Ex Parte Rudelic

Board of Patent Appeals and Interferences

Jul 19, 2010

10215549 (B.P.A.I. Jul. 19, 2010)

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.
10/215,549 08/08/2002 John C. Rudelic NUM.0036US 7962
21906 7590 07/20/2010
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
VO, TED T
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
07/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN C. RUDELIC
____________

Appeal 2009-002721
Application 10/215,549
Technology Center 2100
____________

Before JOHN A. JEFFERY, LEE E. BARRETT, and THU A. DANG,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-12, 14-22, and 24-33. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention involves processor-based devices that execute
applications from a semiconductor nonvolatile memory with a resident
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database (e.g., execute-in-place applications). See generally Abstract; Spec.
1-3. Claim 1 is illustrative:
1. A method comprising:

storing within a semiconductor nonvolatile memory an executable
program in a non-fragmented manner separately from an associated database
stored in said memory that includes program management information;

linking the associated database to the executable program in said
semiconductor nonvolatile memory; and

executing the executable program from said semiconductor
nonvolatile memory based on the program management information.

The Examiner relies on the following as evidence of unpatentability:
Wells US 5,754,817 May 19, 1998
Hayes, Jr. (“Hayes”) US 5,974,312 Oct. 26, 1999
Microsoft Corp., Linear Flash Memory Devices on Microsoft Windows CE
2.1, Apr. 2000, http://msdn.microsoft.com (“Microsoft”).

THE REJECTIONS1
1. The Examiner rejected claims 1, 2, 4-12, 14-22, and 24-30 under
35 U.S.C. § 102(b) as anticipated by Microsoft. Ans. 4-9.2
2. The Examiner rejected claims 31-33 under 35 U.S.C. § 103(a) as
unpatentable over Wells and Hayes. Ans. 10-11.

1 Since the Examiner withdrew an anticipation rejection over Wells (Ans.
12), that rejection is not before us.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed August 17,
2007; (2) the Examiner’s Answer mailed November 28, 2007; and (3) the
Reply Brief filed January 22, 2008.
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THE ANTICIPATION REJECTION
Regarding representative claim 1, the Examiner finds that Microsoft’s
“Execute-In-Place” functionality which enables programs to run directly
from linear flash memory meets the claim. Ans. 4-5, 13-14.
Appellant argues that since Microsoft’s Windows CE cannot directly
use registry information (which is said to correspond to the recited “program
management information”), but rather must first copy this information to
RAM, it is impossible to (1) store and link the executable program and
program management information in a nonvolatile memory, and (2) execute
the program from that memory based on the program management
information as claimed. App. Br. 13-14; Reply Br. 1-2. Appellant makes
similar arguments regarding the linked “meta-information” database in claim
6. App. Br. 13-14.
The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred by finding that Microsoft:
(1) (a) stores and links an executable program and an associated
database including program management information in a semiconductor
nonvolatile memory, and (b) executes the program from the memory based
on the program management information as recited in claim 1?
(2) uses a meta-information database and reference link to execute a
program stored in a nonvolatile memory responsive to an update indication
as recited in claim 6?

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FINDINGS OF FACT (FF)
1. Microsoft describes using Linear Flash Memory (LFM) devices in
connection with the Windows CE operating system. One such use is
“Execute-In-Place” (XIP) functionality which enables a program to run
directly from LFM instead of copying the program into RAM and running it
from there. Microsoft, at 1-2, 8.
2. Other uses of LFM in Windows CE include (1) extending the size
of the Windows CE object store; (2) storing registry information; and (3)
storing Windows CE databases and using these databases “in-place.”
Microsoft, at 2, 7.
3. To support XIP, a flash device must be linear, such that it can be
mapped into a memory window and read directly through the window as if
the LFM were RAM or ROM. Microsoft, at 8.
4. Windows CE 2.10 can only support XIP from one address space,
that in which the Kernel itself runs. Also, XIP can only occur in the
Kernel’s address space, and Windows CE itself is executed in place. Since a
LFM device must also contain the Windows CE kernel image, to implement
XIP, an OEM must be able to boot a Windows CE kernel image from LFM.
Microsoft, at 8.
5. “The OEM can treat Linear Flash as a single contiguous address
space. In this configuration, the Linear Flash may be used for XIP or for
data storage. Data storage can include one or more of the following:
Registry, Database, or user data files managed by the FAT file system.”
Microsoft, at 8.

