Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al

Filing 842

Opposed MOTION for Attorney Fees Yahoo!'s Motion to Declare this an Exceptional Case and for Attorneys' Fees and Costs Pursuant to 35 USC Sec. 285 by Yahoo! Inc.. (Attachments: #1 Affidavit B. James Decl., #2 Exhibit 1, #3 Exhibit 2, #4 Exhibit 3, #5 Exhibit 4, #6 Exhibit 5, #7 Exhibit 6, #8 Exhibit 7, #9 Exhibit 8, #10 Exhibit 9, #11 Exhibit 10, #12 Exhibit 11, #13 Exhibit 12, #14 Exhibit 13, #15 Exhibit 14, #16 Exhibit 15, #17 Exhibit 16, #18 Exhibit 17, #19 Exhibit 18, #20 Exhibit 19, #21 Exhibit 20, #22 Exhibit 21, #23 Exhibit 22, #24 Exhibit 23, #25 Exhibit 24, #26 Exhibit 25)(Chaikovsky, Yar) (Additional attachment(s) added on 6/7/2011: #27 Text of Proposed Order) (mll, ).

EXHIBIT 6

OBLON

SPIVAK
Docket No.: 358121US91RX
ATTORNEYS AT

LAw

COMMISSIONER FOR PATENTS
ALEXANDRIA, VIRGINIA 22313
RE: Control No.:
901010,856
Inventor(s): Richard Michael NEMES
Filing Date: February 9, 2010
For: METHODS AND APPARATUS FOR INFORMATION STORAGE
AND RETRIEVAL USING A HASHING TECHNIQUE WITH
EXTERNAL CHAINING AND ON-THE-FLY REMOVAL OF
EXPIRED DATA
Group Art Unit: 3992
Examiner: A. J. Kosowski
SIR:
Attached hereto for filing are the following papers:
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120
in Reply to Office Action of July 23, 2010 wlExhibits A-C
Statement under 37 C.F.R. §1.560
Submission under 37 C.F.R. §1.555/1.565 in Ex Parte Reexamination of
U.S. Patent No. 5,893,120 w/Attachments (7)
Certificate of Service
Credit card payment is being made online (if electronically filed), or is attached hereto (if paper
filed), in the amount of $0.00 to cover any required fees. In the event any variance exists between the
amount enclosed and tht~ Patent Office charges for filing the above-noted documents, please charge or
credit the difference to Deposit Account No. 15-0030.
Respectfully submitted,
OBLON, SPIVAK, McCLELLAND,
MAIER &".
S!ADT, L.L.P.

" ,;;;;>:£

Customer Number

--

. Sco A. McKeown
Registration No. 42,866

22850
[phone] (phone)
[phone] (fax)
(OSMMN 10/09)

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.

1940 DUKE STREET. ALEXANDRIA, VIRGINIA 22314. U.S.A.
TELEPHONE: [phone]. FACSIMILE: 703-413-2220. WWW.OBLON.COM

DOCKET NO: 358121US91RX
IN THE UNITED STATES PATENT & TRADEMARK OFFICE
IN RE REEXAMINATION OF
U.S. PATENT NO. 5,893,120
INVENTOR:

EXAMINER: A. J. KOSOWSKI

RICHARD MICHAEL NEMES
CONTROL NO: 901010,856
FILED: FEBRUARY 9,2010

GROUP ART UNIT: 3992

FOR: METHODS AND APPARATUS FOR
INFORMA TION STORAGE AND
RETRIEV AL USING A HASHING
TECHNIQUE WITH EXTERNAL
CHAINING AND ON-THE-FL Y
REMOVAL OF EXPIRED DATA
AMENDMENT IN EX PARTE REEXAMINATION OF U.S. PATENT NO. 5,893,120
COMMISSIONER FOR PATENTS
ALEXANDRIA, VIRGINIA 22313
SIR:
In response to the Office Action in ex parte reexamination dated July 23, 2010, please
consider the following:
Description of claim status and support of claims begin on page 3.

A listing of claims begins on page 4 of this paper.
Remarks begin on page 7 of this paper.

Control No. 901010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010

TABLE OF CONTENTS
I.

