Ex Parte Rhoads et al

Board of Patent Appeals and Interferences

Mar 7, 2012

10764617 (B.P.A.I. Mar. 7, 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.
10/764,617 01/26/2004 Edward R. Rhoads ITL.0241D1US (P7376D) 8924
21906 7590 03/07/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
LI, ZHUO H
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
03/07/2012 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 EDWARD R. RHOADS and JAMES P. KETRENOS

Appeal 2010-008611
Application 10/764,6171
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on January 26, 2004. The real party in interest is Intel Corp. In an
Opinion (2008-2317) dated November 20, 2008, an earlier panel affirmed
the Examiner’s rejection of claims 1-15 and 26-30 as being anticipated by
Tallam.

Appeal 2010-008611
Application 10/764,617

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 15 and 26 through 30. Claims 16 through 25 have
been canceled. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
The Invention
Appellants invented a method and system for organizing information stored
in a non-volatile reprogrammable semiconductor memory. (Spec. 1.) As depicted
in Figure 5, the memory is segmented into a plurality of partitions. (Spec., 11, ll.
4-25.) Each partition of the non-volatile reprogrammable memory has a defined
address (22), which is stored in another partition of that same memory device. (Id.
15, ll. 1-15.)

Representative Claim
Independent claim 1 further illustrates the invention. It reads as follows:

1. A method of organizing stored information comprising:

partitioning on a non-volatile, re-programmable semiconductor
memory into a plurality of partitions, each having a defined address;
and

storing the defined address for one partition in another partition.

Prior Art Relied Upon

The Examiner relies on the following prior art as evidence of
unpatentability:

Appeal 2010-008611
Application 10/764,617

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Tallam US 6,948,099 B1 Sep. 20, 2005
(filed Jul. 30, 1999)

Rejection on Appeal
The Examiner rejects claims 1 through 15 and 26 through 30 under
35 U.S.C. § 102(e) as being anticipated by Tallam.

ANALYSIS
Dispositive Issue: Have Appellants shown that Tallam does not anticipate
independent claim 1 because Tallam’s disclosure of storing the address of a
partition in another partition was derived from Appellants’ invention?
Appellants argue that in the course of preparing two commonly assigned
patent applications, their representative (Mr. Trop) obtained from the present
application (Rhoads) the disclosure of putting the address for one section into
another section, and inserted it into the Tallam’s application thereby causing the
Tallam’s application to also recite the cited disclosure, as emphasized above.
Appellants submit that they do not have any specific knowledge, nor would they
have any reasonable basis to know that the cited material was obtained from their
application, and used in Tallam’s. Consequently, Appellants argue that because
Mr. Trop is the only person with direct personal knowledge of such derivation, Mr.
Trop’s declaration under 37 C.F.R. § 1.132 to support such facts is sufficient to
show that the cited disclosure in the Tallam patent was derived in fact from the
Rhoads application. (App. Br. 10, Reply Br. 1.)
In response, the Examiner finds that the declaration submitted by
Appellants’ representative to be insufficient to show that Tallam derived the
disputed limitation from Appellants invention. (Ans. 6-8.) Therefore, the
Examiner maintains that Tallam anticipates the claimed invention. (Id.)
Appeal 2010-008611
Application 10/764,617

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We agree with the Examiner. In particular, we find the declaration shows at
best that during the preparation of the two applications, Mr. Trop in fact included
the disputed disclosure in both the Tallam’s patent and the Rhoads patent
application. However, the declaration falls short of showing that the Tallam patent
derived the cited disclosure from present application, mainly in light of the fact
that the disputed limitation was described in the Tallam patent filed in the U.S.
before the invention by Appellants for patent. While we agree with Appellants
that Mr. Trop may have personal knowledge about the alleged derivation, and that
Appellants would not be reasonably apprised of such facts, we find that Tallam
would nonetheless be privy of such information, if any. Consequently, absent the
submission of evidence by the patentee to support that allegation, we find that
Appellants have not shown that Tallam derived the disputed limitation from the
present application. It follows that Appellants have not shown that the Examiner
erred in finding that Tallam anticipates independent claim 1. Therefore, we will
sustain the rejection of independent claim 1.
Appellants do not provide separate arguments with respect to the rejection of
claims 1 through 15 and 26 through 30. Therefore, we select independent claim 1
as being representative of the cited claims. Consequently, claims 2 through 15 and
26 through 30 fall together with representative claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejection of claims 1-15, and 26-30.

Appeal 2010-008611
Application 10/764,617

5
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

Vsh