Ex Parte Dirscherl et al

Patent Trial and Appeal Board

Feb 7, 2014

11125819 (P.T.A.B. Feb. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte GERD DIRSCHERL, CHRISTIAN PETERS,
and HOLGER SEDLAK
_____________

Appeal 2011-007365
Application 11/125,819
Technology Center 2100
______________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007365
Application 11/125,819

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1 and 3-8. Claim 2 has been cancelled.
We affirm.
INVENTION
The invention is directed to a method for operating a memory
arrangement. See pages 2 and 3 of Appellants’ Specification. Claim 1 is
representative of the invention and reproduced below:
1. A computer-implemented method for operating a
memory arrangement having a nonvolatile memory and at least
one address translation unit, the nonvolatile memory having
memory pages and at least one additional memory page, the
memory pages and the additional memory page having physical
addresses and having logical addresses which are translated into
the physical addresses in the address translation unit, the
method comprising:
storing within an unaddressable area in each of the
memory pages and in the additional memory page in the
nonvolatile memory the logical addresses assigned to the
physical addresses of the memory pages and of the additional
memory page, and respective counters;
for the purposes of programming a memory page, storing
a copy of data and a copy of the data of the unaddressable area
of the memory page in a further memory, and processing the
memory page in the further memory by changing the data in the
unaddressable area by incrementing the counter; and
once processing has been completed, storing the
processed copy of the data and the changed data of the
unaddressable area in the additional memory page,
wherein if a plurality of memory pages have identical
logical addresses, the memory page of the plurality of memory
pages having the counter with the highest value contains valid
data.

Appeal 2011-007365
Application 11/125,819

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REJECTIONS AT ISSUE1
The Examiner has rejected claims 1 and 3-8 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Rej. 2-3; Ans. 13-16.2
The Examiner has rejected claims 1 and 3-8 under 35 U.S.C. § 102(b)
as anticipated by Kim (US 6,381,176 B1, Apr. 30, 2002). Ans. 3-11.

ANALYSIS
Rejection under 35 U.S.C. § 112
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in determining that several
of the limitations of claims 1, 4, and 8 render them ambiguous.
Notably, we concur with the Examiner that it is ambiguous as to
whether “storing” in the claim 1 recitation of “storing within an
unaddressable area in each of the memory pages and in the additional
memory page in the nonvolatile memory the logical addresses assigned to

1 Throughout this opinion we refer to Appellants’ Appeal Brief (“App. Br.”)
dated August 10, 2010, Appellants’ Reply Brief (“Reply Br.”) dated January
10, 2011, the Final Rejection (“Final Rej.”) dated March 15, 2010, and the
Examiner’s Answer (“Ans.”) dated November 10, 2010.

2 We note that in the Grounds of Rejection section of the Answer the
Examiner did not repeat the statement of the § 112 rejection; however, the
Examiner responded to Appellants’ arguments regarding the § 112 rejection
in the Response to Arguments section of the Answer (Ans. 13-16). In view
of the Examiner’s response to Appellants’ arguments, we find that the
failure to repeat the § 112 rejection was an inadvertent and harmless error.
Appeal 2011-007365
Application 11/125,819

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the physical addresses of the memory pages and of the additional memory
page, and respective counters” is referring to (1) within “an unaddressable
area in each of the memory pages” and within “the additional memory
page”; or (2) within “an unaddressable area in each of the memory pages”
and within “an unaddressable area of the additional memory page.” Ans. 14
(internal quotation marks omitted). Claim 8 recites similar language.
Similarly, it is unclear in claims 1, 4, and 8 (claim 1, lines 11, 14;
claim 4, line 4; and claim 8, lines 11, 13, and 23) whether the unaddressable
area is referring to (1) the unaddressable area in each of the memory pages;
or (2) the unaddressable area of the memory page; or (3) the unaddressable
area of the memory page in a further memory. Ans. 15-16.
Thus, each of these claim limitations is subject to more than one
interpretation. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex Parte Miyazaki 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Appellants’ arguments on pages 2 and 3 of the Reply Brief identifying
how the Specification provides support for the limitations and asserting that
the claims are definite when interpreted in light of the Specification have not
persuaded us of error in the Examiner’s rejection. As discussed above, the
claim is subject to more than one reasonable interpretation. While
Appellants may have intended only one of the interpretations, the claim is
not so limited. 35 U.S.C. § 112, second paragraph “puts the burden of
precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d
Appeal 2011-007365
Application 11/125,819

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1048, 1056 (Fed. Cir. 1997). During patent prosecution an applicant has the
opportunity to amend the claims in order to overcome indefiniteness
rejections. Exxon Research & Eng’g. Co. v. U.S., 265 F.3d 1371, 1380 (Fed.
Cir. 2001) (citing In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)).

Rejections under 35 U.S.C. § 102
We do not reach the merits of the anticipation rejections of claims 1
and 3-8. A rejection should not be based on “speculations and
assumptions.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). “All words in
a claim must be considered in judging the patentability of that claim against
the prior art. If no reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become obvious—the claim
becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Speculations and assumptions would be required to decide the meaning of
the terms employed in the claims and the scope of the claims. Therefore, we
conclude that the indefiniteness of claims 1 and 3-8 prevents us from
reaching the issues of anticipation. Consequently, we reverse pro forma the
anticipation rejections of claims 1 and 3-8.
It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy or the inadequacy of the prior art evidence applied in
support of the rejection before us. Once definite claims are presented, the
Examiner is free to apply the same, different, or additional prior art if the
Examiner so chooses.

Appeal 2011-007365
Application 11/125,819

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DECISION
The decision of the Examiner to reject claims 1 and 3-8 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) (2011).

AFFIRMED

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