10938705 (B.P.A.I. Nov. 29, 2010)

Ex Parte Parkinson et al

Board of Patent Appeals and InterferencesNov 29, 2010

10938705 (B.P.A.I. Nov. 29, 2010)

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. 10/938,705 09/10/2004 Ward D. Parkinson ITO.0564US (P19701) 2847 21906 7590 11/30/2010 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER PATEL, KAUSHIKKUMAR M ART UNIT PAPER NUMBER 2186 MAIL DATE DELIVERY MODE 11/30/2010 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 WARD D. PARKINSON and MANZUR GILL ____________ Appeal 2009-006866 Application 10/938,705 Technology Center 2100 ____________ Before JAMES D. THOMAS, LANCE LEONARD BARRY, and HOWARD B. BLANKENSHIP, Administrative Patent Judges. BLANKENSHIP, 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 2009-006866 Application 10/938,705 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-31, which are all the claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to using a phase change memory to replace a flash memory in combination with a buffer memory. See Abstract. Representative Claims 1. A method comprising: forming a processor-based system that comprises a processor and a non-volatile memory accessed directly by said processor without using a buffer memory between said non- volatile memory and the processor. 4. The method of claim 3 including forming said system with a phase change memory that has a write access time similar to a flash memory. Prior Art Lowrey 6,590,807 B2 Jul. 8, 2003 Xu 2003/0164515 A1 Sep. 4, 2003 Stefan Lai and Tyler Lowrey, OUM - A 180nm Nonvolatile Memory Cell Element Technology For Stand Alone and Embedded Applications, Int’l Electron Devices Meeting, IEDM Tech. Digest, pp. 36.5.1-36.5.4 (2001) (“Lai”). Appeal 2009-006866 Application 10/938,705 3 Examiner’s Rejections Claims 1-10 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. Claims 1-5, 7, 8, 11-13, 15, 16, 21, and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Xu. Claims 6, 14, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xu. Claims 9, 10, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xu and Lai. Claims 23-31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xu and Lowrey. PRINCIPLES OF LAW “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.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). “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.” Am. Acad., 367 F.3d at 1364. Appeal 2009-006866 Application 10/938,705 4 ANALYSIS Section 112, Second Paragraph Rejection Claims 2 through 10 depend from claim 1. The Examiner rejects claim 1 under 35 U.S.C. § 112, second paragraph because the Examiner submits that the word “forming” renders the claim indefinite. The Examiner also rejects claim 4 because there is no indication in the Specification with respect to what “similar to a flash memory” may encompass. We agree with Appellants to the extent that “forming” a processor- based system in accordance with claim 1 means no more than providing the elements (i.e., the processor and non-volatile memory) in the recited arrangement, thus to form the claimed system. We conclude that the “forming” recitation is broad, but not indefinite as § 112, second paragraph prohibits. Appellants in the Appeal Brief do not respond to the § 112 rejection of claim 4. Appellants in the Reply Brief submit remarks that are untimely, and which have thus not been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). As the Examiner has a reasonable basis for questioning the scope of subject matter embraced by claim 4, we summarily sustain the rejection.2 2 Even were we to reach Appellants’ remarks concerning claim 4 in the Reply Brief, we observe that Appellants neither point to the Specification for clarification of the claim, nor provide evidence in support of what “one skilled in the art would understand,” nor even allege what write access times would be considered by the artisan as “comparable” or “substantially similar” to a that of a flash memory. Appeal 2009-006866 Application 10/938,705 5 Rejections Over Prior Art Our disposition of the Examiner’s rejections over the prior art turn on the broadest reasonable interpretation of a non-volatile memory “accessed directly by said processor without using a buffer memory between said non- volatile memory and the processor,” as recited in representative claim 1. The Examiner finds that Xu describes, in paragraph [0033] and Figure 8 (elements 42 and 48), a processor and non-volatile memory as set forth in claim 1. Appellants contend, however, that Xu does not disclose a “direct” connection between the processor and memory, because the connection is through an interface 44, as shown in Xu Figure 8. Appellants’ Specification (14:10-22) teaches that memory 530 (Fig. 4) may be a phase change memory that serves as a replacement for a flash memory. The phase change memory 530 may have sufficiently high performance that a static random access memory or dynamic random access memory need not be coupled, as a buffer, to the phase change memory 530 to provide sufficient performance. Thus, the memory 530 may be directly accessed by the controller 510 without using such buffering. Spec. 14:16-22. We thus conclude that claim 1, in light of the Specification, means what it says. Although Appellants seem to urge some special meaning for “directly,” the claim (and the written description) defines “directly” in terms of what is precluded -- i.e., “without using a buffer memory between” the non-volatile memory and the processor. Appellants have provided no evidence in support of the speculations in the Reply Brief with respect to what interface 44 in Xu may be, other than Appeal 2009-006866 Application 10/938,705 6 an “interface.” We are not persuaded of error in the Examiner’s reasoning in support of why one of ordinary skill in the art would consider Xu as describing an embodiment within the requirements of instant claim 1. We sustain the Examiner’s § 102(b) rejection of claim 1 over Xu. Appellants have elected for all claims to stand or fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Claims 2-31 thus fall with claim 1. DECISION The Examiner’s rejection of claims 1-10 under 35 U.S.C. § 112, second paragraph as being indefinite is affirmed with respect to claim 4 but reversed with respect to claims 1-3 and 5-10. The Examiner’s rejections of claims 1-31 under 35 U.S.C. §§ 102(b) and 103(a) are affirmed. 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. § 41.50(f). AFFIRMED Appeal 2009-006866 Application 10/938,705 7 msc TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631