Ex Parte Sinclair

Board of Patent Appeals and Interferences

Mar 27, 2012

11316578 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAN WELSH SINCLAIR
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Appeal 2010-002338
Application 11/316,578
Technology Center 2100
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Before SCOTT R. BOALICK, ERIC B. CHEN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002338
Application 11/316,578

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STATEMENT OF THE CASE
Summary
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-22, all the claims pending in the application.1
Claims 1, 5, 6, 13, 14 and 16-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Leonhardt (US 2002/0188592 A1).2
Claims 2, 3, 7-12, 14, 15, and 21-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Leonhardt in view of Piau (US 6,859,856 B2).
We affirm-in-part.

The Claimed Invention
Independent claim 1 is dispositive of dependent claims 2-6 and 13-22,
with the key disputed limitations emphasized:
1. A memory system for storing data in a non-volatile memory
array, the memory system receiving data from one or more
applications in different logical formats and storing data in the
memory array in a common logical format,
comprising:
a first protocol adapter that receives first data from a
first application as a first host file preceded by an indication of

1 As reported in the June 1, 2009 Advisory Action, Appellant’s after-final
amendment to claim 7 was entered. See also Br. 2, Ans. 2.
2 Paragraph 4 of the Answer purports to refer to a rejection of claim 14 under
§ 102(b) and paragraph 13 of the Answer refers to a rejection of 14 under §
103(a). Neither paragraph refers to a rejection of claim 4. We believe the
Answer intended paragraph 4 to refer to claim 4, rather than claim 14 and
that paragraph 13 is correct. Compare claim 4 with claim 16 (see Ans. 9) and
compare claim 2 with claim 14 (see Ans. 12).
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the length of the first host file and sends the first data to the
non-volatile memory array where the first data are stored at a
location recorded using a first file identifier;
a second protocol adapter that receives second data from
a second application as a stream of data identified as data of a
second host file without an indication of the length of the
second host file and sends the second data to the non-volatile
memory array where the second data are stored at a location
recorded using a second file identifier; and
a third protocol adapter that receives third data from a
third application as a plurality of sectors having individual
logical addresses from a logical address range
defined for the memory system and sends the third data to the
non-volatile memory array where the third data are stored at a
location recorded using a third file identifier.

Independent claim 7 is representative of claims 8, 9, 11, and 12, with
the key disputed limitations emphasized. We treat these claims as a group
that rises or falls with our resolution of claim 7. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
7. A memory system comprising:
a nonvolatile memory array;
a backend memory management system that manages
data within the nonvolatile memory array as files;
an interface layer that communicates with a host;
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a translation layer between the interface layer and the
backend memory management system, the translation layer
receiving host commands from the interface layer, the host
commands complying with an object protocol, and in response
to receiving the host commands the translation layer generating
translated commands to the backend memory management
system, the translated commands not complying with the object
protocol; and
the memory system embodied on a removable memory
card that connects to a host interface and that stores data
received through the host interface.

Dependent claim 10, with the key disputed limitations emphasized,
provides:
10. The memory system of claim 9 wherein, in response to
determining that the entire object has been received, the
translation layer generates a response that is sent to the host and
generates an end of file indicator that is sent to the backend
memory management system.

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Issues on Appeal3
1. Does Leonhardt anticipate the subject matter of independent
claim 1, including the limitations of “a first protocol adapter,” “a second
protocol adapter,” and “a third protocol adapter?”
2. Does Leonhardt in view of Piau render obvious the subject
matter of independent claim 7, including the limitation of “the memory
system embodied on a removable memory card that connects to a host
interface and that stores data received through the host interface?”
3. Does Leonhardt in view of Piau render obvious the subject
matter of dependent claim 10, including the limitation “in response to
determining that the entire object has been received?”

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
Appellant's Specification
1. Appellant’s system has a translation layer 750 comprising three
protocol adapters 630, 632, and 634. (Spec. ¶ [00131]; Figure 17).
2. Each protocol adapter provides translation between a particular host
protocol and backend 640. (Spec. ¶ [00131]; Figure 17).

