Ex Parte Lu

Board of Patent Appeals and Interferences

Aug 23, 2012

11220731 (B.P.A.I. Aug. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/220,731 09/07/2005 Paul Yang Lu 3875.0800000 4292
26111 7590 08/24/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
TRAN, DENISE
ART UNIT PAPER NUMBER
2188
MAIL DATE DELIVERY MODE
08/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PAUL YANG LU

________________

Appeal 2010-004035
Application 11/220,731
Technology Center 2100
________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004035
Application 11/220,731

2
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-9, 11-15, 17-25, and 27-311, which stand rejected
under 35 U.S.C. § 102(b) as anticipated by Chang et al. (US 6,754,765 B1,
June 22, 2004) (“Chang”).
We reverse and enter a NEW GROUND of rejection pursuant to
37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
The Examiner rejected independent claims 1 and 17, and dependent
claims 2-16, and 18-32 for substantially the same reasons. We therefore
select independent claim 1 as representative of the invention:

1. A method for communicating data, the method
comprising:

interleaving accesses to a plurality of mass storage
devices communicatively coupled to a portable media
processing device; and

interleaving transfer of data corresponding to said
interleaved accesses to said plurality of mass storage devices
communicatively coupled to said portable media processing
device, wherein:

a first portion of said data from a first mass storage
device is communicated to and/or from system memory
via a first dedicated buffer that is external to said first
mass storage device; and

1 The Examiner’s rejection of claims 10, 16, 26, and 32 as unpatentable
under 35 U.S.C. § 102(b) have been withdrawn by the Examiner. Ans. 3.
Appeal 2010-004035
Application 11/220,731

3

a second portion of said data from a second mass
storage device is communicated to and/or from said
system memory via a second dedicated buffer that is
external to said second mass storage device.

App. Br. 26.

ISSUE
Appellant contends that the Examiner erred in rejecting claim 1 as
unpatentable under 35 U.S.C. § 102(b) as anticipated over Chang.
Specifically, Appellant argues that the Examiner erred in finding that Chang
explicitly discloses or teaches claim 1’s limitation of interleaving accesses
to plurality of mass storage devices. App. Br. 11. Furthermore, Appellant
contends that the Examiner also erred in finding that Chang teaches or
discloses “a first portion of said data from a first mass storage device is
communicated to and/or from system memory via a first dedicated buffer
that is external to said first mass storage device; and a second portion of
said data from a second mass storage device is communicated to and/or
from said system memory via a second dedicated buffer that is external to
said second mass storage device,” as recited in the Applicant's claim 1. Id.
(underline in original).
The Examiner responds that Chang teaches a first portion of data
from a plurality of flash memory chips (flash chips 410 and 420 or arrays
411 and 421) are communicated to and/or from system host computer 130
via a buffer memory 107. Ans. 11. Furthermore, the Examiner found that
Chang teaches the buffer memory 107 being used as a dedicated buffer,
pointing to Chang’s recitation that “memory 107 can be 4KB of data as a
Appeal 2010-004035
Application 11/220,731

4
data buffer.” Id. Finally, the Examiner found that the buffers 413 and 423
depicted in Chang’s Fig. 4a are external to memory arrays 411 and 421
respectively. Ans. 14.
The issue before the Board, then, is whether the Examiner erred in
finding that Chang teaches or discloses “interleaving accesses to a plurality
of mass storage devices … wherein … a first portion of said data from a
first mass storage device is communicated to and/or from system memory
via a first dedicated buffer that is external to said first mass storage device;
and a second portion of said data from a second mass storage device is
communicated to and/or from said system memory via a second dedicated
buffer that is external to said second mass storage device.”

