MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Oct 27, 2021

2020004908 (P.T.A.B. Oct. 27, 2021)

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.
15/340,826 11/01/2016 Michael R. Fortin 314396-US-CNT[2] 9459
69316 7590 10/27/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
WONG, TITUS
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
10/27/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chriochs@microsoft.com
ljohnson@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. FORTIN and ROBERT L. REINAUER
Appeal 2020-004908
Application 15/340,826
Technology Center 2100
Before JOSEPH L. DIXON, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2019). Appellant identifies the real party in interest as Microsoft
Technology Licensing LLC. Appeal Br. 3.
Appeal 2020-004908
Application 15/340,826
2
CLAIMED SUBJECT MATTER
The claims are directed to optimizing write and wear performance for
a memory. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method performed on a computing device, the method
comprising:
caching, by the computing device, data in a volatile
random access memory, where the data being cached is
designated to be stored in first disk-based memory; and
backing-up, by the computing device, a determined first
preferred amount of the cached data from the volatile random
access memory to an additional memory that comprises flash-
based memory or second disk-based memory, the first preferred
amount being determined based on a type of the additional
memory.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Acton et al. US 2006/0212644 A1 Sept. 21, 2006
Fortin et al. (Fortin
’557)
US 8,914,557 B2 Dec. 16, 2014
Fortin et al. (Fortin
’716)
US 9,529,716 B2 Dec. 27, 2016

REJECTIONS
Claims 1–20 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 1–20 of Patent No. 9,529,716
and claims 1–20 of Patent No. 8,914,557 since the claims, if allowed, would
improperly extend the “right to exclude” already granted in the patent.
Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 102(e) as
being anticipated by Acton.
Appeal 2020-004908
Application 15/340,826
3

OPINION
Non-Statutory Double Patenting
The Examiner generally rejects claims 1–20 based upon the ground of
non-statutory double patenting over claims 1–20 of Patent No. 9,529,716
and claims 1–20 of Patent No. 8,914,557 because the claims, if allowed,
would improperly extend the “right to exclude” already granted in the
patent. Final Act. 3.
The Examiner provides no specific mapping in the Examiner’s
Answer or the Final Action to the corresponding claims of the two prior
patents. The Examiner generally finds that the labels/nomenclature in the
’716 patent can be substituted for the claimed labels/nomenclature for the
claimed memories and
After substituting the ‘first’, ‘second’, and ‘third’ memory labels
with its defined memory types, it is apparent that the
illustration of U.S. Patent 9,529,716 is essentially the same
illustration as that of the instant application (15/340,826). The
“additional memory” of the instant application is also disk-based
(2nd bullet of instant application). The preferred amount is based
on a type of the additional memory (i.e. disk-based memory).”
Ans. 3–4.
Appellant provides a description of the two prior patents and the
instant claimed invention and identifies that claims of the present application
are directed to different subject matter than those of its parent and
grandparent applications. Appeal Br. 8. Appellant provides comparisons of
the present claims to the two prior patents, and Appellant contends that the
Examiner has not provided a detailed explanation in the Office Action as
required in the MPEP. Appeal Br. 12.
Appeal 2020-004908
Application 15/340,826
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While we disagree with Appellant on those issues, we find that the
’716 patent recites “backing-up, by the computing device after beginning the
caching but prior to completion of the caching of a preferred amount of the
data in the first memory, the data being cached to a second memory that is
disk-based memory or flash-based memory, where the preferred amount is
based on the determined preferred write size of the third memory.”
(Emphasis added.) The Examiner has not identified how the present claimed
“backing-up, by the computing device, a determined first preferred amount
of the cached data from the volatile random access memory to an additional
memory that comprises flash-based memory or second disk-based memory,
the first preferred amount being determined based on a type of the
additional memory” (emphasis added) is the same or an obvious variant of
an write size of the third memory versus the type of third/additional
memory. Ans. 4.
Furthermore, the Examiner has not provided any persuasive evidence
to support the Examiner’s conclusion. As a result, we find the Examiner’s
non-statutory obviousness-type double patenting based upon the ’716 patent
alone to be insufficient, and we cannot sustain the rejection thereof.
The Examiner also provides a general commentary to the ’557 patent.
Ans. 4. The Examiner finds:
Disk-based memory is “lower-speed” when compared to
“volatile random access memory” (higher-speed). The labelling
of the memories are different in each of the applications and may
cause confusion when comparing or interpreting them but one of
ordinary skill in the art would recognize that any differences, if
any, are minuscule. Examiner also points out that for purposes
of examination given the broadest reasonable interpretation of
the claims, the caching and backing-up may be used similarly
since the same data is stored to the same type of memory (disk-
Appeal 2020-004908
Application 15/340,826
5
based memory). Note: typically, caching would be “faster'' than
“backing-up” since the memory used is much faster; however,
the claims recite the “cached” data may be written to a disk-based
memory (i.e. third memory and first disk-based memory of
parent and instant application, respectively) which is the same
type of storage, during “backing up” step, to the “second
memory” and “additional memory” (parent and instant
application, respectively).
Ans. 4.
Again, the Examiner has not provided any persuasive evidence and
has not meaningfully provided a mapping of the claims to the ’557 patent
claims to support the Examiner’s conclusion of non-statutory obviousness-
type double patenting. The ’557 patent recites “storing on the higher-speed
memory device an amount of the received data that matches the preferred
write size of the lower-speed memory device; backing-up the amount of the
stored data to the additional memory device; writing the amount of the
stored data to the lower-speed memory device in response to the storing and
to a period of low activity of the computer system.” (Emphasis added.)
Similar to the non-statutory obviousness-type double patenting rejection
based upon the ’716 patent,” we find the Examiner’s non-statutory
obviousness-type double patenting rejection based upon the ’557 patent to
be insufficient, and we cannot sustain the rejection thereof.

