Ex Parte Kapoor et al

Patent Trial and Appeal Board

Sep 14, 2016

11863035 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/863,035 0912712007 Arjun Kapoor
66785 7590 09/16/2016
DA VIS WRIGHT TREMAINE LLP - SANDISK CORPORATION
IP Docketing Dept.
Davis Wright Tremaine LLP
1201 Third Avenue, Suite 2200
Seattle, WA 98101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SNDK.558USO 1042
EXAMINER
CARDWELL, ERIC
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
09/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@dwt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARJUN KAPOOR, RAJEEV NAGABHIRA VA, and
DHA VAL PARIKH
Appeal2015-004102
Application 11/863,035
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
uECISION ON APPEAL
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Application 11/863,035
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-30.
Claims 26-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lin (US 6,707,748 B2; issued Mar. 16, 2004) and McManis
(US 2006/0218362 Al; published Sept. 28, 2006). Ans. 2-9.
Claims 1-3, 6-8, 11-14, 16-18, 20-23, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lin and Shin (US 7,774,390 B2;
issued Aug. 10, 2010). Ans. 9-19. 1
Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Shin, and Lasser (US 2007/0061502 Al; published
Mar. 15, 2007). Ans. 19-20.
Claims 4, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Shin, and Applicant Admitted Prior Art, Kapoor
(US 2009/0089481 Al; published Apr. 2, 2009). Ans. 21.
Claims 19 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Shin, and Kim (US 6,990,594 B2; published Jan. 24,
2006). Ans. 21-22.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed July 15,
2013 ("Final Act."); (2) the Appeal Brief filed April 16, 2014 ("App. Br.");
(3) the Examiner's Answer mailed August 1, 2014 ("Ans."); and (4) the
Reply Brief filed September 30, 2014 ("Reply Br.").
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We have jurisdiction under 3 5 U.S. C. § 6(b ). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm-in-part.
SUMMARY OF THE INVENTION
Appellants' invention is a detachable memory device that uses an
on-device power supply to perform memory-management operations.
Spec. i-f 9. Specifically, a hosting digital appliance is the traditional power
source for a memory card or other detachable device. Id. The period when
the device is connected to the host and is expecting the host to issue
commands is known as the user-host operation window. Id. i-f 13. By using
an on-device power supply, Appellants' invention can perform memory
management outside of this user-host operation window. Id. ,-r 9.
Furthermore, Appellants' memory-management operation exploits this
ability even when operating in the window. Id.
THE OBVIOUSNESS REJECTION OVER LIN AND SHIN
Claims 1-3 and 6--8
Claim 1 is illustrative of claims 1-3 and 6-8 and is reproduced
below with our emphasis:
1. A method of operating a memory device having a non-
volatile memory for use with a host, the method comprising:
operating the memory device while connected to a host to
receive and operate on power therefrom;
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determining that the memory device is no longer receiving
host power; and
in response to determining that the memory device is no
longer receiving host power:
activating a reserve power source on the memory
device; and
subsequently determining and beginning a data
management operation on data stored in the non-volatile
memory using the reserve power source.
Contentions
The Examiner finds that Lin discloses every recited element of claim
1 except for determining and beginning the recited data-management
operation, but relies on Shin as teaching this feature in concluding the claim
would have been obvious. Ans. 9-11. According to the Examiner, it would
have been obvious to modify Lin by incorporating Shin's data-management
routine, which is based on the battery state. Id. at 10-11.
Appellants argue that Shin does not determine and begin the data
management operations after the host is no longer receiving power.
App. Br. 9-10. According to Appellants, Shin performs the same
operations, but accomplishes less when it has less power. Id.
Appellants further argue that Shin lacks a reserve power source.
Id. at 10-11. In Appellants' view, Shin's power source is a battery charger.
Id.
Appellants further note that Lin is only concerned with completing
operations already in progress when the power is removed. Id. at 10.
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Analysis
We are unpersuaded by the argument that Shin performs the same
operations but does less when it has less power (Id. at 9-10). Doing less still
involves determining which data management operations to begin. Indeed,
Shin performs garbage-block collection-i.e., a data-management
operation-in each of the four battery-charging states. See, e.g., Shin Fig.
4A, cited in Ans. 10. But the operations that constitute the garbage-block
collection depend on the power level. For example, if the battery-charging
state is 100, garbage-block collection comprises collecting blocks from the
first, sixth, and seventh physical blocks. Shin col. 7, 11. 26-28, cited in
Ans. 10. If the state is 50, garbage-block collection comprises collecting
blocks from the sixth and seventh physical blocks. Shin col. 7, 11. 40-46.
