Ex Parte Rafizadeh et al

Patent Trial and Appeal Board

Nov 21, 2018

12746719 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/746,719 09/09/2010 Schumann Rafizadeh
52835 7590 11/26/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
20788.000lUSWO 1806
EXAMINER
SCHNEE, HAL W
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCHUMANN RAFIZADEH, PAUL WILLMANN,
YIJI LIN, and YING HU
Appeal2017-003270
Application 12/7 46, 719 1
Technology Center 2100
Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6, 7, 9, and 12-14, which constitute all of the
claims pending in this application. Claims 5, 8, 10, and 11 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b ). 2
We affirm.
1 Appellants identify Suzhou One World Technology Co., Ltd. as the real
party in interest. App. Br. 6.
2 An oral hearing was held in this case on November 7, 2018.
Appeal2017-003270
Application 12/746,719
STATEMENT OF THE CASE
Introduction
Appellants generally describe the disclosed and claimed invention as
related to a flash-based storage device, and more particularly to utilizing
flash-based storage modules in an array format. Spec. ,r 1. 3
Claim 1 is representative and reproduced below (with the disputed
limitations italicized):
1. A flash module array system comprising:
an enclosure including:
one or more physical input/output (I/0) interfaces
communicable with a device external to the enclosure and
configured to receive read and/or write commands from the
device;
a plurality of flash module arrays, each including
multiple flash memory modules; and
a flash module array controller directly communicable
with the one or more physical I/0 interfaces and the plurality of
flash module arrays, the flash module array controller
including:
a block mapping unit, configured to map addresses
to a plurality of data blocks of the multiple flash memory
modules and convert a logical address received by the one or
3 Our Decision refers to the Final Office Action mailed Apr. 18, 2016
("Final Act."); Appellants' Appeal Brief filed Aug. 29, 2016 ("App. Br.")
and Reply Brief filed Dec. 20, 2016 ("Reply Br."); the Examiner's Answer
mailed Oct. 20, 2016 ("Ans."); and the Specification filed Nov. 30, 2012
("Spec.").
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more physical I/0 interfaces from the device external to the
enclosure to a physical address of the multiple flash memory
modules, and to convert the physical address of the multiple
flash memory modules, to the logical address for the device
external to the enclosure, wherein a host-based mapping unit is
not utilized and there is more than one flash module array for
each block mapping unit.
App. Br. 35 (Claims App'x).
Rejections on Appeal
Claims 1--4, 6, 7, 9, and 12-14 stand rejected under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written-description
requirement. Final Act. 6-7.
Claims 1--4, 6, 7, 9, and 12-14 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard as the
invention. Final Act. 7-8.
Claims 1--4, 9, 12, and 14 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kitahara (US 2008/0098158 Al; published Apr. 24,
2008) and Whitt et al. (US 2006/0143506 Al; published June 29, 2006)
("Whitt"). Final Act. 8-14.
Claims 2, 6, and 7 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kitahara, Whitt, and Gonzalez et al. (US 2005/0144361
Al; published June 30, 2005) ("Gonzalez"). Final Act. 14--15.
Claim 3 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kitahara, Whitt, and Wilson (US 2006/0173969 Al;
published Aug. 3, 2006). Final Act. 15-16.
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Application 12/746,719
Claim 13 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kitahara, Whitt, and Bronsonet al. (US 2003/0188074 Al;
published Oct. 2, 2003) ("Bronson"). Final Act. 16-17.
ANALYSIS
Rejection of Claims 1-4, 6, 7, 9, and 12-14 Under§ 112, First Paragraph
In the Final Office Action, the Examiner rejects independent claims 1
and 14 under 35 U.S.C. ,r 112, first paragraph, as failing to comply with the
written description requirement, and rejects claims 2--4, 6, 7, 9, 12, and 13 as
being dependent on a rejected base claim. Final Act. 6-7.
The Examiner notes that independent claim 1 recites "a plurality of
flash memory arrays" and that independent claim 14 recites "one or more
flash module arrays." Id. at 7. The Examiner also notes that both claims 1
and 14 recite "there is more than one flash module array for each block
mapping unit," and this implies "a plurality of block mapping units, with a
plurality of arrays of flash memory modules for each block mapping unit."
