Ex Parte Corl et al

Board of Patent Appeals and Interferences

Sep 16, 2008

10354406 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EVERETT A. CORL JR., CLARK D. JEFFRIES,
BROOKS JOHNSTON, PLYUSH C. PATEL, and JAN VAN LUNTEREN
____________

Appeal 2007-3949
Application 10/354,406
Technology Center 2100
____________

Decided: September 16, 2008
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-7, 9, 11, 12, 14-25, and 34-41. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-3949
Application 10/354,406

Appellants’ claims relate to a system for reducing the size of a
database configured in a ternary matrix array structure. (See Abstract.) A
“ternary” data structure is made of only three character types, such as 0, 1,
and “don’t care” or wildcard (*). (Spec. 2: 20 - 3: 2.) Claim 11 is
illustrative.
11. An apparatus comprising:

a memory in which a ternary data matrix is being stored;

a processor operatively coupled to access said memory and to tag each
entry with a first indicia indicating availability of said entry to be used in
subsequent routines that reduce the number of entries in said ternary data
matrix.

The Examiner relies on the following references as evidence of
unpatentability.
Durbin US 4,611,310 Sep. 9, 1986
Lunteren US 2002/0191605 A1 Dec. 19, 2002

Claims 1, 2, 4-7, 9, 11, 12, 14-25, and 34-41 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Durbin, Lunteren, and
Applicants’ Admitted Prior Art (AAPA) in the Specification.
Claims 26-33 have been withdrawn from consideration as directed to
non-elected inventions.
Claims 3, 8, 10, and 13 have been canceled.
Although Appellants’ Brief lists many more claims by number, we
will decide the appeal on the basis of representative claims only to the extent

2
Appeal 2007-3949
Application 10/354,406

that the Brief provides separate arguments for patentability. See 37 C.F.R.
§ 41.37(c)(1)(vii). Based on the arguments presented, we will decide the
appeal on the basis of claims 11, 15, 20, and 36.
The Examiner finds that all elements of instant claim 11 are taught by
the prior art. (Ans. 4, 7.) Appellants contend there is “no motivation to
combine” because the “problem” that Durbin faces is different from the
problem that Appellants face. Appellants deem that the problem faced by
Durbin is “to rearrange entries in the database,” rather than reducing the size
of a database by deleting superfluous entries. (Br. 6.) Appellants go so far
as to submit that, in fact, Durbin “teaches away” from the claimed invention
because only the order of the entries in the database is changed. (Id., 6-7.)
Appellants further allege that the “usage” or “purpose” of the tags in Durbin
is different. (Id., 7.) Appellants allege that the teachings of Durbin are
nebulous, unclear, or insufficient (id.), dismiss the Examiner’s reasons in
support of the combination (id., 8), allege that the prior art does not teach or
suggest claimed subject matter (id., 9), and repeat various allegations
relating to Durbin (id., 10-11).
In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
3
Appeal 2007-3949
Application 10/354,406

U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The motivation for combining reference teachings is not limited to the
problems addressed by Appellants. “[A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” In re
ICON Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(quoting KSR, 127 S. Ct. at 1742).
In the instant case, the Examiner finds that the artisan would have
considered Durbin’s teaching (col. 4) of setting a flag to indicate duplicate
entries in database records applicable to the problem taught by both
Lunteren ([¶ 0074]) and AAPA (Spec. 5: 1-6) -- reducing the size of a
4
Appeal 2007-3949
Application 10/354,406

TCAM (ternary content-addressable memory) by eliminating redundant
entries. Moreover, Appellants admit that a TCAM comprises a database.
(Spec. 2: 20 - 3: 4).
Appellants are correct that Durbin does not use the flag for the precise
purpose claimed by Appellants. If the reference did so, the rejection might
be for anticipation under § 102. Appellants’ remarks appear to be diligent in
avoiding discussion of the teachings of AAPA and Lunteren, which
comprise the rest of the Examiner’s proffered evidence in support of the
rejection of claim 11 for obviousness. Nonobviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981)).
While a true “teaching away” would be relevant in the obviousness
inquiry, Appellants’ allegation that Durbin “teaches away” lacks foundation.
“A reference may be said to teach away when a person of ordinary skill,
upon [examining] the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Appellants have not identified
anything in Durbin that would serve to warn the artisan against reducing the
number of entries in a ternary data matrix.

5
Appeal 2007-3949
Application 10/354,406

Appellants’ improvement of claim 11, although not identically
described in the prior art, appears to be no more than the predictable use of
prior art elements according to their established function. We are not
persuaded of error in the rejection of claim 11.
We are also not persuaded of error in the rejection of claims 15 and
20. Appellants submit that Lunteren teaches determining entries that are
identical in each bit position except one, while the “redundant entries” of
claim 15 are those that have the identical character in each bit position. (Br.
11.) Not only do Appellants neglect to point to some definition of
“redundant entries” that requires the identical character in each bit position,
but Appellants’ argument is also contrary to the reduction example provided
in the tables bridging pages 12 and 13 of the Specification. With respect to
claim 20, we agree with Appellants’ earlier argument, which seems to be
abandoned when faced with claim 20, that Lunteren teaches determining
entries in the database that are identical in each bit position except one.
Moreover, claim 20 does not necessarily require a “second algorithm”
different from the determination of redundant entries in intervening claim
15.
Finally, Appellants’ remarks in support of claim 36 (Br. 11) are not
responsive to the applied rejection and thus not persuasive of error. The
Examiner does not allege that Lunteren alone describes the “test” of claim
36. (See Final Rej. 7-8; Ans. 6.) The rejection is based upon the teachings
of a combination of references. Cf. In re Merck & Co., 800 F.2d at 1097.

6
Appeal 2007-3949
Application 10/354,406

CONCLUSION
The rejection of claims 1, 2, 4-7, 9, 11, 12, 14-25, and 34-41 under
35 U.S.C. § 103(a) as being unpatentable over Durbin, Lunteren, and AAPA
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

pgc

IBM CORPORATION
PO BOX 12195
DEPT YXSA, BLDG 002
RESEARCH TRIANGLE PARK NC 27709
7