That is, the collection of a specific block corresponds to a data-management
operation. See Ans. 10. So by determining that certain blocks should be
collected and then beginning to collect those blocks, Shin determines and
begins data-management operations, as recited.
Appellants further argue that Shin lacks a reserve power source.
App. Br. 10-11. But the Examiner cites Lin as teaching a reserve power
source on the memory device. Ans. 10 (citing Lin col. 4, 11. 58-60). And
we agree that Lin shows backup battery 208 on memory device 20. See Lin,
Fig. 2. So although the Examiner cites Shin in the rejection, the Examiner
then concludes that Lin is modified by incorporating Shin's data-
management routine based on the battery state. Ans. 10-11. That is, the
Examiner intends to use Lin's power source with Shin's routine. See id.
Accordingly, Appellants' argument that Shin alone lacks a reserve power
source (App. Br. 10-11) amounts to an individual attack. Such individual
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attacks do not show non-obviousness where, as here, the rejection is based
on the references' collective teachings.
Similarly, Appellants further note that Lin lacks determining and
beginning data management operations, as recited. See id. at 10 (arguing
that Lin is only concerned with completing operations already in progress
when the power is removed). But Appellants acknowledge that the
Examiner does not rely on Lin for this purpose. Id. To the extent that
Appellants intend to argue against the combinability of the references (id.),
we are unpersuaded because Appellants have not explained how this alleged
deficiency is germane to the proposed modification. On this record, we are
unpersuaded that the Examiner erred in concluding that the determining and
beginning, as recited in claim 1, would have been obvious.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of claim 1. Accordingly, we sustain
the Examiner;s rejection of that claim, as well as dependent claims 2 and 3,
which are not argued separately from claim 1. See id. at 11. We also sustain
the Examiner's rejection of independent claim 6, as well as its dependent
claims 7 and 8, which are not argued separately. See id.
Claims 11-14
Claim 11 is illustrative of dependent claims 11-14 and is
reproduced below with our emphasis:
11. A method of operating a digital appliance having a
non-volatile memory for storing user data, the method
compnsmg:
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operating the digital appliance in a first mode wherein a
user thereof can access user data stored in the non-volatile
memory;
powering down the digital appliance;
in response to said powering down, operating the digital
appliance in a second mode wherein a user thereof cannot access
user data stored in the non-volatile memory; and
subsequently determining and beginning a data
management operation on data stored in the non-volatile memory
while operating in the second mode.
Contentions
The Examiner finds that Lin discloses every recited element of claim
11 except for determining and beginning the recited data-management
operation and operating a digital appliance, but relies on Shin as teaching
these features in concluding the claim would have been obvious. Ans.
12-13. In particular, the Examiner finds that Lin teaches "powering down"
and operating in the recited second mode. Id. at 12 (citing Lin col. 4, 11. 54--
65). The Examiner further finds that Shin teaches digital appliances, such as
a mobile phone, and further teaches initiating different data-management
routines based on battery state. Ans. 12-13. According to the Examiner, it
would have been obvious to modify Lin by incorporating Shin's data-
management routine initiation based on the battery state and performing that
routine in a digital appliance. Id.
Appellants argue that Lin lacks operating the appliance in a second
mode after powering down, as claimed. App. Br. 11-12. According to
Appellants, the relied upon portions of Lin relate to the memory device's
operation, not the host's or digital appliance's. Id. at 12 (citing Lin col. 4,
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11. 54--58). The issue here, in Appellants' view, is not whether Lin's
memory device is a digital appliance. Reply Br. 2. Instead, Appellants
argue that Lin is unconcerned with host (or digital-appliance) operation.
App. Br. 12. For example, Appellants note that the Examiner relies on Lin's
memory device powering down, not the appliance powering down, as
required by the claim. Id. (citing Final Act. 12).
Additionally, Appellants reassert the argument presented for claim 1
and argue that it applies to claim 11. App. Br. 12.
Analysis
Appellants' arguments directed to the recited digital appliance
(id. at 11-12) do not squarely address the Examiner's rejection, which cites
Shin, not Lin, for the digital appliance. Ans. 13 (Shin col. 4, 11. 56-63).
Specifically, the Examiner cites Lin for "powering down" generally.
Ans. 12 (citing Lin col. 4, 11. 54--58). The Examiner, however, finds that
Shin teaches the digital appliance, such as a mobile phone. Ans. 13. So to
the extent that Lin considers how a memory device behaves rather than the
appliance (App. Br. 12), Appellants' argument does not squarely address the
Examiner's rejection (Ans. 12-13), which is based on obviousness. That is,
we understand the rejection to be based upon using Shin's digital appliance
in combination with Lin's memory device. Id.