REMARKS .................................................... '" ................................................. 7

II.

INTERVIEW IN EX PARTEREEXAMINATION ................................. 8

III.

CONCURRENT PROCEEDINGS ................................................... 8

IV.

DECLARATION EVIDENCE SUBMITTED UNDER 37 C.F.R. §1.132 ...... 8
A. The Claimed Structure of the '120 Patent.. ................................................. 8
B. Thatte Suspends Access Prior to Removal of Records ........................ 8
C. Dirks Predetermined Memory Segment Processing ............................ 8

V.

THE ADOPTED REJECTIONS FAIL TO PROVIDE EQUIVALENT
STRUCTURES THAT PERFORM IDENTICAL FUNCTIONS TO THAT
RECITED BY CLAIMS 1-2 & 5-6 .................................................................. 9
A. The Broadest Reasonable Interpretation Accorded Means-Plus-Function
Claims is Mandated by Statute (35 U.S.C. § 112, ~ 6th )
-The USPTO Cannot Disregard the Structure of the' 120 Patent. ......... 10

VI.

THIRD PARTY CLAIM REJECTIONS ADOPTED BY THE OFFICE ....... 13
A.
B.

Rejection of Claims 1-8 under 35 U.S.C. §102 (Thatte) ........................ 14

C.

Rejection of Claims 1-8 under 35 U.S.C. §103 over (Dirks) in view of
(Morris) .................................................................................................. 17

D.

Rejection of Claims 2, 4,6 and 8 under 35 U.S.C. §103 (Morrison) in
view of (Dirks) ................................................................................. 20

E.

VII.

Rejection of Claims 1,3,5 and 7 under 35 U.S.C. §102 (Morrison) ...... 13

Rejection of Claims 2, 4,6 and 8 under 35 U.S.c. §103 (Morrison) in
view of(Thatte) ...................................................................................... 20

NEW CLAIMS ............................................................................................ 21

VIII. CONCLUSION ................................................................................................. 22
EXHIBITS A-C (DECLARATIONS OF DR. LAWRENCE PILEGGI, Ph.D.)
INTERVIEW SUMMARY

2

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
DESCRIPTION OF CLAIM STATUS AND SUPPORT
Claim 1 is maintained in the originally issued scope of U.S. Patent 5,893,120.
Claim 2 is maintained in the originally issued scope of U.S. Patent 5,893,120.
Claim 3 is clarified herein. Support for the clarifying change is found in the claims as
originally submitted, as well as at least Fig. 3 boxes 39-40.
Claim 4 is maintained in the originally issued scope of U.S. Patent 5,893,120.
Claim 5 is maintained in the originally issued scope of U.S. Patent 5,893,120.
Claim 6 is maintained in the originally issued scope of U.S. Patent 5,893,120.
Claim 7 is clarified herein. Support for the clarifying changes is found in the claims as
originally submitted, as well as at least Fig. 3 boxes 39-40.
Claim 8 is maintained in the originally issued scope of U.S. Patent 5,893,120.

New Claims 9-12 find support as follows:
Claim 9 - at least Fig. 4, box 55; col. 7, lines 48-50.
Claim 10 - at least col. 8, lines 14-29; FIG. 5, boxes 78-81; and pseudo code.
Claim 11 - at least Fig. 4, box 55; col. 7, lines 48-50.
Claim 12 - at least col. 8, lines 14-29; FIG. 5, boxes 78-81; and pseudo code.

3

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010

IN THE CLAIMS
1. An information storage and retrieval system, the system comprising:
a linked list to store and provide access to records stored in a memory of the system,
at least some of the records automatically expiring,
a record search means utilizing a search key to access the linked list,
the record search means including a means for identifying and removing at least some
of the expired ones of the records from the linked list when the linked list is accessed, and
means, utilizing the record search means, for accessing the linked list and, at the same
time, removing at least some of the expired ones of the records in the linked list.

2. The information storage and retrieval system according to claim 1 further including
means for dynamically determining maximum number for the record search means to remove
in the accessed linked list of records.

