Ex Parte Noyes et al

Patent Trial and Appeal Board

Mar 29, 2017

13073768 (P.T.A.B. Mar. 29, 2017)

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.
13/073,768 03/28/2011 Harold B Noyes 2008-0438.01(MICS0285-l) 8508
52142 7590 03/31/2017
FLETCHER YODER (MICRON TECHNOLOGY, INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
VO, TIM T
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
docket@fyiplaw.com
manware@fyiplaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD B NOYES and STEVEN P. KING1
Appeal 2014-009719
Application 13/073,768
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—18 and 20,2 which constitute all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.3
1 Appellants identify the real party in interest as Micron Technology, Inc.
App. Br. 2.
2 See the Final Action dated Oct. 11, 2013 (“Final Act.”).
3 We sustain at least one rejection of every claim.
Appeal 2014-009719
Application 13/073,768
Introduction
Appellants state their invention relates “to electronic devices having a
bus translator.” Spec. 12, Title. As filed, claim 1 broadly claimed as the
invention “[a] method comprising: selecting one bus among the plurality of
different types of buses through which a device will communicate.” Spec,
p. 31. During prosecution, Appellants thrice amended claim 1 in response to
35 U.S.C. § 102(b) rejections4 so that, as pending, it now reads as follows:
1. A method, comprising:
selecting, via a bus translator, one bus among the
plurality of different types of buses through which a device will
communicate, wherein the device comprises a pattern-
recognition processor configured to receive a data stream and
search the received data stream for a particular pattern to
generate a search result, wherein the device comprises the bus
translator, wherein the pattern-recognition processor is a
physically separate non-integrated component from the bus
translator; and
translating, via the bus translator, a signal received from
the selected one bus.
App. Br. 19 (Claims App’x).
References and Pending Rejections
The pending rejections rely upon the following prior art:
Heigletal. US 2003/0014579 A1 Jan. 16,2003
(“Heigl”)
Kelly US 2003/0217244 A1 Nov. 20,2003
Bresniker US 2009/0037641 A1 Feb. 5,2009
4 For the 35 U.S.C. § 102(b) rejections and corresponding amendments, see
Non-Final Action dated Oct. 28, 2011; Amendment dated Jan. 30, 2012;
Final Action dated Feb. 29, 2012; Amendment dated May 29, 2012; Non-
Final Action dated June 3, 2013; Amendment dated Sept. 3, 2013. All
§ 102(b) rejections were over Heigl, listed infra under References and
Pending Rejections.
2
Appeal 2014-009719
Application 13/073,768
Noyes et al. US 7,917,684 B2 Mar. 29,2011
(“Noyes”)
Acknowledged Prior Art (“APA”) See Spec. 3^4
Claims 1—5, 11—18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Bresniker and either Heigl or APA. Final Act. 2—5.
Claims 6—8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bresniker, either Heigl or APA, and Official Notice of
what was well known in the art at the time of the invention. Final Act. 6—8.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bresniker, either Heigl or APA, and Kelly. Final Act. 7.
Claims 1—3, 11—15, 17, and 18 stand further rejected under 35 U.S.C.
§ 103(a) as unpatentable over APA and Bresniker. Final Act. 8—11.
Claims 6—8 and 10 stand further rejected under 35 U.S.C. § 103(a) as
unpatentable over APA, Bresniker, and Official Notice of what was well
known in the art at the time of the invention. Final Act. 11—13.
Claim 9 stands further rejected under 35 U.S.C. § 103(a) as
unpatentable over APA, Bresniker, and Kelly. Final Act. 12.
Claims 1—18 and 20 stand furthermore rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1—20 of Noyes.
Final Act. 14.
ISSUES
Based on Appellants’ arguments, the following issues are before us:
(1) Whether the Examiner errs in the 35 U.S.C. § 103(a) rejections of
claim l.5 See App. Br. 6—11, 13—17; Reply Br. 2—9.
5 Appellants present no substantive arguments of patentability for claims 2,
3, 5, 9-15, 17, and 18 separate from the issues argued for claim 1. Except
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Application 13/073,768
(2) Whether the Examiner errs in the 35 U.S.C. § 103(a) rejections of
claim 4.* * 6 See App. Br. 12; Reply Br. 9—10.
(3) Whether the Examiner errs in the 35 U.S.C. § 103(a) rejections of
claim 6.7 See App. Br. 15—16; Reply Br. 10-11.
(4) Whether the Examiner errs in the nonstatutory, obviousness-type
double-patenting rejection of claims 1—18 and 20. See App. Br.
17; Reply Br. 11—12.
