Ex Parte Lubbers et al

Board of Patent Appeals and Interferences

May 20, 2010

11166901 (B.P.A.I. May. 20, 2010)

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.

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Application 11/166,901

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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
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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.
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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
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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
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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

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