Ex Parte Piekarski

Patent Trial and Appeal Board

Nov 9, 2016

12328381 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/328,381 12/04/2008 Marek Piekarski
23643 7590 11/14/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
46046-207914 6813
EXAMINER
BARTELS, CHRISTOPHER A.
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
11/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAREK PIEKARSKI
Appeal 2015-004466
Application 12/328,381
Technology Center 2100
Before LARRY J. HUME, NATHAN A. ENGELS, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-29, and 31-56. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Micron Technology,
Inc. App. Br. 2.
Appeal2015-004466
Application 12/328,381
fNVENTION
Appellant's disclosed and claimed inventions relate to a method and
apparatus for providing data access. Abstract. Claims 1 and 26 are
illustrative and read as follows:
1. A method of providing direct access to first data stored at
a first device to a second device, the first device storing the first
data in a memory of the first device directly accessible to said
second device, the method comprising:
at a control element external to each of said first and second
devices, modifying the stored first data in said memory directly
accessible to said second device; and
by said second device and without the control element, directly
accessing the modified stored first data in said memory directly
accessible to said second device.
26. An apparatus for providing access to first data stored at a
first device to a second device, the first device storing the first
data in a memory of the first device directly accessible to said
second device, the apparatus comprising a control element
external to each of said first and second devices, the control
element further comprising:
means for accessing the stored first data in said memory directly
accessible to said second device before said first data is directly
accessed by said second device, wherein said second device
directly accesses said first data without the control element.
REJECTION
Claims 1, 3-29, and 31-56 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Thompson (US 7403542B1; issued July 22, 2008).
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. Regarding the rejection of claims 1,
3-25, 27-29, and 31-56 under 35 U.S.C. § 102(a), we are persuaded by
Appellant's contentions that the Examiner erred. With respect to the
rejection of claim 26 under 35 U.S.C. § 102(a), however, we reach the
opposite result.
Claims 1, 3-25, 27-29, and 31-54
We agree with Appellant that the Examiner erred in finding
Thompson anticipates claim 1. As Appellant points out, the Examiner's
rejection fails sufficiently to identify elements of Thompson that correspond
to each and every element as set forth in the claims. App. Br. 4. We note
that the Examiner's rejection omits explicit analysis of the limitation
"modifying the stored first data in said memory directly accessible to said
second device," recited in claim 1. See Final Act 2--4; Ans. 3-5. The
Examiner, however, identified Thompson's IP Verifier 302A and
OUTBOUND IP/MAC Processor 308, collectively, as the "control element"
recited in claim 1. Ans. 4 (citing Thompson col. 12:59---67). The Examiner
also found that a "modification performed by 'OIP 308' ... satisfies the
claim language because the control element 'IPV 302A' does not modify
said data." Ans. 4--5 (citing Thompson col. 11:48-51). The Examiner
further explained that Thompson "shows modification by the first device"
because "the IOCB entry is returned to host 104 to be reused, even though
the requested operation may not be completed." Final Act. 17; Ans. 18
(citing Thompson cols. 11 :25-29, 17:50-55).
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Application 12/328,381
We agree with Appellant that the Examiner has not provided
sufficient explanation or reasoning why the cited portions of Thompson in
columns 11 and 17 disclose "at a control element external to each of said
first and second devices, modifying the stored first data in said memory
directly accessible to said second device," as claim 1 requires. See Ans. 18.
The Examiner has not explained with sufficient clarity how the cited
portions of Thompson relate to each other or to the recited claim terms. See
Ans. 3-5, 18. Nor has the Examiner sufficiently explained how returning an
IOCB entry to host 104 to be reused, even though the requested operation
may not be completed, would be considered by one of ordinary skill in the
art as disclosing the disputed limitation in light of the Examiner's other
findings. See id. at 3-5, 18.
Independent claim 29 recites in relevant part:
at a control element external to each of said first and
second devices:
modifying said data in said memor; directly
accessible to said second device before said data is
processed by said first device, wherein said first device
processes said data without the control element.
App. Br. 13. For the same reasons discussed above for claim 1, we agree
