Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Dec 16, 2021

2020005298 (P.T.A.B. Dec. 16, 2021)

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.
15/686,690 08/25/2017 Yang Seok Ki 141582/414471-00118 4968
129498 7590 12/16/2021
Lewis Roca Rothgerber Christie LLP
P.O. Box 29001
Glendale, CA 91209-9001
EXAMINER
PAPERNO, NICHOLAS A
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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):
PLPrivatePair@lrrc.com
pto@lewisroca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANG SEOK KI and JASON MARTINEAU
Appeal 2020-005298
Application 15/686,690
Technology Center 2100
Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–6, 8–18, and 20, which are all claims
pending in the application. Appeal Br. 2. Appellant has canceled claims 7
and 19. Claims App. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal
Br. 1.
Appeal 2020-005298
Application 15/686,690

2
STATEMENT OF THE CASE2
The claimed subject matter is directed to “device and system for a
cooperative index for resource-constrained storage system.” Spec. ¶ 1
(emphasis omitted). In particular, Appellant’s disclosed embodiments and
claimed invention relate to “a system and method for managing a memory
device including a mechanism for leveraging the resources of the host to
improve upon the functionalities and performance of a storage device
without overburdening the device with computationally intensive indexing
operations. See Spec. ¶ 6.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method for managing a storage device, the
method comprising:
receiving, by a host processor located on a host system,
index requirements for a cooperative index, the index
requirements comprising at least one of user service
requirements or data access requirements;
transmitting, by the host processor, to a storage
processor located on a storage device, at least one of the index
requirements for the cooperative index;
receiving, by the host processor, parameters of a first
index created by the storage processor utilizing a device profile
of the storage device comprising at least one of computing

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 26, 2020); Reply Brief (“Reply Br.,” filed July 7, 2020); Examiner’s
Answer (“Ans.,” mailed May 14, 2020); Final Office Action (“Final Act.,”
mailed Dec. 20, 2019); and the original Specification (“Spec.,” filed Aug
25, 2017).
Appeal 2020-005298
Application 15/686,690

3
capabilities or storage capabilities of the storage device, and the
at least one of the index requirements, wherein an index
structure of the first index is partially ordered according to keys
or is unordered in order to decrease a computational burden on
the storage device; and
building, by the host processor, utilizing the parameters
of the first index and interacting with the first index, a second
index that meets the index requirements by providing enhanced
functionality to the first index, wherein the second index is
configured to operate on the host system and be cooperatively
used with the first index operating on the storage device.
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Wu et al. (“Wu”) US 2012/0005419 A1 Jan. 5, 2012
Kruglick US 2013/0290343 A1 Oct. 13, 2013
Isherwood et al. (“Isherwood”) US 2014/0330785 A1 Nov. 6, 2014
Waldspurger et al. (“Waldspurger”) US 2016/0140052 Al May 19, 2016
Salim et al. (“Salim”) US 2016/0357763 A1 Dec. 8, 2016
Maccanti et al. (“Maccanti”) US 10,025,673 B1 July 17, 2018
Yanqin Jin et al., “KAML: A Flexible, High Performance Key-Value
SSD,” IEEE International Symposium on High Performance Computer
Architecture, Feb. 2017, (hereinafter “Jin”).
REJECTIONS
R1. Claims 1–4, 8–11, 13–16, and 20 stand rejected under AIA 35
U.S.C. § 103 as being unpatentable over the combination of Kruglick, Wu,
and Salim. Final Act. 2.
Appeal 2020-005298
Application 15/686,690

4
R2. Claims 5 and 17 stand rejected under AIA 35 U.S.C. § 103 as
being unpatentable over the combination of Kruglick, Wu, Salim, and
Maccanti. Final Act. 12.
R3. Claims 6 and 18 stand rejected under AIA 35 U.S.C. § 103 as
being unpatentable over the combination of Kruglick, Wu, Salim, and Jin.
Final Act. 13.
R4. Claim 12 stands rejected under AIA 35 U.S.C. § 103 as being
unpatentable over the combination of Kruglick, Wu, Salim, Isherwood, and
Waldspurger. Final Act. 14.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 5) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1–4, 8–11, 13–16, and 20 on the basis of
representative claim 1. Remaining dependent claims 5, 6, 12, 17, and 18 in
obviousness Rejections R2–R4, not argued separately, stand or fall with
independent claims 1 and 13 from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2020-005298
Application 15/686,690

