Ex Parte Fineberg et al

Patent Trial and Appeal Board

Feb 20, 2013

11446621 (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SAMUEL A. FINEBERG, PANKAJ MEHRA,
DAVID J. GARCIA, and WILLIAM F. BRUCKERT
____________________

Appeal 2010-000991
Application 11/446,621
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to “a] method and system
of implementing a persistent memory.” (Spec. 22, Abstract). Independent
claim 1, reproduced below, is representative of the subject matter on appeal:
1. A system comprising:

a first computer slice comprising a memory of one or
more random access memory (RAM) modules;

a second computer slice comprising a memory of one or
more RAM modules, the second computer slice coupled to the
first computer slice by way of a communication network at
least partially external to each computer slice; and

a persistent memory comprising at least a portion of the
memory of each computer slice, the portion of the memory of
the first computer slice storing a duplicate copy of data stored
in the portion of the memory of the second computer slice;

wherein the persistent memory is accessible to an
application program through the communication network.
(Disputed limitations emphasized).

REJECTIONS
1. The Examiner rejected claims 1, 6, and 19 as being anticipated under
35 U.S.C. § 102(b) by Yu (U.S. Pat. No. 5,764,903). (Ans. 3-4).
2. The Examiner rejected claims 2, 3, 7, 8, 14, 16-18, 20, and 21 under
35 U.S.C. 103(a) as being unpatentable over the combined teachings
and suggestions of Yu and Suzuki (U.S. Pat. No. 4,181,938). (Ans. 4-
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6).
3. The Examiner rejected claims 4, 5, 9, 10, 15, and 22 under 35 U.S.C.
103(a) as being unpatentable over the combined teachings and
suggestions of Yu, Suzuki, and Kiselev (U.S. Pat. No. 6,910,178 B1).
(Ans. 6-8).
4. The Examiner rejected claims 11 and 12 under 35 U.S.C. 103(a) as
being unpatentable over the combined teachings and suggestions of
Yu and Rodeheffer (U.S. Pat. No. 6,848,063 B2). (Ans. 8-9).
5. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Yu and
Kiselev. (Ans. 9).
GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the
anticipation rejection of claims 1 and 6 on the basis of representative claim
1. See 37 C.F.R. § 41.37(c)(1)(iv). We address the remaining claims infra.
ISSUE
Under § 102, did the Examiner err in finding that Yu discloses the
disputed RAM limitations of:
a first computer slice comprising a memory of one
or more random access memory (RAM) modules;
a second computer slice comprising a memory of
one or more RAM modules, the second computer slice
coupled to the first computer slice by way of a
communication network at least partially external to each
computer slice; and
a persistent memory comprising at least a portion
of the memory of each computer slice;
within the meaning of representative claim 1 (emphasis added)?