35 U.S.C. § 102(e)
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words
in their ordinary usage as they would be understood by one of
Appeal 2020-004908
Application 15/340,826
6
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
To anticipate “it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Id.
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
The Examiner finds that the Acton reference discloses the claimed
backing-up, by the computing device, a determined first
preferred amount of the cached data from the volatile random
access memory to an additional memory that comprises flash-
based memory or second disk-based memory (backed up by non-
volatile storage devices, see para. [0028]), the first preferred
amount being determined based on a type of the additional
memory (mirror cache 107, see Fig. 4, blocks 415 416 and para.
[0048]; also note: capacity scalable).
Final Act. 4–5.

Appeal 2020-004908
Application 15/340,826
7
The totality of the Examiner’s response to the Appellant’s four pages
of arguments in the Appeal Brief is that the Examiner finds that the
“preferred amount of data” is not defined by Appellant and that paragraph
24 of the Acton reference discloses “[t]he amount of data to be backed up
can be adjusted and depends on the type of memory . . . also based on the
type of the memory that it is being stored on since capacity levels vary
among different types of memories.” Ans. 4.
Appellant contends that the Acton reference provides no teaching of
any specific quantity of data, let alone a quantity of data that is “based on a
type” of memory. Appeal Br. 14; Reply Br. 5.
Appellant further contends that “In attempting to support the
anticipation rejection, the Examiner’s Answer makes assertions regarding
the teaching of the cited art that are wholly unsupported and, as such, cannot
be accorded any weight.” Reply Br. 5.
Appellant also contends the Examiner’s Answer provides
absolutely no citation to any portion of Acton, nor any further
explanation in support of such a conclusion. . . . It is axiomatic
that a conclusory declaration of the very thing to be proven,
proffered with absolutely no explanation or citation, is not
enough to even maintain a cause of action, let alone carry the
day.
Reply Br. 5. Appellant contends that the Examiner errs in finding that the
Acton reference discloses “[t]he amount of data that is backed up . . . takes
into account and also [sic] based on the type of the memory that it is being
stored on since capacity levels vary among different types of memories” and
the Examiner provides no support or citation in the Acton reference for this
finding. Reply Br. 5–6.
Appeal 2020-004908
Application 15/340,826
8
From our review of the identified paragraphs in the Acton reference,
we cannot agree with Examiner that paragraphs 16, 24, 28, and 48
specifically disclose the claimed invention where “the first preferred amount
being determined based on a type of the additional memory.” We further
agree with Appellant that the Examiner makes broad, sweeping commentary
regarding the “type of memory,” but the express disclosures of the Acton
reference do not specifically support the Examiner’s factual findings.
Additionally, the Examiner has not relied upon inherency in the finding of
anticipation, and we find the Examiner is speculating as to the express
disclosures of the Acton reference and relying upon unfounded assumptions
in the disclosures of the Acton reference in the Examiner’s finding of
anticipation of the claimed invention. Because we cannot rely upon
speculation and unfounded assumptions in the finding of anticipation, we
cannot sustain the Examiner’s finding of anticipation of independent claim 1
and independent claims 8 and 15 that contain similar limitations and their
respective dependent claims.
CONCLUSIONS
We reverse the Examiner’s obviousness-type double patenting
rejections and the anticipation rejection.
Appeal 2020-004908
Application 15/340,826
9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 Non-Statutory
Double Patenting
1–20
1–20 102(e) Acton 1–20
Overall
Outcome
1–20

REVERSED