Ex Parte Brosnan et al

Patent Trial and Appeal Board

Jun 24, 2016

13291239 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/291,239 11/08/2011 Susan W. Brosnan
73445 7590 06/24/2016
Lieberman & Brandsdorfer, LLC
802 Still Creek Lane
Gaithersburg, MD 20878
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RPS9201l0073US 1 3216
EXAMINER
CHAPPELL, DANIEL C
ART UNIT PAPER NUMBER
2135
MAILDATE DELIVERY MODE
06/24/2016 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 SUSAN W. BROSNAN, PATRICIA S. HOGAN,
JOHN DAVID JR. LANDERS, JR., and DAVID J. STEINER
Appeal2014-007535
Application 13/291,239
Technology Center 2100
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007535
Application 13/291,239
STATE~vfENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to simulating a functionality of non-volatile
random access memory (NVRAM) using cache memory of a disk controller.
Spec., i-f 1. Claim 1, reproduced below with a disputed limitation
emphasized in italics, is representative of the claimed subject matter:
1. A method comprising:
a disk controller in communication with storage media, the
disk controller including cache memory;
an operating system in communication with the cache
memory;
setting aside a logical block address of the disk controller
cache memory;
the operating system in communication with the disk
controller rnaintaining the set aside logical block address as
permanently dirty, including maintaining a bit designating the
set aside logical block address as permanently dirty; and
the operating system supporting read and write operations,
including reading data from the disk controller cache memory to
support the read operation and storing write data in the disk
controller cache memory to support the write operation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schneider et al.
Yang et al.
us 5,408,644
US 2005/0243609 Al
2
Apr. 18, 1995
Nov. 3, 2005
Appeal2014-007535
Application 13/291,239
REJECTION
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Yang and Schneider. Final Act. 2-28.
APPELLANTS' CONTENTIONS
1. The term permanently dirty as used in claim 1 is properly interpreted as
being persistent across changes in system state, a feature not taught or
suggested by the applied Schneider reference, which flushes data rather
than maintaining the set aside logical block address as permanent data.
App. Br. 10-14.
2. Schneider's teaching of "increas[ing] system performance by including a
memory that allows for data to be written; thus reducing the writing of
partial stripes of data" is a result of using an intermediary posting
memory device, not Schneider's flushing process using a permanent dirty
flag and, therefore, does not provide appropriate motivation for
incorporating these relied-upon latter features into Yang in rejecting
claim 1. App. Br. 14--15.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2-28)
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 2-14) and concur with the
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conclusions reached by the Examiner. \Ve highlight the following for
emphasis.
Appellants argue the term permanently dirty requires persistence
across changes in system state such that the claimed set aside logical address
designation is maintained through system shutdown or reboot. App. Br. 12-
13. In support of the proffered interpretation, Appellants rely on the
Specification for disclosing that blocks designated permanently dirty are not
subject to periodic flushing to persistent storage and because "[ d]uring
initialization, the operating system checks the disk cache controller for a
logical block address marked as permanently dirty (102)." App. Br. 12,
citing Spec. i-f 20. Appellants further argue, in contrast to the definition of
permanent offered by the Examiner of "lasting for a relatively long time,"
the cited Webster's New World College Dictionary includes an alternate
definition of "lasting or intended to last indefinitely without change." App.
Br. 12-13. According to Appellants, "the Examiner's definition of
'permanent' is clearly inconsistent with Appellants' specification when ...
an alternate definition provided by the Examiner's source supports
Appellants' use of the term." App. Br. 13. The Examiner responds by
finding the Specification does not provide a clear definition of the term
permanent, the plain meaning of the term as evidenced by a dictionary
definition includes the proffered broader interpretation of lasting for a
relatively long time rather than indefinitely, and Appellants' reliance on the
operation of a preferred embodiment in limiting the claim interpretation is
improper and would result in the inappropriate importation of limitations
from the Specification into the claims. Ans. 3.
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Application 13/291,239
\Ve find Appellants' argument unpersuasive of Examiner error. The
Examiner's interpretation of the term permanently dirty as requiring
designation for a relatively long time but not necessarily indefinitely or
through system shutdown and/or reboot is supported by the evidence of
record (e.g., the proffered dictionary definition) and is consistent with the
Specification. It is well settled that, during examination, the PTO must
interpret terms in a claim using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
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). However, "[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Thus, "while it is true that claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims." Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). As the court explained in
In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989), the rationale for this
approach to claim interpretation is that "during patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed."
By asking us to adopt the narrower of two interpretations of the claim
term at issue, without any amendment of the claim reflecting the narrower
claim scope advanced, Appellants are asking us to interpret claim 1 in a
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Application 13/291,239
manner contrary to that directed by our reviewing court. Accordingly, we
decline to read limitations present in a disclosed exemplary embodiment of
the invention into the claims. Therefore, we agree with the Examiner in
finding the term permanently dirty does not require persistence across
changes in system state and that the broadest reasonable interpretation of the
disputed limitation of claim 1 does not require the claimed set aside logical
address designation be maintained through system shutdown and/or reboot.
We also agree with the Examiner's finding that Yang's area dedicated to
storing data that has not yet been written to disk (i.e., a permanent dirty area)
in combination with the disclosed operation of Schneider's cache and
permanent dirty flag teaches or suggests the disputed limitation of the
operating system in communication with the disk controller maintaining the
set aside logical block address as permanently dirty, including maintaining a
bit designating the set aside logical block address as permanently dirty. See
Final Act. 4---6.
In connection with contention 2, Appellants argue the Examiner's
reasoning for modifying Yang to incorporate Schneider's permanent dirty
flag is premised on reasoning unrelated to the flag itself and, therefore, is
insufficient to support a conclusion of obviousness. App. Br. 14--15. The
Examiner responds by finding:
The permanent dirty flag of Schneider controls flushing of part
of the posting memory of Schneider. This is asynchronous I/O
processing. Yang is also concerned with asynchronous I/O
processing (see, e.g., paragraph 0091 of Yang). Contrary to
Appellants' argument that the teachings of Schneider are not
related to those of Yang, both Schneider and Yang are
concerned with asynchronous I/O processing. Schneider
therefore would have commended itself to the inventor's
attention and therefore is indeed a logical choice for
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combination with Yang to solve the problem addressed by the
claimed invention.
Ans. 5.
In the absence of persuasive rebuttal in reply, we find the Examiner
has articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In
contrast, Appellants fail to provide persuasive evidence or explanation
showing that the Examiner's asserted combination is anything other than the
combination of familiar elements yielding no more than predictable results.
See KSR at 416-1 7. Such a combination is itself a sufficient reasoning with
rational underpinning to support a finding of obviousness. Accordingly,
Appellants' contention 2 is unpersuasive of Examiner error.
For the reasons discussed supra, Appellants' arguments addressing the
rejection of independent claims 1, 7, and 13, and dependent claims 3-5, 9-
11, and 15-17, which are not separately argued, (App. Br. 10-15) are
unpersuasive of Examiner error. Because Appellants' contentions of error in
connection with the rejections of dependent claims 2, 8, and 14 (App. Br.
15-18) and dependent claims 6, 12, and 18 (App. Br. 18-21) are based on
arguments similar to those presented in connection with independent claims
1, 7, and 13, such arguments are likewise unpersuasive for similar reasons.
Therefore we sustain the rejections of claims 1-18 under 35 U.S.C. §103(a)
over Yang and Schneider
DECISION
The Examiner's decision to reject claims 1-18 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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