Ex Parte Stevens

Board of Patent Appeals and Interferences

Jun 8, 2011

10956840 (B.P.A.I. Jun. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY W. STEVENS
___________

Appeal 2009-008817
Application 10/956,840
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-45. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
INVENTION
Appellant’s invention relates generally data processing methods,
systems, and computer program products. More particularly, the invention
on appeal is directed to data processing methods, systems, and computer
program products for tracking ownership of a memory unit(s). (Spec. 1).

ILLUSTRATIVE CLAIM
1. A method of tracking ownership of a memory unit in a
data processing system, comprising:

assigning an identifier to each software component in the
data processing system that can acquire ownership of the
memory unit; and

updating an ownership variable with the identifier of the
software component that acquires ownership of the memory
unit whenever the memory unit is acquired.

PRIOR ART
Peek et al., O'Reilly & Associates, Inc., UNIX Power Tools 192, 376 (1997)
(hereinafter “UNIX Power Tools”).

THE REJECTIONS1
1. The Examiner rejected claims 5, 8, 9, 15, 20, 23, 24, 30, 33-39,2 and
45 under 35 US.C. § 112, second paragraph, as being indefinite.

1 The Examiner withdrew the rejection of claims 31-45 under 35 U.S.C. §
101. (Ans. 9).
2 The Examiner omitted independent claim 39 from the heading of the §112,
second paragraph, rejection on page 4 of the Answer, but included claim 39
in the body of the rejection. (Id.).

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2. The Examiner rejected claims 1- 8, 10-23, 25-38, and 40-45 under 35
U.S.C. §112, first paragraph, as failing to comply with the enablement
requirement.

3. The Examiner rejected claims 1-6, 9-13, 16-21, 24-28, 31-36, and 39-
43 under 35 U.S.C. § 102(b) as being anticipated by pages 192 and
376 of the book entitled “Unix Power Tools.”

4. The Examiner rejected claims 7, 8, 14, 15, 22, 23, 29, 30, 37, 38, 44,
and 45 under 35 U.S.C. § 103(a) as being unpatentable over “UNIX
Power Tools” in view of Official Notice.3

ANALYSIS
Rejection of claims 5, 8, 9, 15, 20, 23, 24, 30,
33-39, and 45 under § 112, second paragraph

As a threshold issue, we begin our analysis by first considering the
Examiner’s rejection under 35 U.S.C. § 112, second paragraph.

Appellant presents the following argument:4

3 The Examiner omitted dependent claims 29 and 30 from the §103
rejection heading on page 7 of the Answer. However, the Examiner sets
forth a detailed rejection under § 103 for claims 29 and 30 on page 8 of the
Answer.
4 We note that Appellant fails to traverse the Examiner’s rejection under
112, second paragraph, for claims 8, 15, 23, 30, 33, 34, 36-38, and 45. (App.
Br. 7-8).
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Claims 5, 8, 9, 15, 20, 23, 24, 30, 33-38, and 45
stand rejected under 35 U.S.C. §112, second paragraph,
as being indefinite. (Final Action, page 6). With respect
to Claims 5, 9, 20, 24, 35, and 39,[5 ] the Final Action
states that these claims describe the software components
as being as coarse or coarser in granularity than a
software task. (Final Action, page 4). Appellant submits
that this is a clearly erroneous misinterpretation of the
term “granularity.” According to Webster’s Collegiate
Dictionary, Tenth Edition, granularity means “of or
appearing to consist of granules.” A granule means “a
small particle: one of numerous particles forming a larger
unit.” Greater means “larger in number or measure.”
Thus, greater granularity means a larger number of
particles forming a larger unit. This would mean that as
the number of particles forming the unit is increased,
each individual particle is actually smaller. Greater
granularity, therefore means that a component is finer,
not coarser. Thus, Claims 5, 20, and 35 should be
interpreted as stating that each of the software
components is as fine or is more fine than a software
task.
(App. Br. 7-8)(emphasis added).
The Examiner disagrees:
Appellant argues greater granularity means a
larger number of particles forming a larger unit.
Contrary to Appellant's assertion, it could just as
easily refer to “greater” size of components, i.e. coarser.
There is no mention of greater in regard to granularity in
the specification and it is the use of this word that makes
these claims indefinite. As an example, if the Appellant
used “coarser” or “finer” instead of “greater” alongside
“granularity,” this would probably eliminate the
confusion. (Ans. 11).

