Ex Parte Haghighat et al

Patent Trial and Appeal Board

Feb 27, 2013

10685070 (P.T.A.B. Feb. 27, 2013)

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.
10/685,070 10/13/2003 Mohammad R. Haghighat ITL.2266US (P17567) 4351
47795 7590 02/27/2013
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
GORTAYO, DANGELINO N
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
02/27/2013 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 MOHAMMAD R. HAGHIGHAT and KNUD J. KIRKEGNARD
____________________

Appeal 2010-008468
Application 10/685,070
Technology Center 2100
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13-27, all the claims presently pending in the application. Claims 1-
12 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the § 102(e) rejection of claims 13-20 as being anticipated
by Garthwaite (US Patent No. 6,965,905 B2) because the Examiner’s
rationale (see Ans. 9-10) is better suited for an obviousness rejection, and
not an anticipation rejection, where all of the features of the claim must be
found in one reference. We affirm the § 102(e) rejection of claims 21-27 as
being anticipated by Garthwaite because Garthwaite’s NULL value is a
default value that is encompassed by the recitation in claim 21 of an
“initialization value.” We also enter a new ground of rejection under 35
U.S.C. § 101 for claims 13-20 as being directed to non-statutory subject
matter, e.g., a carrier wave may be a tangible machine readable medium as
recited in claim 13 (Spec. ¶ [0042]).
Appellants’ Disclosed Invention
Appellants disclose a method and machine readable medium for
concurrent data processing with multiple threads using a shared resource
(Spec. ¶¶ [0001] and [0003]; Abstract of the Disclosure).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 13 and 21, which are reproduced below with emphases
and bracketed numbering added:
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Claim 13: A tangible machine readable medium having stored
thereon data which when accessed by a machine causes the machine to
perform a method, the method comprising:

[1] during concurrent execution of a first and second thread,
determining via the first thread whether an existing data element is not a
member of a data structure; and

performing an atomic store operation to add the data element to the
data structure via the first thread only if the data element is not already a
member of the data structure, otherwise performing a next processing task
via the first thread;

[2] wherein said determining further comprises determining whether a
pointer field value of the existing data element is null.

Claim 21: A method, comprising:

executing one or more program instructions that control program flow
for an executing thread during concurrent execution of the thread and one or
more other threads;

[1] wherein the one or more program instructions cause a branch to be
taken in response to determining that a pointer value for an existing data
element is not equal to an initialization value;

wherein the branch further comprises a branch around one or more
atomic operations to add the existing data element to the data structure, such
that the atomic operations are not executed; and

[2] wherein the one or more program instructions otherwise cause the
atomic operations to be executed responsive to determining that the pointer
value is equal to the initialization value.

The Examiner’s Rejection
The Examiner rejected claims 13-27 under 35 U.S.C. § 102(e) as
being anticipated by Garthwaite. (Ans. 3-7).
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Issues on Appeal
Based on Appellants’ arguments in the briefs, the following two
issues are presented on appeal:
Anticipation Rejection of Claims 13-20
(1) Did the Examiner err in rejecting claims 13-20 under 35 U.S.C.
§ 102(e) because Garthwaite fails to disclose “determining . . . whether an
existing data element is not a member of a data structure,” as recited in
limitation [1] of independent claim 13?
Anticipation Rejection of Claims 21-27
(2) Did the Examiner err in rejecting claims 21-27 under 35 U.S.C.
§ 102(e) because Garthwaite fails to disclose an “initialization value” as
recited in limitations [1] and [2] of independent claim 21?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 9-13) and the Reply Brief (Reply
Br. 1-3) that the Examiner has erred.
We agree with Appellants’ conclusions with respect to the
anticipation rejection of claims 13-20 with regard to Garthwaithe as applied
by the Examiner (see Ans. 4-5 and 8-10). However, with regard to the
anticipation rejection of claims 21-27 with regard to Garthwaite, we agree
with the Examiner’s conclusion that Garthwaite discloses a NULL or default
value that is equivalent to Appellants’ “initialization value” recited in claims
21-27.
Anticipation Rejection of Claims 13-20 Applying Garthwaite
Garthwaite discloses (col. 17, ll. 16-28 (emphasis added)) a thread to
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“read some of that table’s contents to determine whether the remembered set
already includes the desired entry and therefore does not need to have it
entered.” One of ordinary skill in the art would understand that Garthwaite’s
disclosure in column 17 of a thread that determines if the remembered set
already includes an entry (col. 17, ll. 19-21) is not the same, and is in fact
quite the opposite, of determining if an existing data element is not a
member of a data structure as recited in limitation [1] of claim 13.
The Examiner’s response to Appellants’ arguments concerning
limitation [1] of claim 13 found at pages 8-10 of the Answer (Ans. 8-10,
section “b”) is at best conclusory, and at worst based on assumptions and
interpretations that are more akin to an obviousness rejection. The Examiner
has not sufficiently shown that Garthwaite meets all of the limitations of
claim 13, especially the feature of limitation [1] of determining if an existing
data element is not a member of a data structure.
In view of the foregoing, we agree with Appellants’ contentions (App.
Br. 9; Reply Br. 1-2) that Garthwaite fails to disclose “determining . . .
whether an existing data element is not a member of a data structure,” as
recited in limitation [1] of independent claim 13. We also agree with
Appellants (App. Br. 10) that neither Garthwaite’s (1) reading of the
contents of a table to determine if an entry already exists in the table, and (2)
locating of a structure by using a structure identifier field, are the same as
determining whether existing data element is not a data structure member, as
recited in limitation [1] of independent claim 13. Accordingly, we will not
sustain the Examiner’s anticipation rejection of claims 13-20 based on
Garthwaite.

