Monday, August 12, 2013

Board finds disclosure that memory access time period exists is not enough to anticipate decision based on this time period

Posted by: Karen G. Hazzah

Takeaway:  At issue in this appeal was the limitation "threshold defining both a number of times a segment is accessed and a given time period for the number of times." The Applicant did not dispute that the counter in the secondary reference tracked page accesses exceeding a threshold, but did argue that the reference did so without regard to a time period. The Examiner asserted that the threshold in the reference implicitly defined a time period, in that "when the threshold is reached the amount of time it took to reach it is also defined." The Board found this interpretation to be unreasonable. The Board acknowledged that the threshold determination "inevitably involve[d] a period of time to count those events," which was "simply the time elapsed during the counting process." However, the Board found that the reference "does not measure, let alone account for [this time period] as a factor for migration" as claimed. The Board reversed the rejection. (Ex parte Jones, PTAB 2011.)

Details:

Ex parte Jones
Appeal 2009011684; Appl. No. 11/066,038; Tech Center 2100
Decided:  August 9, 2011

The application on appeal was directed to a multiprocessor memory system that caches frequently used data in a centralized switch memory.
     1. A system comprising:
     a plurality of nodes, each node comprising a processor coupled to a memory; and
     a switching device coupled to the plurality of nodes and containing
          migration logic configured to migrate segments of each memory to a memory of the switching device so that segments are accessible to each of the processors. 
To overcome an obviousness rejection, the Applicant amended claim 1 to pull in dependent claim 4, as follows: 
migration logic that is configured to identify segments of memory that are each accessed above a threshold number of times over a given time period and that is configured to migrate segments of each memory so identified to a memory of the switching device.
The Applicant distinguished the secondary reference by arguing that Schonias did not teach tracking memory access "over a threshold number with regard to a given time period." (Emphasis in original.)

The Examiner maintained the rejection, explaining that the claim language "does not require that the threshold must be met within a specific time period instead it just requires that the threshold is met over some time period, which of course is true." (Emphasis added.)

In response, the Applicant amended again as follows:
migration logic that is configured to identify segments of memory that each accessed above a threshold, said threshold defining both a number of times a segment is accessed over and a given time period for the number of times, and that is configured to migrate segments of each memory so identified to a memory of the switching device"
The Applicant again argued that Schonias tracked page accesses that exceed a threshold, but without regard to a time period.

The Examiner maintained the rejection and took the Applicant final. According to the Examiner, the claim "merely states that 'a time period' is defined by the threshold" but not "how the time is defined by the threshold or what variable the time is defined with respect to, or that the time can't vary." The Examiner then explained that in Schonias, "the time period is defined by how long is takes to reach the count threshold of the counter, therefore the threshold being reached defines the amount of time it took to reach it."

The Applicant appealed and argued that the Examiner's claim construction was erroneous:
The Examiner apparently takes the position that because it will take some finite period of time for the counter threshold in Schoinas to eventually be reached, that the count threshold reaches does define an amount of time. However, the claim requires the migration logic to implement a threshold which defines both the number of times and the time period. Schoinas' counter threshold only defines a number of accesses, not a corresponding time period. The Examiner's reading of the claim is disingenuous and counter to what one ordinary skill in the art would understand upon reading Appellant's disclosure.
In the Answer, the Examiner first noted that the claim does not require a predefined time period, since neither the claims nor the specification provided "any specific explanation as to how the time period of these claims are defined." The Examiner then explained that the broadest reasonable interpretation covered a time period defined in terms of a number of memory accesses – which does read on a time period, even if that period is not predefined. Applying this to Schoinas, "when the threshold is reached the amount of time it took to reach it is also defined."