3 Claims 1, 2, 5, 6, 13, 17, and 18 were also provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 3, 4, 7, 14, 16, and 17 of copending Application
No. 11/316,577. This rejection is moot. See the Notice of Abandonment for
Application No. 11/316,577, mailed on August 13, 2009.
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3. An interface layer 752 containing interfaces 644, 642, and 639 is in
communication with a host and a back end. (Spec. ¶¶ [0009], [00132];
Figure 17).
4. The translation layer between the interface layer and the backend
converts data and commands received by the interface layer according to
different protocols used by hosts into a format that is intelligible to the
backend. (Spec. ¶¶ [0009]; Figure 17).
Leonhardt
5. Within an outboard storage manager 10, Leonhardt’s system has a
storage manager 12 including a front end 14 and a back end 16. (¶ [0027]).
6. Data is communicated between hosts 18, 20 to outboard storage
manager 10 over data interfaces that include FIPS, ESCON, and SCSI. (¶
0028]).
7. Storage manager 12 includes management software 42 which uses
data storage rules to determine how received data sets are to be treated. (¶
[0033]).
8. The data storage rules contain information such as what data transfer
and data access characteristics are needed by the user. (¶ 0033]).
9. Storage manager 12 also includes interim storage 44. (¶ 0036]).
Piau
10. Piau teaches the use of a memory system contained in a memory card
with multiple interfaces used to communicate through different protocols.
(Abstract; col. 2, ll. 46-61; col. 4, ll. 4-18; col. 7, ll. 43-62; Figure 2).

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ANALYSIS
Claim 1
Claim 1 recites a first protocol adapter that receives first data
exhibiting a first description; a second protocol adapter that receives second
data exhibiting a second description; and a third protocol adapter exhibiting
a third description.
The Examiner contends that Leonhardt discloses all three recited
protocols described in Leonhardt as FIPS, ESCON, and SCSI. (FF 6).
Appellant contends that Leonhardt does not disclose these protocols being
used together in the same system. (Br. 8). In response, the Examiner notes
the absence in Leonhardt of any indication that these protocols may not be
used together in the same implementation. (Ans. 21).4 Accordingly, the
Examiner interprets paragraph 28 of Leonhardt to mean that the three
protocols “can” be used with the invention. (Ans. 21, lines 19-22).
“A claim is anticipated only if each and every element as set forth in
the claim is found, expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. ‘Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it

4 The Examiner also contends that although the claim language requires use
of multiple protocols, the claim language is broad enough to encompass
using the same type of protocol multiple times. (Ans. 21, lines 4-6). We
disagree because the claim language clearly recites different descriptors for
each of the protocols.
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anticipates.’” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
Here, we cannot say – nor has the Examiner shown – that Leonhardt’s
device necessarily uses all three protocols in the invention. Even assuming,
without deciding, that one skilled in the art would know that all three
protocols could be used in the invention as the Examiner contends, this
finding would be unavailing. Although such a consideration may be
relevant to an obviousness determination, it is nonetheless inapposite to the
Examiner’s anticipation rejection which requires that all three protocols are
necessarily present within the four corners of Leonhardt – which they are
not. Nor will we speculate regarding the obviousness of this claimed feature
in the first instance on appeal.
We are therefore, constrained by the record before us to find that the
Examiner erred in rejecting independent claims 1 and 135 and dependent
claims 2-6, 14-22.6