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CONTENTIONS
Appellants respectfully submit that a skilled artisan is fully
aware of RAM modules and hard disk drives, and their
differences, and would absolutely not consider "one or more
RAM modules" on a computer slice to be a hard disk drive.
. . . .
Appellants respectfully submit that the interpretation of the
Office action (i.e., that a RAM module is a hard disk drive) is
wholly inconsistent with the specification. Appellants'
specification does not even show a hard disk drive. Moreover,
in describing alternatives to volatile RAM memory modules,
the Appellants' specification call out alternatives that are clearly
not hard disk drives (i.e., calls out MRAM, MRRAM, PFRAM,
OUM, and flash memory devices. [Appellants cite to para.
[0027] of the Specification for support].
(App. Br. 14).
The Examiner disagrees:
Yu teaches explicitly that the hard disk (Figs]. 1, 16) is a
memory which is able to be read from and written to (col. 3,
lines 41 - 46). While Yu does not explicitly teach the hard disk
having the features of RAM, the Examiner, in the response to
the arguments in the Final Rejection dated 8/26/2008 provided
evidence supportive of the fact. Specifically, both Gray (U.S.
5,802, 396) in col. 11, lines 45 - 46, "A master database 103 is
contained in a random access memory (RAM) which can be for
example a hard disk drive.", as well as Miller et al. (U.S.
5,627,995) in col. 2, lines 5 - 8, "Data compression is not
readily adaptable for use with random access storage devices
such as hard disk or solid state disks ... " provide evidence that
a hard disk has the features of a RAM (random accessed
memory) device. Additionally, the Examiner cites Beatty (U.S.
6,336,053) in col. 6, lines 19 - 22, "However, the RAM 240 can
be implemented using any alterable randomly accessed
memory, such as a floppy disk and disk drive, a writable optical
disk and disk drive, a hard (disk) drive, flash memory or the
like."
(Ans. 11).
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ANALYSIS
Claims 1 and 6
This appeal turns upon claim construction. “Anticipation of a patent
claim requires a finding that the claim at issue ‘reads on’ a prior art
reference.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed Cir.
1999) (citation omitted). “In the patentability context, claims are to be given
their broadest reasonable interpretations. . . . L]imitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citations omitted).
At the outset, we agree with the Examiner that the claimed RAM
modules broadly read on Yu’s hard drives (Claim 1; see also Yu, Fig. 1,
hard drives 16 and 34). Although Appellants urge (App. Br. 14) that the
Examiner’s broader reading is inconsistent with the Specification (¶ [0027]),
our reviewing court guides that “[i]nterpretation of descriptive statements in
a patent's written description is a difficult task, as an inherent tension exists
as to whether a statement is a clear lexicographic definition or a description
of a preferred embodiment. The problem is to interpret claims ‘in view of
the specification’ without unnecessarily importing limitations from the
specification into the claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003) (citation omitted).
Here, we find the description of various memory modules in
paragraph [0027] (Spec. 11) is exemplary, and does not give an artisan
notice of a limiting definition that would preclude a broader reading of the
claimed RAM modules on the structures of a plurality of hard drives, such as
those disclosed by Yu (Fig. 1, hard drives 16 and 34). See Electro Medical
Systems S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir.
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1994) (“particular embodiments appearing in the specification will not be
read into the claims when the claim language is broader than such
embodiments” (citation omitted)). “[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. . . . [C]laims
may embrace ‘different subject matter than is illustrated in the
specific embodiments in the specification.’” Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Moreover,
because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
For these reasons, on this record we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner’s anticipation rejection of
claim 1 and of associated dependent claim 6, which falls with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
Claims 19-22
Regarding the anticipation rejection of independent claim 19 over Yu,
we agree with Appellants that the U.S. Patent and Trademark Office may not
disregard the structure disclosed in the specification when 35 U.S.C. § 112,
sixth paragraph, is invoked. (App. Br. 16). However, Appellants have not
met their burden of identifying and distinguishing the corresponding
structures in the Specification that support the disputed first and second
“means for storing data,” and the “means for persistently storing data,” as
recited in claim 19.
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In particular, we observe that the arguments advanced for claim 19
(App. Br. 15-16) are silent regarding any reference to specific corresponding
structures in the Specification. Nor have Appellants rebutted the Examiner’s
finding of anticipation by explaining why the support for claim 19 pointed to
on page 9 of the principal Brief is not equivalent1 to Yu’s disclosure of hard
drives 16 and 34 (Yu, Fig. 1). In considering whether § 112(f),2 is invoked
for independent claim 19, we decline to sua sponte import arguments
advanced for other claims on appeal, particularly other claims that are not
means-plus-function claims.
For these reasons, on this record, we are not persuaded that the
Examiner erred by more broadly interpreting claim 19. Accordingly, we
sustain the Examiner’s anticipation rejection of independent claim 19.
Because Appellants advance no separate arguments for the associated
dependent claims, we also sustain the Examiner’s §103 rejections of claims
20-22.

