Ex Parte Zilavy

Board of Patent Appeals and Interferences

Apr 22, 2011

10984478 (B.P.A.I. Apr. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL V. ZILAVY
____________________

Appeal 2009-007879
Application 10/984,478
Technology Center 2100
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY III, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-22 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention relates to nonvolatile memory
management (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method of nonvolatile memory management for access
by a plurality of clients comprising:

allocating via a memory manager at least one memory
block in nonvolatile memory;

initializing via the memory manager the at least one
allocated memory block for storing device data; and

generating a handle for the memory manager to provide
to a client object for accessing the at least one initialized
memory block.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sturges US 5,930,827 Jul. 27, 1999
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Spiegel US 6,571,326 B2 May 27, 2003
Fong US 6,636,893 B1 Oct. 21, 2003
Nelson US 2004/0172513 A1 Sep. 02, 2004
Fomenko US 6,813,641 B2 Nov. 02, 2004
Rao US 2005/02166445 Sep. 29, 2005
(filed on Mar. 26, 2004)
De Jong US 2005/0283579 A1 Dec. 22, 2005
(filed on Jun. 21, 2004)

Claims 1-5 and 16-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spiegel, Sturges, and Fomenko.
Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spiegel, Sturges, Fomenko and Rao.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spiegel, Sturges, Fomenko and De Jong.
Claims 9-11, 13, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Spiegel and Fomenko.
Claims 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spiegel, Fomenko and Fong.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spiegel, Fomenko and Nelson.

II. ISSUE
Did the Examiner err in finding that:
1. The combined teachings of Spiegel, Sturges and Fomenko would
have suggested “[a] method of nonvolatile memory management”
comprising “initializing via the memory manager the at least one allocated
memory block for storing device data” (claim 1)? and
2. The combined teachings of Spiegel and Fomenko would have
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suggested “a plurality of management functions provided by the memory
manager” (claim 9)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Spiegel
1) Spiegel discloses allocating space for data in nonvolatile
memory, wherein a media management system comprises a media
management driver to perform actions upon the nonvolatile memory via the
reservation system and the nonvolatile memory manager (col. 4, ll. 21-26;
Fig. 2).
Sturges
2) Sturges discloses allocation procedures provided with the
ability to initialize the allocated memory block at the request of the requester
(col. 7, ll. 34-37).

