Ex Parte Ven

Board of Patent Appeals and Interferences

Feb 16, 2010

11289399 (B.P.A.I. Feb. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADRIAAN VAN DE VEN
____________

Appeal 2009-009228
Application 11/289,3991
Technology Center 2100
____________

Decided: February 16, 2010
____________

Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 30, 2005. The real party in interest is Red
Hat, Inc.
Appeal 2009-009228
Application 11/289,399

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-9, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing on this appeal was
conducted on Tuesday, February 2, 2010.
We affirm.

A. INVENTION
Appellant invented a system, method, and computer readable medium
for controlling one or more write caches of a computer system to prevent the
loss of data. (Spec. 2, ¶ [001].)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-9. Claims 1, 8, and 9 are independent
claims. Claim 1 is illustrative:
1. A method of controlling write caching in a computer
system, said method comprising:
receiving an interrupt that indicates a potential loss of
data; and
determining by an operating system whether data is
contained within a first write back cache in memory of the computer
system and within a second write back cache in a storage device
coupled to the computer system; and
directing by the operating system the first and second
write back caches to write data contained within the first and second
Appeal 2009-009228
Application 11/289,399

3
write back caches onto a storage medium in the storage device in
response to the interrupt.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Horrigan US 6,658,532 B1 Dec. 2, 2003
Kemeny US 7,062,675 B1 Jun. 13, 2006

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1, 2, and 5-9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kemeny in view of Horrigan; and
(2) Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kemeny in view of Horrigan and Official Notice.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Appeal 2009-009228
Application 11/289,399

4
Kemeny
1. Kemeny discloses that “[a] a controller is capable of flushing all
the dirty data in the cache to a storage device in response to an indication to
do so, such as an indication of impending failure.” (Abstract: Fig. 1.)

Horrigan
2. Horrigan discloses that “[i]n the first case the OS will flush the
system caches prior to entering the C3 state.” (Col. 7, ll. 16-17.)
3. In Horrigan, [p]rocessor 20 uses caches 30 and 40 in conjunction
with memory 50 to speed up data access.” (Col. 1, ll. 43-44.)
4. Horrigan discloses that “[a] cache controller will then write back
data from the cache into the main memory.” (Col. 1, ll. 9-10.)

III. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
Appeal 2009-009228
Application 11/289,399

5
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

IV. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 1-9 as a group (App. Br. 10-16).
For claims 2-9, Appellant essentially repeats the same argument made for
claim 1. We will, therefore, treat claims 2-9 as standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991).

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).

Appeal 2009-009228
Application 11/289,399

6
Claims 1-9
Appellant contends that “Horrigan when combined with Kemeny
would, at the most, teach or suggest flushing, by a processor, a cache
associated with a system memory to the system memory and separately
flushing, by a storage device controller, a cache of the storage device to a
storage medium of the storage device.” (App. Br. 13.) Appellant further
contends that the Examiner “does not clearly articulate why ‘the multiple
caches’ would be written to the storage device when the combination clearly
teaches that the two caches are flushed to different locations.” (Id.)
Appellant also contends that “Horrigan teaches away from flushing the
cache to any storage except memory 50 which is the main memory of the
computer.” (App. Br. 15.)
The Examiner found that “by utilizing the teachings of Horrigan that
the operating system can control the flushing of the caches, the system of
Kemeny can be modified so that the operating system controls the flushing
of the caches instead of the storage controller.” (Ans. 8.) The Examiner
further found that “it is well known in the art, and evidenced by Horrigan
(L1 &L2 cache), to utilize multiple caches as it improves the overall
performance of the computer system.” (Id., at 9.)

Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Kemeny and Horrigan discloses directing by the
operating system the first and second write back caches to write data
Appeal 2009-009228
Application 11/289,399

7
contained within the first and second write back caches onto a storage
medium in the storage device in response to the interrupt?

Here, the Examiner found that Kemeny discloses each of the claimed
features in claim 1 except implementing his system/method in more than one
cache, and that the flushing is controlled specifically by an operating system
(Ans. 5). For example, Kemeny discloses flushing a disk cache to a storage
device disk array in response to an interrupt (FF 1). For the missing
features, the Examiner relies upon Horrigan. Specifically, the Examiner
found that Horrigan discloses an operating system that implements
operations directed to two write back caches that are flushed to a storage
medium, i.e., memory 50 (Ans. 5).
Here, Appellant admits that Kemeny discloses flushing a cache in
response to an impending failure, but contends that the flushing is not
directed by the operating system of a computer (App. Br. 12). However, the
Examiner has shown, and we agree, that Horrigan teaches that it was known
at the time of Appellant’s invention to use an operating system to direct
flushing of caches (FF 2).
Appellant further contends that Kemeny fails to disclose flushing
multiple caches, i.e., a cache in memory of the computer and a cache in a
storage device coupled to the computer (App. Br. 12). The Examiner relies
upon Horrigan to show the flushing of multiple caches to a common
Appeal 2009-009228
Application 11/289,399

8
destination. For example, Horrigan discloses cache 30 and 40 being flushed
to memory 50 (FF 3-4).
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art, and an obviousness “analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. See also
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
Here, the Examiner is using the interrelated teachings of Kemeny and
Horrigan to reach the conclusion of obviousness. Although the Examiner’s
analysis does not show the precise teachings of flushing multiple caches to a
particular type of storage device, as set forth in claim 1, we find that the
combined teachings of Kemeny and Horrigan set forth inferences and
creative steps that a person of ordinary skill in the art would have reasonably
employed to reach the claimed invention. For example, Kemeny discloses
flushing a storage cache to a storage device (FF 1) and Horrigan discloses an
operating system can be used to flush multiple memory caches (FF2-4). As
such, the inferences are clearly present to enable a person of ordinary skill
having common sense and creativity to arrive at the present invention.
Appeal 2009-009228
Application 11/289,399

9
As for Appellant’s further argument that Horrigan teaches away from
flushing the cache to any storage except memory 50 which is the main
memory of the computer, we find this argument unpersuasive. Firstly, we
find that any “memory” can be seen as a storage device. Secondly, we do
not find, and Appellant does not establish, that Horrigan criticizes,
discredits, or otherwise discourages flushing a cache to any device other
than memory 50. “The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the app[ellant].” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001). Here, we do not find that a person of ordinary
skill, upon reading the Horrigan reference, would have been led in a
direction divergent from the path taken by Appellant. To the contrary, we
conclude the Examiner’s proffered combination of Kemeny and Horrigan
would have provided teachings and sufficient inferences and suggestions of
creative steps so as to render the subject matter of Appellant’s claimed
invention obvious.
Accordingly, Appellant has not persuaded us of error in the
Examiner’s legal conclusion of obviousness for representative claim 1.
Appeal 2009-009228
Application 11/289,399

10
Therefore, we affirm the Examiner’s § 103 rejection of independent claim 1
and of claims 2-9, which fall therewith.

V. CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-9.
Thus, claims 1-9 are not patentable over the cited art.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

rwk

MH2 TECHNOLOGY LAW GROUP (Cust. No. w/Red Hat)
1951 KIDWELL DRIVE
SUITE 550
TYSONS CORNER VA 22182