Ex Parte Jann et al

Board of Patent Appeals and Interferences

Jul 24, 2008

10097503 (B.P.A.I. Jul. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOEFON JANN, RAMANJANEYA SARMA
BURUGULA and PRATAP C. PATTNAIK
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Appeal 2008-0473
Application 10/097,503
Technology Center 2100
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Decided: July 24, 2008
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Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

Appeal 2008-0473
Application 10/097,503

THE INVENTION
The disclosed invention relates generally to minimizing system freeze
time during low memory relocation in a shared memory computer system.
More particularly, Appellants’ invention relates to a Low Memory Table that
keeps track of which memory pages are modified during a first copying
phase prior to a system freeze, and during the system freeze only those
modified pages are copied in a second copying phase (Spec. 1).
Independent claim 1 is illustrative:
1. A method of dynamically relocating low memory for an
operating system instance in a computer system, said method
comprising:
establishing a low memory table (LMT), said LMT
comprising information allocated for each of a predefined
increment of said low memory to be relocated;

setting said information to a first predetermined value;
and

copying contents of each of said increments to a new
location in a first copy operation.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Wang US 6,671,786 B2 Dec. 30, 2003
Applicants’ Admitted Prior Art: “Description of the Related Art” Spec. 1-4,
Figs. 1, 2 and 4.

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Application 10/097,503

THE REJECTION
Claims 1-25 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over by Applicants Admitted Prior Art (APA) in view of
Wang.
PRINCIPLES OF LAW
What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

ANALYSIS
Since Appellants’ arguments have treated claims 1-25 as a single
group, which stand or fall together, we select independent claim 1 as the
representative claim for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii).

Elements under § 103
For the reasons set forth below, we agree with the Examiner’s
determination that APA teaches and/or suggests each of the three limitations
recited in claim 1.
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Application 10/097,503

Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
Here, we broadly but reasonably interpret the claimed “low memory
table,” to include a table or register that contains space or information
allocated for each of a predefined increment of the low memory to be
relocated.
Based on the aforementioned claim construction, it is our view that
the claimed LMT broadly but reasonably reads on the low memory registers
(LMR) described in APA. (See Ans. 4, ll. 16-18). According to APA, the
low memory register includes information that points to a target region of
low memory to be relocated (i.e., information allocated for each of a
predefined increment of said memory to be located) (See Spec. 4, ll. 3-6).
Therefore, we agree with the Examiner’s findings that APA teaches a
method for dynamically relocating low memory for an operating system
(See Spec. 2-3, ll. 17 et. seq.).
We further agree with the Examiner’s determination that APA teaches
the initial value of the pointing information is set by the initial value that is
contained in the low memory registers (see Spec. 4, ll. 5-6). On this basis,
we agree with the Examiner’s determination that APA teaches the limitation
of setting said information to a first predetermined value.
We further agree with the Examiner’s finding that APA teaches the
claimed limitation of “[c]opying contents of each of said increments to a
new location in a first copy operation.” (See Ans. 5, ll. 6-7). We note that
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Application 10/097,503

APA specifically teaches copying the contents of all the low memory page
frames to the target region (Spec. 4, ll. 3-4).
Thus, based on the record before us, we find that APA alone teaches
all of the limitations of claim 1. Having acknowledged that certain claimed
elements are taught by the prior art, Appellants cannot now defeat an
obviousness rejection by asserting that the cited references fail to teach or
suggest these elements. See Constant v. Advanced Micro-Devices, Inc., 848
F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is
in the prior art is binding on the applicant and patentee for determinations of
anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5
(CCPA 1975) (It is a “basic proposition that a statement by an applicant,
whether in the application or in other papers submitted during prosecution,
that certain matter is ‘prior art’ to him, is an admission that that matter is
prior art for all purposes . . . .”). See also Lance Leonard Barry, Anything
You Say Can be Used against You, 82 J. Pat. & Trademark Off. Soc'y 347
(2000).
Because we find that APA alone teaches and/or suggests all the
limitations of representative claim 1, we are satisfied that the cited
combination renders obvious Appellants’ claimed invention. It is proper to
affirm a rejection based upon the teachings of a lesser number of references
than those relied upon by the Examiner. In affirming a multiple reference
rejection under 35 U.S.C. § 103, the Board may rely on one reference alone
in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363
F.2d 455, 458, n.2 (CCPA 1966).
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Because we conclude that Appellants have not shown error in the
Examiner’s prima facie case, we sustain the Examiner’s rejection of
representative claim 1 (and also claims 2-25 which fall therewith) as being
unpatentable over Applicants Admitted Prior Art (APA) in view of Wang.
See 37 C.F.R. § 41.37(c)(1)(vii).

REPLY BRIEF
We note that the Reply Brief is properly used to respond to points of
argument raised by the Examiner in the Answer and not as a means for
presenting new arguments. See Optivus Tech., Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not raised in an opening
brief is waived). While we have fully considered Appellants’ responses in
the Reply Brief, we decline to address any new arguments not originally
presented in the principal Brief. With respect to all claims before us on
appeal, arguments which Appellants could have made but chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1-25
under 35 U.S.C. § 103(a) for obviousness.
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Application 10/097,503

DECISION
We affirm the decision of the Examiner rejecting claims 1-25.
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

pgc

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