Ex Parte Min et alDownload PDFPatent Trial and Appeal BoardOct 30, 201412193084 (P.T.A.B. Oct. 30, 2014) Copy Citation 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. 12/193,084 08/18/2008 Hong Min YOR920080361US1 4189 48062 7590 10/30/2014 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 EXAMINER OHBA, MELLISSA M ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 10/30/2014 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 HONG MIN, YEFIM SHUF, HUBERTUS FRANKE, ALLAN BENJAMIN LEBOVITZ, CHRISTOPHER JOHN CRONE, and AKIKO HOSHIKAWA ____________ Appeal 2012-005256 Application 12/193,084 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner finally rejected claims 1, 3–16, and 18–25. Claims 2 and 17 were cancelled. (App. Br. 1). Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2012-005256 Application 12/193,084 2 INVENTION This invention relates to a "method for sorting data." (Title). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for sorting a sequence of one or more input objects, comprising the steps of: [a] identifying a property that is exhibited by a sequence of one or more input objects; [b] determining whether each input object from the sequence of one or more input objects exhibits the property; [c] [c1] storing each of the one or more input objects into a buffer, [c2] wherein an input object is stored in a first buffer if said input object exhibits the property and an input object is stored in a second buffer if said input object does not exhibit the property; [d] [d1] sorting each of the one or more input objects in each buffer, [d2] wherein the first buffer is sorted with a first algorithm and [d3] the second buffer is sorted with a second algorithm and [d4] wherein the first algorithm is different than the second algorithm; and [e] merging the one or more input objects in each buffer into a sequence of one or more input objects. (Disputed limitations emphasized, steps lettered). REJECTION Claims 1, 3–16, and 18–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hansen (U.S. Patent No. 5,615,366; issued Mar. 25, 1997), in view of Ray (U.S. Publication No. 2006/0101086 A1; published May 11, 2006). Appeal 2012-005256 Application 12/193,084 3 GROUPING OF CLAIMS Based on Appellants' arguments, we decide the appeal of: Rejection of claims: on the basis of representative claim: Base claims 1, 16, 21, and 25, and dependent claims 3, 4, 7–10, 12, 13, 15, 16, 19, 21, and 23 1 claims 5 and 6 Individually claims 11, 18, and 22 Individually (reverse) claims 14, 20, and 24 14 See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1 ANALYSIS CLAIM 1 Claim 1 recites in pertinent part: [d] [d1] sorting each of the one or more input objects in each buffer, [d2] wherein the first buffer is sorted with a first algorithm and [d3] the second buffer is sorted with a second algorithm and [d4] wherein the first algorithm is different than the second algorithm; Appellants contend: The independent claims require sorting the one or more input objects in the first buffer with a first algorithm and sorting the one or more input objects in the second buffer with a second 1 Appellants filed a Notice of Appeal on Sept. 12, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-005256 Application 12/193,084 4 algorithm and wherein the first algorithm is different than the second algorithm. Thus, the first algorithm is capable of performing sorting and the second algorithm is capable of performing sorting. The cited claims require two different sorting algorithms. Ray discloses a single sorting algorithm comprising the forecasting program and the merging program; Ray does not disclose or suggest a first algorithm and a second algorithm, where each algorithm performs sorting. (Emphasis added; Reply Br. 3). Appellants' contentions are unpersuasive because they are not commensurate with the scope of the claim. Contrary to Appellants' contention, the claim does not require the first buffer to be sorted only with a first algorithm; the more broadly claim recites: "the first buffer is sorted with a first algorithm." (Emphasis added; Reply Br. 3). Under a broad but reasonable construction, we conclude claim 1 limitation [d2] does not preclude sorting the first buffer with a first algorithm (Ray's forecasting algorithm) and a second algorithm (Ray's merging algorithm). (Ans. 17– 20). Similarly, claim 1 limitation [d3] does not preclude sorting the second buffer with a second algorithm (Ray's merging algorithm) and a first algorithm (Ray's forecasting algorithm). (Id.). Regarding limitation [d4], and contrary to Appellant's contentions, we find Ray's forecasting algorithm ("the first algorithm") is different than Ray's merging algorithm ("the second algorithm"), because the two algorithms perform different functions and execute separately in different threads. (Ans. 17–18). Appellants further contend Ray's forecasting algorithm and merging algorithm are a single claimed "algorithm" because limitation [d2] requires only the "algorithm" to sort the first buffer. (Reply Br. 3; App. Br. 7). Appeal 2012-005256 Application 12/193,084 5 However, limitation [d2] is silent regarding the use of the argued limiting word “onlyâ€: "the first buffer is sorted with a first algorithm." (Claim 1). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.