Id. The Examiner finds, however, that the original disclosure includes "only
a single block mapping unit 120 and a single flash module array 14, with the
flash module array comprising multiple flash memory modules 141, 142 ...
I4N." Id. (citing Fig. 1, ,r 21 of published application US 2010/0325348
(the "'348 publication")). The Examiner further finds that
Id.
[ n ]owhere is there a description or suggestion of multiple block
mapping units; nor is there a description or suggestion of
multiple arrays of flash memory modules; nor is there a
description or suggestion of multiple arrays of flash memory
modules for the block mapping unit. These elements of claims
1 and 14 therefore constitute new matter.
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Appellants argue that the disclosure in the Specification of "a flash
[module] array" can be plural because "[ fJlash module array is a collective
noun and therefore considered plural when the group it names is considered
to be made up of individuals, because the members can act on their own."
App. Br. 27 (citing Spec. ,r,r 15, 23; Ex. 7). In this regard, Appellants argue
that "[t]he flash module array are 'individuals' because the flash module
array can act separately." Id. (citing Ex. 7). According to Appellants, the
illustration of one component, i.e., array, does not foreclose more than one
of that component, and one of skill in the art "would realize that more than
one 'flash module array' would logically be present." Id. at 28-29 (citing
Spec. ,r 23; Ex. 1, Deel. of Krueger at ,r 6; Ex. 2, Deel. of Xiao at ,r 5; Ex. 3,
Deel. of Rafizadeh at ,r,r 8 and 12). Appellants also argue that "[t]here is no
evidence of intent on the part of the inventors to limit the invention to one
flash module array" and that paragraph 23 of the Specification states "[ t ]he
capacity of flash memory storage is increased by utilizing multiple parallel
flash memory modules as a flash array." Id. at 29.
The test for compliance with the written description requirement
under 35 U.S.C. § 112, first paragraph, is "whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). "[T]he disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue." Purdue Pharma
L.P. v. Paulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nevertheless,
the disclosure must "clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed." Ariad, 598 F.3d at
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1351 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.
Cir. 1991)).
We are not persuaded by Appellants' arguments that the Examiner
erred in finding that Appellants' Specification only supports a single array
containing multiple flash modules and does not reasonably convey to
persons of ordinary skill in the art the claimed "plurality of flash module
arrays" and "more than one flash module array for each block mapping
unit."
First, regarding Appellants' argument that "flash module array" is a
collective noun and, therefore, is considered "plural," we agree with the
Examiner's finding "that 'flash module array' can be considered a plural
collective noun, but in a plural collective noun it is the individual entities
[acting on their own] that are plural, not the collective [noun]." Ans. 3.
Appellants' Exhibit 7 concerns the subject of "Sentence Agreement" of
collective nouns, i.e., the subject and the verb must agree in number. See
Ex. 7 (PDF of http://www.infoplease.com/cig/grammar-style/collective-
nouns.html, last visited June 27, 2016). As the Examiner notes, Exhibit 7
uses the example of "the cast of a play" in which the word "cast" is a
collective noun. The exhibit states that, when the members of the cast are
functioning as a single unit, the collective noun "cast" takes the singular
verb, as in the sentence stating, "The play's cast is rehearsing for today's
show." On the other hand, the exhibit states that, when the members of the
cast are functioning as individual people doing separate things, the collective
noun "cast" takes the plural verb, as in the sentence stating, "The play' s cast
are rehearsing their lines." Thus, as the Examiner finds, although use of the
"play's cast" requires a plural verb when its members act individually, the
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word "'cast' itself is not plural-there is only one cast in the play, not
multiple casts." Ans. 3. Similarly, as the Examiner finds, and we agree, "an
array can be considered a plural collective noun that contains multiple flash
modules. But this does not imply a plurality of arrays." Id.
Second, Appellants' argument that the illustration of one component,
i.e., array, does not foreclose more than one of that component (see App. Br.