It is reasonable to conclude that if Shin's digital appliance powers
down, then attached devices, like Lin's memory device, could lose host
power. See Lin col. 4, 11. 54--58. Notably, Shin's appliance accepts
mountable devices, similar to Lin's. See Shin col. 4, 11. 56-63. And Shin
further shows that this appliance has a diminishing power state-i.e., is
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powering down. See, e.g., Shin, Fig. 4A. In this situation, we see no reason
why Lin's memory device would operate differently in a power loss caused
by detachment, as in Lin, or the host losing power, as in the proposed
combination. Accord Ans. 25-26. On this record, we are unpersuaded that
the Examiner erred in finding that the Lin-Shin combination collectively
teaches the recited second mode where the user does not have access to data
in response to powering down (id. at 12-13).
Regarding the recited data-management operation, Appellants reassert
the argument presented for claim 1 (App. Br. 12), which we find
unpersuasive for the reasons discussed in connection with claim 1. Those
reasons are also applicable here where we also agree with the Examiner's
findings regarding the operations performed after powering down. Ans. 12-
13.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner; s obviousness rejection of claim 11. Accordingly, we
sustain the Examiner's rejection of that claim as well as dependent claims
12-14, which fall with claim 11.
Claims 16--18, 20--23, and 25
Claim 16, reproduced below with our emphasis, is representative
of claims 16-18, 20-23, and 25:
16. A method of operating a device having a non-volatile
memory for storing user data, the device having a first operating
mode for user operations, in which a user can access user data
stored in the non-volatile memory and the device can perform
data management operations, and a second operating mode,
wherein the device is powered down as seen by the user and
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wherein the user cannot access user data stored in the non-
volatile memory, the method comprising:
prioritizing, while operating in the first mode, a plurality
of management operations to perform on data stored in the non-
volatile memory, the prioritizing including scheduling one or
more of said data management operations to be performed while
the device is in the second operating mode;
powering down of the device; and
subsequently determining and beginning one or more of
the scheduled data management operations during the second
operating mode.
Contentions
The Examiner concludes that claim 16 would have been obvious over
Lin and Shin. Ans. 14--16. Specifically, the Examiner finds that Shin's
charging and not charging states correspond to the recited first and second
modes, respectively. Id. at 14--15 (citing Shin col. 6, 11. 41--42); Ans. 27.
Regarding the recited prioritizing, the Examiner finds that Shin's garbage
collection prioritizes small block collection over large. Ans. 27.
Appellants argue that Shin does not prioritize operations in a first
mode to be performed in the second mode. App. Br. 13-14. According to
Appellants, the decision to perform memory operations is made only after
the battery charge is checked. Id. at 13 (citing Shin Figs. 5, 6).
Analysis
Claim 16 requires that the operations prioritized in the first mode are
performed in the second mode. But Shin's prioritization of small blocks
over large depends on the current battery charging state. Shin Fig. 4A. That
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is, operations prioritized when the battery is being charged-the Examiner-
mapped first mode (Ans. 14--15}-are not performed in the various other
battery states-the Examiner-mapped second mode (id. at 27). See
Shin Fig. 4A. Accordingly, the Examiner has not established that Shin
discloses the recited prioritizing.
The Examiner further finds that, at the last scheduled garbage-
collection time, Shin's device checks the battery's power state and sets the
cycle time. Ans. 28 (citing Shin col. 6, 11. 10-13). We agree, but this does
not establish that Shin prioritizes, as claimed.
Shin performs garbage collection at set intervals. Shin col. 6, 11. 6-10.
For example, Shin sets the garbage-collection cycle to once every half hour,
hour, or two hours. See id. Fig. 4B. And like Shin's above-discussed small-
block prioritization, Shin's sets cycle time by the current power state. Id.
col. 6, 11. 10-13. That is, operations prioritized when the battery is being
charged are not performed in the various other battery states. See id.
Rather, Shin sets a new cycle time when the current state of the battery is
checked. Accord Ans. 28 (citing Shin col. 6, 11. 10-13). So even under this
rationale (Ans. 28), the Examiner has not established that Shin prioritizes
operations in the first mode to be performed in the second mode.
Accordingly, we are persuaded by Appellants' argument that Shin
does not prioritize operations, as recited (App. Br. 13).