The Applicant filed a Reply Brief and again distinguished the claim from Schoinas:
In Schoinas, it will not matter whether it took 5 minutes or 5 hours to reach the terminal count for accessing a given memory area. In claim 1, it will matter. In Schoinas, a memory area that is accessed, say, 50 times is migrated even if it took a week to be accessed that number of times. The number of accesses alone is not enough for claim 1; the corresponding time period is also considered.
The Board reversed the rejection. The Board framed the dispositive issue as whether Schoinas' threshold defines a time period that is associated with the number of times a memory segment is accessed. The Board found that the Examiner had acknowledged that Schoinas' threshold did not explicitly define the time period. The Board further found that the Examiner relied on a defined time period that was "implicit in the length of time take to reach the specific count threshold." The Board found this reading of Schoinas was unreasonable in light of the specification:
     To be sure, counting discrete events, such as memory accesses, to determine whether those events reach a predetermined threshold amount will inevitably involve a period of time to count those events. But that hardly means that this inexorable passage of time is accounted for in this determination. It is simply the time elapsed during the counting process – a period of time that Schoinas does not measure, let alone account for as a factor for migration.
     By specifically defining both a count and a time period, the claimed threshold sets particular limits on the rate at which counts occur (i.e. their frequency) – a key temporal restriction that Schoinas simply does not contemplate.
My two cents: The Board recognized the Examiner's flawed logic, which boils down to what I call a "mere existence" analysis. The Examiner took a teaching of the existence of X (here, a time period) and asserted that the mere existence of X satisfied the claim limitation. Here, the claim as properly interpreted required not simply the existence of a time period during which memory was accessed, but also an action – identifying a segment – based on this property.

15 comments:

  1. "1. A system comprising:
    a plurality of nodes, each node comprising a processor coupled to a memory; and
    a switching device coupled to the plurality of nodes and containing
    migration logic configured to migrate segments of each memory to a memory of the switching device so that segments are accessible to each of the processors. "

    Looks like a apparatus to me.

    "Here, the claim as properly interpreted required ... an action, identifying a segment – based on this property. "

    Is that right? The apparatus claim required an action to take place? Because in so far as I'm aware, apparatii are not distinguished based on the methods they're carrying out.


    This might help:

    I. APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART
    > <
    While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).


    The board, merely a bunch of tar ds playing judge.

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  2. Because in so far as I'm aware, apparatii are not distinguished based on the methods they're carrying out
    6 ... you aren't aware of much. As claimed, the migration logic is CONFIGURED to perform certain actions (e.g., steps of a method). To be configured is to have a configuration, and a configuration is STRUCTURAL. You need to read Typhoon Touch v. Dell ... yet again. I thought we went over this case a few months ago. An apparatus configured to perform a function must be capable of performing that function ... merely having the capability of being configured to perform that function isn't enough. You know ... the whole "special purpose machine" thing that you turn a blind eye to.

    Are you really that dense? Scratch that ... the better question is are you naturally that dense or do you really know the answer and are just playing the troll?

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  3. Just curious: why did you blog about a case that was 2 yrs. old? In any case, thank you for spreading the knowledge.

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    1. Personally, I don't care about the age of the case (as long as it isn't so old that new Federal Circuit case law wouldn't have changed the outcome). Karen can speak for herself, but these cases are just vehicles through which we can discuss the law and how the PTAB is applying the law.

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    2. Sure, many blogs focus on recent decisions. But my focus is on decisions that prosecutors can learn something from and/or which I find interesting.

      Maybe some folks do read my blog to keep up with trends at the PTA. But I think the greater value in reading about PTAB decisions is to learn what arguments worked and didn't work for Applicants.

      And because PTAB decisions aren't (generally) precedential, recency isn't nearly as important as it is for court decisions. I doubt I'll ever blog about pre-Bilksi decisions involving 101 or pre-KSR decisions involving 103. But other than that, I consider every PTAB decision fair game.

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    3. OP here.

      I tried to convey my query in the spirit of curiosity without criticism at all. I apologize if there was any offense. I for one am very thankful that she writes this blog.

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    4. Don't worry OP, the tone of your comment was fine and no offense taken. I just took the opportunity to explain a little about why I choose the topics I do.