3. (Amended) A method for storing and retrieving information records using a linked
list to store and provide access to the records, at least some ofthe records automatically
expiring, the method comprising the steps of:
accessing the linked list of records to search for a target record,
identifying at least some of the automatically expired ones of the records while
searching for the target record, and
removing at least some of the automatically expired records from the linked list when
the linked list is accessed.

4. The method according to claim 3 further including the step of dynamically
determining maximum number of expired ones of the records to remove when the linked list
4

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
is accessed.

5. An information storage and retrieval system, the system comprising:
a hashing means to provide access to records stored in a memory of the system and
using an external chaining technique to store the records with same hash address, at least
some of the records automatically expiring,
a record search means utilizing a search key to access a linked list of records having
the same hash address,
the record search means including means for identifying and removing at least some
expired ones of the records from the linked list of records when the linked list is accessed,
and
meals, utilizing the record search means, for inserting, retrieving, and deleting records
from the system and, at the same time, removing at least some expired ones of the records in
the accessed linked list of records.

6. The information storage and retrieval system according to claim 5 further including
means for dynamically determining maximum number for the record search means to remove
in the accessed linked list of records.

7. (Amended) A method for storing and retrieving information records using a
hashing technique to provide access to the records and using an external chaining technique
to store the records with same hash address, at least some of the records automatically
expiring, the method comprising the steps of:
accessing a linked list of records having same hash address to search for a target

5

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
identifying at least some of the automatically expired ones of the records while
searching for the target record,
removing at least some of the automatically expired records from the linked list when
the linked list is accessed, and
inserting, retrieving or deleting one of the records from the system following the step
of removing.

8. The method according to claim 7 further including the step of dynamically
determining maximum number of expired ones of the records to remove when the linked list
is accessed.

9. (New) The method of claim 3, further comprising:
deallocating memory of the at least some of the automatically expired records.

10. (New) The method of claim 9, further comprising:
inserting the target record into the linked list if the target record was not found during
the searching.

11. (New) The method of claim 7, further comprising:
deallocating memory of the at least some of the automatically expired records.

12. (New) The method of claim 11, wherein the inserting, retrieving or deleting
includes inserting the target record into the linked list if the target record was not found
during the searching.

6

Control No. 901010,856
Amendment in.t-:x Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010

I.

REMARKS
Favorable reconsideration of this reexamined patent (hereinafter, '120 Patent), as

presently amended, and in light of the following discussion, is respectfully requested.
After entry of the foregoing amendment, Claims 1-12 remain pending in this
reexamination. Claims 3 and 7 are clarified herein. New claims 9-12 are added, support for
which is separately listed supra. No new or broadening matter is added.
By way of summary, the Official Action in ex parte reexamination presents the
following issues: Claims 1,3,5 and 7 stand rejected under 35 U.S.C. § 102 as being
unpatentable over Morrison, et al. (NPL Doc, A Queuing Analysis of Hashing with Lazy
Deletion, hereinafter "Morrison"); Claims 1-8 stand rejected under 35 U.S.C. §102 as being
unpatentable over Thatte, et al. (U.S. Patent No. 4,695,949, hereinafter "Thatte"); Claims 2,
4,6 and 8 stand rejected under 35 U.S.C. §103 as being unpatentable over Morrison in view
of Dirks (U.S. Patent No.6, 119,214, hereinafter "Dirks"); Claims 2, 4, 6 and 8 stand rejected
under 35 U.S.C. §103 as being unpatentable over Morrison in view of Thatte; and Claims 1-8
stand rejected under 35 U.S.C. §103 as being unpatentable over Dirks in view of Morris, et
a1. (U.S. Patent No. 5,724,538, hereinafter "Morris").

II.

INTERVIEW IN EX PARTE REEXAMINATION
The Patent Holder appreciatively acknowledges the in-person interview conducted on

November 19, 2010. Patent Holder's reexamination counsel Mr. Scott McKeown
participated in the interview together with inventor Dr. Richard Nemes and Bedrock
Computer Technologies President Dr. David Garrod. On behalf of the USPTO, Examiners
Alexander Kosowski, Eric Keasel, and Joshua Campbell participated.! During the interview,
the Patent Holder's representative, together with inventor Richard Nemes discussed the
technology of the' 120 Patent in light of the outstanding issues presented in the Outstanding
Action of July 23, 2010.
The Examiners indicated that the presented distinctions were persuasive, and that the
discussion was helpful in focusing the issues.

