Ex Parte Harvin et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10862087 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADGER ERIK HARVIN III, RAJIV N. KATESAIA,
and JOSEPH KINMAN LEE
____________

Appeal 2009-007714
Application 10/862,087
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY,
and JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007714
Application 10/862,087

2
The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-4, 6-12, 14-20, and 22-26. Claims 5, 13, and 21 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and devices for
receiving data from a server in a group of servers (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A service processor-implemented method comprising the
acts of:

receiving new data from a server in a group of servers;

comparing the new data to corresponding previous data from
the server to identify which new data, if any, is different from
the previous data; and

based on the comparing act, analyzing at least some of the new
data that is different from the previous data, wherein the
comparing act comprises establishing primary status bits, the
primary status bits having three possible values, namely, a first
value indicating no difference between the new data and
previous data, a second value indicating a single difference
between the new data and previous data, and a third value
indicating all elements in the new data are different than
corresponding elements in the previous data, the primary status
bits being accessible to execute the analyzing act.
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The References
The Examiner relies on the following references as evidence:
Schneider US 2002/0038334 A1 Mar. 28, 2002
Maher US 2002/0105910 A1 Aug. 8, 2002
Cypher US 2004/0088636 A1 May 6, 2004

The Rejection
The following rejection is before us for review:
Claims 1-4, 6-12, 14-20, and 22-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Maher,
Schneider, and Cypher.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

II. ISSUE
Has the Examiner erred in finding that the combination of Maher,
Schneider, and Cypher teaches or fairly suggests “the primary status bits
having three possible values, namely, a first value indicating no difference
between the new data and previous data, a second value indicating a single
difference between the new data and previous data, and a third value
indicating all elements in the new data are different than corresponding
elements in the previous data,” as recited in claim 1?

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III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.
The PTO’s construction here, though certainly broad, is
unreasonably broad. The broadest construction rubric coupled
with the term “comprising” does not give the PTO an unfettered
license to interpret claims to embrace anything remotely related
to the claimed invention. Rather, claims should always be read
in light of the specification and teachings in the underlying
patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311
U.S. 211, 217, 61 S.Ct. 235, 85 L.Ed. 132 (1940).

In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).

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Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Schneider
1. Schneider discloses a network computer system for controlling
a remote computer to reduce network traffic (Abstract), wherein the status
bits used to indicating the status of the block in the screen of the remote
computer (fig. 7a):
Additional processing performed by the intelligent
digitizer 75 is the analysis of the blocks. As shown in FIG. 7a,
the system maintains at least two status bits per block, although
other status bits are also possible. The first status bit indicates
which blocks have changed (either with or without filtering).
This bit acts as a “dirty” bit in a cache. This bit can be
separated into two bits if the system is to track which blocks
have changed at all versus which blocks have changed more
than the threshold. This threshold may be (1) global for the
whole screen or (2) specific to particular blocks. Moreover, this
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threshold may be updated dynamically either (1) at a user’s
request or (2) in response to an automatic adjustment of
parameters to change performance characteristics.

(¶ [0079]) (emphasis added).
Cypher
2. Cypher discloses a method and device for checking whether
the received data has changed:
Generally, the auxiliary check bits may be used to
identify the failure of a memory device, and to reconstruct the
data bits which were stored in the failed memory device. For
example, row check bits may be the XOR of each other bit in
the same row, and thus may detect that a given bit in the row
has changed (e.g. due to the failure of the memory device
which stores that bit). By XORing the other bits in the row and
the row check bit, the changed bit may be reconstructed.

(¶ [0049]) (emphasis added).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
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Grouping of Claims
The Appellants have elected to argue claims 1-4, 6-12, 14-20, and
22-26 together as a group (App. Br. 4). Therefore, we select independent
claim 1 as the representative claim for this group, and we will address the
Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37(c)(1)(vii).
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections
We start our review by first determining the appropriate scope of the
argued claim limitations in the independent claims.
First, the claims themselves do not define the argued terms.
Therefore, we have an obligation to construe the terms with broad yet
reasonable interpretations.
Furthermore, in light of the breadth of Appellants’ Specification, we
broadly but reasonably construe the claimed limitations “data” as any data,
row, column, block or even whole display screen; and “primary bits” as any
bits2; and “value” as any bit value to indicate the status of data.
We now address the merits of the Appellants’ contentions under our
claim construction.
With respect to claim 1, the Appellants contend that Schneider only
teaches that the first bit indicates which blocks have changed, however, does
not indicate no change as required by the claim language (App. Br. 5; Reply
Br. 1). The Appellants further contend that Cypher’s check bits “are

2 Note that the primary bits would be more than one binary bit to create three
values.
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intended to identify a single error regardless of changes from some baseline,
as opposed to indicating non-erroneous changes, much less indicating that
all bits have changed.” (App. Br. 6) (emphasis omitted).
We disagree with the Appellants’ contentions. We find Schneider
teaches that the first status bit can be separated into two bits, which one bit
can be used for indicating whether the data received has changed, and
another bit can be used for indicating the data has changed to a threshold (FF
1). In our view, the bit indicating whether the data has changed is inherently
indicating whether the data has not changed because the value of the binary
bit is either 0 or 1 for the status of the data has changed or not changed. We
also view that the threshold could reach whole screen or whole block of the
data as indicated by Schneider (FF 1) when the data change reaches the
threshold. In that situation, the second bit would indicate the status of all the
data has changed (FF 1). We also find Cypher teaches that a status bit is
used to indicate one bit in a row of data has changed (FF 2), which reads on
the claimed bit value under our claim construction. Therefore, we conclude
that Schneider and Cypher together disclose the disputed limitations.
The Appellants further contend that the primary reference Maher
appears to work just fine without Schneider’s teachings, thus, there would be
no reason to modify Maher using Schneider (App. Br. 8-9). In addition,
“Maher itself never even mentions the word ‘error’ so plainly the skilled
artisan would have no reason to believe that Cypher bears any particular
relevance to Maher,” except exercising hindsight reconstruction (id. at 9).
We disagree with the Appellants’ contentions. The Supreme Court
noted that an obviousness analysis “need not seek out precise teachings
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directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. The
knowledge that utilizing three status bit values to indicate the three status
values/states of the data would have been within the skill in the art, as
evidenced by Schneider and/or Cypher. We also find that the combination
of Maher, Schneider, and Cypher is “a design step well within the grasp of a
person of ordinary skill in the relevant art” and the benefit of doing so would
be obvious. Id. at 427. The Appellants have not shown that employing the
status bit values to indicate the status of the data being processed taught by
Schneider and/or Cypher in the content data processing system of Maher is
uniquely challenging or difficult for one of ordinary skill in the art or
represents an unobvious step over the prior art. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
We, therefore, find that combining the well-known elements of the
status bit values to indicate the status of the data with the well-known
technique of content data processing taught by Maher is nothing more than a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. We also sustain the Examiner’s obviousness rejection of
independent claims 10 and 19, which contain similar limitations, and the
Appellants present similar arguments thereto. We further sustain the
Examiner’s obviousness rejection of dependent claims 2-4, 6-9, 11, 12, 14-
18, 20, and 22-26, which have not been separately argued, and fall with
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their base claims. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 at
1572.

VI. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellants’
countervailing evidence and arguments for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1-4, 6-12, 14-20,
and 22-26 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).

VII. DECISION
We affirm the obviousness rejections of claim 1-4, 6-12, 14-20, and
22-26 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
msc

DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS, TX 75380