Ex Parte Gissel et al

Patent Trial and Appeal Board

Aug 4, 2017

13159119 (P.T.A.B. Aug. 4, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/159,119 06/13/2011 Thomas R. Gissel 0464-009/YOR920110358US1 1823
55459 7590 08/08/2017
PATENT PORTFOLIO BUILDERS, PLLC
P.O. BOX 7999
Fredericksburg, VA 22404
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
08/08/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS R. GISSEL, AVRAHAM LEFF,
BENJAMIN MICHAEL PAREES, and JAMES THOMAS RAYFIELD
Appeal 2016-004971
Application 13/159,119
Technology Center 2100
Before JOHN A. JEFFERY, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-004971
Application 13/159,119
Appellants request rehearing of our decision dated May 23, 2017
(“Dec.”), where we affirmed Examiner’s decision to reject claims 1—10 and
12—24. Request for Rehearing filed July 21, 2017 (“Req. Reh’g”). In the
Request, Appellants contend that we misapprehended or overlooked certain
arguments raised in connection with the Examiner’s obviousness rejection of
claim 1 over Caulkins, Armangau, and Son.1 For the reasons noted below,
however, we deny the request to modify our decision.
First, Appellants contend that we failed to establish that Caulkins
discloses every element of the claimed invention as asserted by the
Examiner. Req. Reh’g 1^4. According to Appellants, Caulkins does not
disclose three limitations in claim 1, namely (1) identifying a given data set
from data sets stored in the fast access memory portion to be moved to the
slow access memory portion (“the identifying step”); (2) moving only the
bulk data of the identified data set to the slow access memory portion (“the
bulk data moving step”); and (3) receiving instructions from an application
associated with identified data set to modify that data set (“the receiving
step”). Req. Reh’g 1—2.
But the Examiner’s findings regarding these particular limitations
were not argued separately with particularity in Appellants’ briefs, let alone
argued with the requisite evidence, explanation, and analysis to show
persuasively why the Examiner’s findings regarding these three limitations
are erroneous—findings that the Examiner articulated expressly. See, e.g.,
Final Act. 5 (citing Caulkins, Abstract and Fig. 3, step 309 for teaching the
identifying and bulk data moving steps); see also Final Act. 6 (citing
1 Because these references are cited in full on pages 2 and 3 of our earlier
decision, we omit those citations here for brevity.
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Application 13/159,119
Caulkins Fig. 3, steps 301—311 and Armangau 148 for teaching the
receiving step).
Simply put, the Examiner’s findings regarding these three limitations
were not squarely addressed in the briefs—let alone persuasively rebutted;
therefore, we were not persuaded of error in those findings. To the extent
that Appellants contend that our “acceptance without challenge” of the
Examiner’s undisputed findings is improper (see Req. Reh’g 2), we disagree,
for it is well settled that the Board typically does not review uncontested
aspects of rejections. See Ex parte Frye, 94 USPQ2d 1072, 1075—76 (BPAI
2010) (precedential).
Frye is instructive on this point. As the expanded panel in that case
held:
[T]he Board will generally not reach the merits of any issues
not contested by an appellant.... For example, if an appellant
contests an obviousness rejection only on the basis that a cited
reference fails to disclose a particular limitation, the Board need
not review the other, uncontested findings of fact made by the
examiner underlying the rejection, such as the presence of
uncontested limitations in the prior art.
Id. at 1075—76 (citation omitted).
Nor will we consider Appellants’ belated arguments regarding
Caulkins’ alleged shortcomings pertaining to the recited identifying, bulk
data moving, and receiving steps here in the first instance on rehearing. See
37 C.F.R. § 41.79(b)(1). Because these arguments were not raised with
particularity on appeal, they are waived as untimely.
To be sure, Appellants argued on page 6 of the Appeal Brief that
Caulkins lacked disclosure regarding (1) handling requests asynchronously
to modify data in cache memory, and (2) modifying that bulk data in a
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Application 13/159,119
second slower cache memory as in the claimed invention. These arguments
were repeated on page 8 of the Appeal Brief. Notably, however, these two
instances on pages 6 and 8 of the Appeal Brief are essentially the entire
extent of Appellants’ arguments regarding Caulkins’ alleged shortcomings
in this regard—arguments that we found unavailing. Notably, the remainder
of the Appeal Brief (and the Reply Brief in its entirety) focused principally
on (1) the alleged shortcomings of Armangau and Son regarding handing
data modifications asynchronously, (2) the alleged lack of a reason to
modify Caulkins and Armangau to provide such asynchronous functionality;
and (3) Son ostensibly teaching away from such asynchronous
