Ex Parte Lake et al

Patent Trial and Appeal Board

Aug 1, 2014

11005529 (P.T.A.B. Aug. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN MICHAEL LAKE, WENJIAN QIAO,
SRINIVASAN K. RANGASWAMY, and
CHRISTOPHER PAUL VIGNOLA
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Appeal 2011-013675
Application 11/005,529
Technology Center 2400
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Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
John Michael Lake et al. (Appellants) filed a request for rehearing
under 37 C.F.R. § 41.52 (hereinafter “Request”), dated July 21, 2014, of our
decision mailed May 22, 2014 (hereinafter “Decision”). In that Decision,
we affirmed the Examiner’s rejection of claims 15 and 35–40 under
35 U.S.C. § 101 as being directed to non-statutory subject matter and the
Examiner’s rejection of claims 1, 8, 15, and 23–40 under 35 U.S.C. § 103(a)
as being unpatentable over Dean, Abbondanzio, and Pandya. We have

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jurisdiction under 35 U.S.C. § 6(b). Appellants request rehearing only of the
portion of our decision affirming the rejection under 35 U.S.C. § 103(a).

OPINION
Appellants’ Request alleges, in essence, that the Board
misapprehended the Examiner’s rejection under 35 U.S.C. § 103(a).
Request 3–4. In particular, Appellants contend that, as argued in their
Appeal Brief, the Examiner relied on the “memory reference” of Dean, and
that “the findings of the Board leap from the arguments of the Examiner in
respect to memory reference to just plain memory (without the term
‘reference’).” Id. at 4.
Upon reconsideration, in view of Appellants’ arguments, we find that
the Examiner’s position in rejecting claims 1, 8, 15, and 23–40 under
35 U.S.C. § 103(a) as being unpatentable over Dean, Abbondanzio, and
Pandya is not sufficiently clear to provide Appellants with sufficient notice
to respond thereto. In particular, the Examiner states that “if the transaction
is a memory reference(sub-system of the computer system).” Ans. 6. The
parenthetical suggests, and Appellants ostensibly understand the Examiner’s
position to be, that Dean’s “memory reference” corresponds to the “at least
one sub-system” set forth in independent claims 1, 8, and 15. However, in
attempting to further clarify the position that the element relied upon in the
rejection is a sub-system, in response to Appellants’ arguments, the
Examiner explains why a “memory” (without the term “reference”) is a sub-
system. See id. at 26 (stating that “memory could be a ‘sub-system’ of a
computer system according to [Appellants’ Specification]” and that the

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“Dean reference teaches memory as a sub-system”). Consequently, when
read in light of the Examiner’s response to Appellants’ arguments, the
Examiner’s rejection is ambiguous as to whether the Examiner reads the “at
least one sub-system” on Dean’s “memory” or a “memory reference.”
For the above reasons, Appellants’ Request persuades us that the
Examiner’s rejection should not be affirmed. We thus modify our Decision
to indicate that the rejection of claims 1, 8, 15, and 23–40 under 35 U.S.C.
§ 103(a) as being unpatentable over Dean, Abbondanzio, and Pandya is
REVERSED. The portion of our Decision affirming the rejection of claims
15 and 35–40 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter remains unchanged.

DECISION
Appellants’ Request is GRANTED. The rejection of claims 1, 8, 15,
and 23–40 under 35 U.S.C. § 103(a) is reversed. The rejection of claims 15
and 35–40 under 35 U.S.C. § 101 is affirmed. Consequently, the Examiner’s
decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
GRANTED

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