Ex Parte Gujarathi et al

Patent Trial and Appeal Board

Mar 24, 2014

11395499 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANOJ SHARAD GUJARATHI,
CHARLES T. PERUSSE JR.,
BRENT SCHROEDER,
and WEIJIA ZHANG
____________

Appeal 2011-011191
Application 11/395,499
Technology Center 2100
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR, and
CATHERINE SHIANG, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011191
Application 11/395,499

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1-20, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to dynamically managing a
utility partition. Spec. 1:2-6.
Claim 1 is illustrative:
1. An information handling system comprising:
a first memory resource having a partition, the partition
having at least one utility application stored thereon;
the partition having a set-up resource operable to
configure the first memory resource;
the partition also having a configuration module operable
to:
in response to a user-initiated request to configure
the first memory resource, replicate only the partition onto a
second memory resource associated with the information
handling system; and
restore the partition on the first memory resource
from the partition replicated on the second memory resource
after the configuration of the first memory resource.

Appellants appeal the following rejections:
R1. Claims 1, 3-9, and 12-17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yanai (US 6,647,474 B2, Nov. 11, 2003), Ott (US
6,823,450 B2, Nov. 23, 2004), and Alan (Save Email Before Reformat
Computer?, online forum comments (Jan. 4, 2001),
Appeal 2011-011191
Application 11/395,499

3
http://www.computing.net/answers/windows-me/save-email-before-
reformat-computer/4213.html (last visited Jan. 13, 2010));1
R2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yanai, Ott, Alan, and Biessener (US 6,701,456 B1, Mar.
2, 2004);
R3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yanai, Ott, Alan, and Schreck (US 6,493,160 B1, Dec. 10,
2002);
R4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yanai, Ott, Alan, and Moore (US 6,760,827 B2, July 6,
2004);
R5. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yanai and Alan; and
R6. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yanai, Ott, Alan, and Moore.

ANALYSIS
Claims 1-20
Issue: Did the Examiner err in finding that the cited art, particularly
Alan, teaches and/or suggests the partition also having a configuration
module operable to: in response to a user-initiated request to configure the
first memory resource, replicate only the partition onto a second memory, as
set forth in claim 1?

1 Page number references to Alan are to the printed pages as they appear in
the record.
Appeal 2011-011191
Application 11/395,499

4
Appellants contend that “[i]t is clear in Alan that the email messages
and addresses are to be copied before ‘Tommy’ issues a reformatting
request, and are not copied in response to ‘Tommy’ issuing a reformatting
request” (App. Br. 7). In response, the Examiner finds that “[t]here is no
clear indication in the claims as to what, where, or who receives the user-
initiated request. There is indication that the [Appellants] might mean for
the configuration module to receive the user-initiated request, but the claim
does not require it” (Ans. 20). The Examiner further finds that “[a] program
or computer device receiving a request to reconfigure a memory is the same
as a person thinking they want to reconfigure the memory” (id. at 20-21).
On the record before us, we agree with the Examiner’s conclusion of
obviousness with regard to claim 1. We note at the outset that claim 1
recites, inter alia, “the partition also having a configuration module operable
to: in response to a user-initiated request to configure the first memory
resource, replicate only the partition onto a second memory resource
associated with the information handling system . . . .” It has been held that
the recitation “operable to” is directed to functional claim language, which
is not entitled any patentable weight.2 At best, such recitation is a statement

2See Superior Industries, Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046
at *5 (Fed. Cir. Jan. 16, 2014) (Rader, J., concurring) (“[A] system claim
generally covers what the system is, not what the system does. Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990);
see also Roberts v. Ryer, 91 U.S. 150, 157[] (1875) (‘The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.’). Thus, it is
usually improper to construe non-functional claim terms in system claims in
a way that makes infringement or validity turn on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).
Appeal 2011-011191
Application 11/395,499

5
of intended use,3 which merely indicates the capability or intent to replicate
only the partition onto a second memory resource associated with the
information handling system, in response to a user-initiated request to
configure the first memory resource, as argued by Appellants. Therefore,
because Appellants’ arguments are not commensurate with the scope of the
claim, these arguments are not persuasive. This is equally applicable to
independent claim 13, which also includes the operable to language.
Further, even if we give patentable weight to the recited limitation,
which we will for independent method claim 18, such recitation would be
met fully by an equivalent prior art structure disclosed in the Yanai-Ott-Alan
combination, which appears to be capable of performing the recited
functions. In particular, we agree with the Examiner that the claims do not
require that the user-initiated request be sent to a configuration module (see
Ans. 20).
Here, Appellants emphasize that in Alan the email messages are
copied before any reformatting request is issued (see App. Br. 7). However,
the Examiner has shown that in Alan, the user’s goal is to format his
computer, which results in him asking if anyone knows how to save email

3 Our reviewing court has held that a statement of intended use in an
apparatus claim cannot distinguish over a prior art apparatus that discloses
all the recited structural limitations and is capable of performing the recited
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We
also note that “[a]n intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although “[s]uch statements often . . . appear in the claim’s preamble,” a
statement of intended use or purpose can appear elsewhere in a claim. In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Appeal 2011-011191
Application 11/395,499

6
(see Ans. 6-7, citing Alan pgs. 1-3). For example, in Alan, the user is
instructed to “copy and paste them onto floppy disks. . . . [T]hey will look
[ok again] when copied back into your inbox in express” (Alan, pg. 3). In
Alan, it appears that the user knows he must save data before reformatting
his computer, but simply does not know how to save his emails.
The Examiner concluded, and we agree, that claim 1 does not require
that the request be sent to a configuration module, only that an initial request
be received somewhere, and Alan discloses such a request, albeit to another
individual. Appellants do not specifically address the Examiner’s finding
that the “user-initiated request” does not necessarily have to go to the
configuration module itself.
In addition, we emphasize that a claimed invention is not patentable if
it merely automates a prior art process. Broadly providing an automatic way
to replace a manual activity accomplishing the same result is not sufficient
to distinguish an automated process over the prior art. In re Venner, 262
F.2d 91, 95 (CCPA 1958). Here, automating replicating a partition
accomplishes the same result as manual copying of the partition.
As for Appellants’ contention that “the proposed modification of
Yanai by Alan would render Yanai unsatisfactory for its intended purpose of
transparent retention and recovery of data with little to no human
intervention” (App. Br. 8), we agree with the Examiner that “Yanai does
provide for a little human intervention, just not a lot” (Ans. 21).
Specifically, Yanai discloses that “data recovery after a disaster is nearly
instantaneous and requires little, if any, human intervention” (Col. 3, l. 66 to
col. 4, l. 1).
Appeal 2011-011191
Application 11/395,499

7
An argument that the system is rendered “unsuitable for its intended
purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board’s proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose. ”). The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). We do not find this to be the situation before
this Board for the reasons noted supra.
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 1 for essentially the reasons indicated by the
Examiner. Appellants have not presented separate arguments for claims 2-
20. Therefore, these claims fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 103(a) rejections.
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

msc