5
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to
representative claim 1 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 103 Rejection R1: Claims 1–4, 8–11, 13–16, and 20
Issue 1
Appellant argues (Appeal Br. 7–15; Reply Br. 2–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Kruglick, Wu, and Salim is in error. These contentions
present us with the following issues:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the labeled limitations:
[L1] a storage processor located on a storage device;
[L2] receiving, by a host processor located on a host
system, index requirements for a cooperative index;
[L3] the index requirements comprising at least one of
user service requirements or data access requirements;
[L4] receiving, by the host processor, parameters of a
first index created by the storage processor;
[L5] building, by the host processor, utilizing the
parameters of the first index and interacting with the first index,
Appeal 2020-005298
Application 15/686,690

6
a second index that meets the index requirements by providing
enhanced functionality to the first index;
[L6] wherein the second index is configured to operate
on the host system and be cooperatively used with the first
index operating on the storage device;
as recited in claim 1, and did the Examiner provide proper motivation to
combine the references in the manner suggested?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
Appeal 2020-005298
Application 15/686,690

7
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
All Limitations are Taught or Suggested
L1: a storage processor located on a storage device
Limitation L1 of claim 1 recites “a storage processor located on a
storage device.”
The Examiner finds that the combination of Kruglick, Wu, and Salim
teaches or suggests disputed limitation L1. In particular, the Examiner finds
Kruglick’s first and second memories both including processors for
managing the memory teach or at least suggest the disputed limitation. Final
Act. 3, citing Kruglick at ¶¶ 42, 44.
Appellant argues “[b]ecause none of the first memory 201, second
memory 202, or storage device 351 have a storage processor located on a
storage device, Kruglick does not disclose this feature of claim 1.” Appeal
Br. 11.
The Examiner responds by finding all memory devices, including
Kruglick’s memory devices, have a processor to facilitate access. Ans. 5.
The Examiner finds Kruglick’s Fig. 3 shows a server with a processor
located on it with memory devices as well as a separate memory controller.
Appeal 2020-005298
Application 15/686,690

8
Id. The Examiner further finds Kruglick’s Figure 4 shows data transfer
between the memories. Id. The Examiner concludes the physical location
of the processor does not change its function. Ans. 6.
We are not persuaded by Appellant’s arguments and agree with the
Examiner, particularly in light of Kruglick Figure 3, that the cited disclosure
of Kruglick teaches or at least suggests “a storage processor located on a
storage device.” We agree the disputed term “the storage processor of a
storage device” means the storage processor is on the storage device.
Kruglick’s second memory 202 which is on the storage device 350, and
storage device 250’s communication with processor 310, teaches or at least
suggests the disputed limitation. See Kruglick Figs. 2C, 3, ¶¶ 42, 44.
L2: receiving, by a host processor located on a host system, index
requirements for a cooperative index
Limitation L2 of claim 1 recites “receiving, by a host processor
located on a host system, index requirements for a cooperative index.”
The Examiner finds that the combination of Kruglick, Wu, and Salim
teaches or suggests disputed limitation L2. In particular, the Examiner finds
that the recitation of “receiving, by a host processor located on a host
system, index requirements for a cooperative index” reads on Kruglick’s
teaching of a service provider receiving a request to accelerate access to a
database by building an optimized index, where the requirement of the index
would have to also have been received as part of the its structure. Final
Act. 2–3, citing Kruglick ¶ 50. The Examiner further finds Wu teaches
building indexes with index requirements. Final Act. 4–5, citing Wu ¶¶ 20,
23, 25.
Appeal 2020-005298
Application 15/686,690

9
Appellant argues “the cited portions of Kruglick do not show that the
‘second digital service provider 102’ receives any index requirements for
‘optimized index 154.’” Appeal Br. 13 (emphasis omitted).
The Examiner explains that, under Appellant’s Specification, the term
“index requirements” is very broad. Ans. 10. The Examiner further points
out that the while the second index may be built independent of the basic
index this does not “negate the portions of Kruglick that describe using the
indexes together and building the optimized index based off of the basic
one.” Ans. 11.
We adopt the Examiner’s findings regarding limitation L2 and are not
persuaded by Appellant’s argument because they essentially argue the
references separately, when the rejection is for what the combination of
references would have suggested to a person with skill in the art. Keller, 642
F.2d at 425. The Examiner has cited to Wu for teaching building indexes
with index requirements. Final Act. 4–5, citing Wu ¶¶ 20, 23, 25.
We also agree with the Examiner that Appellant’s Specification
describes a cooperative index broadly, where “many more data structures
that might be used for indexing purposes which are not explicitly disclosed
herein, but are within the scope of the inventive concept” provides for the
Examiner’s broad interpretation to be reasonable. See Spec. ¶ 45.
L3: the index requirements comprising at least one of user service
requirements or data access requirements
Limitation L3 of claim 1 recites “the index requirements comprising
at least one of user service requirements or data access requirements.”
Appeal 2020-005298
Application 15/686,690

