Ex Parte Okin et al

Patent Trial and Appeal Board

Apr 29, 2016

11864823 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/864,823 09/28/2007
79963 7590 05/03/2016
Alford Law Group, Inc,
23052H Alicia Parkway, No. 201
Mission Viejo, CA 92692
FIRST NAMED INVENTOR
Kenneth A. Okin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
102 l.P005US2 4154
EXAMINER
DUDEK JR, EDWARD J
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
docketing@alfordiplaw.com
uspto@dockettrak.com
alfordiplaw. docketing@ gm ail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH A. OKIN, GEORGE MOUSSA, KUMAR
GANAPATHY, VIJAY KARAMCHETI, and RAJESH PAREKH
Appeal2014-004118
Application 11/864,823
Technology Center 2100
Before JEAN R. HOMERE, JOHN A. EV ANS, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
Per Curiam.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 28-35 and 60-73. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 1-27 and 36-59 have been canceled. App.
Br. 3.
We AFFIRM.
1 Our Decision refers to Appellants' Appeal Brief filed October 28, 2013
("App. Br."); Appellants' Reply Brief filed February 18, 2014 ("Reply Br.");
Examiner's Answer mailed December 18, 2013 ("Ans."); the Final Office
Action mailed February 27, 2013 ("Final Act."); and original Specification
filed September 28, 2007 ("Spec.").
2 Appellants identify as the real party in interest Virident Systems, Inc.,
which has been merged into HGST, Inc., which is a wholly owned
subsidiary of W estem Digital Corporation. Reply Br. 3.
Appeal2014-004118
Application 11/864,823
STATEMENT OF THE CASE
Claims on Appeal
Independent claim 28 is illustrative and is reproduced below (with
disputed limitations in italics):
28. A method of communicating with non-volatile memory
modules in a memory channel of a memory array including a plurality
of non-volatile memory modules, the method comprising:
a memory controller signaling over the memory channel to a
first non-volatile memory module in the memory array to perform a
first operation, the first non-volatile memory module including afirst
printed circuit board with a first edge connector and a first plurality
of non-volatile memory devices;
signaling back to the memory controller using a first feedback
status control signal to indicate that the first non-volatile memory
module is busy;
waiting for the first non-volatile memory module to finish the
first operation after the first feedback status control signal indicates
the first non-volatile memory module is busy; and
signaling back to the memory controller using the first feedback
status control signal to indicate that the first non-volatile memory
module is now ready to perform another operation.
App. Br. 16 (Claims Appendix).
Oshima
Mylly et al.
("Mylly")
Yoshida et al.
("Yoshida")
Wang
Liu et al.
("Liu")
References
US 2006/0064537 Al
US 2006/0103948 Al
US 2007 /0045425 Al
US 2007/0174516 Al
US 2008/003 7317 Al
2
Mar. 23, 2006
May 18, 2006
Mar. 1, 2007
July 26, 2007
Feb. 14,2008
Appeal2014-004118
Application 11/864,823
Examiner's Rejections
Claims 28-31, 33, 34, 60-70, and 73 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oshima and Wang. Final Act. 5-10.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima, Wang, and Yoshida. Final Act. 10-11.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima, Wang, and Mylly. Final Act. 11.
Claims 71 and 72 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima, Wang, and Liu. Final Act. 12-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred. See App. Br. 6-14; Reply Br. 10-16. We
are not persuaded by Appellants' arguments. We highlight and address
specific arguments and findings for emphasis as follows.
Independent Claim 28
Appellants contend the Examiner erred in finding Oshima teaches "a
memory controller signaling over the memory channel to a first non-volatile
memory module in the memory array to perform a first operation," as recited
in claim 28. App. Br. 6-9; Reply Br. 10-14. In particular, Appellants argue
"Oshima' s controller 4 is part of Oshima' s memory card 1, not a part of
Oshima's host apparatus 20." App. Br. 7 (citing Oshima Fig. 1); see Reply
Br. 13 (citing Oshima Fig. 1 ). Appellants additionally contend that the
Specification does not describe that the "memory controller" recited in the
claim is part of the memory module. Reply Br. 10-11 (citing Spec. Figs. 2,
3
Appeal2014-004118
Application 11/864,823
SA, SB). Appellants further assert Wang does not teach this limitation.
App. Br. 7-9; Reply Br. 13-14.
We are not persuaded of Examiner error. We agree with the
Examiner that the claim does not recite that the memory controller is located