modifications. See App. Br. 5—10; Reply Br. 2-4. Accord Dec. 4 (noting
these arguments).
Nor did Appellants squarely address—let alone persuasively rebut—
the Examiner’s reliance on Caulkins’ write count in Figure 6 in connection
with modifying bulk data in a slow access memory portion in accordance
with received instructions as claimed. See Final Act. 7. Apart from merely
asserting that Caulkins does not modify bulk data in a second slower cache
memory as in the claimed invention (App. Br. 6, 8), Appellants did not show
persuasively why the Examiner’s particular findings in this regard are
erroneous. Mere lawyer argument and conclusory statements that are
unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”).
We also found unavailing Appellants’ contention on page 6 of the
Appeal Brief that Caulkins does not handle requests asynchronously to
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Application 13/159,119
modify data in cache memory. Notably, the Examiner relied on Son—not
Caulkins—for asynchronous data modification as we indicated on pages 5
and 6 of our decision. Our emphasis underscores the principal aspect of the
claimed invention that was disputed with particularity in the briefs—namely
with respect to the asynchronous data modification functionality in the
“wherein” clause of claim 1. That Appellants’ briefs are replete with
references to the term “asynchronous” only underscores its emphasis as a
key issue in this appeal—an issue highlighted in our first issue statement on
page 4 of our decision.
As we explained on pages 5 to 8 our decision, we found no error in
the Examiner’s reliance on Son in combination with the other cited
references for at least suggesting the recited asynchronous functionality.
Appellants’ contention that we allegedly improperly read and analyzed
Son’s teachings (Req. Reh’g 4—5) is unavailing. As we indicated, nothing in
the claim precludes the actual modification of bulk data from occurring at
some unspecified later time after writing data blocks to a cache and
indicating to a data source that the data was written to disk in Son. See Dec.
5—6 (citing Son, col. 1,11. 22—34). In short, we found no error in the
Examiner’s finding that this modification occurs asynchronously with events
associated with a modification request and confirmation, particularly in light
of the meaning of the term “asynchronously” which is interpreted, quite
broadly, as “at different times.” See Dec. 5—6.
Lastly, despite Appellants’ arguments to the contrary (Req. Reh’g 5—
6), we did not misapprehend or overlook the holding of In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004), in finding that Son does not teach away
from the claimed invention on pages 6 to 8 of our decision. To be sure, the
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court in Fulton held that merely disclosing more than one alternative does
not constitute a teaching away from any of the alternatives if the disclosure
does not criticize, discredit, or otherwise discourage such alternatives.
Fulton, 391 F.3d at 1201.
Although Appellants contend that we did not state that the alternatives
were “merely disclosed” in Son (Req. Reh’g 6), we effectively referred to
these disclosed alternatives in Son’s Background section. That is, we
referred to (1) the write-cache-based alternative relied upon by the
Examiner, namely the technique in Son’s column 1, lines 22 to 34, that
writes data blocks to a write cache, and later flushes the data by transferring
the data to disk, and (2) another write-cache-based alternative that writes a
data block to disk and flushes that block by issuing a flush command in
Son’s column 1, lines 40 to 45. See Dec. 6—8.
Although we acknowledged that the second alternative mitigates the
risk of losing data, and, therefore, is used in mission-critical and enterprise
applications, we did not find that Son teaches away from the first write-
cache-based alternative relied upon by the Examiner for other applications
(i.e., those other than mission-critical or enterprise applications) even if we
assume, without deciding, that the relied-upon alternative is inferior to, or
less desirable than, the second alternative. See id. Our findings and
conclusions in this regard, then, comport with Fulton and its progeny which
stand for, among other things, the proposition that merely because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes. See Fulton, 391 F.3d at 1200-02; see also
In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citing In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994)). Therefore, we did not misapprehend or
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overlook Fulton's holding in finding that Son does not teach away from the
claimed invention on pages 6 to 8 of our decision.
CONCLUSION
For the foregoing reasons, we have granted Appellants’ request to the
extent that we have reconsidered our decision, but we deny the request with
respect to making any changes therein.
DENIED
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