Ex Parte Sharma et al

Patent Trials and Appeals Board

Jun 27, 2013

11166492 - (D) (P.T.A.B. Jun. 27, 2013)

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.
11/166,492 06/23/2005 Debendra Das Sharma P21813 6493
50890 7590 06/27/2013
Caven & Aghevli LLC
c/o CPA Global
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
MACKALL, LARRY T
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
06/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBENDRA DAS SHARMA, LESLEY L. CHANG, and
MICHELLE C. JEN
____________

Appeal 2010-010065
Application 11/166,492
Technology Center 2100
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT,
and GREGG I. ANDERSON, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-8, and 11-14, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 5, 9, 10,
and 15 are cancelled. Claims 16-20 are withdrawn from the appeal and are
not before us. See App. Br. 2 (§ III); but compare Notice of Appeal filed
April 14, 2008 (not limiting the claims on appeal).
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We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “reducing read request latency, and in
particular . . . [to] optimizing processing of interleaved read requests.” Spec.
¶ [0001]. Claim 1, which is illustrative of the invention, reads as follows:
1. An apparatus comprising:
a first memory including a page in progress field to
identify a number of received read requests that are
from multiple addresses in a same page of
memory; and
a read processing engine coupled to the first memory, the
read processing engine operable to interleave read
requests based on the page in progress field by:
interleaving a read request with one or more prior
received read requests, the read request from
a first page in memory, if a page in progress
field associated with the first page of
memory indicates that the one or more prior
received read requests are not from the first
page of memory; and
waiting to interleave the read request until
completion of the one or more prior received
read requests if the page in progress field
associated with the first memory page
indicates that there are one or more other
prior received read requests from the first
page of memory.
The Examiner relies on the following prior art in rejecting the claims
that are before us on appeal:
Galles US 5,655,102 Aug. 5, 1997
Abel US 2005/0190795 Al Sept. 1, 2005
Appeal 2010-010065
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Chen US 2006/0136665 Al June 22, 2006
Jim Brewer and Joe Sekel, “PCI Express Technology,” Dell White
Paper (Feb, 2004) pp. 1-11 (hereinafter “Brewer”).
Claims 16-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.1 Ans. 3.
Claims 1, 2, 4, 6, 7, 16, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Galles, Chen, and Abel.2 Ans. 4-9.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Galles, Chen, Abel, and Appellants’ Admitted Prior Art (“APA”). Ans. 9-
10.
Claims 8, 11-13, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Galles, Chen, Abel, and Brewer.3 Ans. 9-13, 14-15.
Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Galles, Chen, Abel, Brewer, and APA.4 Ans. 13-14, 15-
16.
Rather than repeat the arguments here, we refer to the Briefs (App. Br.
filed Dec. 18, 2009; Reply Br. filed April 29, 20105) and the Answer (Ans.
mailed Feb. 24, 2010) for the respective positions of Appellants and the
Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the

1 The rejection of claims 16-20 under 35 U.S.C. § 101 is not before us.
2 The rejection of claims 16 and 20 under 35 U.S.C. § 103(a) is not before
us.
3 The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) is not before
us.
4 The rejection of claim 19 under 35 U.S.C. § 103(a) is not before us.
5 We have fully considered the Reply Brief. However, as the Reply Brief
appears to merely reiterate the arguments of the Appeal Brief, herein we
refer primarily to the Appeal Brief.
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Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
ISSUES
Appellants argue the patentability of independent claims 1 and 6 and
dependent claims 2, 4, and 7 together. See generally App. Br. 5-12.
Appellants argue the patentability of independent claim 11 and dependent
claims 3, 8, 12, 13, and 14 by relying on the arguments made regarding
claim 1. See generally App. Br. 12-14. Accordingly, we will discuss the
appeal with reference to claim 1.
The issues presented by Appellants’ contentions are:
In rejecting claim 1 under § 103(a), has the Examiner articulated some
reasoning with some rational underpinnings for the combination of Galles,
Chen, and Abel?
In rejecting claim 1 under § 103(a), has the Examiner erred in finding
that the combination of Galles, Chen, and Abel teaches or suggests all of the
limitations of claim 1?