28-29) is not persuasive in view of the disclosure in Appellants'
Specification. As the Examiner finds, and Appellants do not dispute, Figure
1 (the only drawing in the application) shows, and the Specification
describes, one flash array controller 12, containing one block mapping unit
120, that is coupled to a single flash module array 14 comprising multiple
flash memory modules 141-14N. Final Ans. 7 (citing Fig. 1, ,r 21 of the
'348 publication). The Examiner also finds, and we agree, that Appellants'
Specification "only describe[ s] mapping to the modules of a single array"
and "[ t ]here is no description" in Appellants' disclosure "of how mapping
would be performed if more than one array were coupled to the block
mapping module." Ans. 4 (citing ,r,r 23-25 of '348 publication).
Accordingly, we also agree with the Examiner's finding that "[w]ithout a
description of how the block mapping module would distribute data across
two or more flash module arrays, a person of ordinary skill in the art would
not be able to make and use the appellants' claimed invention." Ans. 4. We
further agree with the Examiner's findings that, if the system includes
multiple block mapping units, the "situation becomes even more
problematic" because "one needs to know how the multiple block mapping
units are connected to one another and how they interact." Id. at 5. As the
Examiner finds, and we agree, "[ s ]ince the appellants' original disclosure
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does not describe the details essential to the structure and operations of a
system with multiple block mapping units and multiple flash module arrays,
such a system is not enabled by the disclosure." Id.
Third, we are not persuaded by Appellants' argument that one of skill
in the art "would realize that more than one 'flash module array' would
logically be present." App. Br. 28-29 (citing Spec. ,r 23; Ex. 1, Deel. of
Krueger at ,r 6; Ex. 2, Deel. of Xiao at ,r 5; Ex. 3, Deel. ofRafizadeh at ,r,r 8
and 12). We have reviewed the portions of the declarations cited by
Appellants and find no evidence to support Appellants' conclusion.
Regarding paragraph 23 4 of the Specification, it states that "[t]he capacity of
flash memory storage is increased by utilizing multiple parallel flash
memory modules as a flash array." The Examiner finds, and we agree, that
"this sentence shows that the appellants have envisioned adding memory
modules to the array, not adding entire arrays." Ans. 6.
Fourth, we are not persuaded by Appellants' argument that there is no
evidence of intent by the inventors to limit the invention to one flash module
array (see App. Br. 29) because, as the Examiner finds, and we agree, there
is no disclosure or suggestion in Appellants' Specification of "multiple
arrays of flash memory modules" or "multiple arrays of flash memory
modules for the block mapping unit." Final Act. 7. Appellants cite
paragraph 6 of the Specification in support of this argument, which states
that "the Flash Modules Array (FA) invention" provides a leap forward in
solid state storage technology "by providing a solution that allows varying
[the] number of off-the-shelf flash modules to be configured as a flexible
4 The Examiner notes that paragraph 23 of the Specification corresponds to
paragraph 26 of the '348 publication.
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configuration of high capacity flash solid state storage devices." We
determine that this paragraph of the Specification is not persuasive of
Appellants' argument of "no intent by the inventors" to limit the invention to
one flash module array because paragraph 6 does not describe or suggest
multiple flash module arrays, but describes the advantages of varying the
number of modules that can be configured as a flash module array.
Thus, we find that the disclosure of Appellants' Specification fails to
reasonably or clearly convey to those of ordinary skill in the art, as of the
filing date, that the inventor had possession of the claimed "plurality of flash
module arrays" and "more than one flash module array for each block
mapping unit." See Ariad, 598 F.3d at 135. Accordingly, we sustain the
rejection of claims 1 and 14, and dependent claims 2--4, 6, 7, 9, 12, and 13,
under§ 112, first paragraph.
Rejection of Claims 1-4, 6, 7, 9, and 12-14
Under§ 112, Second Paragraph
The Examiner notes that claims 1 and 14 each recite "a block mapping
unit." Ans. 7 (citing claim 1, line 8; claim 14, line 9). The Examiner also
notes that the last two lines of claims 1 and 14 recite "there is more than one
flash module array for each block mapping unit," and finds that the term
"each" implies multiple block mapping units. Ans. 7. The Examiner finds
that, reading the claims in view of the Specification, a person of ordinary
skill in the art would understand "a block mapping unit" to mean "one block
mapping unit" and, therefore, claims 1 and 14 are "indefinite because they
are self-contradictory, first reciting a single block mapping unit and then
implying the existence of multiple block mapping units." Id. at 4, 7-8.
