Ex Parte Rajaram et al

Board of Patent Appeals and Interferences

Aug 23, 2012

09972519 (B.P.A.I. Aug. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GOWRI RAJARAM and GREGORY LIE
____________

Appeal 2010-009581
Application 09/972,519
Technology Center 2600
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Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JEREMY J. CURCURI, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009581
Application 09/972,519

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14, 16-35, and 37-42. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention uses dynamic instruction sets to update
persistent data items in the system software of wireless communication
devices. See generally Spec. 1, 3-4. Claim 1 is illustrative with key
disputed limitations emphasized:
1. In a wireless communications device, a method for updating
persistent data, the method comprising:
executing system software;
receiving a dynamic instruction set, having conditional persistent data
instructions and constraint data items, from an air interface;
launching a run-time engine;
processing the dynamic instruction set;
replacing persistent data items with updated persistent data items, in
response to the conditional persistent data instructions including:
using the conditional persistent data instructions, comparing the
persistent data items with the constraint data items; and,
in response to comparing, replacing the persistent data items; and
executing system software with updated persistent data items in
response to the conditional persistent data instructions.

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THE REJECTIONS
1. The Examiner rejected claims 1, 2, 4-10, 12-14, 19-23, 26-31, 33-
35, 41, and 421 under 35 U.S.C. § 102(b) as anticipated by Hayes (US
5,974,312; Oct. 26, 1999). Ans. 3-8.2
2. The Examiner rejected claims 3, 16, 24, 25, 37, and 40 under 35
U.S.C. § 103(a) as unpatentable over Hayes and Fette (US 6,052,600; Apr.
18, 2000). Ans. 9-10.
3. The Examiner rejected claims 11 and 32 under 35 U.S.C. § 103(a)
as unpatentable over Hayes and Rosauer (US 5,832,086; Nov. 3, 1998).
Ans. 10-11.
4. The Examiner rejected claims 17 and 38 under 35 U.S.C. § 103(a)
as unpatentable over Hayes and Alperovich (US 5,960,356; Sept. 28, 1999).
Ans. 11.
5. The Examiner rejected claims 18 and 39 under 35 U.S.C. § 103(a)
as unpatentable over Hayes and Metso (US 5,920,826; July 6, 1999). Ans.
11-12.

1 Although the Examiner includes claims 11 and 40 in the anticipation
rejection, these claims were nonetheless rejected as obvious over (1) Hayes
and Rosauer, and (2) Hayes and Fette, respectively. Compare Ans. 3 with
Ans. 9-10. We therefore presume that the Examiner intended to reject
claims 11 and 40 solely under § 103 and deem the Examiner’s error in this
regard harmless. Accordingly, we present the correct claim listing here for
clarity.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed January 13,
2010; (2) the Examiner’s Answer mailed April 21, 2010; and (3) the Reply
Brief filed June 18, 2010.
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THE ANTICIPATION REJECTION
The Examiner finds that Hayes’ method of updating persistent data
has every recited feature of representative claim 1 including receiving a
“dynamic instruction set” (i.e., computer instructions or program) with (1)
“conditional persistent data instructions,” and (2) “constraint data items” that
are said to be compared with “persistent data items” to replace the persistent
data items with updated persistent data items as claimed. Ans. 3-4, 12-15.
According to the Examiner, Hayes’ conditional updating process that
determines whether block/sub-block data is successfully copied compares
persistent and constraint data items as claimed. Ans. 13-15.
Appellants argue that Hayes’ instruction with block/sub-block
numbers and data string of memory to be altered is not a “conditional
persistent data instruction” as claimed which analyzes data items themselves
to determine whether to replace persistent with constraint data items. App.
Br. 14-15. According to Appellants, Hayes merely determines whether to
replace certain data blocks or sub-blocks based on whether they (1) are on a
restricted list, or (2) have already been successfully copied from flash
memory into RAM, but does not analyze the block/sub-block data itself in
this determination. Id. Appellants add that Hayes does not disclose the
limitations of claim 12 noted below. App. Br. 19; Reply Br. 3-4.

ISSUES
Under § 102, has the Examiner erred by finding that Hayes:
(1)(a) receives a dynamic instruction set with conditional persistent
data instructions and constraint data items, and (b) replaces persistent data
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items with updated persistent data items responsive to comparing persistent
data items with constraint data items as recited in claim 1?
(2)(a) uses constraint data items as operands in calculations performed
by the conditional persistent data instructions to create data item products,
and (b) replaces the persistent data items with those products as recited in
claim 12?