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  4. "As claimed, the migration logic is CONFIGURED to perform certain actions (e.g., steps of a method)."

    That isn't what the good OP said. He said, quite distinctly, that the it required an action. Not a configuration. And even if it did, Allapputerlol has no power to change reality. Such configured to language is the exact same thing as requiring the action, just as the OP noted in the topic.

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    1. He said, quite distinctly, that the it required an action.

      A claim to "a spring configured to activate a trap" doesn't require that the trap be activated. The "activate a trap" places a limitation on the configuration of the spring.

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    2. There is no "configured to" in his proposed, and quite correct, claim interpretation.

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  5. "Typhoon Touch v. Dell"

    I read that when it came out. It was as nonsensical then as it still is today. Someone needs to get this nonsense to the USSC, hopefully all in one big case that takes Alappat as well, and the sooner the better. But until then, claim construction continues to be a case by case determination and Newman's nonsense holds no sway over subsequent claim constructions in other cases.

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  6. I read that when it came out. It was as nonsensical then as it still is today
    Sorry Charlie ... the USPTO doesn't get to ignore the Federal Circuit. Until that case is overturned, you are stuck with it.

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    1. Maybe you didn't notice the part about claim construction being taken on a case by case basis. I will determine the proper claim construction in accord with reality (and not some judicial delusion, ever) in every single case that is put in front of me no matter how many times the Fed circ members mess their cases up. Likewise, I'm not "ignoring" the case, I will respond directly to it should it come up in the intant case before me. You might not have noticed but the federal government's patent office branch is in no way forbidden from bringing up such subjects in court, and that will always start with the examiner making a rejection.

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    2. I will determine the proper claim construction in accord with reality (and not some judicial delusion, ever)
      Good luck with that -- to be successful, you need to sufficiently distinguish the facts. NOT GOING TO HAPPEN.

      You might not have noticed but the federal government's patent office branch is in no way forbidden from bringing up such subjects in court, and that will always start with the examiner making a rejection
      yeah ... good luck with that. You are NOT working with a clean slate. You are looking to overturn recent Federal Circuit precedent. If you like fighting an already lost battle ... go for it. It is your time you are wasting.

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  7. Whoever it is that I was discussing an issue with the other day might find the following tidbit from judge Prost this morning quite juicy. Paraphrased: "I'm not sure why some of my fellow judges keep designating their routine claim construction opinions as "precedential" because they have no legal effect on the question of claim construction, which will be determined on a case by case basis, always. And to date none of them have been able to answer me as to why". Note that one such case she is referring to is Typhoon Touch.

    "Good luck with that -- to be successful, you need to sufficiently distinguish the facts. "

    Really? Pure questions of lawl require me to sufficiently "distinguish" facts? No brosef. The case needs no distinguishing on the facts. Note what J. Prost was talking about in her speech today.

    "You are NOT working with a clean slate."

    Don't need to brosef. It may be the case that some higher-up tar d somewhere comes in an overrules my claim construction years into prosecution (unlikely). Or it may be that it goes to appeal and the board gives a new claim construction because they're unable to understand reality and are similarly delusional as to what Newman suffered. That's also rather unlikely. But when good, and I should add, serious, men do something, it is difficult for bad men to compass their ends.

    Not to mention that every last claim construction that happens is a "clean slate". That's the nature of these questions of law. Though you are too ignorant to know this :( If you'd worked in the field for awhile you'd know sup.

    "You are looking to overturn recent Federal Circuit precedent."

    No, I'm not, and it's sad that you don't understand why.

    "If you like fighting an already lost battle "

    You really think that taking a realistic look at a claim construction is a "lost battle" don't you? The CAFC makes one error and suddenly for others to go ahead and point that out for them and continue to apply the law correctly is fighting a lost battle. LOL. A pleasant delusion you must be experiencing, while it lasts. Don't worry brosef, in the mean time I'll handle the cases before me in a realistic manner, and eventually we'll get the CAFC's error steamed out in cases that reach them.

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