Ex Parte Ogasawara

Patent Trial and Appeal Board

Jun 20, 2016

13104710 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/104,710 05/10/2011
46320 7590 06/22/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Takeshi Ogasawara
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.
JP920100018US1 (732) 1780
EXAMINER
SOMERS, MARC S
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKE SHI OGASAWARA
Appeal2014-007581
Application 13/104,7101
Technology Center 2100
Before LARRY J. HUME, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4, 5, 11, 12, 14, and 15, the only claims
currently pending. Final Act. 2. Claims 3 and 13 are subject to objection
and claims 6-10 are cancelled. Final Act. 7; App. Br. 9. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies the real party in interest as International Business
Machines Corp. App. Br. 2.
Appeal2014-007581
Application 13/104,710
STATEMENT OF THE CASE
The disclosed and claimed invention relates to a processing method
for reducing the average wait time of requests in a queue in a system
environment where garbage collection may occur. Abstract.
Claim 1, reproduced below, is exemplary of the subject matter on
appeal:
1. A request processing system for processing requests in a
system that has a queue for storing the requests to be processed
and is configured to execute garbage collection when a heap
remaining amount is insufficient to process a request dequeued
from the queue, the request processing system comprising:
a computer with at least one processor and memory;
a heap consumption acquisition module executing in the
memory of the computer and configured for acquiring an
estimated heap consumption for each of requests that are to be
processed and that exit in the queue, for finding, among the
requests in the queue, when a request at the top of the queue has
a larger estimated heap consumption acquired by the heap
consumption acquisition means than the heap remammg amount,
a request whose estimated heap consumption is expected to be
smaller than the heap remaining amount, and for moving the
found request in the queue to a position ahead of the request
positioned at the top of the queue.
App. Br. 8. (Claims App.).
THE REJECTION
Claims 1, 2, 4, 5, 11, 12, 14, and 15 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Clee et al. (US 2009/0187614
Al; published July 23, 2009) ("Clee") in view of Challenger et al.
(US 6,266, 7 42; issued July 24, 2001) ("Challenger"), and Suzuki et al.
(US 7,415,453; issued August 19, 2008) ("Suzuki"). Final Act. 3-7.
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Appeal2014-007581
Application 13/104,710
Appellant argues:
ANALYSIS
Integral to claim 1, and also independent claim 11 which recites
similar operable portions is, when a request at the top of the
queue has a larger estimated heap consumption than the heap
remaining amount, (1) the finding of a request among the
requests of the queue whose estimated heap consumption is
expected to be smaller than the heap remaining amount, and (2)
the moving of the found request in the queue to a position ahead
of the request positioned at the top of the queue. This important
limitation [referred to as "the dual claim limitations"] is not
present in the combination of Clee, Suzuki and Challenger.
App. Br. 4--5.
Appellant argues "the Examiner relies upon Clee only for the teaching
of request processing of requests in a queue out of order, and Suzuki only for
the teaching of acquiring an estimated heap consumption for each request to
be processed in the queue." App. Br. 6. According to Appellant, the
Examiner "wholly relies upon Challenger" for the dual limitations, but
Challenger provides "only the generic teaching of determining whether or
not to make room in a cache for an object of a size greater than the
remaining space in the cache." App. Br. 5, 6-7 (citing Challenger col. 4,
11. 27-32). Appellant further argues:
[I]t bears noting that the claimed prioritizing of a found request
to a top of a queue based upon its size being smaller than the heap
remaining amount is someone opposite to the teaching of
"making room" in a cache for an object whose size is larger than
the remaining room in the cache.
App. Br. 7 (emphasis omitted).
We are not persuaded by Appellants' arguments that the Examiner
relies upon Clee and Suzuki "only for the teaching of ... ,"and "wholly
relies upon" Challenger for the dual limitations, as the Examiner finds the
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Appeal2014-007581
Application 13/104,710
combination of the cited references teaches the dual claim limitations. Final
Act. 3---6; Ans. 2-8.
However, we are persuaded by Appellant's arguments regarding the
combination of the cited references because, on the record before us, the
Examiner does not sufficiently identify how these references teach the dual
limitations. In particular, we agree with Appellant that the general teaching
of Challenger, and the other cited references, regarding determining making
room in a cache for an object of a size greater than the remaining space in
the cache, is insufficient to establish obviousness.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness . . . . [H]owever, the
analysis need not seek out precise teachings 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 \vould employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). Here, we find the Examiner presents
inadequate articulated reasoning and rational underpinnings to support the
legal conclusion of obviousness. See KSR, 550 U.S. at 417-18.
In particular, we do not see adequate reasoning by the Examiner as to
why a person with skill in the art would choose to provide "a heap
consumption acquisition module ... configured for ... finding ... a request
whose estimated heap consumption is expected to be smaller than the heap
remaining amount, and for moving the found request in the queue to a
position ahead of the request positioned at the top of the queue," as recited
in claim 1 (emphasis added).
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Appeal2014-007581
Application 13/104,710
In view of the above, we do not sustain the rejection of claim 1,2 and
independent claim 11 3 which recites the disputed limitation in commensurate
form. We also do not sustain the rejection of dependent claims 2, 4, 5, 12,
14, and 15. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4, 5, 11, 12,
14, and 15.
REVERSED
2 We note claim 1 recites "a heap consumption acquisition module" and "the
heat consumption acquisition means." App. Br. 18. (Emphasis added). In
the event of fi.1rther prosecution, \Y..fe direct the Examiner's attention to the
definiteness requirement of 35 U.S.C. § 112, i-f 2. In addition, we invite the
Examiner's attention as to whether the heap consumption acquisition
"means" or "module," in essence, constitutes an improper single means
claim under 35 U.S.C. § 112, i-f 1 . See In re Hyatt, 708 F.2d 712, at 714-15
(Fed Circ. 1983) (holding that single means claims are subject to rejection
under 35 U.S.C. § 112, i-f 1 for undue breadth because the claim "covers
every conceivable means for achieving the stated result, while the
specification discloses at most only those means known to the inventor").
See also Aristocrat Techs. Australia Pty Ltd. v. Int 'l Game Tech., 521 F .3d
1328, 1337 (Fed. Cir. 2008).
3 Should there be further prosecution, we note claim 11 recites "a computer
usable storage medium storing program code" which, under our
jurisprudence, may be construed to include transitory media, which is not
patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential); see also In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir.
2007); and U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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