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6. The Windows CE kernel image can be booted directly from a LFM
device rather than ROM. Microsoft, at 9.
7. Windows CE cannot directly use registry information stored in
LFM, but must first be copied to the RAM-based registry. Microsoft, at 2, 7.
8. Appellant’s specification notes that “[i]n one embodiment, the
program management information may comprise registry entries 80a-80b.
Registry entries 80a-80b may incorporate conventional meta-information
that is typically used to manage the application 65.” Spec 3:17-19.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1. Appellant argues that since
Microsoft’s Windows CE must first copy registry information to RAM, the
program cannot be executed based on this registry information from the
LFM. App. Br. 13-14; Reply Br. 1-2 (emphases added). Notably, this
argument presumes that the recited “program management information” is
limited to solely registry information—a presumption that we decline to
adopt.
First, Appellant’s specification not only fails to define the term
“program management information,” but actually indicates that registry
information is but an exemplary form of such information. See FF 8
(quoting Appellant’s specification noting that program management
information may comprise registry entries in one embodiment) (emphases
added). Therefore, the term “program management information”
encompasses more than just registry information when interpreted in light of
the specification.
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Second, the Examiner’s interpretation of “program management
information” in Microsoft is likewise not limited to solely registry
information as Appellant seems to suggest. Rather, the Examiner refers not
only to Microsoft’s registry in this regard, but also to other stored data on the
LFM including a database and user data files managed by the FAT file
system. See Ans. 4-5, 13.
We see no error in this interpretation, given the breadth of the term
“program management information,” and since Microsoft indicates that the
LFM can store one or more of a registry, database, or user data files
managed by the FAT file system. FF 5. Moreover, a crucial aspect of
Microsoft’s XIP functionality for Windows CE is the kernel and its
associated image—a feature enabling booting directly from an LFM device
rather than ROM. FF 4, 6. We see no reason why this kernel image on the
LFM would not likewise constitute “program management information”
given the term’s scope and breadth.
Although Windows CE cannot directly use registry information stored
in the LFM, but must first be copied to the RAM-based registry as Appellant
indicates (App. Br. 13-14; Reply Br. 1-2; FF 7), that requirement alone is not
dispositive. In short, Appellant has not shown error in the Examiner’s
broader interpretation of “program management information” which
encompasses more than registry information, but also the other linked
information stored on the LFM noted above. We find the Examiner’s
interpretation reasonable in this regard, and see no reason why Microsoft’s
program could not be executed from the LFM based on this linked
information stored on the LFM. See FF 1-6.
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We reach a similar conclusion regarding independent claim 6 since,
like claim 1, Appellant’s arguments are based on limiting the recited “meta-
information” database to solely the registry information. App. Br. 13-14.
But here again, we find this argument unavailing since it does not account
for other types of “meta-information” stored on the LFM, including
information associated with (1) a database; (2) user data files managed by
the FAT file system; and (3) kernel image, as noted above.
We are therefore not persuaded that the Examiner erred in rejecting
independent claims 1 and 6, and claims 2, 4, 5, 7-12, 14-22, and 24-30 not
separately argued with particularity.

THE OBVIOUSNESS REJECTION
Regarding independent claim 33, the Examiner finds that Wells
discloses all recited subject matter including a nonvolatile memory storing
an executable program in a non-fragmented manner separately from a
database with program management information in concluding that the claim
would have been obvious. Ans. 10-11, 17-18. Appellant argues that Wells
stores information in a fragmented manner—not a non-fragmented manner
as claimed. App. Br. 15 (referring to the arguments regarding Wells in
connection with claim 1).
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 33 by finding
that Wells and Hayes collectively would have taught or suggested a
semiconductor nonvolatile memory to (1) store an executable program in a
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non-fragmented manner separately from an associated database including
program management information, and (2) execute the program based on
this information?

ADDITIONAL FINDINGS OF FACT
9. Wells’ system executes-in-place a file stored non-contiguously in
non-volatile memory. Specifically, CPU 21 can access and execute an
application program directly from flash memory card 30 despite not storing
the program contiguously on the card. Wells, Title; Abstract; col. 4, ll.
23-31; col. 5, ll. 4-44; col. 9, ll. 42-64; Figs. 2-7.
10. When the flash memory file management system finds free space
in different blocks, the file is broken into many small pieces to store the file
in the available free space of the blocks. An allocation table is also created
to store information linking the file pieces together. Wells, col. 5, ll. 29-36.
11. XIP program “A” is separated into four pieces, each stored in a
mappable region of the flash memory card’s memory map 70. This program
is also “stored” in four contiguous pages 62p-62s of virtual memory map 62
representing the virtual address memory of CPU 21. Wells, col. 8, ll. 30-62;
col. 9, l. 66–col. 10, l. 7; Figs. 5-6.

12. XIP program “A” can be stored in each of regions 71-73 with
other non-XIP programs or files. Also, XIP program is not stored
contiguously in the flash memory card, but rather separately stored in
different places of separate regions 71-73. Wells, col. 10, ll. 35-50; Fig. 8.

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ANALYSIS
We will not sustain the Examiner’s obviousness rejection of
independent claim 33 which calls for, in pertinent part, a semiconductor
nonvolatile memory to (1) store an executable program in a non-fragmented
manner separately from an associated database including program
management information, and (2) execute the program based on this
information.
Wells is replete with references to storing an executable program in a
fragmented manner in a nonvolatile memory—exactly the opposite of what
the claim requires. For example, Wells unambiguously indicates that an
application program is stored non-contiguously on a flash memory card, and
that files are broken into many small pieces for storage—pieces that are
linked via an allocation table. FF 9-10. Notably, even XIP programs are
subject to such a diverse, piecemeal storage technique on the flash memory
card. See FF 11-12 (noting that XIP program “A” is separated into four
pieces, each stored in an associated region of the memory map).
The Examiner’s position that the entire flash memory map of Wells’
Figure 8 meets storing the program in a non-fragmented manner (Ans. 18) is
unavailing. Indeed, this dubious position is belied by the very nature of the
map itself which illustrates disparate, piecemeal storage of the respective
parts of the XIP program “A” in different mappable regions. FF 12.
Although Wells notes that this program is also “stored” in four
contiguous pages of a virtual memory map (FF 11), this map nonetheless
represents the virtual address memory of the CPU—not the non-volatile
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flash memory card. Id. In any event, this mapping does not negate the fact
that the program itself is stored non-contiguously on the flash memory card.
See id. Nor has the Examiner shown that Hayes cures this deficiency.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 31, and dependent claims 32 and 33 for similar reasons.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4-12, 14-22, and
24-30 under § 102, but erred in rejecting claims 31-33 under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 2, 4-12, 14-22, and 24-33
is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

pgc

TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631