in a system implementing the method to which the claim is drawn. Ans. 2.
The Examiner further finds that Oshima teaches a controller 4 in
communication through a memory interface S with a NAND type flash
memory 3. Ans. 2-3 (citing Oshima Fig. 1). Contrary to Appellants'
argument, the Examiner finds N AND type flash memory 3, not the memory
card 1, teaches the "memory module" recited in the claim. Id.
Appellants then argue Oshima does not teach the "first edge
connector," as recited in claim 28. App. Br. 10-11. Specifically, Appellants
contend Oshima teaches pins on the surface of the memory card which do
not extend to the edge of the memory card. App. Br. 10 (citing Oshima Fig.
2). According to Appellants, Oshima teaches a surface connector, not an
edge connector. App. Br. 10 (citing Oshima Fig. 2); Reply Br. 6.
Appellants next contend the Specification illustrates an edge connector 401
extending to the edge of a printed circuit board 400. App. Br. 10-11 (citing
Spec. Fig. 4A). Appellants further assert the memory card in Oshima is
structurally like that of a Secure Digital (SD) or MicroSD Card. Reply Br.
7-8 (citing Oshima Fig. 2); Ans. S. Appellants contend that the connectors
on a Micro SD Card are surface connectors. Reply Br. 9.
The Examiner finds Oshima teaches a connector with contacts along
the outer edge of the surface of the memory card. Ans. 3 (citing Oshima
Fig. 2). Appellants do not cite any definition of "edge connector" in the
Specification, much less one that excludes the type of contact configuration
4
Appeal2014-004118
Application 11/864,823
taught in Oshima. App. Br. 4 (citing Spec. iii! 48, 77, 128); Ans. 3.
Therefore, we agree with the Examiner that the claim does not require the
edge connector to extend to the end of the printed circuit board. Ans. 3. The
Examiner further finds, and we agree, that Oshima teaches the memory
module may be arranged on a printed circuit board. Final Act. 5 (citing
Oshima if 27). Therefore, because the claim does not recite the features
Appellants argue are required of, and the Specification does not define, the
recited "first edge connector," we are not persuaded of Examiner error.
Based upon the foregoing, we sustain the rejection of claim 28.
Appellants do not present additional persuasive arguments regarding claims
29-35, 60-70, and 73 (App. Br. 12; Reply Br. 14), and, therefore, we sustain
the rejections of these claims.
Claims 71 and 72
Appellants argue Oshima and Wang teach away from the use of "a
dual inline memory module (DIMM) with the first edge connector having
pads on front and back sides of the printed circuit board," as recited in
dependent claims 71 and 72. App. Br. 12-14. In particular, Appellants note
Oshima and Wang do not expose pads or pins on both sides of a printed
circuit board. App. Br. 13. Appellants allege this structure of the printed
circuit board provides ease of installation by consumers. Id. Appellants
further contend the single sided connectivity in Oshima and Wang is
incompatible with the DIMM structure. Id. at 14; Reply Br. 15; Ans. 6.
Appellants' teaching away argument is unavailing because Appellants
have merely pointed out differences in the teachings of the art, rather than
directed us to disclosure that discredits the use of a DIMM structure. See In
5
Appeal2014-004118
Application 11/864,823
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[T]he prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed ... )." Furthermore,
the Examiner explains that there is no teaching in Oshima and Wang that
pads are included only on a single side of the module for ease of installation;
as such, there is no teaching away from using pads on two sides because it
would be allegedly harder for consumers to install. Ans. 5. The Examiner
relies upon Liu to teach the DIMM as recited in the claim. Final Act. 12
(citing Liu i-fi-125-27). The Examiner finds one of ordinary skill in the art
would be able to modify connectors in Oshima and Wang to be compatible
with the DIMM in Liu. Ans. 6. The Examiner explains the motivation to
combine Liu with Oshima and Wang as "one of a limited number of known
ways to implement a non-volatile memory system." Final Act. 12.
Appellants' arguments do not persuade us of error in the combination of
Oshima, Wang, and Liu, for which the Examiner provided articulated
reasoning with rational underpinning to support the combination. See id. As
such, we sustain the rejection of claims 71 and 72.
DECISION
We affirm the Examiner's rejection of claims 28-35 and 60-73.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6