Ex Parte GouldDownload PDFPatent Trial and Appeal BoardFeb 27, 201310326561 (P.T.A.B. Feb. 27, 2013) Copy Citation 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. 10/326,561 12/20/2002 Geoffrey A. Gould P15391 3379 67861 7590 02/28/2013 COOL PATENT, P.C. c/o CPA Global P.O. BOX 52050 MINNEAPOLIS, MN 55402 EXAMINER ZAMAN, FAISAL M ART UNIT PAPER NUMBER 2111 MAIL DATE DELIVERY MODE 02/28/2013 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 GEOFFREY A. GOULD ____________ Appeal 2010-007977 Application 10/326,561 Technology Center 2100 ____________ Before DENISE M. POTHIER, TRENTON A. WARD, and DAVID C. McKONE, Administrative Patent Judges. McKONE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant, pursuant to 37 C.F.R. § 41.52, has submitted a timely Request for Rehearing dated February 14, 2013 (“Request”), requesting rehearing of our original decision dated January 14, 2013, affirming the Examiner’s decision to reject claims 16-19 under § 102, and claims 1-15, 20, and 22-26 under § 103, see Opinion 1, 11. Appeal 2010-007977 Application 10/326,561 2 We have reconsidered our January 14, 2013, Opinion in light of Appellant’s comments in the Request and find no errors. We therefore decline to change our prior decision for the following reasons. Claims 1-9 and 22-26 The Opinion affirmed three rejections: (1) an anticipation rejection of claims 16-19 over Höptner; (2) an obviousness rejection of claim 20 over Höptner and Brown; and (3) an obviousness rejection of claims 1-15 and 22-26 over Heng and Ghori. See Opinion 5-11. Appellant does not state which rejections are the subjects of the Request. However, Appellant contends that the Board applied an improper claim construction to the term “to determine on its own.” Request 2. This term appears in independent claim 1. Independent claim 22 similarly recites “determines on its own.” Thus, we understand Appellant to be seeking reconsideration of our affirmance of the Examiner’s rejection of claims 1, 22, and their respective dependent claims (2-9 and 23-26). Specifically, Appellant contends that, when providing a broad construction of “determine,” we “ignor[ed] the limitations of ‘on its own,’” resulting in an unreasonably broad construction of “to determine on its own.” Request 2 (emphasis omitted). Appellant acknowledges, Request 2- 3, that our Opinion addressed the language “on its own” in our finding that, when Höptner’s slave processor 121 makes a decision to interrupt an 1 As Appellant points out, our Opinion should have used the number “12,” rather than “10,” to designate the slave processor. Appeal 2010-007977 Application 10/326,561 3 operation based on the value of an interrupt signal, it is making a determination “on its own.” Opinion 8. However, Appellant argues that this analysis “did not address the common sense fact that if the master processor 10 is providing an interrupt signal to the slave processor 12, then how can any action or determination by the slave processor be ‘own [sic] its own’ as recited in the claims?” Request 3. Rephrased, Appellant asks “if the master processor 10 makes the determination to send an interrupt signal to the slave processor 12, how can any reasonable claim construction state that the slave processor 12 has acted ‘to determine on its own’?” Id. Appellant then asserts that the Board’s construction of “to determine on its own” is “contrary to the plain and ordinary meaning of [the] words ‘on its own,’” and thus unreasonable. Request 3-4. As an initial matter, claims 1-15 and 22-26 were rejected over Heng and Ghori, not Höptner. See Opinion 2, 10; Ans. 6-7. While we noted, in the context of claim 16, that Höptner disclosed determining “on its own,” Opinion 8, this was merely to address Appellant’s argument that “Hoptner’s slave processor does not ‘determine on its own’ the decision [that an operation should be halted],” Appeal Brief (“Br.”) 15. To be clear, claim 16 does not recite “determine on its own.” Regarding claim 1, we agreed with the Examiner’s finding that Ghori (not Höptner ) taught “determin[ing] on its own.” See Opinion 10. We did note, however, that the Appellant’s arguments distinguishing Ghori from claim 1 were substantially the same as those distinguishing Höptner from claim 16. See id. Indeed, Ghori describes a master-slave relationship similar to that described in Höptner. In any case, we disagree with Appellant’s contention that we ignored the language “on its own” in claim 1. More particularly, we disagree that Appeal 2010-007977 Application 10/326,561 4 the issue is the construction of the term “on its own.” Rather, the issue is identifying the “determination” that the non-volatile memory device (of claim 1) is to make “on its own” and comparing that to the cited prior art. In other words, if we accept Appellant’s proposed construction of “on its own” to mean “independently of other devices,” Request 4, we still need to identify the “determination” in the cited prior art to ascertain whether it is made independently. Viewing Ghori through Appellant’s lens, the “determination” to interrupt a non-volatile memory device is the decision made by a master processor “to send an interrupt signal to the slave processor” and, therefore, the determination is not made by the non-volatile memory device at all, let alone “on its own.” Request 3. This is the same framework that Appellant presented in the Appeal Brief. See, e.g., Br. 19 (“Ghori teaches that slave processor acts in response to a decision by the master processor.”); Br. 18 (“[I]t appears that the Examiner has overlooked the act of determining, and which device is performing the determining.”); Br. 19 (“[I]n all of the references cited by the Examiner, it is the master device that makes this determination, and the slave device is merely monitoring if the master has sent an interrupt to the slave after the master has made the determination.”). However, as we explained in the Opinion, at 8, while a master processor makes a decision to send an interrupt signal to the slave processor, the slave processor also makes a decision to halt a current process if the interrupt signal has a certain value. See also Opinion 10 (citing Ans. 6; Ghori, col. 3, ll. 27-31). The decision of the slave processor to react a certain way to the interrupt signal is made by the slave device independently of the master device. See id. Thus, as we explained in the Opinion, at 6, 10, Appeal 2010-007977 Application 10/326,561 5 if a broadest reasonable interpretation of “determine” includes a slave processor’s decision to react to an interrupt signal, then the slave processor’s decision, made independently of the master processor, is an example of “determin[ing] on its own.” To ascertain how broadly “determine” reasonably can be construed, we looked to a general purpose dictionary as well as the Specification. See Opinion 6-7 (quoting WEBSTER’S II NEW RIVERSIDE UNIVERSITY DICTIONARY 369 (1994)). See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Also, as explained in the Opinion, the Specification, through its broad description of examples as well as statements indicating “determine” is broader still than those examples, makes clear that “determine” is reasonably construed to encompass Ghori’s slave device’s decision to interrupt based on the value of an interrupt signal. See Opinion 6-8, 10 (citing Spec. 8:8-12, 9:11-10:4). Thus, when considering the ordinary meaning of “determine” in light of Appellant’s disclosure, the Board did not construe “determine on its own” to “include actions by two devices,” as Appellant contends (Request 4). Rather, in light of the broadest reasonable construction of “determine,” we agreed with the Examiner’s findings that the slave device of Ghori makes decisions that constitute “determinations” independently of the master device. See Opinion 8; 10 (citing Ans. 6). Appellant has not persuaded us that this conclusion or the Examiner’s findings are erroneous. Claims 10-20 Claims 10-20 do not recite “to determine on its own.” Therefore, Appellant is not seeking reconsideration of our affirmance of the Examiner’s Appeal 2010-007977 Application 10/326,561 6 rejections of those claims. However, to the extent that the phrase, “determine for itself” recited in claim 16 is considered the same as “determine on its own,” we refer to our above discussion. Conclusion We have considered the arguments raised by Appellant in the Request, but the arguments do not persuade us that the original decision was in error. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting claims 16-19 under § 102, and claims 1-15, 20, and 22-26 under § 103. We have granted the Request to the extent that we have reconsidered our decision of January 14, 2013, but we deny the request with respect to making any changes therein. REHEARING DENIED babc Copy with citationCopy as parenthetical citation