ANALYSIS
Claim 1
In the 35 U.S.C. § 103(a) rejections of claim 1, the Examiner cites
Bresniker for teaching “selecting . . . one bus among the plurality of
different types of buses.” Final Act. 2—3, 8—9 (citing Bresniker || 12—21,
Fig. 1). Appellants argue the Examiner errs in this finding because, “at best,
the memory channel controllers 110 of Bresniker each receive data along
one of a similar set of channels. However, since these channels are similar,
these channels cannot also be read as teaching ‘different types of buses,’ as
recited.” App. Br. 8; see also id. at 8—9, 14.
for our final disposition, we do not further discuss the 35 U.S.C. § 103(a)
rejections of claims 2, 3, 5, 9—15, 17, and 18.
6 Appellants argue claims 4, 16, and 20 together as a group, from which we
select claim 4 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). We note
claim 20 improperly depends from non-existent claim 19. In the event of
further prosecution of claim 20, the Examiner should require appropriate
correction. Except for our final disposition, we do not further discuss the
35 U.S.C. § 103(a) rejections of claims 16 and 20.
7 Appellants argue claims 6—8 together as a group, from which we select
claim 6 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Except for our
final disposition, we do not further discuss the 35 U.S.C. § 103(a) rejections
of claims 7 and 8.
4
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The Examiner answers by finding, inter alia, Bresniker teaches the
recited different types of buses because it teaches “each channel may employ
different types of DIMM, and/or DIMMs from different manufacturers”
(Bresniker 114) as well as an alternative embodiment in which “the host
system includes memory channels using different protocols” {id. 121). Ans.
4—6. Appellants reply that while Bresniker teaches that protocols may differ,
Bresniker “appears to teach transmitting differing signals across similar
busses.” Reply Br. 5.
Appellants do not persuade us the Examiner errs in finding Bresniker
teaches different types of buses, as recited. By focusing on Bresniker’s
teachings related to “industry standard DDR3 DIMMS 200” (see App. Br.
8—9 and Reply Br. 4—6), Appellants too narrowly interpret the scope and
content of Bresniker. Appellants do not explain how or why Bresniker’s
specific disclosure of memory channels to interface with various different
memory types other than DDR3 {see, e.g., Bresniker 110 (“a DIMM
channel depends on the memory technology (DDR1, DDR2, DDR3, etc.)”))
fails to render obvious channels to connect to different memories that use
different buses. Appellants’ Specification describes DDR, DDR2, etc. as
“different busses.” (Spec. 176.)
Appellants also argue the Examiner errs in finding either Heigl or
APA teaches claim 1 ’s requirement for “a bus translator that receives an
externally generated search result from a pattern recognition processor.”
App. Br. 9; see also id. at 9—11; Reply Br. 7—9. Appellants contend “Heigl
teaches, at best, generating search results internal to an alleged bus
translator.” App. Br. 10; see also Reply Br. 7. This does not persuade us.
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Each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in light of the combined teachings of those references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In rejecting claim 1, the Examiner finds that Bresniker teaches a
pattern recognition processor separate from a bus translator. Final Act. 2-4.
The Examiner finds Heigl teaches claim 1 ’s requirement to “search the
received data stream for a particular pattern to generate a search result.” Id.
at 4. The Examiner then finds the combination of Bresniker and Heigl
renders claim 1 obvious. Id. at 4—5. Regardless that Heigl teaches pattern
recognition that is part of its bus translator, Appellants do not persuade us
the Examiner errs in determining, in view of the combined teachings, it
would have been obvious for an ordinarily skilled artisan to incorporate
Heigh s in-bus-translator pattern recognition teachings with Bresniker’s
pattern recognition processor that is separate from the bus translator.
In the Reply Brief, Appellants also argue that, in the Answer, “the
Examiner has erred in suggesting that Bresniker can be read as teaching any
element configured to search a received data stream for a particular pattern
to generate a search result, as recited.” Reply Br. 6. This argument does not
persuade us because the rejection of claim 1 relies on either Heigl or APA
for teaching the requirement to “search the received data stream for a
particular pattern to generate a search result.” Final Act. 4—5.
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Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim l.8
Claim 4
Dependent claim 4 requires that the pattern recognition processor of
claim 1 includes “a decoder” and “a plurality of feature cells coupled to the
decoder,” with each feature cell “compris[ing] a plurality of memory cells.”
App. Br. 19 (Claims App’x). The Examiner finds Bresniker teaches these
requirements because its memory channel controllers (that correspond to the
recited pattern recognition processor) include address decoders, and these
decoders necessarily include memory cells (that map to the recited “feature
cells”). Final Act. 5; Ans. 21 (citing Bresniker || 7, 12, 15, 20).
