Ex Parte George et al

Patent Trial and Appeal Board

Jun 25, 2014

11519178 (P.T.A.B. Jun. 25, 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.
11/519,178 09/12/2006 George Madathilparambil George 7470
67489 7590 06/25/2014
GEORGE MADATHILPARAMBIL GEORGE
211, EMBASSY HABITAT, NO. 59 PALACE ROAD
BANGALORE, 560052
INDIA
EXAMINER
ELMORE, REBA I
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
06/25/2014 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 GEORGE MADATHILPARAMBIL GEORGE
and NIKHIL GEORGE
____________________

Appeal 2011-002367
Application 11/519,178
Technology Center 2100
____________________

Before ERIC B. CHEN, BRYAN F. MOORE, and MICHAEL J. STRAUSS,
Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
69-100, all pending claims in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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Application 11/519,178

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THE INVENTION
The claims are directed to a master device for manually enabling and
disabling read and write protection to parts of a storage disk or disks. Abst.
Claim 69, reproduced below, is representative of the claimed subject matter:
69. A first apparatus implemented in hardware which is used
for implementing access protection for at least one user of a
computer, said first apparatus comprising:
(a) a mechanism to support at least one user;
(b) a mechanism to support a plurality of states for each
supported user;
(c) a mechanism to accept a first command from a second
apparatus to change state of said first apparatus corresponding
to a user;
(d) a mechanism which allows a device driver of said
first apparatus executing in said computer to get an identifier of
said user from whom said first command for changing state, is
received;
(e) a mechanism to accept a second command from a
device driver of said first apparatus; and
(f) a mechanism for changing the state corresponding to
said user.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Magee US 5,729,710 Mar. 17, 1998

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REJECTIONS1
The Examiner rejected claims 69-100 under 35 U.S.C. § 102(b) as
being anticipated by Magee. Ans. 3-8.

APPELLANTS’ CONTENTIONS
1. “There are only three references in Magee to an apparatus, all of which
refers to an ‘apparatus for management of mapped and unmapped
regions’. Magee teaches nothing about an apparatus according to claim
69 [71, 72, 78, 82, 83, 84, 85, 86.]” App. Br. 13, 21, 22, 23, 24-25, 29-
30, 30-31, 33 (citations omitted).
2. Magee’s commands for, inter alia, copying, remaining, and moving port
rights, fail to “teach or anticipate commands used for ‘changing the state
of an apparatus corresponding to a user.’” App. Br. 14, 25-26.
3. Magee does not teach using an apparatus according to claims 69, 85, and
92. App. Br. 14, 31.
4. Because the “[t]erms ‘user state’, ‘state of user’, ‘state of users’ and ‘state
of a user’ are not present in Magee” it fails to teach “an apparatus used
for implementing access protection for at least one user of a computer
comprising a mechanism to ‘change the state of the apparatus
corresponding to a user’” as required by claim 69. App. Br. 14-15.
5. Magee’s microkernel components or other software stored in the memory
of a computer and “are not apparatuses” as required by claims 69, 70, 71,