ANALYSIS
The Examiner finds that the combination of Galles, Chen, and Abel
teaches the limitations of claims 1, and that it would have been obvious to
one of ordinary skill in the art to combine the teachings of Galles, Chen, and
Abel. Ans. 4-5 (citing Galles, col. 3 ll. 40-45; Chen, abstract, ¶ [0018];
Abel, ¶ [0074]). We note that Appellants’ contentions focus on the
combination and disclosures of Galles and Chen, and do not persuasively
address Abel with particularity.
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Reason to Combine
The Examiner states that it would have been obvious to “modify the
invention of Galles to include a read processing engine to interleave read
requests, as taught by Chen, in order to allow the overall access operations to
me [sic] more efficient (Chen - abstract).” Ans. 5.
“Appellants assert that the rejection of [claim 1] based solely on the
application of MPEP § 2144(II) is overly-broad, misused, and conclusory
. . . .” App. Br. 8-9. We find this contention to be unpersuasive because the
Examiner’s findings are not “based solely on the application of MPEP
§ 2144(II),” as asserted by Appellants. Rather, the Examiner’s findings are
grounded in the teaching of Chen. See Ans. 17. Consistently, with the
Examiner’s finding, Chen states that “the use of a cyclically-interleaved
queuing manner, rather than a sequential queuing manner, to queue the
multiple sequences of access-request commands from the multiple
processing units in the computer system cluster, . . . allows the overall access
operations to the data storage unit to be more efficient than prior art.” Chen,
abstract. We do not reach the Appellants’ more generalized contention that
it would be improper for the Examiner to rely solely on the application of
MPEP § 2144(II) (App. Br. 8-9) as it is not pertinent to the rejection before
us.
Appellants further contend that the Examiner has exercised
impermissible hindsight in combining Galles with Chen. See generally App.
Br. 9-11. Appellants assert that in considering whether impermissible
hindsight has been exercised, “attention should be focused on how the
specific resources are being used, as well as in what context, to determine
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whether one of ordinary skill in the art would be able to combine the
references to come up with the resulting claimed subject matter.” App.
Br. 10. Appellants describe the disclosure of Galles and Chen as follows
Galles is directed to a multiprocessor system where a CAM
entry is used to determine whether or not to allow a transaction
to proceed on the multiprocessor bus (“By blocking new
transactions when a match with a pending transaction occurs,
the read resource CAM 114 protects the pending transaction
from conflicting bus traffic”, Galles, column 3, lines 50-52.).
Chen describes a cyclically-interleaved access request queuing
method to queue multiple sequences of access-request
commands from multiple processing units.
Id.
Appellants do not, however, explain how the way in which the
resources are used and the context in which they are used rebut the
Examiner’s finding, based on Chen’s teachings, that it would be obvious to
use Chen’s teaching of interleaving to make Galles’s read request process
more efficient. We find Appellants’ contention that the combination of
Galles and Chen was based on impermissible hindsight to be unpersuasive.
Accordingly, we conclude that the Examiner has articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For emphasis, we note that the combination could equivalently be
articulated as improving Chen’s access request queuing process by
incorporating Galles’s teaching of a CAM entry to prevent conflicting bus
traffic (Galles, col. 3, ll. 50-52). Where a rejection is based on a
combination of references, the order in which prior art references are cited to
the Appellants is of no significance, but merely a matter of exposition. In re
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Bush, 296 F.2d 491, 496 (CCPA 1961). We further note that the
combination of Galles with Chen is no more than a combination of familiar
elements according to known methods that does no more than yield
predictable results – an obvious improvement. See KSR, 550 U.S. at 416-17.
Claim Limitations
Appellants contend “[t]he combination of Galles, Chen, and Abel
does not produce the claimed invention.” App. Br. 11. More particularly
Appellants assert that:
[a]t best, the combination of the CAM taught by Galles with a
cyclical-interleaving module to interleave read requests, taught
by Chen, would result in using a CAM-like entry/field to
determine whether to interleaving [sic] a request from a buffer
with a request from another buffer, and so forth. The
combination of Galles and Chen would certainly not result in
using a CAM-like entry/field to determine whether to interleave
a read request with prior read requests.
Id.
We are unpersuaded.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Appellants do not persuasively explain why the combined disclosures of
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Galles and Chen would not have suggested the combination articulated by
the Examiner to one of ordinary skill in the art.
Appellants attempt to distinguish Chen from claim 1 by alleging Chen
interleaves requests from multiple buffers. Appellants do not persuasively
explain why claim 1 precludes requests from more than one buffer. Indeed,
nothing in the language of claim 1 limits how many read requests are
received or from what source they are received. Appellants similarly do not
persuasively explain why one of ordinary skill in the art would not
understand that read requests to be interleaved that come from different
buffers would occur at different times so that some of the interleaved
requests are prior read requests with respect to a read requests to be
interleaved.
Summary
Appellants have not persuaded us of Examiner error in the rejection of
claim 1. Appellants argue the patentability of claims 2-4, 6-8, and 11-14
together with, or relying on the arguments for, the patentability of claim 1.
See supra. Accordingly we sustain the rejection under 35 U.S.C. § 103(a)
of:
(1) claims 1, 2, 4, 6, and 7 as unpatentable over Galles, Chen, and Abel;
(2) claim 3 under 35 U.S.C. § 103(a) as unpatentable over Galles, Chen,
Abel, and APA;
(3) claims 8 and 11-13 under 35 U.S.C. § 103(a) as unpatentable over
Galles, Chen, Abel, and Brewer; and
(4) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Galles, Chen,
Abel, Brewer, and APA.
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ORDER
The decision of the Examiner to reject claims 1-4, 6-8, and 11-14 is
affirmed.
It is suggested that the Examiner take the appropriate action to cancel
claims 16-20 in view of Appellants’ withdrawal of the claims from the
appeal. 6
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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6 “A withdrawal of the appeal as to some of the claims on appeal operates as
an authorization to cancel those claims from the application . . . and the
appeal continues as to the remaining claims.” MPEP § 1215.03 (8th ed.,
Rev. 9, Aug. 2012 (accord Rev. 6, Sept. 2007)); see also Ex parte Ghuman,
88 USPQ2d 1478 (BPAI, 2008) (precedential).