IV. ANALYSIS
Claims 1-8, and 16-20
As for claim 1, Appellant contends that “the Examiner has failed to
carry its initial burden of factually supporting a prima facie conclusion of
obviousness” (App. Br. 7) but merely repeats the UPSTO guidelines for
determining obviousness (App. Br. 7-8), repeats the language of claim 1
(App. Br. 8), and then argues that “Fomenko fails to disclose” the cited
claim language (id.). That is, though the Examiner makes detailed findings
that Spiegel, Sturges and Fomenko would have suggested the claimed
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features and articulates the reasons why the claimed invention would have
been obvious (Ans. 4-6), Appellant merely repeats the guidelines, the claim
language, and then argues that Fomenko individually does not anticipate the
claims (App. Br. 7-8).
Statements which merely point out what a claim recites and conclude
that a reference does not disclose such cited language will not be considered
an argument for separate patentability of the claim. See 37 C.F.R. §
41.37(c)(1)(vii). That is, mere attorney arguments and conclusory
statements that the cited reference does not anticipate the claim but are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Further, though Appellant contends that “Fomenko fails to disclose”
the cited claim language (App. Br. 8), the Examiner rejects claim 1 over the
combined teachings of Spiegel, Sturges and Fomenko and what the
combined teachings would have suggested to one of ordinary skill in the art.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Spiegel discloses nonvolatile memory management (FF 1). Sturges
discloses initializing at least one allocated memory block for storing device
data (FF 2). Though Appellant adds the argument in the Reply Brief that
“[t]here is no clear articulation of the reasons why the claimed invention
would have been obvious” (Reply Br. 4), we find no error in the Examiner’s
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conclusion that “it would have been obvious to combine initializing the
allocated memory block as taught by Sturges with the system for nonvolatile
memory management of Spiegel to prevent loss of the data blocks stored in
the nonvolatile memory upon loss of power” (Ans. 5). That is, we conclude
that such combination is no more than a simple arrangement of old elements,
with each performing the same function it had been known to perform,
yielding no more than one would expect from such an arrangement. See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 420-21.
Appellant has presented no evidence that combining the teaching of
initializing an allocated memory block (as discussed by Sturges) to Spiegel’s
memory blocks was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19).
Thus, we find no error in the Examiner’s conclusion that Spiegel in
view of Sturges and Fomenko would at least have suggested “[a] method of
nonvolatile memory management” comprising “initializing via the memory
manager the at least one allocated memory block for storage device data” as
required by claim 1.
Appellant also adds an argument in the Reply Brief that “Spiegel and
Sturges do not teach ‘[a] method of non-volatile memory management for
access by a plurality of clients’ as recited in claim 1” (Reply Br. 4, emphasis
added). However, Appellant is again arguing that the references
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individually do not anticipate the claimed invention when the Examiner has
rejected claim 1 over Spiegel, Sturges and Fomenko. Further, we agree with
the Examiner’s finding that “the recitation occurs in the preamble” (Ans. 19)
and find such “for access by a plurality of clients” statement as merely an
intended use of the memory. An intended use will not limit the scope of the
claim because it merely defines a context in which the invention operates.
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Further, since the body of claim 1 fully and
intrinsically sets forth all of the limitations of the claimed invention, the
intended use in the preamble is not considered a limitation and is of no
significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997).
As for claim 16, Appellant also contends that the combination of
references fail to disclose “program code product … for use by software
designers … without having to each update a single common definition file
and without depending on external conversion modules” (App. Br. 9,
repeating the language of claim 16). However, similar to the “for access by
a plurality of clients” language in claim 1, such “for use by software
designers” is merely an intended use of the program code product that does
not limit the scope of the claim but merely defines a context in which the
program code product operates. We do not consider the intended use a
limitation and find the language also of no significance to the claim
construction of claim 16.
Accordingly, Appellant has not shown that the Examiner erred in
rejecting claims 1 and 16 and claims 2-5 and 17-19 depending respectively
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therefrom over Spiegel, Sturges, and Fomenko. Appellant does not provide
any arguments for claims 6-8 and 20 depending respectively from claims 1
and 16. Accordingly, Appellant also has not shown that the Examiner erred
in rejecting claims 6 and 20 over Spiegel, Sturges, Fomenko and Rao and in
rejecting claims 7 and 8 over Spiegel, Sturges, Fomenko and De Jong.
Claims 9-15, 21, and 22
As for claim 9, Appellant contends that the applied references fail to
disclose “a plurality of management functions … for software designers
developing object code … to access device data … without each software
designers having to update … and without the software designers depending
on external conversion modules” (App. Br. 11, repeating the language of
claim 9). We find such intended use does not limit the scope of claim 9
because it merely defines a context in which the claimed system for
nonvolatile memory operates.
Spiegel discloses nonvolatile memory management wherein a
plurality of functions is performed (FF 1). Thus, we find no error in the
Examiner’s conclusion that Spiegel in view of Fomenko would at least have
suggested “a plurality of management functions provided by the memory
manager” as specifically required by claim 9.
Accordingly, Appellant has not shown that the Examiner erred in
rejecting claim 9, claim 21 falling therewith, and claims 10, 11, 13, and 22
depending respectively therefrom over Spiegel and Fomenko. Appellant
does not provide any arguments for claims 12, 14, and 15 depending from
claim 9. Accordingly, Appellant also has not shown that the Examiner erred
in rejecting claim 12 over Spiegel, Fomenko and Fong and in rejecting
claims 14 and 15 over Spiegel, Fomenko and Nelson.
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V. CONCLUSION AND DECISION
Appellant has not shown that the Examiner erred in finding claims 1-
22 unpatentable under 35 U.S.C. § 103(a).
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)(iv).

AFFIRMED

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