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Anticipation Rejection of Claims 21-27 Applying Garthwaite
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 6-7, 10-11, and 14-15) in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner, and highlight and emphasize certain findings with regard to
Garthwaite as follows.
“[T]he US]PTO United States Patent and Trademark Office) must
give claims their broadest reasonable construction consistent with the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004)). “Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d at 1379. “In
some cases, the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to lay judges, and
claim construction in such cases involves little more than the application of
the widely accepted meaning of commonly understood words. … In such
circumstances, general purpose dictionaries may be helpful.” Phillips v.
AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (internal
citation omitted).
The PTO is permitted to use dictionary definitions in tandem with the
Specification and prosecution history to enlighten the broadest reasonable
interpretation of a claim term. The Federal Circuit Court has previously held
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that “dictionary definitions are … pertinent.” In re Trans Texas Holdings
Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Philips, 415 F.3d at
1318).”
Appellants use the term “initialization value” in claim 21 to recite the
nature of the pointer value. The plain and ordinary meaning of “initialize” is
“[t]o set to a starting position or value.” The American Heritage Dictionary,
Second College Edition, p. 622 (1982). Applying the broadest reasonable
interpretation of the term in light of the Specification, we find the ordinary
meaning for the phrase “initialization value” (claim 21) to be a starting
value. Because a starting value is similar to a default value or NULL value,
Garthwaite’s NULL value can fairly and reasonably be considered an
initialization value.
In light of our claim interpretation supra, we turn next to the
application of Garthwaite as an anticipatory reference against claims 21-27.
Specifically, Garthwaite’s NULL value used for a table field value
(col. 19, l. 19 to col. 20, l. 58, specifically col. 19, ll. 35-36 and col. 20, ll. 2-
10; Figs. 13 and 15) is equivalent to the recited “initialization value” that is
used for a pointer value, as set forth in limitations [1] and [2] of independent
claim 21. When Garthwaite’s thread determines in operation 230 if an
existing data element such as an old-table field value is NULL (see Fig. 15;
col. 20, ll. 2-6), and then determines in operation 232 if the old table field’s
contents are not NULL (col. 20, ll. 7-10), this is equivalent to the recitation
in limitation [1] of claim 21 of determining if a pointer value for an existing
data element is not equal to an initialization value. Notably, Appellants’
Specification and Drawings also disclose determining if pointers for existing
data elements are or are not equal to null (Fig. 2, steps 210 and 220 and ¶¶
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[0017]-[0019] disclose determining whether a pointer value is “null”).
In view of our interpretation of the term “initialization value” and our
agreement with the Examiner findings pertaining to Garthwaite, we are not
persuaded by Appellants’ arguments (App. Br. 12-13; Reply Br. 2) that
Garthwaite fails to teach or suggest anything with regard to an initialization
value of an existing data element. Appellants’ argument (App. Br. 13) that
Garthwaite fails to teach or suggest executing atomic operations in response
to determining that a pointer value is equal to an initialization value
(limitation [2] of claim 21) is not persuasive in view of Garthwaite’s
disclosure of performing atomic operations at blocks 240 (see Fig. 16A; col.
20, ll. 59-67) and 260 (see Fig. 16B; col. 21, l. 64 to col. 22, ll. 15-24) after
it is determined that the old table field (i.e., pointer) value is NULL at block
258 (Fig. 16B; col. 21, l. 64 to col. 22, ll. 24). Accordingly, we will sustain
the Examiner’s anticipation rejection of claims 21-27.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 13-20 as being anticipated under 35 U.S.C. § 102(e) by Garthwaite
because Garthwaite fails to disclose “determining . . . whether an existing
data element is not a member of a data structure,” as recited in limitation [1]
of independent claim 13.
(2) The Examiner did not err in rejecting claims 21-27 as being
anticipated under 35 U.S.C. § 102(e) by Garthwaite because Garthwaite
discloses an “initialization value” as recited in limitations [1] and [2] of
claim 21.
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(3) We enter a new ground of rejection under 37 C.F.R. § 41.50(b)
against claims 13-20 as being directed to non-statutory subject matter under
35 U.S.C. § 101.