1 Means plus function limitations are met by structures which are equivalent
to the corresponding structures recited in the specification. In re Ruskin, 347
F.2d 843 (CCPA 1965), as implicitly modified by In re Donaldson, 16 F.3d
1189 (Fed. Cir. 1994).
2 See 35 U.S.C. §112(f): “ELEMENT IN CLAIM FOR A
COMBINATION—An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts described
in the specification and equivalents thereof.” (Amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29, sec. 4(c), 125 Stat.
284, effective Sept. 16, 2012.)

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Claims 14-18
Appellants contend “[t]he hard disk drive write requests of Yu are not
DMA requests. As pointed out by the Office action itself, ‘DMA enables
data to be transferred directly between main memory and I/O Input-Output],
offering the advantage of decreasing load on the processor . . . .’[3] The
applications 50, by contrast, appear to operate on the processor, so the hard
disk drive write request of Yu cannot be the claimed ‘single direct memory
access (DMA) request.’” (App. Br. 18).
The Examiner finds Yu would have taught or suggested “[w]herein
the logic device receives a single write request over the communications
network, duplicates the write request, and provides the write request [once]
to [each] memory (col. 4, lines 50 - 53; col. 5, lines 53 - 55, lines 61 - 62).”
(Ans. 5). We observe these portions of Yu teach both a virtual disk driver
receiving a hard disk write request (col. 4, ll. 50-51), and a secondary server
sending a disk write request to a remote hard drive (Yu, Fig. 1, 34; col. 5, ll.
53-54). The Examiner looks to Suzuki for teaching the well-known use of
DMA read/write requests. (Ans. 5, Suzuki, col. 1, ll. 23-31).
We do not see why DMA read/write requests (as taught by Suzuki)
could not be performed between the server and the hard drives of Yu (Fig. 1,
16, 34), via the server(s) internal memory and the hard drive controllers 14
and 32, respectively, where hard drives 16 and 34 act as a single network-
accessible persistent memory, within the meaning of claim 14.
We note that the Examiner’s rejection is based on the combined
teachings and suggestions of Yu and Suzuki. Similarly, we find the
additional limitation of “duplicating the DMA requests to have duplicate

3 See Office action mailed on August 26, 2008, page 4, lines 64-65.
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requests” (claim 14) is merely the use of prior art elements according to their
established functions in a manner that would have realized a predictable
result. Thus, we conclude that claiming a mere plurality of well-known
prior art elements (DMA read/write requests) is not a patentable distinction
over the prior art of record. The Supreme Court guides that “when a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)). This reasoning is applicable here regarding claim 14.
Therefore, we sustain the Examiner’s obviousness rejection of independent
claim 14 over Yu and Suzuki. Because Appellants advance no separate
arguments for the associated dependent claims, we also sustain the
Examiner’s obviousness rejections for claims 15-18.
Claims 2 and 4
We observe that dependent claims 2 and 4 are each of similar scope,
with claim 2 directed to a duplicated DMA write request, and claim 4
directed to a duplicated DMA read request. Similar to our discussion above
regarding claim 14, we find the further limitation of duplicated DMA
(read/write) requests (claims 2 and 4) is merely the use of prior art elements
according to their established functions in a manner that would have realized
a predictable result. Thus, we conclude that the claimed plurality of prior art
elements (DMA read/write requests) is not a patentable distinction over the
prior art of record. See KSR 550 U.S. at 417. Therefore, on this record, we
are not persuaded of Examiner error. Accordingly, we sustain the
Examiner’s § 103 rejections of claims 2 and 4.
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Remaining dependent claims 3, 5, and 7-13
Appellants have not advanced separate arguments for these dependent
claims. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, we sustain the Examiner’s obviousness rejections of these claims
as falling with their respective parent claims.

DECISION
We affirm the Examiner’s rejection under § 102 of claims 1, 6, and
19.
We affirm the Examiner’s rejections under § 103 of claims 2-5, 7-18,
and 20-22.
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).

ORDER
AFFIRMED

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