5 The Examiner omitted independent claim 39 from the heading of the §112,
second paragraph, rejection on page 4 of the Answer, but included claim 39
in the body of the rejection. (Id.).
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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
rejection under § 112, second paragraph:

Did the Examiner err in concluding that claims 5, 8, 9,
15, 20, 23, 24, 30, 33-39, and 45 are indefinite under
§ 112, second paragraph?

ANALYSIS § 112, second paragraph
At the outset, we decline to construe Appellant’s claims in accordance
with the undated extrinsic dictionary definition for the claim term
“granularity” that Appellant attempts to import into the record. (App. Br. 7).
Our reviewing court has guided that “different dictionaries may
contain somewhat different sets of definitions for the same words. A claim
should not rise or fall based upon the preferences of a particular dictionary
editor, or the court’s independent decision, uninformed by the specification,
to rely on one dictionary rather than another.” Phillips v. AWH Corp., 415
F.3d 1303, 1322 (Fed. Cir. 2005) (en banc). The court in Phillips reaffirmed
its view that the specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” Id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
We note that “[i]ndefiniteness under 35 U.S.C. § 112 ¶ 2 is an issue of
claim construction.” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319,
1331 (Fed. Cir. 2009)(citation omitted). Here, under a broad but reasonable
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interpretation, 6 the Examiner concludes that the claim term “granularity” is
subject to two alternative interpretations, meaning either “finer” or
“coarser.” (Ans. 11). We note that “if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).
This reasoning is applicable here. Because Appellant’s arguments
regarding the rejection under § 112, second paragraph, are grounded on an
undated extrinsic dictionary definition, we are not persuaded that the
Examiner’s claim construction is overly broad, unreasonable or inconsistent
with the Specification. Therefore, on this record, we sustain the Examiner’s
rejection of claims 5, 9, 20, 24, 35, and 39 under §112, second paragraph.
Regarding the remaining claims rejected under §112, second
paragraph, we note that Appellant fails to traverse the Examiner’s rejection
under §112, second paragraph, for claims 8, 15, 23, 30, 33, 34, 36-38, and
45. (App. Br. 7-8). Arguments not made are waived. See 37 C.F.R. §
41.37(c)(1)(vii). Therefore, we also sustain the Examiner’s rejection of
claims 8, 15, 23, 30, 33, 34, 36-38, and 45 under §112, second paragraph.

6 Appellant’s claims are given their broadest reasonable interpretation
consistent with the Specification, and the claim language is read in light of
the Specification as it would have been interpreted by one of ordinary skill
in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted). Because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citation omitted).

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In reviewing the record, we observe that the Examiner has rejected
independent claims 9, 24, and 39 under §112, second paragraph, but has not
rejected all of the claims that depend therefrom as also being indefinite by
virtue of depending upon an indefinite base claim. (Ans. 4-5).
We note that in an ex parte appeal, the Board “is basically a board of
review — we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Here, because we have sustained the Examiner’s rejection of
independent claims 9, 24, and 39 under §112, second paragraph, we will
treat the claims that depend therefrom (Claims 10-15 and 25-30, and 40-45)
as also being indefinite for the purpose of considering whether we pro forma
reverse the remaining rejections in this appeal regarding claims 9-15, 24-
30, and 39-45.7 We particularly note that the Examiner expressly states:
“For the purposes of applying art, the Examiner will not take into
consideration the granularity of the components or the tasks.” (Ans. 4).
When a claim rejected under 35 U.S.C. §§ 102, 103 or 112, first
paragraph, is determined indefinite, a decision as to the merits of the