DECISION
The Examiner’s anticipation rejection of claims 13-20 is reversed, and
the anticipation rejection of claims 21-27 is affirmed. However, we reject
claims 13-20 as being directed to non-statutory subject matter under 35
U.S.C. § 101.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 101 for claims 13-20.
Claims 13-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Under the Patent Act of 1952, subject matter patentability is a
threshold requirement. “Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C § 101.
The Federal Circuit Court concluded that:
A transitory, propagating signal like Nuijten’s is not a
“process, machine, manufacture, or composition of matter.”
Those four categories define the explicit scope and reach of
subject matter patentable under 35 U.S.C. § 101; thus, such a
signal cannot be patentable subject matter.
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In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Subsequent to the
court’s decision in Nuijten, the USPTO has issued additional guidance.1
Specifically, the USPTO guidance states:
The United States Patent and Trademark Office (USPTO) is
obliged to give claims their broadest reasonable interpretation
consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and
other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view
of the ordinary and customary meaning of computer readable
media, particularly when the specification is silent. See MPEP
2111.01. When the broadest reasonable interpretation of a
claim covers a signal per se, the claim must be rejected under
35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject
matter) and Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24,
2009; p. 2.

The USPTO recognizes that applicants may have claims
directed to computer readable media that cover signals per se,
which the USPTO must reject under 35 U.S.C. § 101 as
covering both non-statutory subject matter and statutory subject
matter. In an effort to assist the patent community in
overcoming a rejection or potential rejection under 35 U.S.C.

1 Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz.
Pat. Office 212 (Feb. 23, 2010).
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20

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§ 101 in this situation, the USPTO suggests the following
approach. A claim drawn to such a computer readable medium
that covers both transitory and non-transitory embodiments may
be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation “non-transitory” to the claim. Cf. Animals
- Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987)
(suggesting that applicants add the limitation “non-human” to a
claim covering a multi-cellular organism to avoid a rejection
under 35 U.S.C. § 101). . . .
Independent claim 13 recites “[a] tangible machine readable
medium.” Appellants’ Specification (Spec. ¶[0042]) discloses that “[t]he
terms ‘machine readable medium’ and ‘machine accessible medium’
accordingly may include, but may not be limited to, solid-state memories,
optical and magnetic disks, and a carrier wave that encodes a data signal.”
Appellants’ Figures 1-5 do not show any machine readable media. Figure 1
shows an initialized list of data elements (see Spec. ¶ [0006]), and Figures 2-
5 show process operations (see Spec. ¶¶ [0007]-[0010]).
Thus, Appellants’ Specification leaves open the possibility that claim
13, as well as claims 14-20 depending therefrom, covers machine readable
media consisting of forms of transitory propagating signals, not just storage
devices like a RAM, ROM, or HDD. Transitory signals or carrier waves are
unpatentable under § 101. Nuijten, 500 F.3d at 1357.
In view of the foregoing, claim 13 and claims 14-20 depending
therefrom, encompass both statutory and non-statutory subject matter, and
claims 13-20 are therefore ineligible under § 101.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
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rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

AFFIRMED-IN-PART;
37 C.F.R. § 41.50(b)

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