Ex Parte Post et al

Patent Trial and Appeal Board

Mar 20, 2017

13152839 (P.T.A.B. Mar. 20, 2017)

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.
13/152,839 06/03/2011 Daniel J. Post PI 1427US1 7738
111349 7590 03/22/2017
Van Court & Aldridge LLP
Apple Inc.
154 Grand St.
New York, NY 10013
EXAMINER
CHAPPELL, DANIEL C
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
docket @ vcaiplaw. com
j aldridge @ vcaiplaw. com
avancourt @ vcaiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. POST, ERIC TAMURA, VADIM KHMELNITSKY,
NIR J. WAKRAT, and MATTHEW BYOM
Appeal 2015-005836
Application 13/152,839
Technology Center 2100
Before JOHN A. EVANS, KAMRAN JIVANI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1—22. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies Apple Inc. as the real party in interest. App.
Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed June 24, 2014, “App. Br.”), the Corrected
Claims Appendix (filed July 28, 2014), the Reply Brief (filed May 18, 2015,
Appeal 2015-005836
Application 13/152,839
STATEMENT OF THE CASE
The claims relate to systems and methods for unmapping unused
logical addresses at mount-time of a file system. See Abstract.
INVENTION
Claims 1, 8, 15, and 19 are independent. An understanding of the
invention can be derived from a reading of representative claim 1 (see App.
Br. 8), which is reproduced below with some formatting added:
1. A method of preparing a non-volatile memory (“NVM”)
for use in an electronic device, wherein the electronic device
implements a file system and a NVM manager, the method
comprising:
at mount-time of the file system, wherein the mount-time
incorporates aspects of files stored in the NVM into a file and
folder structure of the file system:
preparing a list of unallocated logical addresses
associated with the NVM, and
providing the list from the file system to the NVM
manager; and
synchronizing, based on the list, allocation of logical
block addresses (LBAs) between the file system and the NVM
manager before the NVM is used.
Reply Br.”), the Examiner’s Answer (mailed March 18, 2015, “Ans.”), the
Final Action (mailed December 26, 2013, “Final Act.”), and the
Specification (filed June 3, 2011, “Spec.”) for their respective details.
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Application 13/152,839
REFERENCES AND REJECTIONS
The Examiner relies upon the prior art as follows:
Camiel US 2008/0229428 A1 Sept. 18, 2008
1. Nathan Edwards, White Paper. The TRIM Command,
Maximum PC, pp. 1^4 and abstract pp. 1—8 (“Edwards”).
2. openSUSE Support Database, “SDB:SSD discard (trim)
support” pp. 1—3, (“openSUSE”).
1. Claims 1—14 stand rejected under 35 U.S.C. § 103(a) as obvious over
Edwards, openSUSE, and Camiel. Final Act. 2—15.
2. Claims 15—22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Edwards and Camiel. Final Act. 15—29.
3. Claim 15 stands provisionally rejected under the judicial grounds of
non-statutory type obviousness double patenting over claim 1 of co­
pending Application 13/323,347 and Edwards. Final Act. 30—33.
ANALYSIS
We have reviewed the rejections of Claims 1—22 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellant identifies reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
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Application 13/152,839
unpatentable over the cited combination of references. We adopt as our own
the findings and reasons set forth in the rejection from which this appeal is
taken and in the Examiner’s Answer. We provide the following explanation
to highlight and address specific arguments and findings primarily for
emphasis. We consider Appellants’ arguments seriatim, as they are
presented in the Appeal Brief, pages 9-23.
Claims 1-14: Obviousness over Edwards, openSUSE, and Camiel
At mount-time of the file system.
The Examiner finds Edwards substantially teaches the claimed
method of preparing a non-volatile memory (NVM) for use in an electronic
device. Final Act. 2. The Examine finds Edwards teaches listing and re­
allocating logical addresses including the use of the “TRIM” command. Id.
The Examiner finds openSUSE teaches the synchronization and allocation of
logical block addresses before the NVM is used. Id. at 3. The Examiner
finds the Edwards-openSUSE combination does not explicitly teach block
allocation occurs “at mount time of the file system,” as claimed. Id. at 4.
However, the Examiner finds Camiel teaches the file allocation taught by
Edwards-openSUSE occurs at the mount time of the file. Id.
Appellants contend “Camiel has absolutely no bearing on when to
execute a Trim command.” App. Br. 11.
The Examiner finds the invention of Claim 1 may be equivalently
stated as running the well-known TRIM command at mount-time of a
device. Ans. 3. The Examiner finds Appellants concede: “Edwards clearly
explains what the ‘TRIM command is all about,”’ in that the TRIM
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Application 13/152,839
command erases physical blocks that correspond to files (i.e., logical blocks)
that have been deleted. Ans. 3 (citing App. Br. 9,11. 20-21; p. 9,1. 32 —