I A complete written statement ofthe reasons presented at the interview for patentability of the presently
presented claims is provided under separate cover in accordance with 37 CFR 1.560.

7

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010

III.

CONCURRENT PROCEEDINGS
The' 120 Patent is subject to ongoing litigation styled as Bedrock Computer

Technologies, LLC v. SoflLayer Technologies, Inc., et al., No. 6:09cv269.
A notice of concurrent proceedings accompanies this response consistent with MPEP

§ 2282. More specifically, Patent Holder has submitted a provisional claim construction
order and briefing on a motion by the defendants that challenges certain claims of the '120
Patent as indefinite.

IV.

DECLARATION EVIDENCE SUBMITTED UNDER 37 C.F.R.

§

1.132

Attached, as Exhibits A-C, is declaration evidence submitted herewith under 37
C.F.R. § 1.132. Lawrence Pileggi, Ph.D., as detailed in the opening paragraphs of each
declaration, is one of skill in the art.
Exhibits will be discussed in more detail below; however, these Exhibits generally
corresponds to the following topics at issue in this reexamination, noted below for ease of
reference:

A. (Exhibit A) - The Claimed Structure of the '120 Patent
Dr. Pileggi explains in Exhibit A the structure of the '120 Patent corresponding to the
claimed structure of means-plus-function claims 1 and 5.

B. (Exhibit B) - Thatte Suspends Access Prior to Removal of Records
Dr. Pileggi explains in Exhibit B that the claims require access and expired data
removal be performed at the same time.

2

Further, Dr. Pileggi explains that Thatte describes

suspending acc(;:ss while garage collection is performed. 3

C. (Exhibit C) - Dirks Predetermed Memory Segment Processing
Dr. Pileggi explains in Exhibit C that Dirks describes determinable memory sweeps
that are independent of data access. 4 Moreover, Dr. Pileggi explains that modifying Dirks to
provide a linkecllist would require a change in operating principle. 5

Exhibit B,
Exhibit B,
4 Exhibit C,
5 Exhibit C,
2

3

~ 14.
~ 20.

~ ~ 13 .. 14.
~ ~ 15 .. 16.

8

Control No. 90/010,856
Amendment in .Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010

V.
THE ADOPTED REJECTIONS FAIL TO IDENTIFY EQUIVALENT
STRUCTURES THAT PERFORM IDENTICAL FUNCTIONS TO THAT RECITED
BY CLAIMS 1-2 & 5-6
The outstanding rejections of record were proposed by Third Party Request on
February 9, 2010. In adopting these rejections, the Official Action suffers from the same
fatal flaw as that of the Request, namely, a reliance on the wrong claim interpretation
standard. 6
The broadest reasonable interpretation that may be applied to means-plus-function
claims is that defined by 35 U.S.C. § 112, 6th paragraph. The PTO may not disregard the
structure disclosed in the patent specification corresponding to such language when rendering
a patentability determination. Yet, the Office has adopted proposed rejections of the Third
Party that apply a broadest reasonable interpretation, independent of the specification; this is
incorrect. 7
Patent Owner notes that a proper structural equivalent must perform the identical
function of the claimed means-plus-function claim elements. In this regard, the PTO's
reviewing court has emphasized that conclusory findings that omit analysis as to "means"
claim limitations are improper in Gechter v. Davidson, 43 USPQ2d 1030, 1035 (Fed. Cir.
1997), as follows:
In addition, the [PTO] never construed the scope of the structures
disclosed in the specification for the claimed "receiving means," nor did
the [PTO] expressly find that the "receiving means" disclosed in the
specification was structurally equivalent to that embodied in [the
reference]. Moreover, the [PTO] also failed to define the exact function of
the receiving means, as well as to find that [the reference] disclosed the
identical function.
(emphasis added, citation omitted).
By virtue of adopting flawed proposed rejections, the Office has failed to carry its
burden for identifying the structure in the' 120 Patent corresponding to the means-plusfunction limitations of at least claims 1 and 5, let alone for showing that the prior art structure
is the same as or equivalent to such structure. In fact, both the Third Party Request and the
Official Action are silent as to their treatment of the means-plus-function claims.
Properly construed, as explained next, claims 1-2 and 5-6 are patentably
distinguishable over the art of record.
See the Request of February 9, 2010 at pages 13-14.
Patent Holder, pursuant to the Federal Register Notice of June 25, 2010, reserves the right to appeal this
fundamental deficiency.

