Ex Parte Rudelic

Patent Trial and Appeal Board

Jun 15, 2018

13041541 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/041,541 03/07/2011
15747 7590 06/19/2018
Dorsey & Whitney LLP-IP Dept.-MTI
Columbia Center
701 5th Avenue, suite 6100
Seattle, WA 98104-7043
FIRST NAMED INVENTOR
John C. Rudelic
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.
P234254.US.02 5318
EXAMINER
VO, TEDT
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
ip.docket.se@dorsey.com
bingemang@dorsey.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. RUDELIC
Appeal2017-011504
Application 13/041,541
Technology Center 2100
Before JOHN A. JEFFERY, THU A. DANG, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-12, 16-18, 20, 21, 23, and 24. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention involves processor-based devices that execute
applications from a semiconductor non-volatile memory with a resident
database (e.g., execute-in-place applications). See generally Abstract; Spec.
1-3. Claim 1 is illustrative:
1. A system comprising:
1 Appellant identifies the real party in interest as Micron Technology, Inc.
App. Br. 3.
Appeal 2017-011504
Application 13/041,541
a computing device; and
a non-volatile memory coupled to said computing device, said
memory configured to store an executable program in a non-fragmented
manner, an associated database that includes registry entries, and a database
engine that includes code management software, wherein said executable
program, associated database, and database engine are stored separately
within the non-volatile memory, said computing device configured to
execute the program directly from the non-volatile memory based on the
code management software being associated with the associated database
and linking the executable program to the registry entries included in the
associated database, and wherein the program is executed directly from the
non-volatile memory without moving the registry entries to a volatile
memory.
RELATED APPEAL
This appeal is related to an appeal decided in Application No.
10/215 ,5492 that is the parent application of the present continuation
application. See Ex parte Rudelic, Appeal 2009-002721 (BP AI July 20,
2010) ("Bd. Dec'n"). Notably, that decision involved the same prior art at
issue here, namely Microsoft and Hayes cited below.
THE REJECTIONS
The Examiner rejected claims 1-12, 16-18, 20, 21, 23, and 24 on the
ground of obviousness-type double patenting over claims 1-3 of U.S. Patent
No. 7,904,897. Final Act. 4--5. 3
2 Although Appellant indicates that the present application is a continuation
of Application Number 10/041,541 (App. Br. 3), the present application is
nevertheless a continuation of 10/215,549 as noted on page 1 of the
Specification.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 21, 2016 ("Final Act."); (2) the Appeal Brief filed March 13,
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Application 13/041,541
The Examiner rejected claims 1-12, 16-18, 20, 21, 23, and 24 under
35 U.S.C. § 103 as unpatentable over Microsoft Corp., Linear Flash
Memory Devices on Microsoft Windows CE 2.1, http://msdn.microsoft.com
("Microsoft") and Hayes (US 5,974,312; Oct. 26, 1999). Final Act. 5-8.
THE DOUBLE PA TENTING REJECTION
Because Appellant does not contest the Examiner's double patenting
rejection of claims 1-12, 16-18, 20, 21, 23, and 24 as the Examiner
indicates (Ans. 4), we summarily sustain this rejection. See MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) § 1205.02 (9th ed. Rev. 08.2017
(Jan. 2018)).
THE OBVIOUSNESS REJECTION
The Examiner finds that Microsoft discloses every recited element of
claim 1 including, among other things, executing a program directly from
non-volatile memory without moving registry entries to a volatile memory.
Final Act. 5---6. According to the Examiner, this direct execution
functionality is supported by Microsoft Windows CE 2 .10 and later versions
in a second embodiment-not Windows CE 2.0 and earlier versions in a first
embodiment where registry data had to be copied to random-access memory
(RAM) before it could be used. Ans. 6-10. Although the Examiner
acknowledges that Microsoft does not disclose a computing device
specifically, the Examiner cites Hayes as teaching this feature in concluding
that the claim would have been obvious. Final Act. 7.
2017 ("App. Br."); (3) the Examiner's Answer mailed July 13, 2017
("Ans."); and (4) the Reply Brief filed September 13, 2017 ("Reply Br.").
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Application 13/041,541
Appellant argues that the cited prior art does not teach or suggest
executing a program directly from non-volatile memory without moving
registry entries to a volatile memory as claimed. App. Br. 11-14; Reply Br.
2-6. According to Appellants, registry information must be uploaded to
volatile memory before use, and is stored on linear flash memory (LFM) so
that this information can be restored from that memory if power is lost.
App. Br. 12-13. Appellant emphasizes, however, that the registry
information must still be reloaded to a RAM-based registry before use-a
fact that is said to be consistent with the Board's finding in the earlier Board
