Ex Parte Diehl

Board of Patent Appeals and Interferences

Nov 21, 2011

10530899 (B.P.A.I. Nov. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC DIEHL
____________

Appeal 2009-010721
Application 10/530,899
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, JOSEPH L. DIXON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-8. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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A. INVENTION
The invention at issue on appeal relates to the field of security in
systems that require the memorization of a secure log. It particularly relates
to a device for memorizing a list of items and a method for memorizing an
item in such a device. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A device for memorizing a list of items, said device
being adapted to memorize an item presented thereto, said
device being capable of memorizing N items, N being a natural
integer, comprising:
a first memory adapted to memorize a maximum of M
items that were last presented to said device, M being a natural
integer less than N;
a second memory adapted to memorize N-M second
items, each of said N-M items being different from each of said
M items, an oldest of said M items in said first memory being
moved to said second memory if said first memory already
contains M items when a first item is presented for
memorization in said device;
means for randomly selecting one of said second items
memorized in the second memory and for removing the
selected item if said second memory already contains N-M
items when said first item is presented for memorization in said
device; and
means to memorize said first item in said device, wherein
said first item becomes a newest of said M items in said first
memory.

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C. REFERENCES
The Examiner relies on the following references as evidence:
Jouppi et al., "Tradeoffs in Two-Level On-Chip Caching"
1994, IEEE Computer Society Press, Pages 34–45.

Bryant US 4,008,460 Feb. 15, 1977
Vishlitzky US 5,513,336 Apr. 30, 1996

D. REJECTIONS
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Jouppi in view of Bryant.

Claims 4 and 5 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Jouppi in view of Bryant as applied to claim 1 above,
further in view of Vishlitzky.

PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
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"there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" . .
. [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).

ANALYSIS
Appellant has elected to group independent claims 1 and 6 together as
a single group. (App. Br. 5). Therefore, we will address Appellant's
arguments with respect to representative claim 1.
The Appellant maintains that "claims 1 and 6 require that the first and
second memories contain no duplicated items." (App. Br. 5). Appellant
further contends that neither reference "show or suggest two memories
whose stored items are different from each other. "(App. Br. 5). Appellant
further contends that the Examiner's reliance upon the teachings of Jouppi
concerning "less duplication between the contents of the first and second
cache" memories does not affect patentability since Jouppi has duplication.
(App. Br. 5; Reply Br. 2). The Examiner maintains that the two-level
exclusive caching provides no duplication. (Ans. 4, 10-11). We agree with
the Examiner that there would be no duplication between the two cache
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memories using the two-level exclusive caching, but as evidenced by figure
8-1(a) there may be duplication within a single cache memory (which is not
prohibited by the language of independent claim 1). Therefore, Appellant's
contention does not show error in the Examiner's showing of obviousness of
independent claim 1.
Appellant further contends that claims 1 and 6 specifically recite
"means for randomly selecting one of said second items memorized in the
second memory and for removing the selected item…." Appellant further
maintains that nowhere does Jouppi et al. show or suggest the means as
specifically recited in claims 1 and 6. (App. Br. 6-7). While we agree with
Appellant that the teachings of Jouppi are brief regarding the proffered
pseudo-random replacement as mentioned on pages 35 and 43 of Jouppi, the
Examiner further relies on the teachings of the Bryant reference to show a
replacement algorithm for the at least recently used data. (Ans. 5). We find
the Examiner's combination to be reasonable in light of no compelling
argument to the contrary from Appellant.
Furthermore, we note that Appellant's Summary of the Claimed
Invention merely identifies page 4, lines 24-28 of Appellant's Specification
for the corresponding structure, acts, or materials for proper interpretation of
this limitation. Additionally, from our review of Appellant's Specification,
we find no such support for any structural or otherwise difference in the
process of random deletion of data from memory. (See Spec. 2, 3, 4, and 7).
Therefore, Appellant's argument does not show error in the Examiner's
showing of obviousness of representative independent claim 1.
With respect to dependent claims 2-5, 7, and 8, Appellant relies on the
arguments advanced with respect to their respective independent claims
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which we found unpersuasive of error in the Examiner's showing of
obviousness. Therefore, we will group these claims as falling with their
parent claims 1 and 6.

With respect to dependent claims 4 and 5, Appellant merely contends
that the teachings of Vishlitzky does not show or suggests the "means for
randomly selecting…" as set forth in independent claim 1. (App. Br. 7).
Since we did not find a deficiency in the Examiner's base rejection, we find
Appellant's argument unavailing. Therefore, we will sustain the rejection of
dependent claims 4 and 5.

CONCLUSION
For the aforementioned reasons, Appellant has not shown error in the
Examiner's showing of obviousness of independent claim 1.

VII. ORDER
We affirm the obviousness rejections of claims 1-8 .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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