1 The non-statutory double patenting rejection of claims 69-100 over U.S.
Patent Application 11/514,807 has been resolved with the filing of a
terminal disclaimer. Ans. 2. Therefore, Appellants’ arguments addressing
the terminal disclaimer and now withdrawn rejection (App. Br. 8-13) are
moot and not before this Board.
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73, 74, 72, 75-77, 78, 79-81, 82, 85, 86-91, 92, and 93. App. Br. 15, 17,
19, 21, 21-22, 23, 24, 28, 31, 32.
6. “Magee defines a port as a communication channel through which
threads communicate to each other and therefore, ports are not
apparatuses [as required by claims 83 and 84].” App. Br. 29, 30.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 13-35)
and Reply Brief (Reply Br. 9-107), the issue presented on appeal is whether
the Examiner erred in finding Magee discloses the disputed claim
limitations.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 3-8) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 9-20) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
In connection with contention 1, Appellants argue Magee includes
only limited references to an apparatus embodiment and therefore fails to
disclose an apparatus including the claimed functional mechanisms. App.
Br. 13, 21-25, 29-31, 33. The Examiner responds, finding Magee “shows an
‘apparatus’ in figure 1 in the form of a ‘host-multi-processor 100’ including
a memory 102 connected to a bus 104, an auxiliary storage 106, an I/O
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adapter 108, a first processor 110, and a second processor 112, all of which
are hardware elements.” Ans. 9. The Examiner further finds “[e]ven
individual programs/applications/software, embodied/implemented within a
(hardware) memory in a host multi-processor as shown by Magee, are each
part of/implemented in a hardware apparatus.” Id.
We agree with the Examiner. The Magee invention is entitled
“Method and Apparatus for Management of Mapped and Unmapped
Regions of Memory in a Microkernel Data Processing System” with similar
references to apparatus and hardware components throughout the disclosure.
See, e.g., Magee col. 4, ll. 29-30 (apparatus), Fig. 1 (host multiprocessor
100, processors A 110 and B 112), col. 6, ll. 46-49 (the processors can be, for
example, an Intel 386 ™ CPU, Intel 486 ™ CPU, a Pentium ™ processor, a
Power PC ™ processor, or other uni-processor devices). Therefore, we
agree with the Examiner and find Appellants’ contention 1 unpersuasive of
reversible Examiner error.
In connection with contention 2, Appellants argue Magee’s commands
do not disclose changing the state of an apparatus corresponding to a user.
App. Br. 14. The Examiner finds Magee’s description of different states for
different user mode tasks discloses the disputed limitation. Ans. 4 (citing
Magee col. 8, l. 46 – col. 9, l. 38). The cited section of Magee describes user
mode tasks which perform operating system functions, user-level run time
services for creating operating systems, and the configuration of services in
either user or kernel space. The Examiner explains:
The section cited discusses a client/server for inter-process
communications which means there are multiple users in the
system which require changing the state of a corresponding
user. The cite given states ‘The kernel must provide other
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support besides task-to- task communication including:
Management of points of control (threads); Resource
assignment (tasks); Support of address spaces for tasks; and
Management of physical resources, such as physical memory,
processors, interrupts, DMA channels, and clocks.’ The kernel
being in control of tasks matching the tasks to users and the
resources of the system to the user requirements.
Ans. 10.
In the absence of sufficient rebuttal evidence to persuade us otherwise,
we find the Examiner’s explanation to be reasonable. Therefore, a broadest
reasonable interpretation of the disputed limitation of “mechanism for
changing the state corresponding to said user” includes and is disclosed by
kernel support for the multiple users of Magee’s client/server. Therefore,
contention 2 is unpersuasive of reversible Examiner error.
Appellants argue in support of contention 3 that Magee does not
disclose using an apparatus as required by claims 69, 85, and 92. App. Br.
14, 31. However, for the reasons supra, we find Magee discloses an
apparatus embodiment. Furthermore, Appellants’ argument is unpersuasive
because it is based on “using,” i.e., an intended use of, an apparatus rather
than structural features of the apparatus. A claim containing a “recitation
with respect to the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art
apparatus” if the prior art apparatus teaches all the structural limitations of
the claim. Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987); cf. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language
does not confer patentability if prior art structure has capability of
functioning in the same manner). See also Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An
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intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.”). Therefore, Appellants’ contention 3 is not persuasive
of reversible Examiner error.
Similarly Appellants’ contention 4 that Magee fails to disclose “an
apparatus used for implementing access protection for at least one user of a
computer comprising a mechanism to ‘change the state of the apparatus
corresponding to a user’” (App. Br. 15) is unpersuasive because it again
argues distinctiveness based on an intended use of an apparatus rather than
structural features. Furthermore, for the reasons supra, we agree with the
Examiner that Magee discloses a mechanism to change the state of the
apparatus corresponding to a user. Therefore, contention 4 is not persuasive
of reversible Examiner error.
Appellants’ contention 5 is also argues Magee discloses software
stored in memory rather than “apparatuses” (App. Br. 15, 17, 19, 21-24, 28,
31, 32) as required by the disputed claims. We disagree for the reasons
supra finding Magee discloses apparatus for executing software and
performing, under software control, the disputed actions required of the
claimed mechanisms and apparatus. See Ans. 3-8.
Appellants’ contention 6 argues Magee’s ports are not apparatus.
App. Br. 29, 30. We disagree for the reasons supra finding Magee discloses
apparatus performing the claimed functions.
Therefore, for the reasons supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejections of claims 69-100 under
35 U.S.C. § 102(b) as being anticipated by Magee.

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CONCLUSIONS
We find the Examiner did not err the in finding Magee discloses the
disputed claim limitations and rejecting claims 69-100 under 35 U.S.C.
§ 102(b) as being anticipated by Magee.

DECISION
The Examiner’s decision to reject claims 69-100 is affirmed.
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).

AFFIRMED

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