decision. See id. Although Appellant acknowledges that new application
programming interfaces (APis) in Windows CE 2.10 support loading
registry information to and from external storage, such as LFMs, this loading
is said to be in addition to storing the registry information in RAM. Reply
Br. 2-5. Appellant adds that Microsoft's discussion of an anticipated future
release of Windows CE, where the TrueFFS driver may be enhanced to
provide native abilities to boot from an LFM device, evidences a long-felt
but unresolved need. Reply Br. 5.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Microsoft and Hayes collectively would have taught or suggested
executing a program directly from non-volatile memory without moving
registry entries to a volatile memory (the "direct execution limitation")?
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Application 13/041,541
ANALYSIS
As noted above, the Examiner finds that there are two embodiments in
Microsoft relevant to this appeal: (1) a first embodiment involving
Windows CE 2.0 and earlier versions where registry data had to be copied to
RAM before it could be used, and (2) a second embodiment involving
Microsoft Windows CE 2.10 and later versions that support the direct
execution limitation. Ans. 6-10.
Microsoft describes using LFM devices in connection with the
Windows CE operating system. One such use is "Execute-In-Place" (XIP)
functionality that enables a program to run directly from LFM instead of
copying the program into RAM and running it from there. Microsoft 1-2, 8.
In earlier versions of Windows CE, launching a program stored on a
memory card would cause the whole program to be loaded into RAM, and
then run. Microsoft 2. In Windows CE 2.10, however, the operating system
uses demand paging to load program portions into memory as needed. Id.
Our emphasis underscores that Microsoft does not say that demand paging
loads program portions into RAM as Appellant contends (Reply Br. 4--5), but
rather into memory.
Nevertheless, despite the fact that registry information may be stored
on LFM cards, this information may not be used directly from there.
Microsoft 2, 8. Rather, registry data must first be copied to the RAM-based
registry before it can be used. Id. Accord Bd. Dec'n 5-6 (noting this fact).
Although Windows CE 2.10 supports new APis for loading and saving
registry information to other storage media, Microsoft is silent about using
this registry information in that other media, let alone not loading that
information into RAM. See id.
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Application 13/041,541
In Windows CE 2.0 and earlier, the registry was implemented as a
RAM-based heap file and, consequently, registry information was lost if
power was lost to the platform's RAM. Microsoft 8. Windows CE 2.10,
however, provides new APis for saving and restoring registry information
from external storage, such as LFM devices, such that the registry
information is (1) saved to LFM when the platform is turned off, and (2)
restored when the power is restored.
But here again, these new APis, at best, provide functionality for
saving and restoring registry information-not using that information. To
the extent that the Examiner finds otherwise in connection with the so-called
"second embodiment" involving Microsoft Windows CE 2.10 and later
versions, there is insufficient evidence on this record to substantiate such a
finding. Indeed, Microsoft states clearly and unambiguously that registry
data must first be copied to the RAM-based registry before it can be used.
Microsoft 2, 8. Accord Microsoft 8 ( discussing a cold-boot tool that copies
saved registry information from LFM into RAM).
To be sure, XIP functionality enables a program to run directly from
LFM instead of copying the program into RAM and running it from there.
Microsoft 1-2, 8. To this end, a flash device can be mapped into a memory
window and read directly through that window as if the LFM were RAM or
ROM. Microsoft 8. Although the program is run directly from non-volatile
memory in this instance, we cannot say-nor has the Examiner shown-that
the associated registry entries are not moved to volatile memory ( e.g., RAM)
to use this information in connection with this LFM-based execution.
Rather, Microsoft states just the opposite, namely that the registry
information must be moved to RAM to use this information. Microsoft 2, 8.
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Application 13/041,541
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1 ; (2) independent claims 9, 12, and 21 that recite
commensurate limitations; and (3) the dependent claims for similar reasons.
CONCLUSION
The Examiner did not err in rejecting claims 1-12, 16-18, 20, 21, 23,
and 24 on the ground of obviousness-type double patenting, but erred in
rejecting those claims under § 103.
DECISION
We affirm the Examiner's decision to reject claims 1-12, 16-18, 20,
21, 23, and 24. Because the rejection of each appealed claim is affirmed on
at least one of the grounds specified in the rejection appealed from, the
Examiner's decision to reject the claims is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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