For the foregoing reasons, we will not sustain the Examiner's
rejection of claim 16, or of claims 17, 18, and 20, which depend from claim
16. We likewise will not sustain the Examiner's rejection of independent
claim 21, which similarly recites prioritizing operations in a first mode to be
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performed in a second, or of claims 22, 23, and 25, which depend from
claim 21.
THE OBVIOUSNESS REJECTION OVER LIN AND MCMANIS
Claims 26--30
Claim 26, reproduced below with our emphasis, is illustrative of
claims 2 6-3 0:
26. A method of operating a non-volatile memory device
for use with a host, the memory device including a non-volatile
memory for the storage of host data and a volatile memory for
temporary data storage, wherein the memory device is detachably
connectable to a host to receive and operate on power therefrom,
the method comprising:
receiving data from a host;
storing said data in the volatile memory;
subsequently writing said data from the volatile memory
into the non-volatile memory; and
subsequent to storing said data in the volatile memory and
prior to completing the writing of said data into the non-volatile
memory, sending an acknowledgement to the host that said data
has been written into the non-volatile memory.
Contentions
The Examiner finds that Lin discloses every recited element of claim
26 except for sending the recited acknowledgement, but relies on McManis
as teaching this feature in concluding the claim would have been obvious.
Ans. 3--4. In particular, the Examiner finds that McManis sends an
acknowledgement for a write to non-volatile memory before completing it.
Id.
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Appellants contend that McManis's data is written to a non-volatile
buffer before sending the acknowledgment. App. Br. 15 (citing
McManis i-f 5); see also Reply Br. 4.
Appellants further argue that McManis lacks a non-volatile memory
detachably connectable to a host, as recited. App. Br. 16-17. According to
Appellants, McManis' s devices have their own power connections and
would not need to transfer data when the server fails, as recited in the
claims. Id. at 17 (citing McManis i-fi-149-50, 56).
Analysis
The Examiner relies on McManis for the limited purpose of showing
that sending an acknowledgement of a write before completing that write is
known. Ans. 3--4. We agree with the Examiner's findings in this regard. In
particular, McManis' s server sends an acknowledgement that the data has
been written to mass storage. McManis ,-r 5. But that data has not actually
been written to mass storage. Id. To be sure, McManis's data is written
somewhere at the time of acknowledgment. Specifically, Appellants argue
that the data is written to a non-volatile buffer. App. Br. 15; Reply Br. 4.
This buffer, however, is not the ultimate or intended destination of the
data-the non-volatile mass-storage device is. McManis i-f 5. So like claim
26, McManis sends the acknowledgment before completing the write to this
non-volatile storage. Id. Accordingly, we see no error in the Examiner's
reliance on McManis to show the recited acknowledgment (Ans. 3--4).
Appellants further argue that McManis's non-volatile memory is not
detachably connectable to a host, as recited. App. Br. 16-17. But the
Examiner has relied upon Lin, not McManis, for the recited memory device.
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Ans. 3. Here, the Examiner proposes modifying Lin's system to use
McManis's above-discussed acknowledgements. Id. at 3--4. And
Appellants have not shown, for example, that using McManis' s
acknowledgements in Lin would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. Nor have
Appellants shown that the Examiner's proposed combination would render
the prior art unsuitable for its intended purpose to teach away from such an
approach. Rather, the Lin-McManis combination is no more than a
predictable use of prior art elements.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of claim 26. Accordingly, we
sustain the Examiner's rejection of that claim, as well as dependent claims
27 and 28, which fall with claim 26. We also sustain the Examiner's
rejection of independent claim 29 and dependent claim 30, not argued
separately with particularity (see App. Br. 16; Reply Br. 4).
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 4, 5,
9, 10, and 15 over Lin and Shin, the additional reference of Lasser, and
Appellants' Admitted Prior Art. Regarding these claims, Appellants have
not pointed out particular errors in the Examiner's reasoning. See
App. Br. 9-16; Reply Br. 1-5. Accordingly, we are not persuaded that the
Examiner erred for the reasons discussed previously.
We, however, do not sustain the Examiner's rejection of dependent
claims 19 and 24 for the same reasons discussed above in connection with
claims 16 and 21. The additional reference, Kim, was not relied upon to
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teach the recited prioritizing that is missing from Lin and Shin (see Ans. 21-
22), and, thus, does not cure the deficiency explained previously.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-15 and 26-30 under 35 U.S.C. § 103.
Appellants have shown that the Examiner erred in rejecting claims
16-25 under 35 U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 1-15 and 26-30 is affirmed.
The Examiner's decision rejecting claims 16-25 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(1 )(iv).
AFFIRMED-IN-PART
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