ANALYSIS
We are not persuaded by the Examiner’s reasoning. As explained by
Appellant, Chang teaches and discloses a single flash memory mass storage
device (MSD) 140 containing a plurality of chips of flash memory 410 and
420 to read or write data sent to or from the flash memory MSD. See App.
Br. 12. Data written to the flash memory MSD is interleaved between the
arrays of the chips 410 and 420. Id. The buffers (413 and 423) of the flash
memory chips 410 and 420 are depicted in Chang’s Fig. 4a as being integral
to the chips contained within the flash memory MSD 140 and not external
to the MSD, as recited in claim 1’s limitation. App. Br. 9.
Furthermore, Chang teaches and discloses a buffer 107 located in the
interface unit and external to the flash memory MSD. App. Br. 8. Data
being read to or from the flash memory storage device “through interface
110 is received by error correction block 109 …. Data can then be
Appeal 2010-004035
Application 11/220,731

5
transferred from error correction block 109 to buffer region 107 of memory
block 108.” Id. (emphasis omitted) (quoting Chang, col. 3-4, ll. 50-13).
The Examiner found that the buffer 107 meets the recited limitation of a
dedicated buffer that is external to said first or second mass storage device
because “memory 107 can be 4KB of data as a data buffer.” Ans. 11.
We agree with the Examiner that Chang’s teaching and disclosure of
a flash memory MSD 140 that transfers data to and from the memory buffer
107, which reserves 4KB of data as a data buffer, meets the recited
limitation of “a first portion of said data from a first mass storage device is
communicated to and/or from system memory via a first dedicated buffer
that is external to said first mass storage device.” However, claim 1 also
recites a “plurality of mass storage devices” and “a second dedicated buffer
that is external to said second mass storage device.” Chang does not teach a
plurality of mass storage devices, only a single flash memory MSD that
may have multiple integral flash memory chips. Moreover, Chang does not
teach a second dedicated buffer communicating data to and/or from a
second mass storage device, only a single buffer 107 with 4KB of data as a
data buffer. Therefore, Chang does not disclose all of the limitations of
claim 1.

NEW GROUND OF REJECTION
We enter the following new ground of rejection for independent
claims 1 and 17 under the provisions of 37 CFR § 41.50(b).
Claims 1 and 17 are rejected under 35 U.S.C. § 103(a) as being
obvious over Chang. As discussed supra, Chang teaches and discloses
claim 1’s recited limitation of “interleaving transfer of data …wherein … a
Appeal 2010-004035
Application 11/220,731

6
first portion of said data from a first mass storage device is communicated
to and/or from system memory via a first dedicated buffer that is external to
said first mass storage device.” We find that it would have been obvious to
a person of ordinary skill in the contemporaneous art to add additional mass
storage devices and dedicated buffers, in effect paralleling the explicit
teachings and disclosures of Chang and thereby reading on all of the
limitations of independent claims 1 and 17.
Appellant provides no argument or evidence, either in the
specification or elsewhere in the record before us, that adding additional
mass storage devices and dedicated buffers would have posed a significant
or unexpected difficulty for an artisan of ordinary skill to overcome, or in
support of any other secondary considerations of nonobviousness. As a
result, we find that it would have been obvious for a person of ordinary skill
in the contemporaneous art to add additional mass storage devices and
dedicated buffers, paralleling the explicit teachings and disclosures of
Chang. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). This
modification is simply a combination of familiar elements according to
known methods which produces nothing more than predictable results. Id.
at 416. Consequently, we conclude that claims 1 and 17 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Chang.
We have entered the new grounds only for the independent claims
and leave it to the Examiner to evaluate the patentability of the other claims
in view of this reference alone or in combination with other newly found or
previously cited references.

Appeal 2010-004035
Application 11/220,731

7
CONCLUSION
On the record before us, we find that the Examiner erred in rejecting
claim 1 because Chang does not disclose the disputed claim limitations.
Therefore, we do not sustain the 35 U.S.C. § 102(b) rejection of claims 1
and 17, nor any of the rejections of dependent claims of claims 2-16, and
18-32. Claims 1 and 17 are newly rejected.

DECISION
The Examiner’s rejection of claims 1-32 under 35 U.S.C. §102(b) as
being anticipated by Chang is reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claims 1 and 17 under 35 U.S.C. § 103(a) as being obvious
over Chang.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Appeal 2010-004035
Application 11/220,731

8
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

REVERSED
37 C.F.R. § 41.50(b)

msc