Without providing any construction of the claim term “feature cell,”
Appellants argue the Examiner’s finding is erroneous because “the Examiner
has failed to point to a single element in any of the cited art of record that
teaches a pattern recognition processor inclusive of a decoder or of a
plurality of feature cells, as recited.” App. Br. 12; see also Reply Br. 9-10.
Appellants in essence argue the cited art simply does not teach the
recited limitations, without giving any explanation for how or why the
Examiner errs in the specific findings that map memory cells from
Bresniker’s decoders to claim 4’s “feature cells” that each “comprise[s] a
plurality of memory cells,” as recited. Id. In other words, Appellants do not
persuasively point to any error in either the prima facie case or the final
conclusion of obviousness made by the Examiner.
8 We adopt the Examiner’s findings and reasons in the rejections of claim 1.
See Final Act. 2—5, 8—10; Ans. 4—16. Because we sustain the Examiner’s 35
U.S.C. § 103(a) rejection of claim 1 based on the combination of Bresniker
and Heigl, we refrain from discussing the merits of the redundant § 103(a)
rejection of claim 1 based on Bresniker and APA.
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Application 13/073,768
Accordingly, we sustain the rejection of claim 4.9
Claim 6
Claim 6 recites “[t]he method of claim 1, wherein the plurality of
different types of buses comprises a bus with a non-multiplexed address and
a bus with multiplexed address.” App. Br. 19 (Claims App’x). In rejecting
claim 6, the Examiner “takes Official Notice . . . that the use of such buses
. . . [was] old and well-known in the art at the time the invention was made.”
Final Act. 11. Appellants argue the Examiner errs because “[w]hile
Appellants do not necessarily agree with the Official Notice taken by the
Examiner, Appellants note that none of the cited art of record teaches or
suggests using different types of buses.” App. Br. 15; see also Reply Br. 11
(also not contesting the substance of the Official Notice and summarily
arguing “the Examiner has failed to point to any teaching of’ claim 6’s
recited requirements).
We find Appellants’ argument for patentability of claim 6 based on
the “different types of buses” requirement of its parent claim unpersuasive
for the reasons discussed supra for claim 1. Appellants otherwise do not
substantively argue the Examiner’s finding by Official Notice that the
limitation recited in claim 6 was well known to those of ordinary skill.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 6.
Double-Patenting Rejection of Claims 1—18 and 20
In rejecting claims 1—18 and 20 for obviousness-type double­
patenting, the Examiner summarily states the “subject matter” of claims 1—
18 and 20 “is considered obvious over that covered by claims 1—20 of
9 We adopt the Examiner’s findings and reasons in the rejections of claim 4.
See Final Act. 5; Ans. 21.
8
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Application 13/073,768
[Noyes].” Final Act. 14. Appellants argue the Examiner errs by “failing] to
undertake a proper analysis of the claims and cited art.” App. Br. 17. We
agree. The Final Action’s double-patenting rejection lacks any factual
underpinning to explain how the claims of Noyes render obvious the
pending claims.
The Examiner answers, however, by providing a claim chart that maps
the recited requirements of pending claims 1,12, and 18 to corresponding
recitations in various claims from Noyes. See App. Br. 31—34. Appellants
reply “the additional elements argued herein [i.e., in the Appeal Brief and
Reply Brief] for patentability are the same elements that may be argued that
the obviousness-type double patenting rejection is improper.” Reply Br. 11.
As discussed supra, Appellants do not persuade us the Examiner errs
in rejecting the independent claims 1, 12, and 18 as obvious. Accordingly,
given that Appellants do not identify any erroneous findings in the
Examiner’s mapping of claims 1, 12, and 18 to the claims of Noyes,
Appellants do not persuade us the Examiner errs in the nonstatutory,
obviousness-type double-patenting rejection of them.
The Examiner provides no findings, however, in support of the
conclusion that Noyes’s claims render obvious the recited limitations of
pending claims 2—11, 13—17, and 20. Even a cursory comparison shows that
there are requirements recited in claims 2—11, 13—17, and 20 that have no
analog in the claims of Noyes. Thus, given that the Examiner articulates no
findings to underpin a determination that claims 2—11, 13—17, and 20 are
obvious in view of the claims of Noyes, we do not sustain the nonstatutory
obviousness-type double-patenting rejection of them.
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Application 13/073,768
DECISION
For the above reasons, we:
(1) affirm the rejection of claims 1—18 and 20 under 35 U.S.C.
§ 103(a);
(2) affirm the rejection of claims 1, 12, and 18 on the ground of
nonstatutory, obviousness-type double-patenting; and
(3) reverse the rejection of claims 2—11, 13—17, and 20 on the ground
of nonstatutory, obviousness-type double-patenting.
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
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