Ex Parte Chapel et al

Patent Trial and Appeal Board

Dec 17, 2014

10498191 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/498,191 06/09/2004 Claude Chapel PF010161 1408
7590 12/17/2014
Joseph S Tripoli
Thomas Licensing Inc
Patent Department
P O Box 5312
Princeton, NJ 08543-5312
EXAMINER
MACKALL, LARRY T
ART UNIT PAPER NUMBER
2131
MAIL DATE DELIVERY MODE
12/17/2014 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 CLAUDE CHAPEL,
JEAN-CHARLES GUILLEMOT,
and JEAN LE ROUX
____________

Appeal 2012-007688
Application 10/498,1911
Technology Center 2100
____________

Before JASON V. MORGAN, KIMBERLY J. MCGRAW,
and CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 12, 13, 15–17 and 19–22.2 We have jurisdiction under 35
U.S.C. § 6(b).

1 Appellants identify as the real party in interest THOMSON LICENSING
S.A. App. Br. 3.
2 Claims 1–11, 14, and 18 have been canceled.
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Application 10/498,191

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We AFFIRM.
STATEMENT OF THE CASE
Appellants’ invention generally relates to a storage device comprising
a file system manager. Spec. 1, ll. 26–28. Representative claim 12,
reproduced below, recites:
12. A recording medium comprising:
a cache memory, and
a stand-alone file system associated with a file system manager
for managing the organization of data stored on the recording medium
and controlling prefetching of said cache memory, said prefetching
comprises downloading in said cache memory, data having addresses
that are the addresses on the recording medium of the next data of the
current file being accessed by a host device, said addresses being
known by said stand-alone file system responsible for said file
organization on said recording medium, said addresses being
contiguous or not to the addresses of the current data read on said
recording medium.

REFERENCES
Thompson et al. US 5,463,772 Oct. 31, 1995
Hicken et al. US 6,092,149 Jul. 18, 2000
Rinaldis et al. US 2003/0014520 A1 Jan. 16, 2003
Hsu et al. US 6,567,894 B1 May 20, 2003
Le Roux WO 00/40020 Jul. 6, 2003
Hamlin US 6,665,772 B1 Dec. 16, 2003

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THE REJECTIONS
1. Claims 12, 13, 15, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Thompson et al. (hereinafter “Thompson”) and Hsu et
al. (hereinafter “Hsu”). Ans. 5.
2. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Thompson, Hsu, and Hicken et al. (hereinafter “Hicken”). Ans. 7.
3. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Thompson, Hsu, Le Roux, and Hamlin. Ans. 8.
4. Claims 19–21 Claim 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thompson, Hsu, and Rinaldis et al. (hereinafter
“Rinaldis”). Ans. 10.
Rather than repeat all the arguments here, we refer to the Brief and the
Answer for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
Decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
ISSUES
(1) Under § 103, has the Examiner erred by finding the combination
of Thompson and Hsu teaches or suggests “a stand-alone file system” for
“controlling prefetching of” cache memory?
(2) Under § 103, has the Examiner erred by finding the combination
of Thompson and Hsu teaches or suggests “said addresses being known by
said stand-alone file system”?
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Application 10/498,191

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(3) Under § 103, has the Examiner erred by finding the combination
of Thompson and Hsu teaches or suggests “said addresses being contiguous
or not”?

ANALYSIS
Based upon Appellants’ arguments, our analysis is discussed with
respect to representative claim 12. The Examiner finds Thompson teaches
providing a file system in a recording medium, and further teaches providing
a cache in the recording medium. Ans. 5, 11. However, the Examiner finds
Thompson does not disclose prefetching a cache memory, but finds Hsu
makes up for this deficiency. Id. 5–6, 11–12.
First Issue
Appellants contend the combination of Thompson and Hsu fails to
teach or suggest “a stand-alone file system” for “controlling prefetching of []
cache memory” because prefetching in Hsu is controlled by a sequential
detector instead of by a file system. App. Br. 8. In making this distinction
between Hsu and the claim language, Appellants individually attack Hsu and
do not address the Examiner’s actual rejection, which is based on the
combined teachings and suggestions of Thompson and Hsu. In particular,
the Examiner finds it would have been obvious to modify the peripheral file
system in Thompson to control prefetching of the cache. Ans. 11, 12.
Accordingly, Appellants’ argument that prefetching is controlled by a
sequential detector in Hsu is not persuasive of Examiner error because it
does not adequately address whether it would have been obvious to a person
of ordinary skill in the art at the time to modify Thompson’s file system to
control prefetching.
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Likewise, Appellants’ argument that compression, taught in
Thompson, is not the same as prefetching is not persuasive of reversible
error because it does not adequately address whether it would have been
obvious to modify Thompson’s file system to prefetch. As the Examiner
points out, Thompson teaches that compression is only one potential
enhancement of a peripheral file system, but that other file system
enhancements may be applied to the peripheral file system of Thompson.
Ans. 13.
Accordingly, we are not persuaded the Examiner reversibly erred in
finding the combination of Thompson and Hsu teaches or suggests “a stand-
alone file system” for “controlling prefetching of [] cache memory.”
Second Issue
Appellants contend the combination of Thompson and Hsu fails to
teach or suggest “said [prefetch] addresses being known by said stand-alone
file system” because Hsu does not use a file system to prefetch the cache.
App. Br. 8, 9. For reasons we discuss supra, we are not persuaded of error
because Appellants do not persuasively address the Examiner’s actual
rejection to establish the insufficiency of the combination. The Examiner
finds Thompson teaches that the peripheral file system knows the addresses
of data on the recording medium, and that the peripheral file system may be
modified to control prefetching. Ans. 12.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Thompson and Hsu teaches or suggests “said [prefetch]
addresses being known by said stand-alone file system.”
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Third Issue
Appellants contend the combination of Thompson and Hsu fails to
teach or suggest “said addresses being contiguous or not” because Hsu
teaches only contiguous addresses when prefetching, but does not teach the
addresses being “not” contiguous. App. Br. 9. Appellants’ argument is not
commensurate with the scope of representative claim 12. In particular, the
Examiner finds the recitation “said addresses being contiguous or not” is met
if the addresses are contiguous. Ans. 13 (emphasis omitted). We agree.
The language “contiguous or not” is met if either of the two conditions is
met. In this case, the first condition is met.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Thompson and Hsu teaches or suggests “said addresses
being contiguous or not.”
We therefore sustain the Examiner’s rejection of (1) independent
claim 12; (2) dependent claims 13, 15, and 22 for which Appellants do not
raise new issues (App. Br. 9, 10); (3) dependent claim 16 for which
Appellants do not raise new issues (id. 10); (4) dependent claim 17 for
which Appellants do not raise new issues (id. 10); and (5) dependent claims
19–21 for which Appellants do not raise new issues (id. 10, 11).

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DECISION
The Examiner’s decision rejecting claims 12, 13, 15–17 and 19–22 is
AFFIRMED.
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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