ANALYSIS
Claims 1, 2, 4-10, 13, 14, and 19
On this record, we find no error in the Examiner’s anticipation
rejection of representative claim 1. First, the various recited data items,
including the “constraint” and “persistent” data items, merely label data and
therefore constitute non-functional descriptive material since they do not
further limit the claimed invention functionally apart from serving as a basis
for comparison. Such non-functional descriptive material does not
patentably distinguish over prior art that otherwise renders the claims
unpatentable.3 That claim 1 does not recite particular aspects of “constraint”
data items as the Examiner indicates (Ans. 12, 15) only further bolsters this
conclusion.
Turning to the rejection, we see no error in the Examiner’s finding
that Hayes receives a “dynamic instruction set” (i.e., computer instructions
or program) with (1) “conditional persistent data instructions,” and (2)
“constraint data items” that are said to be compared with “persistent data

3 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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items” to replace the persistent data items with updated persistent data items
as claimed. Ans. 3-4, 12-15. As the Examiner indicates, Ans. 13, since
Hayes’ instructions in Figures 8 through 8B2 update persistent data items
based on certain conditions, they therefore constitute “conditional persistent
data instructions” as claimed. See Hayes, col. 14, l. 40 – col. 16, l. 10; Figs.
8-8B2. Appellants’ contention that Hayes’ instruction containing block/sub-
block numbers and data strings is not a “conditional persistent data
instruction” in view of the exemplary description in the Specification, App.
Br. 14, is unavailing for it is not commensurate with the scope of the claim.
In any event, Hayes’ memory update instructions inherently compare
data associated with blocks and sub-blocks in persistent memory (“persistent
data items”) to predetermined values (i.e., “constraint data items”) to
perform the associated functions in steps 844, 845, 849, and 851 based on
those comparisons as the Examiner indicates. Ans. 13-15. For example, to
determine whether received data sub-blocks are successfully loaded into
flash memory in Hayes’ step 845 in Figure 8B1, an associated “persistent
data item” would be compared with some sort of “constraint data item”
associated with the program. See Hayes, col. 15, ll. 56-61.
We reach a similar conclusion for the comparisons of steps 849 and
851 in Hayes’ Figure 8B2 for they too would involve comparing a
“persistent data item” with some sort of “constraint data item” associated
with the program to perform their respective functions which ultimately
results in updating data stored in memory (i.e., updating “persistent data
items”). Moreover, nothing in the claim precludes Hayes’ replacing
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“persistent data items” in flash memory4 responsive to negative conditions
following the data item comparisons in steps 849 and 851 which, as shown
in the flow charts of Figures 8B1 and 8B2, returns to step 844 which
effectively updates data items in flash memory later in step 847. See Hayes,
col. 15, l. 67 – col. 16, l. 6; Fig. 8B2 (“NO” condition associated with steps
849 and 851).
Although Appellants argue for the first time in the Reply Brief that
Hayes’ compares only “constraint data items” in random-access memory
(RAM) and flash memory, this argument is waived as untimely.5 Compare
Reply Br. 2-3 with App. Br. 13-15. Nevertheless, even if we were to
consider this belated argument, it is nonetheless unpersuasive since it is not
commensurate with the scope of the claim, and ignores the distinct data
items involved in the instruction’s comparisons and updates noted above.
That Appellants’ claim 1 does not detail particular aspects of the recited
comparison, let alone whether a match is obtained, only further emphasizes
the claim’s breadth in this regard.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2, 4-10, 13, 14, and 19 not separately
argued with particularity.

4 Hayes refers to flash memory as non-volatile memory. Hayes, col. 2, ll.
21-22. Accord Spec. 14:21. Random-access memory (RAM), however, is
volatile. Hayes, col. 6, ll. 35-41.
5 See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
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Claims 20-23, 26-31, 34, 35, 41, and 42
We also sustain the Examiner’s anticipation rejection of claims 20-23,
26-31, 34, 35, 41, and 42. Ans. 7-8, 16-18. Despite nominally arguing
independent claims 20, 21, 41, and 42 separately, Appellants reiterate
similar arguments made in connection with claim 1 (see App. Br. 15-18)
which we find unpersuasive for the reasons previously discussed.

Claims 12 and 33
We also sustain the Examiner’s rejection of representative claim 12
(Ans. 5-6) reciting (a) using constraint data items as operands in calculations
performed by the conditional persistent data instructions to create data item
products, and (b) replacing the persistent data items with those products.
We see no error in the Examiner’s position that Hayes’ comparison and
updating process has conditional statements that use “constraint” data items
as equivalency operands (“=”) in calculations to create a result (a “data item
product”) that replaces persistent data items. Ans. 18-19 (citing Hayes, col.
15, l. 43 – col. 16, l. 7). Appellants’ arguments to the contrary are
unpersuasive and, in any event, are untimely as presented for the first time in
the Reply Brief as noted above. Compare App. Br. 19 with Reply Br. 3-4.
See Borden, 93 USPQ2d at 1474.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 12, and claim 33 not separately argued with
particularity.

Appeal 2010-009581
Application 09/972,519

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THE OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 3,
11, 16-18, 24, 25, 32, and 37-40. Ans. 9-12. Despite nominally arguing
these claims separately, Appellants reiterate similar arguments made in
connection with claim 1 and allege that the additional cited references fail to
cure those purported deficiencies. App. Br. 20-25. We are not persuaded by
these arguments, however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting (1) claims 1, 2, 4-10, 12-14, 19-
23, 26-31, 33-35, 41, and 42 under § 102, and (2) claims 3, 11, 16-18, 24,
25, 32, and 37-40 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-14, 16-35, and 37-42 is
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)(1)(iv).

AFFIRMED

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