Rambus Inc.

Patent Trials and Appeals Board

Feb 17, 2021

2019004639 (P.T.A.B. Feb. 17, 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.
14/187,290 02/23/2014 Steven C. Woo 765-0079US1 (10015US01) 1002
92296 7590 02/17/2021
The Neudeck Law Firm
P.O. Box 1792
698 Hughes Ave
Fraser, CO 80442
EXAMINER
BIRKHIMER, CHRISTOPHER D
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
02/17/2021 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):
alex@neudeckiplaw.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN C. WOO
Appeal 2019-004639
Application 14/187,290
Technology Center 2100
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
CATHERINE SHIANG, 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. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Rambus Inc.
Appeal Br. 4.
Appeal 2019-004639
Application 14/187,290
2
CLAIMED SUBJECT MATTER
The claims are directed to a distributed procedure execution and file
systems on a memory interface where the requests and/or remote procedure
call (RPC) requests, or information associated with requests and/or RPCs,
may be routed to the memory modules over the DRAM memory channel in
order to service, compute, and/or process distribute file system commands.
Abstract. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A module, comprising:

a substrate having a memory module form factor, the
substrate having an interface disposed on the substrate that is
configured to communicate with a DRAM memory channel that
is external to the module, the substrate configured to be
removably connected to the DRAM memory channel, the
interface including command/address connections and data
connections to connect to command/address links and
bidirectional data links, respectively, of the DRAM memory
channel;

non-volatile storage disposed on the substrate, the module
configured to service remote procedure call requests using the
non-volatile storage on the module, the remote procedure call
requests and procedure data to be received by the module via the
bidirectional data links of the DRAM memory channel that is
external to the module; and,

a processor, disposed on the substrate, to execute the
remote procedure call requests, results of the remote procedure
call requests to be output to the bidirectional data links of the
DRAM memory channel via the data connections of the
interface.

Appeal Br. 20 (Claims App.).
Appeal 2019-004639
Application 14/187,290
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Karamcheti US 2008/0109593 A1 May 08, 2008
Foster, Sr. US 2011/0066903 A1 Mar. 17, 2011
Intel “Write Combining
Implementation
Guidelines
Order Number: 244422-
001
Nov. 1998
Shvachko, “The
Hadoop Distributed File
System”
Copyright 2010
Webopedia
(RPC) hereinafter
referred to as
Webopedia1
Copyright 2002
Webopedia (SCSI)
hereinafter referred to
as Webopedia2
Copyright 2001
Webopedia (NFS)
hereinafter referred to
as Webopedia3
Copyright 2016

REJECTIONS
Claims 1–5, 7–11, and 14–16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Karamcheti, Foster, Sr., and Webopedia1. Non-
Final Act. 3.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Webopedia2.
Non-Final Act. 16.
Appeal 2019-004639
Application 14/187,290
4
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Webopedia3.
Non-Final Act. 17.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Shvachko.
Non-Final Act. 17–18.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Webopedia3.
Non-Final Act. 18–19.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Intel. Non-
Final Act. 19–20.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, Webopedia3, and
Intel. Non-Final Act. 20–21.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karamcheti, Foster, Sr., Webopedia1, and Intel. Non-
Final Act. 21.
OPINION
Appellant argues independent claims 1, 8, and 14 together and relies
upon the patentability arguments for independent claim 1. Appeal Br. 11.
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
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Application 14/187,290
5
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “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 its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
Appellant argues that the proffered combination of Karamcheti,
Foster, and Webopedia1 does not teach or suggest the claimed:
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a processor, disposed on the substrate [having a memory module
form factor, the substrate having an interface disposed on the
substrate that is configured to communicate with a DRAM
memory channel], to execute the remote procedure call requests
[using the non-volatile storage on the module], results of the
remote procedure call requests to be output to the bidirectional
data links of the DRAM memory channel via the data
connections of the interface.

Appeal Br. 11–12 (bracketed claim language from prior limitations in
the present claim language). Appellant further argues that claim 1
requires a processor on a DRAM interface DIMM [Dual Inline Memory
Modules] to execute Remote Procedure Call requests (RPCs) using
non-volatile memory that is also on the DIMM.2 Appeal Br. 12–13.
The Examiner maintains that
Neither Karamcheti nor Foster is used to teach the remote
procedure calls as argued. Karamcheti teaches a module that has
a DIMM memory form factor as discussed in paragraphs 0028,
0045, and 0069 that contains DRAM and Flash that performs
operations based on received requests. Foster teaches DRAM
memory that contains a processor on the DRAM memory
substrate. Foster teaches that the given structure and methods
allows a section of the DRAM memory to be tested that reduces
heat and time that convention[al] art uses to test memory. This
adds the ability to Karamcheti to test the DRAM memory on the
DIMM in an improved fashion compared to conventional art.
Ans. 9.