10
Appellant contends “receiving query data over time, as in Kruglick,
does not constitute receiving ‘user service requirements’ or ‘data access
requirements’ as recited in independent claims 1, 13, and 20.” Appeal
Br. 15. Appellant further argues Wu “does not describe what or how actual
user service or data access requirements might impact ‘performance and
capacity,’ and how such abstract associations (abstract within the teachings
of Wu) may be used to construct an index.” Appeal Br. 16.
The Examiner responds to Appellant’s argument and clarifies the
rejection:
Wu does indeed teach the index requirements comprising at
least one of user service requirements or data access
requirements. Paragraph [0020] of Wu states that performance
and capacity are two important considerations when designing a
key-value store. It goes on to list specific metrics such as
latency and throughput, both of which are specific data access
requirements.
Ans. 12–13.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings that Wu’s latency and throughput teach or suggest
specific data access requirements. We agree with the Examiner because
Wu’s key/value store considers performance and capacity in its design. See
Wu ¶ 20. Appellant does not point to any definition of “data access
requirements” in the Specification that would preclude the Examiner’s broad
but reasonable interpretation that data access requirements covers
throughput and/or latency.
Appeal 2020-005298
Application 15/686,690

11
L4: receiving, by the host processor, parameters of a first index created by
the storage processor
Limitation L4 of claim 1 recites “receiving, by the host processor,
parameters of a first index created by the storage processor.”
Appellant contends:
[T]he Final Rejection, as best understood, appears to equate the
“second service provider 102” of Kruglick with the “host
processor” as recited in claim 1, the “basic index 153” of
Kruglick with the “first index” as recited in claim 1, and the
“first memory 201” of Kruglick with the “storage processor'' as
recited in claim 1.
However, paragraph [0031] of Kruglick provides that the
“[b]asic index 153 may for example comprise any index that
can be constructed from database 152 by second digital service
provider 102 without the benefit of a history of cloud client 160
queries.” (Emphasis added).
Accordingly, the “basic index 153” of Kruglick (i.e., the alleged
“first index”) appears to be created by the “second digital
service provider 102” of Kruglick (i.e., the alleged “host
processor”) rather than by the “first memory 201” of Kruglick
(i.e., the alleged “storage processor”), as the claim requires.
Appeal Br. 17.
We are not persuaded by Appellant’s arguments because they are not
responsive to the specific findings made by the Examiner in the Final
Action. We find no citation by the Examiner to these numbered elements in
Kruglick, as Appellant contends.
We agree with the Examiner’s findings that Kruglick’s storage is
sending back the requested data — data that is then being used to create the
optimized index. Thus, Kruglick’s storage is accordingly sending back
Appeal 2020-005298
Application 15/686,690

12
parameters that it created to the host, based on the requirements that were
sent to it. Ans. 14–15.
L5: building . . . utilizing the parameters of the first index and interacting
with the first index, a second index that meets the index requirements by
providing enhanced functionality to the first index
Limitation L5 of claim 1 recites “building, by the host processor,
utilizing the parameters of the first index and interacting with the first index,
a second index that meets the index requirements by providing enhanced
functionality to the first index.”
Appellant contends:
[N]owhere do the cited portions of Kruglick disclose or even
suggest at least “index requirements for a cooperative index,”
because the index information for the “optimized index 154”
may be unavailable (e.g., proprietary or inoperable) to the
“second digital service provider 102,” and significant query
history data is also unavailable, such that the “optimized index
154” is constructed based on new query data as it is received
over time.
Appeal Br. 18.
We are not persuaded by Appellant’s arguments because Appellant is
arguing limitations not recited in the disputed limitation. Although Claim 1
does recite “index requirements for a cooperative index” this limitation was
addressed above with respect to Limitation L2.
In agreement with the Examiner, we find that Kruglick’s building of
an optimized index to accelerate access to the database while it is building
an optimized version of the basic index means there is interaction between
the two indexes. Ans. 17–18, citing Kruglick ¶¶ 50, 52, 53. We agree with
the Examiner because Kruglick provides a database to the first memory
Appeal 2020-005298
Application 15/686,690

