Ex Parte Lee

Board of Patent Appeals and Interferences

Nov 24, 2003

08931125 (B.P.A.I. Nov. 24, 2003)

1 Appellant also filed a Substitute Request for Rehearing solely
directed to the correction of typographical and grammatical inaccuracies in
the original Request for Rehearing.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HAE-SEUNG LEE
____________
Appeal No. 2003-0573
Application No. 08/931,125
____________
HEARD: June 12, 2003
____________
Before RUGGIERO, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant requests that we reconsider that portion of our
decision of July 2, 2003 wherein we sustained the Examiner’s
35 U.S.C. § 102(e) rejection of claims 1, 2, and 6 based on Jones.1
Appeal No. 2003-0573
Application No. 08/931,125
2
In our original decision, we determined that the Examiner had
established a prima facie case of anticipation which had not been
persuasively rebutted by any convincing arguments from Appellant.
In particular, we found to be unpersuasive Appellant’s contention
that Jones does not disclose a one-to-one caching arrangement in a
RAID-5 disk system.
Appellant now asserts in this request that claim 1, the
representative claim for Appellant’s grouping including claims 1,
2, and 6, also requires a dedicated region for storing parity
information. In making this assertion, Appellant points to
language in claim 1 which recites memory devices “. . . having a
first region for sequentially storing parity information” and the
obtaining of parity information “. . . from said first region” of
the memory devices. In Appellant’s view (Request, pages 4 and 5),
this language of claim 1 distinguishes over a RAID-5 system, such
as discussed in Jones, in which parity data is distributed
throughout the disk drives.
In reviewing the arguments in this Request, we make the
observation that any arguments related to the requirement of a
dedicated parity information storing region in appealed claim 1,
and any asserted absence of such feature in Jones with respect to
claim 1, were not made in the Briefs before us on appeal. An
Appeal No. 2003-0573
Application No. 08/931,125
3
argument not timely made is an argument waived. Since Appellant
never raised this factual question with the Examiner, we do not
have the benefit of the Examiner’s position on this question of
fact. A new argument advanced in such a manner has not afforded
the Examiner an opportunity to respond to the new argument. It is
a requirement of 37 CFR § 192 that Appellant submits arguments in
the Brief(s) specifying all of the errors made by the Examiner in
the rejection. See Ex Parte Hindersinn, 177 USPO 78, 80 (Bd. App.
1971).
It is further well settled that the failure on the part of an
Appellant to present an argument before the board prior to a
request for rehearing constitutes a waiver of such argument. See
In re Kroekel, 803 F.2d 705, 709, USPQ 640, 642-43 (Fed. Cir.
1986). Consequently, we will not consider this new argument of
fact as a basis for changing our prior decision in this case. We
will offer the comment, however, that it does not appear that the
claim language “. . . first region for sequentially storing parity
information” requires a “dedicated” storage region as asserted by
Appellant in this Request.
In conclusion, based on the foregoing, we have granted
Appellant’s request to the extent that we have reconsidered our
Appeal No. 2003-0573
Application No. 08/931,125
4
decision of July 2, 2003, but we deny the request with respect to
making any changes therein.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REHEARING/DENIED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR/lp
Appeal No. 2003-0573
Application No. 08/931,125
5
ROBERT E. BUSHNELL
1522 K STREET, N.W. SUITE 300
WASHINGTON, DC 20005-1202