2 We note that Appellant argues the claimed invention using the term
“DIMM” as a shorthand for the longer terms used in Appellant’s claims. For
example, the Appeal Brief term “DIMM interface” is much shorter than
repeatedly reciting “ ... a memory module form factor, the substrate having
an interface disposed on the substrate that is configured to communicate
with a DRAM memory channel that is external to the module ....” Reply Br.
5.
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Application 14/187,290
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Appellant argues that neither the Karamcheti nor the Foster reference
discloses the use of RPCs, and the Examiner merely provides a definition of
an RPC as the tertiary reference (Webopedia1) where the definition lacks
any teaching or discussion about the location of the processor executing the
RPC request. Consequently, Webopedia1 fails to remedy the deficiencies of
the combination of Karamcheti and Foster. Appeal Br. 12–13.
Appellant further contends that the Examiner has failed to establish a
prima facie case of the obviousness of combining logic that performs BIST
routines that are initiated by a processor physically connected to the module
with remote procedure call requests that are initiated by remote computers.
Reply Br. 2.
The Examiner finds Foster shows “item 28 receives requests from
items 40 and 50 and processes the data to produce an outcome in the process
of reading and writing data” and “Webopedia1 discloses how a first remote
device is able to send requests to a second remote device and the second
remote device returns results of the received requests. The requests are
based on a remote procedure call protocol that allows a program on
one device to execute a program on another device.” Ans. 7. The Examiner
concludes that “the requests received by a module containing DRAM
memory are remote procedure calls from a remote device.” Ans. 7.
Appellant argues that the Examiner is contending that as long as one
device makes a request (e.g., read or write memory) to another device, no
matter whether those devices are part of the same computer, or even on the
same substrate, that ‘request’ is both ‘remote’ and a ‘procedure’ within the
meaning of Appellant’s claims. Reply Br. 3. Appellant further argues that
the Examiner’s interpretation (1) deviates from the plain and ordinary
meaning of the claim language and (2) is not consistent with the
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Specification and drawings and is therefore an unreasonable interpretation,
and this interpretation may not be used as support for the position that the
recited features of a module that uses on-substrate non-volatile storage to
service RPC requests are disclosed by the cited art. Reply Br. 3. Appellant
provides a definition of “remote” for a procedure call and contends that
Examiner’s combination of Foster and Webopedia1, which results in directly
connected components within the same computer being considered to be
“remote,” is therefore at odds with the plain meaning of the word “remote.”
Reply Br. 3.
We agree with Appellant that the Examiner has not shown a
reasonable teaching or suggestion of all of the claim limitations and that the
Examiner has not shown a required persuasive nexus between them to
combine the teachings of the Karamcheti, Foster references and
Webopedia1, and the Examiner’s rejection is based upon hindsight
reconstruction. Appeal Br. 13–14.
Appellant contends that without providing a reasoned explanation of a
nexus between built-in self-test and RPCs, the assertion of obviousness that
leaps from built-in self-test to the complex procedures of RPCs fails to
establish a prima facie case of the obviousness of combining these
Karamcheti and Foster references. Appeal Br. 14.
As a result, we find that the mere fact that there is a “request” in
Karamcheti does not teach or suggest an RPC, and the Karamcheti reference
at most discloses a memory map system call in paragraph 74. Furthermore,
we find that the Foster reference discloses a built-in self-test (BIST) which
does not teach or suggest a remote procedure call (RPC).
We agree with Appellant that the Examiner’s rejection is based upon
hindsight reconstruction resulting from the Examiner’s picking and choosing
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parts of the claimed invention and providing an unpersuasive motivation for
the combination of teachings and suggestions. Based upon these speculative
findings, the Examiner concludes that the claimed invention would have
been obvious to one of ordinary skill in the art at the time of the invention.
We disagree with the Examiner’s finding and reasoning, and we cannot
sustain the Examiner’s rejection of illustrative independent claim 1 and its
respective dependent claims.
Independent claims 8 and 14 contain similar claim limitations and we
cannot sustain the obviousness rejection of claims 8 and 14 and their
respective dependent claims for similar reasons.
The Examiner relies upon additional prior art references for dependent
claims 6, 12, 13, and 17–20, but the Examiner has not identified how these
additional prior art references remedy the notice deficiency in the base
combination. Consequently, we cannot sustain the Examiner’s obviousness
rejection of claims 6, 12, 13, and 17–20.
CONCLUSION

The Examiner’s decision rejecting claims 1–20 is REVERSED.
Appeal 2019-004639
Application 14/187,290
10
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–11,
14–16
103(a) Karamcheti,
Foster,
Webopedia1
1–5, 7–11,
14–16
6 103(a) Karamcheti,
Foster,
Webopedia1,
Webopedia2
6
12 103(a) Karamcheti,
Foster,
Webopedia1,
Webopedia3
12
13 103(a) Karamcheti,
Foster,
Webopedia1,
Shvachko
13
17 103(a) Karamcheti,
Foster,
Webopedia1,
Webopedia3
17
18 103(a) Karamcheti,
Foster,
Webopedia1, Intel
18
19 103(a) Karamcheti,
Foster,
Webopedia1,
Webopedia3, Intel,
19
20 103(a) Karamcheti,
Foster,
Webopedia1, Intel
20
Overall
Outcome
1–20

REVERSED