10704891 (B.P.A.I. Jan. 20, 2011)

Ex Parte Elzur

Board of Patent Appeals and InterferencesJan 20, 2011

10704891 (B.P.A.I. Jan. 20, 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. 10/704,891 11/10/2003 Uri Elzur 14134US02 4522 23446 7590 01/21/2011 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER PATEL, HETUL B ART UNIT PAPER NUMBER 2186 MAIL DATE DELIVERY MODE 01/21/2011 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 URI ELZUR ____________ Appeal 2009-005375 Application 10/704,891 Technology Center 2100 ____________ Before JOSEPH L. DIXON, THU A. DANG, and CAROLYN D. THOMAS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL 1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-005375 Application 10/704,891 2 STATEMENT OF THE CASE A Patent Examiner rejected claims 32-42 and 44-59. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). A. INVENTION The invention at issue on appeal relates to systems and methods that manage memory are provided. In one embodiment, a system for communications may include, for example, a memory management system that may handle a first application employing a virtual address based tagged offset and a second application employing a zero based tagged offset with a common set of memory algorithms. (Abstract.) B. ILLUSTRATIVE CLAIM Claim 32, which further illustrates the invention, follows. 32. A method for handling memory accesses by a user space application and a non-user space application, comprising: advertising a memory region using at least one of a virtual address based tagged offset and a zero based tagged offset, the advertising of the memory region comprising advertising the memory region using a first base offset (FBO); and inserting, via a lower layer protocol application or a device, information related to the FBO in a message advertising the memory region. Appeal 2009-005375 Application 10/704,891 3 C. REFERENCES The Examiner relies on the following references as evidence: Lo US 6,877,044 B2 Apr. 5, 2005 The “Background Of Invention” (BOI) section of the instant application [0005] (AAPA) D. REJECTIONS Claims 32-42 and 44-59 are unpatentable under 35 USC 102(e) as being anticipated by BOI (AAPA). ISSUE Has the Examiner set forth the requisite showing of anticipation of independent claims 32, 46, and 52 over Appellant's Admitted Prior Art (AAPA)? PRINCIPLES OF LAW "[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)). "[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Appeal 2009-005375 Application 10/704,891 4 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim must then be compared with the prior art. A new prior art reference applied or cited for the first time in an Examiner’s Answer generally will constitute a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA 1970). ANALYSIS Beginning with claim interpretation, we note that the Examiner is attempting to interpret Appellant’s own Background of the Invention in the AAPA in ways that are not clearly and expressly taught therein and apply them under the tight constraints of anticipation. Because the Examiner paints with a broad brush in making the anticipation rejection, we are left to Appeal 2009-005375 Application 10/704,891 5 speculate as to the precise details of how each argued claim limitation is expressly or inherently described by the lone paragraph [0005] relied upon by the Examiner. We note that the Board is a reviewing body and not a place of initial examination. Moreover, it is our view that the more rigorous requirements of § 102 essentially require a one-for-one mapping of each argued limitation to the corresponding portion of the reference, which the Examiner must identify with particularity. The Examiner in response maintains that: Examiner would like to further introduce the Lo et al. (USPN: 6,877,044) reference as evidentiary support to show that the Fibre channel (FC) can be used as the lower layer protocol application (see Col. 17, lines 64-67; and Col. 25, lines 16-20). Therefore, the BOI does teach the lower layer protocol application as claimed by disclosing Fibre channel (FC) in paragraph [05]. (Answer 4). Appellant maintains that: paragraph [05] of BOI describes what it describes and no more. Paragraph [05] of BOI only states that the memory region "may be exposed to other conventional storage applications". If paragraph [05] of BOI does not further describe how the memory region may be exposed or what "exposed" means in the context of the description in paragraph [05] of BOI, then this is the deficiency of the Examiner's alleged prior art. Furthermore, since the rejection is under 35 U.S.C. § 102, the Examiner is limited to the description of paragraph [05] of BOI. (Reply Br. 3-4). The Examiner further expands the analysis to contort the teachings of the AAPA and interpret the AAPA in light of Lo with speculation and the plain language of the claims so as to try to fit the square peg in the round whole. (Answer 10). We find the Examiner’s line of Appeal 2009-005375 Application 10/704,891 6 reasoning to go beyond being reasonable, and we cannot agree with the findings and line of reasoning for a rejection based upon anticipation. Appellant further contends that: Claim 32 recites "inserting, via a lower layer protocol application or a device, information related to the FBO in a message advertising the memory region". Even if arguendo SCSI, FC or iSCSI constitute a lower layer protocol application as alleged by the Examiner, paragraph [05] does not describe SCSI, FC or iSCSI "inserting ... information ... in a message". (Reply Br. 4). We agree with the Appellant's position wherein even if the teachings of the Lo reference were to evidence the claimed “lower layer protocol application” (which we find to be speculative, at best under anticipation), paragraph [0005] of the AAPA does not clearly disclose and the Examiner has not shown a teaching or inherency of the claimed "inserting ... information ... in a message". Therefore, we find the Examiner has not set forth the requisite showing for anticipation of independent claims 32, 46, and 52. Appeal 2009-005375 Application 10/704,891 7 CONCLUSION For the aforementioned reasons, the Examiner has not shown that Claims 32-42, 44, 46-49, 51-55 and 57-59 are unpatentable under 35 USC 102(e) as being anticipated by BOI (AAPA). ORDER We reverse the anticipation rejection of claims 32-42, 44, 46-49, 51- 55 and 57-59. REVERSED tkl MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661