Ex Parte Meng

Board of Patent Appeals and Interferences

Sep 30, 2011

10750423 (B.P.A.I. Sep. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/750,423 12/30/2003 David Qiang Meng 042390.P16854 4620
45209 7590 09/30/2011
MISSION/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
RUTZ, JARED IAN
ART UNIT PAPER NUMBER
2187
MAIL DATE DELIVERY MODE
09/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID QIANG MENG
____________

Appeal 2009-009769
Application 10/750,423
Technology Center 2100
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, 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 1-26, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2009-009769
Application 10/750,423

2
Representative Claim
1. A computer-implemented method comprising:

partitioning a memory device to produce a first group of memory
entries being accessible in parallel and selectable independent of a second
group of memory entries in the memory device that is accessible in parallel.

Examiner’s Rejections
Claims 1-26 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement and the written description
requirements.1

PRINCIPLES OF LAW
“Although the statute does not say so, enablement requires that the
specification teach those in the art to make and use the invention without
‘undue experimentation.’ That some experimentation may be required is not
fatal; the issue is whether the amount of experimentation required is
‘undue.’” In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (citations
omitted).
“Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The factors to be considered in determining whether a disclosure would
require undue experimentation include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state

1 The Examiner has withdrawn a § 101 utility rejection of the claims.
Appeal 2009-009769
Application 10/750,423

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of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.

Id.

The full scope of the claimed invention must be enabled.
The rationale for this statutory requirement is straightforward.
Enabling the full scope of each claim is “part of the quid pro
quo of the patent bargain.” A patentee who chooses broad
claim language must make sure the broad claims are fully
enabled. “The scope of the claims must be less than or equal to
the scope of the enablement” to “ensure[ ] that the public
knowledge is enriched by the patent specification to a degree at
least commensurate with the scope of the claims.”

Strick v. Dreamworks, 516 F.3d 993, 999 (Fed. Cir. 2008) (alteration in
original) (citations omitted).
The examiner bears the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by the claims is
thought to be not adequately enabled by the description of the invention
provided in the specification. If that burden is met, the burden then shifts to
the applicant to provide proof that the specification is indeed enabling. In re
Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).

ANALYSIS
Section 112 rejections
In response to the § 112, first paragraph rejection for lack of
enablement, Appellant argues claim 1 (App. Br. 8-11)2. Appellant also

2 In making our determinations, we have considered Appellant’s disclosure,
the Final Rejection (mailed Oct. 18, 2006), the Appeal Brief (filed June 18,
Appeal 2009-009769
Application 10/750,423

4
presents nominal arguments with respect to dependent claims 2 through 7
and places each of the dependent claims in different headings (id. 12-13).
However, the remarks for the dependent claims at best merely refer to
alleged support in the Specification and allege that the claims are enabled
without explaining how the alleged support might serve to enable the claims.
Further, the remarks do not allege that the limitations of the dependent
claims would remedy any deficiency in the enablement of base claim 1. The
remarks with respect to the written description rejection (id. 13-14) allege in
general that the claims are supported by the disclosure (including the
original claims), but do not point to support in the disclosure for any
particular claim. Accordingly, we will decide the appeal on the basis of
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner refers to Handy as evidence of what constitutes a
conventional CAM (content addressable memory). As depicted and
described in Figure 1.7 of the reference, in a CAM an address presented to
the compare address bus is compared simultaneously with the contents of
every memory location. If there is a match at any location, the address of
that location is sent to the N-bit binary output pins. The Examiner finds that
the CAM shown in Handy does not appear to have the ability to be
partitioned into two groups of entries as recited in the claims. Ans. 16.
Appellant’s Specification provides:
Each of the entries in CAM 54 [Fig. 3] is configurable by
a CAM manager 58 that is implemented as microcode in the
control store 50 and, which is executed by the packet engine 48.

2007), the Examiner’s Answer (mailed Sept. 18, 2007), the Reply Brief
(filed Nov. 19, 2007), the Supplemental Examiner’s Answer (mailed Feb. 1,
2008), and the Supplemental Reply Brief (filed Mar. 17, 2008).
Appeal 2009-009769
Application 10/750,423

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The CAM manager 58 partitions the CAM 54 into a particular
number of entries [Fig 3]. The CAM manager 58 is capable of
partitioning individual entries into two or more subentries that
are individually selectable for use in parallel comparisons. By
producing subentries, particular ones of the subentries are
grouped for storing one type of data (e.g. MAC addresses) and
selected for use in comparing the data in parallel. Other
subentries in the same CAM entries are grouped for storing and
comparing another type of data (e.g., IP addresses). [Fig. 4].
Thus, CAM 54 is configured by CAM manager 58 for storing
two or more types of data in subentries that are individually
selectable for use in parallel comparisons.

