Ex Parte McClure et al

Patent Trial and Appeal Board

Dec 19, 2012

12002081 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/002,081 12/13/2007 Steven T. McClure EMS-02702 5153
52427 7590 12/19/2012
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY, SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2186
MAIL DATE DELIVERY MODE
12/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN T. MCCLURE,
STEVEN R. CHALMER, and
BRETT D. NIVER
____________

Appeal 2010-004149
Application 12/002,081
Technology Center 2100
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and JENNIFER S. BISK,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 43-61. Claims 1-42 have been canceled. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellants’ invention relates to the memory management field. See
Spec. 1:4-5. Illustrative claim 43 is reproduced below:
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43. A method of managing memory, comprising:
subdividing a first volatile memory into at least a first linked list of
blocks corresponding to a first size and at least a second linked list of
blocks corresponding to a second size that is greater than said first
size, wherein user data stored by each linked list of blocks is provided
entirely in the first volatile memory;
providing, in a second volatile memory different from said first
memory, a table that includes pointers that point directly to a first
block of each of said linked lists, wherein the second volatile memory
does not contain any linked lists of blocks provided in the first
volatile memory;
in response to a request for an amount of memory that is less than
or equal to the first size, providing a pointer to said first block of said
first linked list of blocks and modifying said table to point to a
remaining portion of said first linked list of blocks that does not
include said first block; and
in response to a request for an amount of memory that is greater
than the first size and less than or equal to the second size, providing a
pointer to said first block of said second linked list of blocks and
modifying said table to point to a remaining portion of said second
linked list of blocks that does not include said first block of said
second linked list of blocks.

The Rejection
The Examiner relies on the following as evidence of unpatentability:
Parks US 5,469,559 Nov. 21, 1995
Trainin US 6,757,802 B2 June 29, 2004
Wolrich US 6,779,084 B2 Aug. 17, 2004
(filed Jan. 23, 2002)

The Examiner rejected claims 43-61 under 35 U.S.C. § 103(a) as
unpatentable over Trainin, Wolrich, and Parks. Ans. 3; Final Rej. 4-8.1

1 Throughout this opinion, we refer to the Final Rejection mailed March 9,
2009, the Appeal Brief filed July 31, 2009, the Examiner’s Answer mailed
November 4, 2009, and the Reply Brief filed January 4, 2010.
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Application 12/002,081

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THE CONTENTIONS
The present application has an effective filing date of April 16, 2002.
Wolrich has a filing date of January 23, 2002 and has been cited by the
Examiner in the obviousness rejection of all pending claims. On December
8, 2008, Appellants filed a declaration under 37 C.F.R. § 1.131 (“the 131
declaration”) attempting to antedate Wolrich’s filing date and overcome the
obviousness rejection. Appellants assert that the 131 declaration and its
accompanying Exhibits A-C demonstrate actual reduction to practice of the
claimed invention prior to January 23, 2002 (the effective date of Wolrich as
a reference). App. Br. 8-17; Reply Br. 3-9. The Examiner finds that the 131
declaration is ineffective to demonstrate actual reduction to practice of the
claimed invention as recited in claim 43 and thus does not overcome the
obviousness rejection. Ans. 4-7.

ISSUE
Have Appellants sufficiently established actual reduction to practice
of the claimed invention recited in claim 43 by the inventors prior to January
23, 2002?

ANALYSIS
Based on the record before us, we find inadequate evidence to
establish actual reduction to practice of the claimed invention prior to
January 23, 2002. Appellants assert that the 131 declaration
states specific facts concerning the implementation of a working
computer program involving memory management with bucket based
memory allocation that is identified as “the implemented system.”
(See, e.g., paragraph 4 of the Rule 131 declaration.) Exhibit A is then
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Application 12/002,081

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provided and specifically identified as evidence supporting the stated
facts. (See, e.g., paragraph 8 of the Rule 131 declaration.)