Because the Examiner finds that the scope of the claims could not be
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definitively determined, the Examiner chose to interpret the claims, in view
of the original disclosure, "as having a single block mapping unit and a
single array of flash memory modules, the array comprising a plurality of
flash memory modules." Final Act. 8; Ans. 8.
In the Appeal Brief, Appellants argue that "[a]s indicated by the
affidavits submitted during prosecution, those of skill in the art understand
what is claimed when the claim is read in light of the specification." App.
Br. 33 (citing Ex. 1, Deel. of Krueger at ,r 6; Ex. 2, Deel. of Xiao at ,r 5; Ex.
3, Deel. of Rafizadeh at ,r 8). Appellants also argue that "those of skill in the
art interpret 'a' as at least one." App. Br. 33. In the Reply Brief, in response
to the Examiner's finding that a person of ordinary skill in the art would
understand "a block mapping unit" to mean "one block mapping unit,"
Appellants argue that "[b ]ased on the argument above for array, a block
mapping unit can be one or more block mapping units." Reply Br. 16.
At the oral argument in this case on November 7, 2018, Appellants'
counsel was asked about the Examiner's indefiniteness rejection in view of
the claim recitation that "there is more than one flash module array for each
block mapping unit." In response, Appellants' counsel stated that the clause
"each block mapping unit" is more appropriately read as "the block mapping
unit." 5
We are not persuaded by Appellants' arguments in the Briefs that the
Examiner erred. Instead, we agree with the Examiner that a person of
5 Transcript of oral hearing, p. 15. In the event of further prosecution of this
application, Appellants will have the opportunity to amend the claims if they
desire to do so. Because the claims have not been amended by replacing the
word "each" with "the" in this clause, we cannot consider the claims in a
revised or amended form as of this time.
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ordinary skill in the art, reading the claims in view of the Specification,
would understand "a block mapping unit" to mean "one block mapping
unit." Ans. 7-8. As discussed supra, Appellants' disclosure shows and
describes only one block mapping unit. See Final Act. 7 ( citing '348
publication Fig. 1, ,r 21). Appellants' reliance on the Krueger, Xiao, and
Rafizadeh declarations is unconvincing because Appellants have not
identified, nor have we located, any portions of the declarations directly
addressing this issue, much less providing persuasive evidence supporting
Appellants' position. Thus, we also agree with the Examiner that the claims
are self-contradictory because they recite "a single block mapping unit" and
then imply multiple block mapping units by reciting "there is more than one
flash module array for each block mapping unit." Ans. 7-8.
Thus, we conclude that claims 1 and 14 are indefinite under ,r 112,
second paragraph, because they are unclear and ambiguous in regard to
whether one or more than one block mapping unit is claimed. See In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) ("[C]laims are required to be
cast in clear-as opposed to ambiguous, vague, indefinite-terms.").
Accordingly, we sustain the Examiner's rejection of claims 1 and 14, and
claims 2--4, 6, 7, 9, 12, and 13, under§ 112, second paragraph.
Rejections of Claims 1-4, 6, 7, 9, and 12-14 Under§ 103(a)
For the reasons discussed above, the scope of claims 1--4, 6, 7, 9, and
12-14 is unclear. Consequently, we do not sustain the rejections of claims
1--4, 6, 7, 9, and 12-14 under 35 U.S.C. § 103(a) because to do so would
require speculation as to the scope of the claims. See In re Steele, 305 F.2d
859, 862---63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection
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was based on speculative assumptions as to the meaning of the claims). It
should be understood, however, that our decision in this regard is proforma
and based solely on the indefiniteness of the claimed subject matter, and
does not reflect on the adequacy of the prior art evidence applied in support
of the rejections.
DECISION
We affirm the Examiner's rejection of claims 1--4, 6, 7, 9, and 12-14
under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 1--4, 6, 7, 9, and 12-14
under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner's rejection of claims 1--4, 6, 7, 9, and 12-14
under 35 U.S.C. § 103(a).
AFFIRMED
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