HEWLETT PACKARD ENTERPRISE DEVELOPMENT LP

Patent Trials and Appeals Board

Mar 2, 2020

15032327 - (D) (P.T.A.B. Mar. 2, 2020)

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.
15/032,327 04/27/2016 Jichuan Chang 90199309 4538
56436 7590 03/02/2020
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
YEW, CHIE W
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
chris.mania@hpe.com
hpe.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JICHUAN CHANG, SHENG LI, and
PARTHASARATHY RANGANATHAN

____________________

Appeal 2019-001747
Application 15/032,327
Technology Center 2100
____________________

BEFORE BRYAN F. MOORE, NORMAN H. BEAMER, and
JASON M. REPKO, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL1

1 Throughout this Decision we have considered the Specification filed April
27, 2016 (“Spec.”), the Final Rejection mailed April 6, 2018 (“Final Act.”),
the Appeal Brief filed September 4, 2018 (“Appeal Br.”), the Examiner’s
Answer mailed October 18, 2018 (“Ans.”), and the Reply Brief filed
December 17, 2018 (“Reply Br.”).
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Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 6, 7, 11, and 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to an
overloaded schedule detection and notification in a calendaring and
scheduling system. Spec. ¶¶ 2, 6. Claim 1, reproduced below, is illustrative
of the subject matter on appeal (emphasis added to contested prior-art
limitation):
1. A method for compressing and compacting memory on a
memory device, comprising:
organizing a number of compressed memory pages
referenced in a number of compaction table entries based
on a size of the number of compressed memory pages;
and compressing the number of compaction table entries,
in which a compaction table entry comprises a number of
fields.
Appeal Br. 22 (Claims App.).
REJECTIONS
Claim 15 stands rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor regards as the invention. Final Act. 2.

2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hewlett
Packard Enterprise Development LP. Appeal Br. 1.
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Claims 1, 2, 4, 5, 10, 16, and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of US 6,452,602 B1, issued
Sept. 17, 2002 (“Morein”), in view of US 5,546,575, issued Aug. 13, 1996
(“Potter”). Final Act. 3–10.
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Morein, in view of Potter, and in further view of US
2005/0283711 A1, published Dec. 22, 2005 (“Claseman”). Final Act. 10–
12.
Claims 6–8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Morein, in view of Potter, and in
further view of US 8,862,837 B1, published Oct. 14, 2014 (“Marshak”).
Final Act. 12–14.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Morein, in view of Potter and Marshak, and in
further view of US 6,349,150 B1, published Feb. 19, 2002 (“Jones”). Final
Act. 15–16.
Claims 11, 13, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Morein, in view of Marshak. Final
Act. 16–19.
Claims 12 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Morein, in view of Marshak, and in
further view of US 2010/0316114 A1, published Dec. 16, 2010 (“Fallon”).
Final Act. 19–22.
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Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Morein, in view of Potter, and in further view of
Marshak. Final Act. 22–26.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Morein, in view of Marshak, and in further view of
Potter. Final Act. 26–27.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.

Rejection of Claim 15 under 35 U.S.C. § 112(b)
The Examiner finds that claim 15 is indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention. Specifically, the
Examiner asserts “‘the same size’ (claim 15 ln 6) appears to lack
antecedence basis. Examiner suggests amending to ‘the a same size’.” Final
Act. 3.
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Appellant asserts it “is not appealing the rejection of claim 15 on this
basis.” Appeal Br. 3. That is, the Appellant advances no arguments
concerning the rejection under 35 U.S.C. § 112, for dependent claim 15, and,
thus, waives argument as to the rejections of claim 15. See
37 C.F.R. § 41.37(c)(1)(iv). We, therefore, summarily sustain the rejection.
See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