13
access, while simultaneously building and constructing an efficient database
optimized index 154, and we find this disclosure of Kruglick at least
suggests the disputed limitation.
L6: the second index is configured to operate on the host system and be
cooperatively used with the first index operating on the storage device
Limitation L6 of claim 1 recites “wherein the second index is
configured to operate on the host system and be cooperatively used with the
first index operating on the storage device.”
The Examiner finds Salim’s host device has a locally stored index and
a second device with a remotely stored index, where both indexes are used
together to search a particular application state result teach this limitation.
Final Act. 5, citing Salim Figs. 1–3, ¶¶ 51, 73. The Examiner also provides
the rationale for combining the teachings:
Since both Kruglick/Wu and Salim teach using indexes together
it would have been obvious to one of ordinary skill before the
effective filing date of the claimed invention to substitute the
location of the two indexes of Kruglick and Wu to be on the
host and storage device as taught in Wu in order to obtain the
predictable result of wherein the second index is configured to
operate on the host system and be cooperatively used with the
first index operating on the storage device (since all that
changes is where the indexes are located).
Final Act. 5–6 (emphasis omitted).
Appellant contends:
Salim does not appear to disclose anything substantive about
“remote application state search index” 110. Thus, it is unclear
how the disclosure of Salim would teach or enable a person
having ordinary skill in the art how to modify the disclosures of
Kruglick and Wu to arrive at the claimed embodiment.
Furthermore, paragraph [0068] of Salim, with reference to FIG.
6 (reproduced below), discloses that “[b]y sending the
Appeal 2020-005298
Application 15/686,690

14
application states to a remote application state indexer 610,
these application states can be made available to support
queries from other devices not illustrated.” Thus, the “remote
application state search index” 110 of FIG. 1 of Salim
(reproduced above), which appears to play an analogous role to
the “remote application state indexer 610,” is likely stored on
another “host system,” rather than on a “storage device.”
Appeal Br. 20 (alteration in original).
We are not persuaded by Appellant’s arguments, which argues the
references separately, instead of addressing what the reference combination
would have suggested to a person with skill in the art.
Motivation to Combine
Appellant also contends “the Final Rejection fails to provide any
rationale for why a person having ordinary skill in the art would have
combined Kruglick, Wu, and Salim to arrive at the claimed embodiment.”
Appeal Br. 21.
We are not persuaded by Appellant’s arguments because they focus
on the individual teachings of the cited prior art, and not what the
combination would have suggested to a person with skill in the art.
Moreover, the Examiner points out that Salim’s two indexes can be
used cooperatively together with one located on the host device and the
other on a remote device. Ans. 20–21, citing Salim Fig. 1, ¶ 51. We agree
with the Examiner’s findings because Salim’s remote application state
search index 216 at least suggests the second index cooperatively working
with the local search service, which itself works with two indexes: 212
and 214. See also Salim ¶ 73.
Appeal 2020-005298
Application 15/686,690

15
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2–4, 8–11, 13–16, and 20 which fall therewith. See Claim Grouping,
supra.
2. § 103 Rejections R2–R4 of Claims 5, 6, 12, 17, and 18
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R4 of claims 5, 6, 12, 17, and 18
under § 103 (see Appeal Br. 22), we sustain the Examiner’s rejection of
these claims. Arguments not made are forfeited.4

4 Appellant merely argues, “Because claims 2–6, 8–12, and 14–18 depend,
directly or indirectly, from either claim 1 or claim 13, these claims each
incorporate all of the terms and limitations of their respective base claim, in
addition to other limitations, which together further patentably distinguish
these claims over the art of record when considered as a whole.” Appeal
Br. 22. See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed.
Cir. 2020) (alteration in original, footnote omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 . . . (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 . . . (1938)) (additional citations omitted). The two
scenarios can have different consequences for challenges raised
on appeal, id. at 733–34, . . . and for that reason, it is worth
attending to which label is the right one in a particular case.
Appeal 2020-005298
Application 15/686,690

16
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–27) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
We affirm the Examiner’s rejections. More specifically, Appellant
has not argued persuasively that the Examiner erred with respect to
obviousness Rejections R1 through R4 of claims 1–6, 8–18, and 20 under 35
U.S.C. § 103 over the cited prior art combinations of record, and we sustain
the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–4, 8–11,
13–16, 20 103
Kruglick, Wu,
Salim
1–4, 8–11,
13–16, 20

5, 17 103
Kruglick, Wu,
Salim, Maccanti 5, 17
6, 18 103
Kruglick, Wu,
Salim, Jin 6, 18
12 103
Kruglick, Wu,
Salim, Isherwood,
Waldspurger
12
Overall
Outcome
1–6, 8–18,
20
Appeal 2020-005298
Application 15/686,690

17
TIME PERIOD FOR RESPONSE
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