7 We agree with the Examiner that independent claims 9, 24, and 39 are
indefinite under 35 U.S.C. § 112, second paragraph, for the reasons
discussed supra. Because the Board is “basically a board of review,” Ex
parte Gambogi, 62 USPQ2d at 1211, and not a place of initial examination,
we decline to set forth new grounds of rejection for associated dependent
claims 10-14, 25-29, and 40-44 under 35 U.S.C. § 112, second paragraph.
We leave this issue for further consideration by the Examiner in the event
that prosecution is reopened.
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rejection cannot be reached without speculating as to the meaning of the
claim limitation(s) rendering the claim indefinite (i.e., when the limitation
which is the source of the indefiniteness is the focus of the dispute in the
rejection). See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (when no
reasonably definite meaning can be ascribed to certain terms in a claim, the
subject matter does not become obvious, but rather the claim becomes
indefinite); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (rejections under
35 U.S.C. § 103 should not be based upon “considerable speculation as to
the meaning of the terms employed and assumptions as to the scope of the
claims”); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (one is not in a
position to determine whether a claim is enabled under the first paragraph of
35 U.S.C. § 112 until the metes and bounds of that claim are determined
under the second paragraph of this section of the statute).
This reasoning is applicable here. Therefore, we pro forma reverse the
Examiner’s rejections under § 112, first paragraph (enablement), § 102, and
§ 103 for claims 5, 8, 9-15, 20, 23, 24-30, 33-38, and 39-45 because we have
sustained the Examiner’s rejection under §112, second paragraph, supra, and
we decline to rely on speculation as to the meaning of the terms employed
and assumptions as to the scope of these claims.
We consider the § 112, first paragraph (enablement), rejection infra
only for the claims not also rejected as being indefinite:

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SECTION 112, FIRST PARAGRAPH, (ENABLEMENT)
The Examiner finds that it would require undue experimentation for
one of ordinary skill in the art at the time that the invention was made to
devise a method for attaching identifiers to said software components. (Ans.
4, ¶ 1). Therefore, the Examiner concludes that Appellant’s claims 1-4, 6, 7,
16-19, 21, 22, 31, and 32 fail to comply with the enablement requirement of
35 U.S.C. § 112, first paragraph.
Appellant presents the following arguments in opposition:
Claim 1 recites assigning an identifier to each software
component that can acquire ownership of a memory unit.
When the memory unit is acquired, an ownership
variable is updated with the identifier of the software
component that acquires ownership of the memory unit.
These recitations are enabled, for example, in the
description provided in paragraphs 26 through 27 and
paragraphs 34 - 35 where the text describes an exemplary
software architecture that includes a memory unit
ownership monitor 230 that can be used to assign an
identifier to those software components that acquire
ownership of a memory unit. Appellant respectfully
submits that the memory unit ownership monitor 230
may be exposed to application developers allowing
application developers to write their code to take
advantage of the memory unit tracking capabilities
provided by the memory unit ownership monitor 230.
(App. Br. 6).

In the “Response to Arguments,” the Examiner disagrees:
Considering the amount of software that is
available today, no person having ordinary skill in the art
(PHOSITA) would be able to anticipate the size and
types of components that would run on the invention if
all software is to get identifiers. Software comes in all
shapes, sizes, and matters of complexities. The
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PHOSITA would have to come up with a design that
would, for instance, attach an identifier to any software
component from any type of software running today and
still allow that component to run properly. . . .
[T]he Examiner still maintains the argument that there is
no enabling disclosure regarding the identifier.
(Ans. 10).
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
rejection under § 112, first paragraph (enablement), for all claims not
determined to be indefinite under § 112, second paragraph supra (Claims 1-
4, 6, 7, 16-19, 21, 22, 31, and 32):
Under § 112, first paragraph, did the Examiner err by
concluding that assigning an identifier lacks enablement
by finding that undue experimentation by a Person
Having Ordinary Skill In The Art (PHOSITA) would
have been required to make and use the subject matter of
claims 1-4, 6, 7, 16-19, 21, 22, 31, and 32?

FINDINGS OF FACT
1. Appellant’s Specification discloses:
Referring now to FIG. 3, exemplary operations for
monitoring ownership of one or more software
components 235 in a data processing system begin at
block 300 where the memory unit ownership monitor 230
assigns an identifier to each software component that can
acquire ownership of a memory unit. At block 305, the
memory unit ownership monitor 230 updates an
ownership variable associated with a memory unit with
the identifier of the software component that acquires the
memory unit while optionally saving the previous N
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number of values of the ownership value so as to form an
audit trail of ownership.
(Spec. ¶ [0034]).