p. 10,1. 3). The Examiner further finds Appellants concede openSUSE
states: “fstrim should be ‘run once a week’ or ‘call wiper.sh/fstrim once
every lOgb worth of file deletions.’” Id. The Examiner finds “fstrim” is a
command that invokes the well-known TRIM operation to delete (i.e., un­
map) Logical Block Addresses (LBAs) that are no longer in use by a file
system. Id. at 2. In the openSUSE reference, the fstrim command is
invoked by the wiper.sh script, which may be run at arbitrary times, such as
once a week. Id. at 2. The Examiner finds the claimed “mount-time” is an
arbitrary time. Id. at 4. The Examiner finds Camiel teaches performing an
operation to prepare a file and directory structure (i.e., the claimed file and
folder structure) for mounting, which, in combination with the teachings of
Edwards and openSUSE, teaches the claimed limitations. Id. at 4.
Appellants traverse the Examiner’s characterization that “the mount­
time claimed by the Appellants is an arbitrary time.” Reply Br. 9.
Appellants argue the claims specifically relate to benefits achieved by
providing the claimed information to the NVM manager before the NVM is
used, i.e., at mount-time. Id.
We find the Examiner properly cites Camiel as teaching preparing file
structures at mount-time. We further find the Examiner’s synthetic case
teaches the claims contrary to Appellants’ assertion. See App. Br. 12.
Appellants argue claims 2—7 in view of the limitations of Claim 1.
App. Br. 12. In view of the foregoing discussion, we are not persuaded the
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Examiner erred. Appellants argue claims 8—14 in view of the limitations of
Claim 1. App. Br. 13. In view of the foregoing discussion, we are not
persuaded the Examiner erred.
Claims 15-22: Obviousness over Edwards and Camiel
Appellants traverse the rejection over the Edwards-Camiel
combination essentially for the reasons discussed above. See App. Br. 14-
lb. In view of the foregoing discussion, we are not persuaded the Examiner
erred.
Impermissible Hindsight.
Appellants argue that the Examiner too liberally interprets the
disclosures of Edwards and Camiel which, Appellants contend, do not
disclose the wording of the claims. App. Br. 16. Appellants argue the
person of ordinary skill must judge the prior art without the benefit of the
Applicants’ invention-teaching. Id. Appellants argue that when doing so, it
is apparent that steps 1105 et seq. in Camiel follow step 1104 in time with
no suggestion that any of these steps occur at mount-time. Id. Appellants
contend without the benefit of the Examiner’s hindsight, it would only be
reasonable to assume that all of these things happen after mount-time. Id.
We are not persuaded that Camiel’s disclosure of a plurality of steps
to accomplish a mount implies they must occur subsequent to the claimed
“mount-time.” Appellants define the claimed “mount-time” as that point in
the operation of the system where the operating system “triggers] a mount.”
Spec. 2, | 5. Appellants disclose various subsequent steps that are included
in the claimed “mount-time.” See Spec, 6—8.
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The Examiner finds interpretive phrases, such as “this means” or
“which means,” merely indicate a restatement of the prior art teachings and
do not indicate, per se, impermissible hindsight. Ans. 6. (quoting MPEP
2145(X)(A):
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
We are not persuaded the Examiner has used impermissible hindsight.
Appellants contend Claims 15—18 are allowable as dependent from
Claim 15. App. Br. 15. In view of the foregoing discussion, we are not
persuaded the Examiner erred. Appellants contend Claims 19-22 are
allowable in view of the arguments applied to Claim 15. App. Br. 18—19. In
view of the foregoing discussion, we are not persuaded the Examiner erred.
Claim 15: Non-statutory type obviousness double patenting
Appellants contend this rejection is not ripe because the accused co­
pending application, 13/323,347 has not issued as a patent. Id. at 19. We
find that Application 13/323,347 issued as US 8,756,458 B2 on June 17,
2014. Because the co-pending application has issued, the rejection is ripe.
Appellants present no substantive arguments as to the merits of the rejection,
which we summarily affirm.
DECISION
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Application 13/152,839
The rejection of Claims 1—22 under 35 U.S.C. § 103 is AFFIRMED.
The rejection of Claim 15 under the judicial doctrine of obviousness-
type double patenting is AFFIRMED.3
AFFIRMED
3 A timely filed terminal disclaimer in compliance with 37 C.F.R. §§ 1.321(c)
or 1.321(d) may be used to overcome an actual or provisional rejection based
on a nonstatutory double patenting ground provided the conflicting
application or patent either is shown to be commonly owned with this
application, or claims an invention made as a result of activities undertaken
within the scope of a joint research agreement.
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