examiner’s rejection of claims 7, 8 and 18
under 35 U.S.C. 103(a) as being unpatentable over the combination of
Bassett, Yada, and Bruce.

SUMMARY
The Examiner’s decision to reject claims 3, 4, 6-11, 13, 16-21, 23, 26-
28, and 30-34 is reversed.
REVERSED

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