Spec. 9:18 - 10:8 (references to Figures inserted).
The description for producing what is purported to be a novel, non-
obvious type of CAM seems to be contained in the words “is configurable
by a CAM manager,” which is “implemented as microcode” in a control
store and is executed by a “packet engine.” Appellant’s Specification offers
no explanation of how the CAM manager actually configures, i.e., makes,
the number of CAM entries and subentries.
While the written description and drawings provide further examples
of differently configured CAMs, we agree with the Examiner to the extent
that the disclosure seems to provide little beyond describing new rectangles
and new lettering in the drawings that represent new entries or subentries.
The disclosure does not teach how to make and use the newly configured
CAMs.
Further, while we agree with Appellant to the extent that the electrical
arts are considered to be relatively predictable and that the skill in the
pertinent art appears to be relatively high, those facts are outweighed by the
facts that tend to show that undue experimentation would be required. The
Appeal 2009-009769
Application 10/750,423

6
dearth of direction or guidance presented and the absence of working
examples weigh against Appellant's position. Further, instant claim 1 is not
limited to partitioning a CAM (which Appellant contends the disclosure
enables), but by its terms extends to any “memory device.” The written
description and drawings do not purport to teach how to partition any
memory device to produce groups of memory entries that are accessible in
parallel and independently selectable.
We conclude that the Examiner has set forth a reasonable explanation
as to why the scope of protection provided by the claims is thought to be not
adequately enabled. Appellant has not produced evidence in rebuttal to call
the conclusion of non-enablement into question.3
We sustain the § 112 rejection for lack of enablement. We also
sustain the § 112 rejection for lack of written description. The Examiner and
Appellant seem to acknowledge that the rejection for lack of written
description stands or falls with the rejection for lack of enablement. “Those
two requirements usually rise and fall together. That is, a recitation of how
to make and use the invention across the full breadth of the claim is
ordinarily sufficient to demonstrate that the inventor possesses the full scope
of the invention, and vice versa.” LizardTech, Inc. v. Earth Res. Mapping,
424 F.3d 1336, 1345 (Fed. Cir. 2005).

3 We note that Appellant refers in the reply briefs to evidence that is not
before us, which was apparently filed with an after-appeal Information
Disclosure Statement. See 37 C.F.R. § 41.37(c)(1)(ix) (Evidence appendix).
In any event, to the extent the evidence is presented in the reply briefs, the
evidence would not constitute proof that the disclosure is enabling.
Appeal 2009-009769
Application 10/750,423

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Prior Art
A cursory search of the US patent database yielded US 6,324,087 B1
(Pereira), which appears to anticipate instant claim 1. Pereira describes
method and apparatus for partitioning a content addressable memory device
(Title). As summarized at column 1, line 43 through column 2, line 6, and
further detailed at column 3, lines 5 through 12 and column 4, lines 5
through 29, the reference describes a method for partitioning a CAM device
(Fig. 1) having a plurality of CAM blocks into a number of individually
searchable partitions. Block select circuits 106(1) through 106(n) selectively
disable corresponding CAM blocks from participating in the compare
operation. As Appellant admits (Reply Br. 11), since a CAM searches all
entries (simultaneously), it automatically searches in parallel, at least to the
level of the subject matter of the claims.
That prior art may anticipate instant claim 1 does not mean that the
instant disclosure is enabling for the subject matter thereof. First, the instant
disclosure does not hint that the partitioning is accomplished by means of
block select circuits as described by Pereira; apparently, the partitioning is
achieved in some other way that is not adequately described. Second, the
disclosure, at the least, fails to enable the full scope of the claimed invention.
See Strick v. Dreamworks, 516 F.3d at 999. That instant claim 1may be so
broad that a reference falls within its scope does not necessarily mean that
the disclosure meets the enablement requirement, but underscores a claim
breadth that weighs toward the necessity for undue experimentation.

Appeal 2009-009769
Application 10/750,423

8
DECISION
The rejections of claims 1-26 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement and the written description
requirements are affirmed.

AFFIRMED

pgc

Notice of References Cited

Application/Control No.

10/750,423
Applicant(s)/Patent Under
Reexamination

Examiner

Jared Rutz
Art Unit

2800

Page 1 of 1

U.S. PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

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A US-6,324,087 11-2001 Pereira -- --

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C US-

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F US-

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I US-

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K US-

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FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

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NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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