Rejection of Claims 1, 2, 4, 5, 10, 16, and 17 under 35 U.S.C. § 103
The Examiner finds that claims 1, 2, 4, 5, 10, 16, and 17 would have
been obvious over the combination of Morein, and Potter. Final Act. 5–12.
Appellant argues that the cited portions of Morein, relied on by the
Examiner, do not teach or suggest that “a size of the number of compressed
memory pages.” Appeal Br. 5. Appellant argues that the Examiner’s
interpretation of the term “a size of the number of” (Ans. 15) is
unreasonable. Reply Br. 2.
We agree with Appellant that the Examiner erred. We give contested
claim limitations their broadest reasonable interpretation consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Here, the Examiner interpreted the term “organizing a number of
compressed memory pages . . . based on a size of the number of compressed
memory pages” to mean “organizing compressed memory pages based on a
single size parameter of the compressed memory pages.” Ans. 10. In
applying this construction the Examiner states “Morein teaches grouping
(organizing) compressed data set (compressed memory pages) into a group
where the group stores a predetermined number (size) of compressed data
sets.” Id. The Examiner argues that in Morein “compressed data sets are
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stored into a group based on predetermined number (size) of compressed
data sets.” Id. Thus, the Examiner equates “size’ in the claim to “number.”
The Examiner’s interpretation is overly broad, unreasonable, and is not
consistent with Appellant’s Specification for the following reasons.
Paragraph 61 of the Specification, for example, describes that
“[c]ompressed memory pages in a memory chunk may be grouped []
together. For example, a memory chunk may include memory pages of 4
KB, 2KB, 1 KB, 2KB, and 4KB. In this example, the memory pages may be
re-arranged based on size.” Spec ¶ 61; Appeal Br. 2. Appellant argues “[i]f
‘size’ is interpreted to mean ‘number,’ then the resulting claim construction
is ‘organizing a number of compressed memory pages . . . based on a
[number] of the number of compressed memory pages.” Reply Br. 1–2.
The Examiner’s interpretation does not correspond with what and how the
inventor describes his invention in the Specification and is, thus, overly
broad. Merely organizing by the number of compressed memory pages read
“size” out of the claim. Additionally, as paragraph 61 describes, the
Specification associates grouping by “size” as related to at least the size of
the individual memory pages.
Because we conclude the Examiner’s construction is overly broad,
unreasonable, and inconsistent with the Specification, on the record before
us, we reverse the Examiner’s § 103(a) rejection of independent claim 1.3
We also reverse the rejection of claims 1, 2, 4, 5, 10, 16, and 17, which are

3 Appellant raises additional arguments with respect to claims 1 and 11.
Because the identified issue is dispositive of the appeal of the rejection of
claims 1 and 11, we do not reach the additional arguments.
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not argued separately (see Appeal Br. 6–10), as obvious over the
combination of Morein and Potter.

Rejection of Claims 11–14, 18, and 19 under 35 U.S.C. § 103
Appellant is not appealing the rejection of claims 11–14, 18, and 19.
See Appeal Br. 1. Thus, Appellant acknowledges these grounds but does not
request review of or argue these grounds.4 Appeal Br., 1.
The Appellant advances no arguments concerning the rejections under
35 U.S.C. § 103, for either independent claim 11, or dependent claims 12–
14, 18, and 19, and, thus, waive argument as to the rejections of claims 11–
14, 18, and 19. See 37 C.F.R. § 41.37(c)(1)(iv). We, therefore, summarily
sustain the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2017); In re Baxter
Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (argument waived when not
timely presented in briefing to the Board, absent exceptional circumstances);
In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002) (Board did not err in
sustaining a rejection under 35 U.S.C. § 112 ¶ 2 when the Examiner refused
to enter an Amendment filed with Appeal Brief and applicant failed to
contest the rejection as to the non-amended claims on appeal); Manual of
Patent Examining Procedure § 1215.02 (9th ed., Rev. 08.2017, eff. Jan.
2018); id. § 1215.03 (“An appellant may, of course, choose not to present
arguments or rely upon particular evidence as to certain claim rejections;
however, such arguments and evidence are waived for purposes of the

4 Appellant states on page 8 of the Appeal Brief that “the rejection of claim
15 is clearly erroneous at least for the same reasons that the rejections of
claims 1 and 11 are.” Appeal. Br. 8. Nevertheless, there are no arguments
regarding claim 11 in the Brief so this reference to claim 11 appears to be a
typographical error.
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appeal and the Board may summarily sustain any grounds of rejections not
argued.”).