ANALYSIS §112, first paragraph (enablement)
“To be enabling under § 112, a patent must contain a description that
enables one skilled in the art to make and use the claimed invention.” Atlas
Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed.
Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 (Fed. Cir.
1983)). “That some experimentation is necessary does not preclude
enablement; the amount of experimentation, however, must not be unduly
extensive.” Id. (citing W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540 (Fed. Cir. 1983); In re Angstadt, 537 F.2d 498, 503 (CCPA
1976)).
Here, after reviewing the descriptive portions of the Specification
pointed to by Appellant (App. Br. 6; Spec. ¶¶ [0026], [0027], [0034], and
[0035]), we conclude that at least paragraph 34 contains a description that
would have enabled one skilled in the art to make and use the claimed
invention with respect to how an identifier is assigned: “memory unit
ownership monitor 230 assigns an identifier to each software component
that can acquire ownership of a memory unit. At block 305, the memory unit
ownership monitor 230 updates an ownership variable associated with a
memory unit with the identifier of the software component that acquires the
memory unit while optionally saving the previous N number of values of the
ownership value so as to form an audit trail of ownership.” (FF 1)(emphasis
added). On this record, we find no undo experimentation would have been
required to make and use the claimed invention in light of Appellant’s
original Specification, including the drawings.
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Therefore, we reverse the Examiner’s rejection under 35 U.S.C.
§ 112, first paragraph (enablement) for claims 1-4, 6, 7, 16-19, 21, 22, 31,
and 32. 8
REJECTION UNDER § 102
PRINCIPLES OF LAW
Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Section 102 rejection of independent claims 1, 16, and 319
The Examiner finds that UNIX Power Tools discloses:
assigning an identifier to each software component in the
data processing system that can acquire ownership of the
memory unit; and

8 We pro forma reverse the Examiner’s § 112, first paragraph rejection
(enablement) of dependent claims 5, 8, 10-15, 20, 23, 25-30, and 33- 45
because these claims are indefinite under 35 U.S.C. § 112, second
paragraph, for the reasons discussed supra. See In re Moore, 439 F.2d at
1235 (CCPA 1971) (one is not in a position to determine whether a claim is
enabled under the first paragraph of 35 U.S.C. § 112 until the metes and
bounds of that claim are determined under the second paragraph of this
section of the statute).

9 Independent claims 1, 16, and 31 were not rejected by the Examiner under
35 U.S.C. § 112, second paragraph.
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updating an ownership variable with the identifier of the
software component that acquires ownership of the memory
unit whenever the memory unit is acquired. (Claim 1).
(Ans. 5-6).
We observe that independent claims 16 and 31 recited commensurate
limitations.
Appellant presents the following arguments in opposition:
The Unix commands described in Peek are those
commands that can be used for communication between
a user and the system using the Unix shell. The Unix
shell is a command interpreter that reads lines typed by
the user and causes the execution of the requested system
features. Clearly, programs running under the control of
the Unix system can also access memory units and Peek
does not contain any disclosure or suggestion that these
Programs be assigned identifiers and an ownership
variable be updated with the particular identifier assigned
to a program that acquires ownership of a memory unit
whenever the memory unit is acquired.
(App. Br. 10)(underline in original).

In the “Response to Argument,” the Examiner disagrees:
The scope of these claims is very broad and the
components themselves are not being claimed here but
the assigning of an identifier and an updating of an
ownership variable. The Examiner's Office action states
that when a UNIX command runs, it has its own unique
name, which serves as its own identifier (Final Rejection,
page 8, 1st paragraph). This point seems to run in line
EXACTLY with the example given by the Appellant
supra where an identifier is taken directly from the
component that is running (see Response to Arguments
section for 35 U.S.C. 112 1st paragraph above). The
processes that are running these commands are owned, as
everything is in the UNIX operating system. The
rejection cites mounting a floppy or USB drive and
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setting the user as the owner using the “uid=” which is
saved in the history file. The very last command in the
history file is cited as the ownership variable and it is
updated every time a process is run. So the act of writing
to the history file brings about the elements of these
claims: the running process gets identified by its name,
setting the “uid=” field and writing to the history file
updates the ownership variable.
(Ans. 12-13).