5 Although claim 13 recites only two, rather than three, protocol adapters,
the Examiner grouped claim 13 with claim 1, providing the same analysis
for both. The rejection of claim 13 must be reversed for the same reasons
set forth above regarding claim 1: Leonhardt does not necessarily use two
different protocols.
6 Because we reverse the rejection of independent claims 1 and 13, we will
not consider Appellant’s separate arguments regarding dependent claims 4,
6, 16, 19, 20, and 22 (Br. 9-10, 13) nor separately consider claims 3, 5, 15,
17, 18, and 21, which were not separately argued.
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Claim 7
Claim 7 recites a memory system having a translation layer between
the interface layer and the backend layer where the memory system is
embodied on a removable memory card that connects to a host interface and
that stores data received through the host interface.
The Examiner has concluded that in view of Piau, it would have been
obvious to replace one of the storage subsystems of Leonhardt with a
memory card. (Ans. 14). As a first example, the Examiner concluded that it
would have been obvious to replace the disk sub-system 22 of Leonhardt.
(Ans. 14). In addition, the Examiner further found that any disk storage
could have been replaced with a memory card. (Ans. 26, lines 9-11).
Accordingly, the Examiner also concluded that it would have been
obvious to replace the memory in Leonhardt’s outboard storage manager 10
with a memory card to perform the functions and the memories of the
outboard storage manager (Ans. 24, lines 11-17) including Leonhardt’s
interim storage 44 and management software 42 (Ans. 26, lines 13-18).
When such substitutions are made, the Examiner concluded, the software 42,
44 used by the outboard storage manager is between Leonhardt’s interface
layer (front end 14) and Leonhardt’s back end 16. (Ans. 26, lines 16-19).
Referring to the Examiner’s initial example that it would have been
obvious to substitute a memory card for Leonhardt’s disk sub-system 22,
Appellant contends that there is no disclosure in Leonhardt that such a
memory card would contain a translation layer between the interface layer
(front end 14) and back end 16. (Br. 11; Reply Br. 6). We do not reach that
contention because the Examiner clarified that he was not relying solely on
such a substitution.
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Appellant’s Reply Brief then contends that the Examiner did not
provide a rationale for replacing Leonhardt’s interim storage 44 with a flash
memory card. To the contrary, the Examiner found that it would have been
obvious to replace one of Leonhardt’s storage subsystems with a memory
card because memory cards are smaller, lighter, portable, completely silent,
have more immediate access, and are less prone to mechanical damage than
disk drives and the memory card of Piau has a memory system that performs
the functions of different protocol adapters. (Ans. 14).
Appellant next contends that one of ordinary skill in the art would not
have replaced such a cache as Leonhardt’s interim memory 44 with a
removable memory card. (Reply Br. 7). However, because Appellant has
not identified any persuasive supporting evidence, we consider this
contention to be an unpersuasive argument of counsel, which cannot take the
place of factually supported objective evidence. In re Huang, 100 F.3d 135,
139-140 (Fed. Cir. 1996).7
For all of the above reasons, we sustain the rejection of claim 7 along
with dependent claims 8, 9, 11, and 12.

Claim 10
Claim 10 recites “in response to determining that the entire object has
been received, the translation layer generates a response that is sent to the

7 Appellant argues for the first time in the Reply Brief that even if interim
storage 44 were replaced with a memory card, it would not appear that a
memory array within such a card would be managed by back end 16. (Reply
Br. 7). We decline to consider this new argument absent a showing a good
cause. See Ex parte Borden, No. 2008-004312 (BPAI 2010) (Informative).
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host and generates an end of file indicator that is sent to the backend
memory management system.”
The Examiner considers the end of file indicator to be an indicator of
deletion or expiration of data. (Ans. 15). More specifically, the Examiner
contends that receiving and storing a file is a triggering event and that every
action occurring after the file is received occurs because the data was
initially received and stored. Therefore, the Examiner contends, expiration
and deletion happen “in response to” the data having been received and
stored. (Ans. 27-28).
Appellant contends that the Examiner’s interpretation of “in response
to” is not reasonable because deletion may never occur, or may occur years
later (Br. 12) and that a more direct causal relationship is required. (Br. 13).
We recognize that during examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). We also recognize that although claims are interpreted in light of
the specification, limitations from the specification are not read into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Here, the Specification states that an end of file indicator is sent
“when the entire file object has been received” (Spec. ¶ [00112]); that is, in
response to receipt of the file. Accordingly, the Specification supports
Appellant’s contention that “in response to” must be given a more direct
causal relationship to when the entire object has been received than has been
allowed by the Examiner.
Accordingly, we do not sustain the rejection of claim 10.

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DECISION
The Examiner’s decision rejecting claims 1-6, 10 and 13-22 is
reversed and the Examiner’s decision rejecting claims 7-9, 11, and 12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED-IN PART

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