Rejection of Claim 15 under 35 U.S.C. § 103
The Examiner finds that claim 15 would have been obvious over the
combination of Morein, and Potter. Final Act. 5–12. Appellant argues that
the cited portions of Morein, relied on by the Examiner, do not teach or
suggest that “resize a number of memory pages to the same size.” Appeal
Br. 4. Examiner argues,
Limitation ‘resize a number of memory pages to a same size’ (as
amended) when given its plain meaning is interpreted to mean
‘compress a subset of memory pages to a same size’ under
broadest reasonable interpretation based upon the customary
meaning given to the term by those of ordinary skill in the art at
the time of the invention. In other words, claim 15 appears to
only require obtaining a subset of memory pages and
compressing the subset of memory pages into compressed
memory pages where the compressed memory pages are of a
same size (instead of compressing all memory pages to be the
same size).

Final Act. 39. Appellant argues that in Morein, each data set when
compressed has a size corresponding to the compression scheme used to
compress that data set. The data sets are not themselves resized so that they
are all the same size. Rather, in the applied art, the compressed version of a
data set has a size corresponding to the compression scheme used to
compress the data set. The data set itself is not resized, and remains the
same size.

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Appeal Br. 7. Also, Potter is not used by the Examiner to show “resizing.”
Ans. 6.
According to the Examiner “‘resizing a number of memory pages to a
same size’ is interpreted to mean compressing memory pages to a fixed size
(or predetermined size). Since size is fixed, the size is the same. In light of
the BRI interpretation, Morein teaches compressing texture blocks (memory
pages) where resulting compressed data set is of a fixed size.” Ans. 17.
We are persuaded by Appellant that the claim requires that the data set
be resized and neither Morein nor Potter resize the data set. This is
consistent with the Specification which states “memory chunk may include
consecutive memory pages having sizes of 2 KB, 1 KB, and 2 KB. In this
example, a size of 2 KB may be selected (block 406) as a compressed page
size. Accordingly, the compressed pages may now have sizes of 2 KB,
2KB, and 2 KB [thus,] [r]e-sizing a number of page sizes . . .” Spec. ¶ 62;
Appeal. Br. 2. In that citation, a group of memory pages is resized. Thus,
although the claim does not recite resizing “compacted” memory pages, the
term “resizing” suggest that the memory pages within the number of
memory pages were “re”sized to be the same size not simply individually
compacted to a pre-determined size. Therefore, we reverse the Examiner’s
§ 103(a) rejection of independent claim 15.

CONCLUSION
We summarily affirm the Examiner’s rejection of claim 15 under 35
U.S.C. § 112(b). We affirm the Examiner’s rejection of claims 11–14, 18,
and 19 under 35 U.S.C. § 103. We reverse the Examiner’s rejection of
claims 1–10, 16–17 under 35 U.S.C. § 103. Because we have affirmed at
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least one ground of rejection with respect to claims 11–15, 18, and 19 on
appeal, the Examiner’s decision rejecting claims 11–15, 18, and 19 is
affirmed. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the [E]xaminer on that claim, except as to any ground
specifically reversed.”).

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
15 112(b) Indefiniteness 15
1, 2, 4, 5,
10, 16–17
103(a) Morein, Potter 1, 2, 4, 5,
10, 16–17
3 103(a) Morein, Potter, Claseman 3
6–8 103(a) Morein, Potter, Marshak 6–8
9 103(a) Morein, Potter, Marshak,
Jones
9
11, 13, 19 103(a) Morein, Marshak 11, 13, 19
12, 14 103(a) Morein, Marshak, Fallon 12, 14
15 103(a) Morein, Potter, Marshak 15
18 103(a) Morein, Marshak, Potter 18
Overall
Outcome
11–15,
18, 19
1–10, 16–
17
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). See
37 C.F.R. § 41.50(f).

AFFIRMED IN PART