†In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Therefore, on this record, we are not persuaded the Examiner’s claim interpretation is overly broad or unreasonable. For these reasons, on this record, we are not persuaded the Examiner erred. Therefore, we sustain rejection of representative claim 1, and the grouped claims which fall therewith. (See Grouping of Claims, supra). CLAIM 5 Claim 5. The method of claim 1, further comprising using an indicator to identify the property that is exhibited by the sequence of one or more input objects, wherein the indicator is well clustered. (Emphasis added). Appellants contend Hansen's number of records in the group does not teach or suggest "the property that is exhibited by the sequence of one or more input objects" because: [I]ndependent claim 1, upon which claim 5 depends, requires "storing each of the one or more input objects into a buffer, wherein an input object is stored in a first buffer if said input object exhibits the property and an input object is stored in a second buffer if said input object does not exhibit the property." Thus, the claimed "property" is inherently a property for sorting objects. The property alleged by the Examiner (the number of records in the group) is the same for each object in the group and is therefore not a suitable property for sorting, as would be apparent to a person of ordinary skill in the art. (Reply Br. 4). Appeal 2012-005256 Application 12/193,084 6 Appellants' contentions are unpersuasive because they are not commensurate with the broader scope of the claims. (Id.). Specifically, the claim does not recite the "property" is "a property for sorting objects" nor does the claim recite sorting objects by the property. (Claim 5). More specifically, claim 1 limitations [d2] and [d3] require sorting with the first and second algorithms. Claim 5 depends directly from claim 1. For these reasons, on this record, we are not persuaded the Examiner erred. Therefore, we sustain the rejection of claim 5. CLAIM 6 Claim 6. The method of claim 1, wherein a region in the first buffer comprises one or more input objects derived from a final end of the sequence of one or more input objects. Appellants contend: Hansen teaches that a system of the present invention sorts information records by recursively dividing the records into small subgroups based on a value at the current position under examination. (Reply Br. 6). Appellants' contentions are unpersuasive because Appellants do not address and rebut the Examiner's specific findings. (Ans. 21). Specifically, the Examiner relies on Hansen's initial sort that stores "nearly" sorted data in a region of memory for a sorting operation, for teaching or suggesting claim 6. (Ans. 21, Hansen col. 13, ll. 24–45). The stored nearly-sorted data has a final end, which is the last "nearly sorted" data. (See Id.). For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of claim 6. Appeal 2012-005256 Application 12/193,084 7 CLAIM 11 Claim 11. The method of claim 10, further comprising preserving an ordered subset starting from a first end of the buffer and using a second end of the buffer to store one or more out of order input objects. (Emphasis added). Appellants contend: Ray [paragraph 20] teaches that, for records that are randomly ordered, it may occur that all of the buffers will near depletion together because the merge program 228 will draw records alternately and with roughly equal probability from among the buffers 230; (Reply Br. 7). Appellants' contentions are persuasive. The Examiner finds: Ray disclosed sorting and storing in buffers based on availability, in doing so the forecasting program operates with the merge program to order subsets by filling one buffer and moving to the next (second buffer) becomes available and therefore, storing the objects (See paragraphs 18-22, 35-40). (Ans. 22). However, the Examiner fails to make any findings regarding the claimed "store one or more out of order input objects." For these reasons, we are persuaded the Examiner erred. Accordingly, we reverse the rejection of claim 11 and of claims 18 and 22, which recite commensurate limitations. CLAIM 14 Claim 14. The method of claim 1, further comprising using three or more buffers, wherein all of the three or more buffers except one are used to hold one or more sorted subsets of input objects. Appellants contend, "Ray [paragraphs 35–38] teaches that the forecasting thread 300 acquires floating buffers (g and f) that are not in use by the merge thread 302." (Emphasis removed; Reply Br. 8). Appeal 2012-005256 Application 12/193,084 8 Appellants' contentions are unpersuasive. The Examiner finds Ray's buffer c will be depleted (empty), (Ray ¶ 37, Ans. 22). Therefore, empty buffer c would have taught or suggested: "except one [] used to hold one or more sorted subsets of input objects" (claim 14), because when Ray’s buffer c is empty, Ray describes buffers a, b, d, and e being used to store the sorted data. (Ray ¶ 35–37; Figs. 3B–3C). This also teaches or suggests "all of the three or more buffers [] are used to hold one or more sorted subsets of input objects." (Claim 14). Therefore, we find Ray's description teaches or suggests claim 14. For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain rejection of representative claim 14, and the grouped claims rejected under the rejection which fall therewith. (See Grouping of Claims, supra). Appeal 2012-005256 Application 12/193,084 9 DECISION 2 We affirm the Examiner's rejection of claims 1, 3–10, 12–16, 19–21, and 23–25 under § 103. We reverse the Examiner's rejection of claims 11, 18, and 22 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART rwk 2 In the event of further prosecution, we leave it to the Examiner to consider a rejection under 35 U.S.C. § 101for claim 16: "A computer program product comprising a computer readable medium . . . ," and its dependent claims, because the originally-filed Specification does not include an express disclaimer or a definition excluding signals. (See Spec. ¶¶ 47–49). Signals are not patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also United States Patent and Trademark Office (USPTO), Subject Matter Eligibility of Computer Readable Media, the policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the USPTO. 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media). Here, the recited "computer readable medium" is not claimed as non- transitory, and the disclosure does not contain a definition or disclaimer that expressly and unambiguously limits the claimed medium to solely non- transitory forms. Therefore, the medium encompasses transitory forms and appears ineligible under § 101. Copy with citationCopy as parenthetical citation