Ex Parte Neufeld et al

Board of Patent Appeals and Interferences

Jan 18, 2008

10039018 (B.P.A.I. Jan. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID E. NEUFELD and JUDY A. NEUFELD
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Appeal 2007-1737
Application 10/039,0181
Technology Center 2100
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Decided: January 18, 2008
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Before KENNETH W. HAIRSTON, ALLEN R. MacDONALD, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 31, 2001. The real party in interest is Hewlett
Packard Development Co.

Appeal 2007-1737
Application 10/039,018

STATEMENT OF CASE
Appellants appeal from the final rejection of claims 1 to 19 and 28 to
31 under authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
According to Appellants, their invention relates to a method and
system for increasing the lifespan of read/write compact discs, and related
electronic memory. In the words of the Appellants:
A file system technique of enhancing the life span of a
read/write storage medium begins with identifying whether a
file is a static file or a dynamic file. If the file is a static
file, the file is migrated to a dynamic region of the storage
medium, and if the file is a dynamic file, the file is migrated to
a static region of the storage medium.
(Spec. 3, ¶ [0088]). Claim 1 is exemplary:
1. A method of enhancing a life span of a read/write storage medium,
the method comprising the steps of:

identifying whether a file on a read/write storage medium is a
static file or a dynamic file;

migrating the file to a dynamic region of the read/write storage
medium if the file is a static file; and

migrating the file to a static region of the read/write storage
medium if the file is a dynamic file.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lofgren 6,230,233 B1 May 8, 2001
Kriegsman 6,480,893 B2 Nov. 12, 2002

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Application 10/039,018

Rejections:
Claims 1 to 19 and 28 to 31 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Kriegsman in view of Lofgren.

Groups of Claims:
Appellants identify the following groups of claims:
Group I: Claims 1, 2, 8 to 14, 16 to 18, and 28. Claim 1 is
representative.
Group II: Claims 3 to 5, 7, 15, 19 and 30. Claim 3 is representative.
Group III: Claim 6
Appellants contend that the claimed subject matter is not rendered
obvious by Kriegsman in combination with Lofgren, for failure to properly
combine the references. The Examiner concluded that each of the three
groups of claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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Application 10/039,018

We reverse the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
there is a legally sufficient justification for combining the disclosures of
Kriegsman and Lofgren, and whether the combination of the references
teaches the claimed subject matter.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method (and system) of more evenly using
the various regions of a read/write storage medium by first analyzing and
identifying whether files to be stored are static files or dynamic files.
(Spec., page 5 top). Appellants identify the files by performing a count
of file rewrite cycles, and comparing them to established thresholds (Id.).
Files written often are considered dynamic files; files not written as often
are identified as static files. Appellants then perform an analysis and
identification of the storage medium, identifying those regions that have
been heavily used in the past (dynamic regions) and those that have not
been so used (static regions) (Ibid., bottom). Appellants then migrate
static files to “more worn or dynamic areas and dynamic files to less
worn or static areas” (Id.).
2. The patent reference Kriegsman teaches a method for efficiently storing
elements of a compound document, such as a web page, dividing some
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Application 10/039,018

parts onto a standard user’s computer system, and other parts onto high
speed storage devices connected over a network by high speed computer
links, such as a T1 line. (See Abstract.) Files kept on the primary
computer are taught to be text data, and tags, and are called dynamic data
files (col. 5, ll. 63 et seq.) “…whereas static data files 42 typically
include non-text data, such as image data, animation data, video data,
audio data, and computer programs” (Id.). The invention copies “those
capacity-consuming static data files 42 to one or more secondary web
servers 16 (which have higher capacity communications links, and then
dynamically re-writes requested pages so that the embedded static data
files are retrieved directly from the best or optimal web server each time”
(col. 7, ll. 3-8).
3. The patent reference Lofgren teaches a method to extend the service
lifetime of a read/write memory, most notably an EEPROM, by swapping
data from much used memory banks to lesser used memory banks (col. 8,
ll. 14 et seq.). The swap takes place either automatically on initialization
of the computer system, or under control of a host computer whose
function it is to perform this wear leveling when required (col. 7, l. 27).
Cycle counts of each of the data storage blocks are maintained, to
determine those blocks with high data usage, and to determine whether a
leveling operation is warranted. (Id.) The process transfers blocks of
data from maximum use memory banks to minimum use memory banks
(col. 8, l. 15). It is noted that no analysis of the storage frequencies of the
data itself takes place in this reference.
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PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore,
”there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’
. . . however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

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ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. §§ 101, 102, and 103. The prima facie case is presented on
pages 4 to 9 of the Examiner’s Answer.
In opposition, Appellants present two main arguments. The first
argument, relevant to the claims of Group 1 above, addresses the issue of
proper combination of references under 35 U.S.C. § 103. The second
argument, relevant to the claims of Groups 2 and 3, addresses the issue of
whether a feature of those claims is taught by the references.
As noted in the Findings of Fact, and from the claims, we note that
Appellants’ invention covers a double identification and migration. The
files that are being recorded are analyzed and categorized as static or
dynamic, with respect to how often they are recorded and re-recorded.
Meanwhile, the regions of the storage medium are also being analyzed, to
identify those regions that are being often changed (dynamic regions) and
those regions that are not being used as much (static regions).
The Lofgren reference teaches extending the life of a memory device
by wear leveling, as described in FF3. But, in Lofgren only the memory
blocks are analyzed, with data files being transferred from the most heavily
used memory blocks to the lesser used memory blocks. However, there is
no mention in Lofgren of analyzing and identifying the files as static or
dynamic. The Examiner recognizes this (Answer, page 5 top), and relies
upon Kriegsman for that teaching.
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Kriegsman teaches analyzing the files associated with a web page for
the purpose of efficiently storing and transferring the text, images, and other
matter that constitute the page. It does not address wear leveling in a
memory device. In Kriegsman, files are classified as static when they are
transferred without changes (usually images or music), or dynamic when
they are modified for each transfer (usually text or tags) (col. 1, l. 10). As
mentioned in FF2 above, this reference, while using the same terms as the
Appellants, is addressing a different field of endeavor (storing and
transferring web pages vs. counteracting media wear) and focusing on a
different problem (speed of communications). In addition, the Appellants
use static and dynamic to refer to the number of times that the files are
changed, requiring rewriting into storage. The Kriegsman reference refers to
the number of times the data is modified for transfer for display, requiring
processing by the primary computer.
We, thus, find that the Examiner erred in combining these references,
and the combined teachings do not render the limitations obvious. In view
of this finding concerning the base references, we need not consider the
Appellants’ arguments concerning Groups 2 or 3.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown that the Examiner erred in rejecting claims 1 to 19
and 28 to 31.

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DECISION
The Examiner's rejection of claims 1 to 19 and 28 to 31 is reversed.

REVERSED

clj

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 272400
FORT COLLINS, CO 80527-2400
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