Ex Parte Burka et al

Patent Trial and Appeal BoardMar 17, 2014

11928571 (P.T.A.B. Mar. 17, 2014)

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. 11/928,571 10/30/2007 Peter W. Burka CA920040080US2 7547 58139 7590 03/17/2014 IBM CORP. (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 EXAMINER WU, YICUN ART UNIT PAPER NUMBER 2158 MAIL DATE DELIVERY MODE 03/17/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER W. BURKA and BARRY M. GENOVA ____________________ Appeal 2011-012053 Application 11/928,571 Technology Center 2100 ____________________ Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012053 Application 11/928,571 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-5, 7-12, 14 and 16-20. Claims 6, 13, and 21 are allowed. Claim 15 is canceled. We have jurisdiction over the appealed claims under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. THE INVENTION The claims are directed interning invariant data objects in dynamic space constrained systems. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for interning invariant data objects in a computer implemented system, comprising: providing a list of least recently used invariant data objects, wherein the list includes a predetermined quantity of nodes that are associated with invariant data objects, wherein the nodes are positioned in the list based on a recentness of use of their associated invariant data objects, and wherein each of the nodes includes a first set of pointers that point to other nodes based on the positioning of the nodes in the list; providing a hierarchical tree corresponding to the list, wherein hierarchical tree includes all of the nodes in the list; reading an invariant data object; placing a node associated with the invariant data object at the head of the list; and rearranging the first set of pointers of the nodes of the hierarchical tree based on the placing. Appeal 2011-012053 Application 11/928,571 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Czajkowski Dixit US 6,799,173 B2 US 7,051,161 B2 Sep. 28, 2004 May 23, 2006 REJECTION The Examiner rejected claims 1-5, 7-12, 14 and 16-20 under 35 U.S.C. § 103(a) as being unpatentable over Czajkowski and Dixit. Ans. 4-6. APPELLANTS’ CONTENTION1 Neither does Czajkowski describe a hierarchical tree corresponding to a list nor does the Examiner provide a basis in fact and/or technical reason to support a finding that Czajkowski’s one-to-many mapping between shared and private data teaches or suggests a hierarchical tree. App. Br. 10-12. ISSUE ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-24) and Reply Brief (Reply Br. 2-108), the issue presented on appeal is whether the Examiner erred in finding Czajkowski discloses providing a hierarchical tree. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred in rejecting the independent claims 1 We note Appellants raise additional contentions of error but we do not reach them as our resolution of this contention is dispositive of the appealed rejections under 35 U.S.C. § 103(a). Appeal 2011-012053 Application 11/928,571 4 under 35 U.S.C. § 103(a) over Czajkowski and Dixit. We agree with Appellants’ conclusions as to these rejections of the claims. The Examiner finds Czajkowski’s heap corresponds to the claimed hierarchical tree. Ans. 4, citing Czajkowski col. 3, l. 65 – Col. 4, ll. 13. The Examiner further finds Czajkowski’s “[o]ne-to-many mapping” reads on Appellants’ hierarchical tree. Ans. 7 citing Czajkowski col. 4, ll. 35-36. Appellants dispute the Examiner’s finding, contending there is no teaching of the disputed limitation of “ʻproviding a hierarchical tree corresponding to the list, wherein hierarchical tree includes all of the nodes in the list.ʼ” App. Br. 10. In particular, Appellants argue there is no language in Czajkowski that teaches the disputed claim limitation. App. Br. 12. Furthermore, Appellants argue “if the Examiner is asserting that the teaching of leveraging virtual memory to efficiently support a one-to-many mapping between shared and private data implies the teaching of a hierarchical tree, then the Examiner must provide a basis in fact and/or technical reasoning to support such an assertion.” App. Br. 11 citing Ex parte Levy, 17 U.S.P.Q.2d 1461,1464 (Bd. Pat. App. & Inter. 1990). We agree with Appellants. The Examiner fails to explain why the referenced “garbage-collected heap (when present)” (Czajkowski col. 4, l. 2) discloses the disputed “hierarchical tree corresponding to the list, wherein hierarchical tree includes all of the nodes in the list.” Conceding, arguendo, a heap is a specific type of hierarchical tree, we find no disclosure and the Examiner does not explain why the heap includes all of the nodes in the list. That is, the mere mention of a heap structure, particularly for garbage collection, does not disclose a hierarchical tree including list nodes associated with invariant data objects. At most, the cited portion of Appeal 2011-012053 Application 11/928,571 5 Czajkowski discloses a structure associated with memory that had been allocated but is no longer in use.2 Furthermore, we do not agree the mere mention of a “one-to-many mapping” standing alone discloses a hierarchical tree. For example, a graph is a data structure that may exhibit a one-to-many mapping.3 In contrast, a tree is a type of graph which is hierarchical and wherein one node is the root and each node except the root is the child of one and only one other node.4 Therefore, the asserted one-to-many mapping is not the same as and does not disclose a tree. Therefore, for the reasons supra, we do not sustain the rejections of independent claims 1, 8, 14 and 16 under 35 U.S.C. § 103(a) over Czajkowski and Dixit or, for the same reasons, dependent claims 2-5, 7, 9- 12, and 17-20. Because this issue is dispositive as to the rejections against these claims, we need not reach the remaining arguments presented by Appellants. NEW GROUND OF REJECTION The following new grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b). Claims 8-12 are rejected under 35 U.S.C. § 101 as being directed towards non-statutory subject matter. Claims 8-12 recite a computer program product embodied in a 2 Microsoft Computer Dictionary 232 (5th ed. 2002)(Garbage collection n A process for automatic recovery of heap memory. Blocks of memory that had been allocated but are no longer in use are freed, and blocks of memory still in use may be moved to consolidate the free memory into larger blocks.) 3 Microsoft Computer Dictionary 238-239 (Graph n 1. In programming, a data structure consisting of zero or more nodes and zero or more edges, which connect pairs of nodes.) 4 Microsoft Computer Dictionary 529. Appeal 2011-012053 Application 11/928,571 6 computer readable storage medium. Appellants’ Specification provides no specific definition of what is meant by a computer readable storage medium. However, the Specification describes “[m]emory 22 may comprise any known type of data storage and/or transmission media, . . .” Spec. 9, ll. 1-2, emphasis added. Therefore we find Appellants’ invention encompasses transitory propagating signals which are unpatentable under 35 U.S.C.§ 101. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential), In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_ instractions.pdf (emphasis in original) (“Interim Instructions”). Also see David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). CONCLUSION The Examiner erred in rejecting claims 1-5, 7-12, 14 and 16-20 under 35 U.S.C. § 103(a) over Czajkowski and Dixit. A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b) and claims 8-12 are rejected under 35 U.S.C. § 101 as being directed towards non-statutory subject matter. Appeal 2011-012053 Application 11/928,571 7 DECISION The decision of the Examiner to reject claims 1-5, 7-12, 14 and 16-20 is reversed. We enter a new ground of rejection of claims 8-12. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner …. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record …. 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). REVERSED 37 CFR § 41.50(b) ke