with Appellant that the Examiner erred in finding Thompson discloses the
disputed "modifying" step of claim 29. Moreover, the Examiner rejected
claim 29 "under the same reasoning set forth in the rejection of claims 1,"
but clarified that "the first device is now mapped to 'disk 103' (See Fig. 2)
and the second device is now mapped to 'host memory 104."' Ans. 13-14.
In the rejection of claim 1, the Examiner points to Thompson's host memory
104 as the recited "first device" and Thompson's SERDES as the recited
"second device." The Examiner has not explained with sufficient clarity
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Application 12/328,381
how the portions of Thompson the Examiner cited in rejecting claim 29
relate to each other or to the recited claim terms. See Ans. 3-5, 14.
Accordingly, on the record before us, we do not sustain the 35 U.S.C.
§ 102(a) rejection of independent claims 1 and 29, or of claims 3-11, 13-25,
27,2 28, and 31-54, dependent thereon. As our findings herein are
dispositive, we do not reach other arguments that Appellant makes in
support of the patentability of claims 1 and 29.
Claims 55 and 56
Independent claims 55 and 56 recite in relevant part:
at a virtualization proxy controller external to each of said
first and second devices:
modifying the stored first data in said memory
directly accessible to said second device before said first
data is directly accessed in said memory directly
accessible to said second device by said second device,
wherein said second device directly accesses said first
data without the virtualization proxy controller.
App. Br. 17. In rejecting claim 55, the Examiner found Thompson discloses
the recited "virtualization proxy controller," and that the cited virtualization
proxy controller in Thompson "inserts source MAC address in transmitted
frame 303B." Ans. 16-17 (citing Thompson cols. 12: 13-25, 13:26-30).
The Examiner also relied, without further explanation, on the analysis set
forth for claim 1. Final Act. 15-16; Ans. 16. The Examiner's findings are
insufficient to demonstrate that Thompson discloses each and every element
2 We leave it to the Examiner to determine whether hybrid "computer
program" claim 27, which depends from method claim 1, is invalid under 35
U.S.C. § 112, paragraph 4, because it fails to specify a further limitation of
the subject matter of claim 1. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457
F.3d 1284, 1292 (Fed. Cir. 2006).
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Application 12/328,381
of claim 55 because the Examiner has not explained with sufficient clarity
how the cited portions of Thompson relate to each other or to the recited
claim terms. See Ans. 3-5, 16-17.
In rejecting claim 56, the Examiner refers to Thompson's disk 103 as
the recited "second device," but also rejects claim 56 "under the same
reasoning set forth in the rejection of claims 1 recited above." Ans. 17. In
the reasoning for claim 1, however, the Examiner relied on SERDES, not
disk 103, as the second device. Ans. 3--4. The Examiner's findings are
insufficient to demonstrate that Thompson discloses each and every element
of claim 56 because the Examiner has not explained with sufficient clarity
how the portions of Thompson the Examiner cited in rejecting claim 56
relate to each other or to the recited claim terms. See Ans. 3-5, 17.
Accordingly, we do not sustain the 35 U.S.C. § 102(a) rejection of
claims 55 and 56.
Claim 26
Unlike claims 1, 29, 55, and 56, claim 26 does not require the
modification of data or access to modified data. App. Br. 12. The Examiner
rejected claim 26 under the same reasoning set forth in the rejection of
claim 1, for which the Examiner provided new mappings to Thompson in the
Answer. Ans. 3-5, 14; see also Reply Br. 2---6. In the Reply Brief,
Appellant rebuts the Examiner's new findings with regard to the
"modifying" limitation recited in claim 1, but presents no persuasive
arguments particular to the limitations recited in claim 26. See Reply
Br. 2---6.
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Application 12/328,381
Accordingly, we sustain the 35 U.S.C. § 102(a) rejection of claim 26. 3
DECISION
We reverse the decision of the Examiner rejecting claims 1, 3-25, 27-
29, and 31-56.
We affirm the decision of the Examiner rejecting claim 26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
3 In the event of further prosecution, including any review for allowance, we
leave it to the Examiner to determine whether claim 26, a single means
claim, is invalid for undue breadth under 35 U.S.C. § 112, first paragraph.
See In re Hyatt, 708 F.2d 712, 714--715, 218 USPQ 195, 197 (Fed. Cir.
1983) (A single means claim which covered every conceivable means for
achieving the stated purpose was held nonenabling for the scope of the claim
because the specification disclosed at most only those means known to the
inventor).
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