Ex Parte Wang et al

Patent Trial and Appeal Board

Dec 27, 2013

11540038 (P.T.A.B. Dec. 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.
11/540,038 09/28/2006 Tak Fung Wang 50277-3127 8931
42425 7590 12/27/2013
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
KIM, CHONG R
ART UNIT PAPER NUMBER
COM
MAIL DATE DELIVERY MODE
12/27/2013 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 TAK FUNG WANG, ANGELO PRUSCINO,
WILSON WAI SHUN CHAN, and TOLGA YUREK
____________________

Appeal 2011-005056
Application 11/540,038
Technology Center 2100
____________________

Before THU A. DANG, JAMES R. HUGHES, and
JEFFREY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-005056
Application 11/540,038

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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on November 25, 2013 for
reconsideration of our affirmance of the Examiner’s rejection of claims 1-20
in a Decision mailed September 24, 2013 (hereinafter “Decision”).
The Decision affirmed the Examiner’s rejection of claims 1-20 over
Chan.
We have reconsidered our Decision regarding claims 1-20 in light of
Appellants’ comments in the Request, and grant the request solely to clarify
our holding regarding claims 1-20. As noted infra, we maintain our
affirmance of the Examiner’s rejection of claim 1-20.

II. ISSUE
The issue we address on this Request is whether Appellants have
identified that the Board has misapplied the relevant law and
misapprehended the Appellants’ argument by finding no error in the
Examiner’s finding that Chan teaches “a first node … acquiring a lock on a
shared resource,” and “in response to said first node acquiring a lock on a
shared resource, said first node storing a persistent copy of said lock . . . .”
(claim 1).

III. ANALYSIS
Although Appellants concede that “[t]he Decision in the instant patent
application affirmed the Examiner’s rejections of Claims 1-20 as being
unpatentable under 35 U.S.C. § 102(b),” Appellants contend that “the
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Application 11/540,038

3
Decision also affirmed the Examiner’s rejection of claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a)” which is in error (Request 2).
As we found in our Decision, “Chan discloses a first node that
acquires a lock by generating a lock on a shared resource” (Decision 5), and
“in response to the first node acquiring the lock, the first node also stores a
persistent copy of the lock” (Decision 5-6). Thus, as set forth in our
Decision, “we find no error in the Examiner’s rejection of claim 1 over
Chan” (Decision 6). Since “Claims 1-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Chan” (Decision 3), as acknowledged by
Appellants (Request 2), we affirm the Examiner’s rejection of claims 1-20
under 35 U.S.C. § 102(b), as Appellants concede (id.).
Since Appellants have not identified that the Board has misapplied the
relevant law and misapprehended the Appellants’ argument by finding no
error in the Examiner’s finding that Chan teaches “a first node … acquiring
a lock on a shared resource,” and “in response to said first node acquiring a
lock on a shared resource, said first node storing a persistent copy of said
lock” of claim 1, we maintain our affirmance of the Examiner’s rejection of
claim 1-20 under U.S.C. § 102(b).
However, as Appellants point out, the Decision includes a
typographical error which also states that “The Examiner’s rejections of
claims 1-20 under 35 U.S.C. § 103(a) are affirmed” (Decision 7, emphasis
added). That is, this sentence of the Decision mistakenly lists the claims as
being rejected under 35 U.S.C. § 103(a), instead of the correct rejection
under 35 U.S.C. § 102(b). Accordingly, we modify our Decision to clarify
our holding regarding claims 1-20 as affirming only the Examiner’s
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Application 11/540,038

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rejection of the claims under 35 U.S.C. § 102(b), in light of Appellants’
Request.

IV. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, and we grant Appellants’ request solely to clarify
our holding regarding claims 1-20. We are still of the view that the
invention set forth in claims 1-20 is unpatentable over the applied prior art
under 35 U.S.C. § 102(b) based on the record before us in the original
appeal. This Decision on Appellants’ Request for Rehearing is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1).

V. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision regarding claims 1-20. But we deny the request
with respect to changing any other aspect of our earlier Decision.

REHEARING GRANTED-IN-PART

ELD