Ex Parte MEREDITH et al

Patent Trials and Appeals Board

Jul 31, 2017

14169886 - (D) (P.T.A.B. Jul. 31, 2017)

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.
14/169,886 01/31/2014 Jason MEREDITH 070852.000028 5659
125968 7590 08/02/2017
Vorys, Sater, Seymour and Pease LLP
(ImgTec)
1909 K St., N.W.
Ninth Floor
Washington, DC 20006
EXAMINER
DOAN, HAN V
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
patlaw @ vorys. com
vmdeluc a @ vorys. com
rntisdale@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON MEREDITH and HUGH JACKSON
Appeal 2017-007945
Application 14/169,8861
Technology Center 2100
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 3—20, which constitute all claims pending in
the application. Claim 2 has been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Imagination Technologies Limited as the real party in
interest. App. Br. 1.
Appeal 2017-007945
Application 14/169,886
STATEMENT OF THE CASE
The Claimed Invention
Appellants’ invention relates to an improved mechanism for copying
data in memory using cache line aliasing. Abstract; Spec. 1—3. Claim 1
is representative of the invention and the subject matter of the appeal, and
reads as follows:
1. A method of accessing data from a first memory location
to be copied to a second memory location of a memory,
comprising:
accessing, by a cache, data stored at the first memory
location; and
storing the data in the cache in a cache line associated
with the second memory location and not associated with the
first memory location, so that in response to a request for data
stored at the second memory location, the cache returns the data
stored in the cache line as the data stored in the second memory
location when the data is stored in memory only in the first
memory location, wherein the first memory location and the
second memory location are different locations within the
memory.
App. Br. 11 (Claims App.).
The Rejections on Appeal
Claims 1, 3, 6—13, and 15—20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nishihara et al. (US 2006/0087893 Al; Apr.
27, 2006) (“Nishihara”) and Takahashi (US 2006/0075291 Al; Apr. 6,
2006). Final Act. 4—8.
Claims 4, 5, and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Nishihara, Takahashi, and Durrant (US 2004/0049649
Al; Mar. 11, 2004). Final Act. 8—9.
2
Appeal 2017-007945
Application 14/169,886
ANALYSIS
We have reviewed the Examiner’s rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Appellants argue the Examiner erred in combining Takahashi with
Nishihara because, Appellants allege, the Examiner’s rationale for the
combination is conclusory and modifying Nishihara in the manner found by
the Examiner would render Nishihara “unsatisfactory for its intended
purpose.” App. Br. 6—8; Reply Br. 5. Specifically, Appellants argue
Nishihara utilizes cache memory in order to erase data from its original
location in flash memory after the data is copied to a new location (thereby
clearing that memory space), whereas modifying the cache based upon the
teachings of Takahashi, as found by the Examiner, would require the data
remain in the original location and not be copied to a new location. Id.', Ans.
4. Appellants further argue the resulting combination does not teach or
suggest all of the limitations of claim 1. App. Br. 8—9. On the record before
us, we are persuaded the Examiner has not sufficiently articulated a rationale
for combining the references. We do not reach Appellants’ remaining
arguments.
Obviousness rejections “cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). In the Final Action, the
Examiner’s stated reasoning for combining the Nishihara and Takahashi
references is:
3
Appeal 2017-007945
Application 14/169,886
[i]t would have been obvious to an ordinary person skilled in
the art at the time of the invention was made to incorporate the
teachings of Takahashi with the teachings of Nishihara for the
purpose of performing reconstructing data in response to
detecting a read error by reading alternatively from another
mirrored data.
Final Act. 4 (emphasis added). The italicized portion of the foregoing
statement, however, is simply a summary of what the Takahashi invention
does, i.e., reconstruct data in response to a read error by reading from
mirrored data. See, e.g., Takahashi Fig. 6, ]Hf 28, 58. It is not a rationale for
why one of ordinary skill in the art would be motivated to combine the
teachings of Takashi with Nishihara.
In the Answer, the Examiner additionally states the references are “in
the same field of endeavor.” Ans. 13. Although that finding would be
relevant to whether a reference qualifies as analogous art (which is not
argued here), Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir.
2010), it is not alone a sufficient rationale to combine the references. The
Answer then restates what each reference “discloses” individually:
Nishihara discloses data transferring from a first location to a
second location via a cache, and while data is in the cache, it is
possible to freely access the data from the outside. In addition,
Takahashi discloses data reconstruction from an error location
to an associated data requested location, and directly transfers
the reconstructed data to host while data in the cache.
Ans. 13 (emphasis added). As Appellants argue, however, the foregoing
summary does not explain why one or ordinary skill would combine the
“data mirroring” technique of Takahashi with the cache-and-erase technique
taught in Nishihara. Reply Br. 4 (contending Takahashi teaches away from
4
Appeal 2017-007945
Application 14/169,886
Nishihara’s erasing of data once it is read into the cache memory); see also
In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“When references teach
away from the claimed combination, it is improper to combine them in an
obviousness rejection.”).
Finally, in the Answer the Examiner concludes, “[tjherefore it would
have been obvious to combin[e] Nishihara-Takahashi to obtain the invention
as cited in the claims.'1'’ Ans. 13 (emphasis added). This statement, however,
implies impermissible hindsight rather than a “rational underpinning” for
one of ordinary skill in the art to combine the references. See, e.g., In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
On the record before us, therefore, we discern none of the Examiner’s
statements as sufficiently articulating a rationale for combining the
references. Accordingly, we are persuaded by Appellants’ argument that the
record lacks support for the Examiner’s combination of Takahashi with
Nishihara.
For the foregoing reasons, we do not sustain the rejection of
independent claims 1,11, and 18 (and their dependent claims) as
unpatentable over Nishihara and Takahashi. We also do not sustain the
rejection of the remaining claims, all of which depend from claim 1, 11, or
18.
DECISION
We REVERSE the Examiner’s rejections of claims 1 and 3—20.
REVERSED
5