Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Feb 9, 2005

09896043 (B.P.A.I. Feb. 9, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENNETH MARK WILSON and ROBERT B. AGLIETTI
_____________
Appeal No. 2004-2199
Application No. 09/896,043
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and KRASS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 through 20. Representative claim 10
is reproduced below:
10. A device for managing a memory system, comprising:
a memory table having entries pointing to data blocks
that reside in various locations of different
storage areas including physical memory;
wherein upon a program accessing memory for a
particular piece of data, the memory table uses a
physical address of a memory page corresponding to
Appeal No. 2004-2199
Application No. 09/896,043
2
the piece of data to convert to a location address
corresponding to an entry pointing to the location
of the piece of data; and
a memory manager manages the data blocks independent of
an operating system and a processor unit executing
the program accessing memory, including managing
locations and movements of the data blocks.
The following reference is relied on by the examiner:
Gulick et al. (Gulick) 6,314,501 Nov. 6, 2001
(filing date: Dec. 18, 1998)
Claims 1 through 20 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Gulick.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and reply brief for
appellants’ positions, and to the answer for the examiner’s
positions.
OPINION
We reverse.
Generally for the reasons set forth by appellants in the
principal brief, we reverse the rejection of claims 1 through 20
under 35 U.S.C. § 102. Essentially, we have concluded that the
examiner has failed to establish a prima facie case of
anticipation within 35 U.S.C. § 102.
Initially, we note that the examiner takes the position that
certain features are “known in the art” as set forth at the
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Application No. 09/896,043
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bottom of page 3 of the answer where the examiner sets forth the
statement of the rejection of independent claims 1, 10 and 19 on
appeal. The examiner does not argue that the assertion is
considered to be inherent within Gulick and it is not apparent to
us that it is.
We are constrained to reverse the outstanding rejections
because there is no evidence before us of the alleged feature in
the reference relied upon by the examiner in formulating the
rejection. We reach this conclusion based upon the reasoning
provided by recent cases from our reviewing court. "[T]he Board
cannot simply reach conclusions based on its own understanding or
experience - or on its assessment of what would be basic
knowledge or common sense. Rather, the Board must point to some
concrete evidence in the record in support of these findings."
In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.
2001). See also In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d
1430, 1434-35 (Fed. Cir. 2002). The court in Lee requires
evidence for the determination of unpatentability by clarifying
that "common knowledge and common sense," as mentioned in In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969), may
only be applied to analysis of the evidence, rather than be a
substitute for evidence. Lee, 277 F.3d at 1345, 61 USPQ2d at
Appeal No. 2004-2199
Application No. 09/896,043
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1435. See Smiths Indus. Med. Sys., Inc., v. Vital Signs, Inc.,
183 F.3d 1347, 1356, 51 USPQ2d 1415, 1421 (Fed. Cir.
1999)(Bozek's reference to common knowledge "does not in and of
itself make it so" absent evidence of such knowledge).
Although we do not have before us an assertion of common
knowledge and common sense in the art as in In re Lee, the
examiner has made an analogous assertion that the questioned
feature was well known in the art. Correspondingly, the
examiner's assertion appears to us to be a substitute for actual
evidence to prove the examiner's assertion. More recently,
however, the court expanded its reasoning in In re Thrift, 298
F.3d 1357, 1363-64, 63 USPQ2d 2002, 2007-08 (Fed. Cir. 2002).
