Ex Parte Dorfman et al

Patent Trial and Appeal Board

Jun 28, 2018

14603630 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/603,630 01/23/2015
115309 7590 07/02/2018
W &T/Qualcomm
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Konstantin Dorfman
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.
147115/1173-232 1795
EXAMINER
GOLDSCHMIDT, CRAIG S
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
patents@wt-ip.com
us-docketing@qualcomm.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONSTANTIN DORFMAN and ASSAF SHACHAM
Appeal2018-001443
Application 14/603,630
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as QUALCOMM Inc. App.
Br. 2.
Appeal2018-001443
Application 14/603,630
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates generally to universal flash storage
(UPS) and embedded multimedia card (eMMC) storage devices." (Spec.
,r 1).
Illustrative Claim
1. A storage controller for controlling a storage device,
compnsmg:
a first host controller interface (HCI) coupled to a
virtualized resource manager;
one or more second HCis configured to be coupled to
one or more clients, respectively; and
a virtualization layer communicatively coupled to the
first HCI and the one or more second HCis;
wherein the storage controller is configured to trap a
storage resource request received from a client among the one
or more clients and provide the storage resource request to the
virtualized resource manager; and
wherein the virtualization layer is configured to:
receive a virtual resource allocation for the client and a
physical resource allocation in the storage device in a spoofed
storage resource response;
record the virtual resource allocation and the physical
resource allocation in a storage resource mapping table; and
provide the spoofed storage resource response
comprising the virtual resource allocation to the client, wherein
the spoofed storage resource response is configured to fool the
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client to believe that no other client among the one or more
clients is sharing the storage device.
(Emphasis added regarding contested limitations).
Rejections
A. Claims 1, 2, 11, 14, 15, 19, and 21 are rejected under 35 U.S.C.
§ 103 as being obvious over the combined teachings and
suggestions of Serebrin et al. (US 2012/0278525 Al; publ. Nov. 1,
2012) (hereinafter "Serebrin") and North (US 2012/0271615 Al;
publ. Oct. 25, 2012).
B. Claims 3-5 and 16 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Serebrin,
North, and Yoo et al. (US 2014/0082267 Al; publ. Mar. 20, 2014)
(hereinafter "Yoo").
C. Claim 6 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Serebrin, North, Yoo,
and Roden et al. (US 9,286,079 Bl; publ. Mar. 15, 2016)
(hereinafter "Roden").
D. Claim 7 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Serebrin, North, and
Yamagishi et al. (US 2013/0073793 Al; publ. Mar. 21, 2013)
(hereinafter "Yamagishi").
E. Claims 8-10, 17, and 18 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of
Serebrin, North, Yamagishi and Blumenau et al. (US 2002/0007445
Al; publ. Jan. 17, 2002) (hereinafter "Blumenau").
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F. Claims 12, 13, and 20 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Serebrin,
North, Walter et al. (US 2004/0085955 Al; publ. May 6, 2004)
(hereinafter "Walter") and Nation et al. (US 2010/0161879 Al;
publ. June 24, 2010) (hereinafter "Nation").
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented.
Claim 1 rejected under§ 103
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding
Serebrin and North collectively teach or suggest the contested limitations "a
virtualization layer" and "a virtualized resource manager" within the
meaning of representative claim 1 ?2 Emphasis added.
Appellants contend, inter alia:
The Patent Office asserts that Figure 2 of Serebrin,
reproduced below, teaches the "virtualized resource manager"
and the "virtualization layer" in claim 1. Specifically, in page 3
of the Final Office Action, the Patent Office equates the
"virtualized memory management unit (MMU)" in Serebrin
with the "virtualized resource manager" in claim 1. In page 4 of
the Final Office Action, the Patent Office equates both the
"hypervisor' and the "virtual memory managers [VMM]" in
Serebrin with the "virtualization layer" in claim 1.
App. Br. 8.
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Our reviewing court guides that "[b ]oth anticipation under § 102 and
obviousness under § 103 are two-step inquiries. The first step in both
analyses is a proper construction of the claims .... The second step in the
analyses requires a comparison of the properly construed claim to the prior
art." Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003)
( citations omitted).
Here, as an initial matter of claim construction, the Examiner
concludes:
it is noted that it is not clear how the "virtualized resource
manager" and "virtualization layer" differ; [the] Examiner
interprets the entire virtualization system, including the
hypervisor, VMM, and virtualized MMUs as being part of the
virtualization layer; as these components also manage virtual
resources, [the] Examiner also interprets them as being
"virtualized resource managers."
Ans. 23.
We find the dispositive issue in this appeal turns upon the Examiner's
claim interpretation that conflates the two similar (but different) claim terms
"virtualized resource manager" and "virtualization layer" to mean the same
thing.
As recently emphasized by our reviewing court in Smith:
Even when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims "so broadly
that its constructions are unreasonable under general claim
construction principles." Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015). "[T]he protocol of
giving claims their broadest reasonable interpretation ... does
not include giving claims a legally incorrect interpretation"
"divorced from the specification and the record evidence." Id.
(citations and internal quotation marks omitted); see PPC
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Application 14/603,630
Broadband, Inc. v. Corning Optical Commc 'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) ( citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259---60 (Fed. Cir. 2010).
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Applying our reviewing court's guidance here, and based upon our
review of the record, we conclude the Examiner's interpretation of the
disputed claim terms is overly broad and inconsistent with the Appellants'
Specification. We find Appellants' Specification (i-f 1 7) describes the
virtualization layer 16 (which may be a Hypervisor) and the virtualized
resource manager 22 as distinct elements, as also clearly depicted in
Figure 1.
Given the aforementioned context and support in the Specification
(i-f 17, Fig. 1 ), we conclude the broadest reasonable interpretation of the
disputed claim terms "virtualized resource manager" and "virtualization
layer" (claim 1), that is "consistent with the specification," Morris, 127 F.3d
at 1054, is that these claim terms are separate and discrete elements, and not
the same element. See supra, n.2.
Our reviewing court further guides that the use of two similar but
different terms "in close proximity in the same claim gives rise to an
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inference that a different meaning should be assigned to each." Bancorp
Servs., L.L.C. v. Hariford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir.
2004). Therefore, we conclude the Examiner's broader claim interpretation
is overly broad, unreasonable, and inconsistent with the Specification.
Ans. 23.
On this record, we find a preponderance of the evidence supports
Appellants' arguments regarding the two contested claim terms of
"virtualized resource manager" and "virtualization layer," as being
improperly construed by the Examiner. App. Br. 8.
We note independent claim 15 recites the aforementioned contested
limitations of claim 1 in similar form having commensurate scope. We also
note independent claim 14 recites the contested limitations of claim 1 in
similar form ("means for virtualization" and "means for allocating virtual
resource") having commensurate scope.
Accordingly, we are constrained on this record to reverse the
Examiner's§ 103 rejection of independent claims 1, 14, and 15 on appeal.
Because we have reversed the rejection of all independent claims on appeal,
for the same reasons, we reverse the Examiner's § 103 rejections of all
dependent claims on appeal.
DECISION
We reverse the Examiner's decision rejecting claims 1-21 under 35
U.S.C. § 103.
REVERSED
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