Ex Parte Lubbers et alDownload PDFBoard of Patent Appeals and InterferencesMay 20, 201011166901 (B.P.A.I. May. 20, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CLARK EDWARD LUBBERS and ROBERT MICHAEL LESTER ____________ Appeal 2009-008746 Application 11/166,901 Technology Center 2100 ____________ Decided: May 21, 2010 ____________ Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and DEBRA K. STEPHENS, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20, which are all the claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). Oral hearing was April 14, 2010. We reverse. Appeal 2009-008746 Application 11/166,901 2 Representative Claim 1. A data structure resident in a memory space comprising a skip list of nodes enabling a user manipulation of data via a controller, the nodes having an array of forward pointers, wherein each node in the skip list has a node level in relation to a number of forward pointers from the array associated with said node, and wherein each node level is derived from an index at which the node is stored in a table in the memory space. Examiner’s Rejections Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubbers (US 5,761,501) and Roy (US 6,246,682 B1). ANALYSIS Section 101 rejection “The four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). The Final Rejection (at 3) submits that base claim 1 is directed to “functional” descriptive material consisting of data structures. The thrust of the rejection appears to be that claims 1 through 10 are directed to data structures per se, although the Final Rejection (at 15) also refers to claim 1 Appeal 2009-008746 Application 11/166,901 3 as directed to a “program” per se. The rejection in the Answer (at 3) repeats that the claims are directed to functional descriptive material, but the Answer also appears to reflect a change in position in that claim 1 is directed to “nonfunctional” descriptive material (id. at 16). In any event, the Examiner has not provided any rationale with respect to why the data structure of claim 1 should be considered nonfunctional descriptive material. The more difficult question is whether the claimed data structure “resident in a memory space” is embodied in a tangible, non- transitory computer readable medium. Appellants submit that the “memory space” of claim 1 would be construed by the skilled artisan as a computer-readable medium that stores the recited data structure. App. Br. 8. However, Appellants do not point to any clear, limiting definition for “memory space” in the Specification, and have provided no extrinsic evidence in support of the allegation. While “memory space” examples in the Specification are consistent with Appellants’ allegation of what the term would mean to the skilled artisan, we are unable to determine, on this record, that the words “memory space” refer only to tangible, non-transitory computer readable media. However, Appellants also submit (App. Br. 8) that the “controller” of claim 1 would be construed by the skilled artisan as a computer based hardware and software module configured to utilize the recited data structure. See, e.g., Spec. 4: 22-24 (“controller 108 [Fig. 2] can be embodied in a single integrated circuit, or distributed among a number of discrete circuits as desired.”). We find no response from the Examiner that addresses the “controller” of claim 1. Appeal 2009-008746 Application 11/166,901 4 Claim 1 recites a data structure resident in a “memory space” comprising a skip list of nodes “enabling a user manipulation of data via a controller.” Although the “controller” is not a positively recited element of claim 1, a data structure resident in a memory that enables user manipulation of data via a physical (hardware) controller is sufficient to establish that the claim is not directed to a data structure per se, and consistent with the types of computer-readable media described in the Specification, such as a cache memory that can be manipulated by a hardware or hardware/software controller (Spec. 4: 22 - 5: 21). We therefore agree with Appellants to the extent that the rejection under § 101 fails to demonstrate that claims 1 through 10 are not directed to statutory subject matter. We do not sustain the rejection. Section 103(a) rejection The rejection over Lubbers and Roy asserts that Lubbers teaches all the subject matter of claim 1, except that Lubbers “doesn’t explicitly teach table in the memory space.” Ans. 5. The rejection turns to Roy for teaching a table in memory space. Id. We thus understand the rejection to be based on the findings that Lubbers teaches indexing of nodes as recited in claim 1, but that the index is not “stored in a table in the memory space.” Appellants contend, however, that although Roy teaches a “table,” the references fail to teach or suggest that each node level can be derived from an index at which the node is stored in the table. App. Br. 11-14. The Examiner, in response, reasserts that Lubbers teaches deriving a node level from an index (col. 5, ll. 7-10), but does not respond to the Appeal 2009-008746 Application 11/166,901 5 argument that claim 1 requires that each node level is derived from an index at which the node is stored in a table in the memory space. Ans. 16. The Lubbers reference describes a four-level skip list data structure 40 (Fig. 2), which provides a “primary” list upon which a “secondary” list is stacked. A list head 44 points to the list and provides a primary array of forward pointers 46 indexed lowest to a maximum number 48, the index indicating the level within the list of a given one of the forward pointers (e.g., lowest index “0” and maximum index “3”). Lubbers col. 4, l. 66 - col. 5, l. 16. Lubbers further teaches that the primary array of forward pointers can be accessed directly, while the secondary array of forward pointers is located by indexing into the primary pointer array using the primary node level. Id., col. 7, ll. 28-36. Since the rejection appears to contend that Lubbers teaches the indexing of claim 1 (deriving a node level from an index), we agree with Appellants to the extent that the rejection fails to provide a convincing rationale in support of why the ordinarily skilled artisan would add a table in memory space for deriving a node level from an index, which is already provided in the data structure described by Lubbers. In particular, there has been no showing as to how this might “provide efficient use of data storage” as alleged (Ans. 5). Absent an explanation from the Examiner, it is not apparent from the references how Lubbers might be combined with Roy so as to “provide efficient use of data storage,” language that Roy uses in describing prior art link list systems (col. 2, ll. 3-11). In a rejection on obviousness grounds, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Because the Appeal 2009-008746 Application 11/166,901 6 record lacks at least the articulated reasoning to support the conclusion, we cannot sustain the rejection of claim 1. Claim 11 recites limitation similar to those of claim 1 but is rejected on the same basis (Ans. 10-11). The rejection applied against the remaining independent claim (Ans. 14) refers to Lubbers alone, but fails to account for the fact that claim 18 is to be interpreted in accordance with 35 U.S.C. § 112, sixth paragraph. See claim 18; Spec. 19: 4-9. We therefore cannot sustain the § 103(a) rejection of any claim on appeal. DECISION The rejection of claims 1-10 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is reversed. The rejection of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Lubbers and Roy is reversed. REVERSED msc Fellers, Snider, Blankenship, Bailey & Tippens, PC (Seagate Technology LLC) 100 North Broadway, Suite 1700 Oklahoma City OK 73102-8820 Copy with citationCopy as parenthetical citation