App. Br. 10. While paragraph 4 of the 131 declaration concludes the
inventors “implemented (built) a working computer program involving
memory management with bucket . . . that include[s] the features of the
claimed invention of the present patent application (hereinafter ‘the
implemented system’)” (the 131 declaration, ¶ 4), this paragraph has
insufficient factual statements to demonstrate that this conclusion is correct.
See 37 C.F.R. § 1.131(b); see also the Manual of Patent Examining
Procedure (MPEP) § 715.07(I), (III).
Paragraph 5(a) quotes independent claim 43 (method) and paragraph
5(b) quotes claim 55 (computer program product). Appellants call these
features “the implemented system[.]” See the 131 declaration, ¶ 5.
Paragraph 6 also states that the inventors conceived of, developed, and
reduced the implemented system before January 23, 2002. The 131
declaration, ¶ 6. Yet, similar to paragraph 4, these paragraphs provide no
factual evidence to support the conclusion that Appellants actually reduced
the claimed invention to practice. That is, these paragraphs are conclusory,
failing to show with factual evidence the claimed method and product
actually existed and worked for its intended purpose. See In re
Asahi/America, Inc., 68 F.3d 442, 445 (Fed. Cir. 1995); see also MPEP
§ 2138.05(II).
Paragraphs 7 through 9 and accompanying Exhibits A-C provide
some factual evidence that the named inventors wrote code for a multiple
area memory allocator with buckets. See 131 declaration, ¶¶ 7-9; see also
Exhibits A-C. Paragraph 7 refers to Exhibit A and paragraph 9 refers to
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Exhibits B-C. These paragraphs however are similarly conclusory with no
additional factual evidence of what was completed before January 23, 2002.
Paragraph 8 and accompanying Exhibit A provide evidence that Appellants
actually reduced a multiple area memory allocator with buckets. The 131
declaration, ¶ 8. Yet, as the Examiner indicates (Ans. 6-7), paragraph 8 and
Exhibit A do not show or describe program code that includes the step of
“providing, in a second volatile memory different from said first memory, a
table that includes pointers that point directly to a first block of each of said
linked lists, wherein the second volatile memory does not contain any linked
lists of blocks provided in the first volatile memory[.]” Appellants need to
show the claimed invention – not just a multiple area memory allocator with
buckets – existed and worked for its intended purpose prior to the relevant
time period. .
Exhibit A mentions two memories (i.e., fast, locally cached memory,
very slow memory) and thus supports two different memories. Exhibit A.
The Examiner states the reference to buckets in Exhibit A also supports a
first volatile memory (e.g., fast, locally cached memory) having a set of
linked lists (e.g., buckets) as recited. Ans. 6. However, this Exhibit does not
discuss a second volatile memory with a table containing pointers that point
directly to a first block of each of the linked lists as the claimed invention
recites. See Exhibit A. There is no mention of tables or pointers (see id.),
nor have Appellants attempted to explain how the description of the multiple
area memory allocator with buckets discusses these features. Exhibits B and
C do not further demonstrate what the code includes but rather describe only
a freeze time for some code. See Exhibit B-C.
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In response to the Examiner, Appellants point to paragraph 5 of the
131 declaration and state this illustrates that this “providing” element is part
of the working computer program reduced to practice. See Reply Br. 7-8.
However, as stated previously, paragraphs 4-6 are merely conclusory and
provide inadequate factual proof that this claimed feature (e.g., table with
pointers) actually existed in the code and worked for its intended purpose
before January 23, 2002. We additionally note other elements in
independent claim 43 include language of providing a pointer to a first block
of a first or second linked block list or modifying the table to point to a
remaining portion of the first or second linked block list. Paragraph 8 does
not provide sufficient factual proof that the above-noted claimed features in
independent claim 43 and similarly independent claim 55 were part of the
code discussed in Exhibit A.
Based on the above discussion, Appellants have not provided
sufficient factual evidence that the claimed invention actually existed and
worked for its intended purpose before January 23, 2002. See Asahi, 68 F.3d
at 445. Evidence and arguments that a multiple area memory allocator with
buckets existed or was built before January 23, 2002 (see App. Br. 11; Reply
Br. 5-6) does not establish that the claimed invention existed before this
date. For this reason, we further agree with the Examiner (Ans. 4-5) that the
Appellants have not demonstrated that the claimed invention has been
sufficiently run and tested to demonstrate that the claimed invention will
operate for its intended purpose. See MPEP § 2138.05(II).
Appellants have not persuaded us of error in the rejection of
independent claim 43 and claims 44-61 not separately argued with
particularity.
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CONCLUSION
The Examiner did not err in rejecting claims 43-61 under § 103.

DECISION
The Examiner’s decision rejecting claims 43-61 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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