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
rejection under §102 for claims 1, 16, and 31:
Under § 102, did the Examiner err by finding that UNIX Power Tools
discloses:
assigning an identifier to each software component in the
data processing system that can acquire ownership of the
memory unit; and

updating an ownership variable with the identifier of the
software component that acquires ownership of the memory
unit whenever the memory unit is acquired,

within the meaning of independent claim 1 and the commensurate
language of claims 16 and 31?
ANALYSIS
At the outset, we observe that in discussing the UNIX Power Tools
reference, the Examiner states:
When the user mounts a floppy or USB drive and sets the
user as the owner using “uid=” this action is saved in the
history file. The last command in the history file is the
ownership variable. Typing “history 1” will show you
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this what’s in this variable and the mount UNIX
command name is the identifier.
(Ans. 6)(emphasis added).

Even assuming arguendo (without deciding) that User ID identifiers
are assigned to each software component (command) that is executed in a
UNIX system, we find no disclosure of “mounting a floppy or USB drive”
(Ans. 12) within the four corners of page 192 (or page 376) of the UNIX
Power Tools reference cited by the Examiner. (Ans. 6). On this record, the
Examiner has proffered a theory of use that is not supported by an express or
inherent disclosure under an anticipation analysis.
Moreover, based upon our review of the record, we agree with
Appellant that the Examiner has not established that UNIX Power Tools
updates an ownership variable “with the particular identifier assigned to a
program that acquires ownership of a memory unit whenever the memory
unit is acquired.” (App. Br. 10)(underline in original). While UNIX files
may be accessed by User, Group, and World according to the corresponding
three sets of RWX (read, write, execute) permission bits (UNIX Power
Tools, p. 376), this portion of the reference does not expressly nor inherently
disclose that the UNIX file permissions (ownership variables) are changed
each time a User, a member of Group, or a member of World, accesses a
particular file. Therefore, we reverse the Examiner’s rejection under § 102
for independent claims 1, 16, and 31, and also the associated dependent
claims rejected under § 102 that stand therewith.

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Section 102 rejection of independent claims 9, 24, and 39
We pro forma reverse the Examiner’s § 102 rejection of claims 9-13
24-28, and 39-45 because these claims are indefinite under 35 U.S.C. § 112,
second paragraph, for the reasons discussed supra regarding the claim term
“granularity” (i.e., greater granularity). See In re Steele, 305 F.2d 859.

Section 103 rejection
The Examiner rejected claims 7, 8, 14, 15, 22, 23, 29, 30, 37, 38, 44,
and 45 under 35 U.S.C. § 103(a) as being unpatentable over “UNIX Power
Tools” in view of Official Notice. Appellant argues that these claims are
“patentable over the cited references at least by virtue of their depending on
an allowable claim.” (App. Br. 11). Because we do not find the Examiner’s
taking of Official Notice (Ans. 8) overcomes the deficiencies of the base
claims rejected under §102 that we have reversed supra, we also reverse the
Examiner’s rejection of dependent claims 7 and 22 for the same reasons
discussed supra regarding respective base claims 1 and 16. We pro forma
reverse the Examiner’s § 103 rejection of claims 8, 14, 15, 23, 29, 30, 37,
38, 44, and 45 because these claims are indefinite under 35 U.S.C. § 112,
second paragraph, for the reasons discussed supra

DECISION
We affirm the rejection of claims 5, 8, 9, 15, 20, 23, 24, 30, 33-39,
and 45 under §112, second paragraph.
We reverse the rejection under 35 U.S.C. § 112, first paragraph
(enablement), for claims 1- 8, 10-23, 25-38, and 40-45
We reverse the rejection under § 102 for claims 1-6, 9-13, 16-21, 24-
28, 31-36, and 39-43.
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We reverse the rejection under § 103 rejection for claims 7, 8, 14, 15,
22, 23, 29, 30, 37, 38, 44, and 45.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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