Although we have reproduced representative independent claim
10 earlier in this opinion because it most closely corresponds to
the summary of the invention at specification page 5,
corresponding features are recited in the other independent
claims 1 and 19 on appeal. Even though claim 1 recites the
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subject matter common among the 3 independent claims in a
slightly different manner, we agree with appellants’ views with
respect to this claim and the teaching value of Gulick as set
forth at pages 6 and 7 of the principal brief on appeal which we
reproduce here:
In various embodiments of Appellants’ invention, a
piece of data corresponds to a memory page, and an entry of
a memory table points to that piece of data (Specification,
page 13, lines 2-4, FIG. 2). Consequently, in claim 1, when
a program accesses memory for a particular piece of data,
the memory table uses a physical address of the memory page
corresponding to the piece of data to convert to a location
address corresponding to an entry pointing to the location
of the piece of data. The piece of data identified by the
address to be mapped of the memory page is located by
identifying the mapped address of the table entry pointing
to the piece of data. This is done by converting the
physical address of the memory page corresponding to the
piece of data to the location address of the corresponding
table entry. In effect, the address to be mapped and the
mapped address in Appellants’ claim 1 relate to the piece of
data in a memory access.
In contrast, in Gulick, partitions of various operating
systems may communicate through a shared memory window (col.
2, lines 15-19). Each memory window is thus assigned to a
corresponding partition (col. 5, lines 12-13). Therefore,
the exclusive memory windows of each partition can be made
to appeal to their respective operating systems as having a
same base physical address by mapping th physical address
space of the processors in each partition to the respective
exclusive memory window assigned to the partition (col. 5,
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lines 10-13; col. 9, lines 5-8). Gulick thus maps the
associated partition and its memory window, but has no
bearing on locating the data in a memory access by providing
the address of the memory page corresponding to the data.
Gulick’s physical address refers to the processing modules
of each partition or the address space as viewed by the
operating system on its corresponding partition (col. 15,
lines 66 to col. 16, line 2), and is not equivalent to
Appellants’ address of a memory page corresponding to the
data to be accessed. Gulick’s memory window is associated
with the partition, and is not equivalent to Appellants’
location address corresponding to a table entry pointing to
the location of the piece of data to be accessed. The
address to be mapped and the resulted mapped address in
Gulick have no relationship to the piece of data in a memory
access as in Appellants’ claimed invention.
. . . . Gulick’s mapping reveals no showing that the
address to be mapped of the processors and the resulted
mapped address of the memory window have relationship to the
piece of data in a memory access as in the claimed
invention.
Since we find ourselves persuaded by this essential line of
reasoning set forth by appellants, we are constrained to reverse
the rejection of the claims on appeal even though we recognize
that the memory table arrangement of the independent claims on
Appeal No. 2004-2199
Application No. 09/896,043
1Even though we reverse the rejection of the claims on appeal as stated
by the examiner in the answer, according to the rules of practice in force at
the time the reply brief was filed, it appears plainly to us that the
appellants have completely reargued the outstanding rejection of the clams on
appeal at pages 2 through 9 in an entirely new manner from that which has been
set forth in the principal brief on appeal, and has chosen to argue the
dependent claims at pages 9 through 11 of the reply brief where all claims
were stated to stand or fall together in a single group at the bottom of page
4 of the principal brief on appeal and no arguments as to the dependent claims
were presented in the principal brief on appeal. The only arguments presented
that are a true reply to the examiner’s positions set forth in the answer are
those contained at pages 11 through 13 of the reply brief. The provision of
the rules providing for appellants to reply to an examiner’s answer does not
indicate that appellants may entirely reargue their positions from those set
forth in the principal brief on appeal and set forth new arguments. In other
words, the provision does not permit appellants to rebrief the issues.
7
appeal sets forth relatively straight forward, even basic memory
mapping relationships of memory addresses. The examiner’s
reliance upon the mapping/relocating operations in Gulick to the
subject matter of the wherein clause of each of the independent
claims 1, 10 and 19 on appeal appears to be overcomplicated and
strained at best. The required relationships do not appear to be
taught in Gulick according to what we understand the examiner’s
reasoning to be. The reference does not appear to teach a true
pointing-type of addressing function recited in the claims on
appeal as well.1
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In view of the foregoing, the decision of the examiner
rejecting claims 1 through 20 under 35 U.S.C. § 102 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
JDT/hh
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Application No. 09/896,043
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