6

7

9

Control No. 90/010,856
Amendment in l".x Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
A.

The Broadest Reasonable Interpretation Accorded Means-Plus-Function Claims is
Mandated by Statute (35 U.S.C. § 112,,-r 6 th )
Claims 1,2,5 and 6 of the '120 Patent have been found to invoke 35 U.S.c. § 112, 6 th

paragraph in the litigation of the '120 Patent styled as Bedrock Computer Technologies, LLC
v. Softlayer Technologies, Inc. et al (EDTX).8 A declaration of Dr. Lawrence Pileggi
(Exhibit B) is submitted evidencing the same understanding of the mapping of means-plusfunction features to the' 120 Patent as found by the District Court.
Claim 1 of the '120 Patent recites,
1. An information storage and retrieval system, the system
comprising:
a linked list to store and provide access to records stored
in a memory of the system, at least some of the records
automatically expiring,
a record search meaDS utjljzjng a search key 10 access the

!jnked list,
the record search means including a means fm identifying
and remOving at least some of the expired ODf;S of the
records from the linked list when the linked list is
accessed, and
~, utilizing the record search means, for accessing
the linked list and at the same time remOving at least
some of the expjred ones of the records in the linked

lisl..

(emphasis added)
Claim 5 of the' 120 Patent recites,
5. An information storage and retrieval system, the system
comprising:
a hashing means to provide access to records stored in a
memory of the system and using an external chaining
technique to store the records with same hash address,
at least some of the records automatically expiring,
a rccprd search means

utilizjne

a

search key

19 access a

!joked list of records hayjnil the same hash address,
the record search means including means for identjfying
and remOving at least SQme expired ones of the recQrds

fmm Ihe ]joked Ii&! of records when the !joked list is
accessed, and
~,

utilizing the record search means, for jnsertjng
retrjevjng and deleting records fmm the system and at

tbe same tjme remoyjng at least some expired ones pf

the records jo the acce&'ied Hoked !ist of records.

(emphasis added)

8 The court has also determined that claims 2 and 6 recite additional means-plus-function features. As the base
claims are distinguishable in their own right, these claims are ignored herein for purposes of brevity, as is the
hashing means feature of claim 5.

10

Control No. 90/010,856
Amendment in 1"0c Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
In order to properly interpret means-plus-function claims, 35 U.S.C. § 112, 6th
paragraph requires a two-step approach. The first step in construing a means-plus-function
claim limitation is to define the particular function of the claim limitation. The second step in
construing a means-plus-function claim limitation is to look to the specification and identify
the corresponding structure, material or acts for that particular function. In re Donaldson Co.,
16 F.3d 1189 (Fed. Cir. 1994); See also (MPEP 2181-2183).

Exhibit A (Corresponding Structure of' 120 Patent)
In accordance with the underlined claim terms above, each of claim 1 and claim 5
recite three separate means-plus-function claim features. These claimed features are grouped
together based upon their related functionality. The claim features are grouped as follows: 1)

record search means; 2) means for identifying and removing; and 3) means ... for accessing
(claim 1) and means ... for inserting, retrieving, and deleting (claim 5).
The '120 Patent provides particular components and algorithmic structure linked to
the function(s) of the above underlined means-plus-function features of claims 1 and 5.
Support for the record search means, and the means for identifying and removing features, is:
CPU 10 and RAM 11 of FIG. 1 and col. 3, lines 52-56; and,
portions of the application software, user access software or
operating system software, as described at col. 4 lines 22-48,
programmed with software instructions as described in Boxes 3142 of FIG. 3 and in col. 5, line 53 - col. 6, line 34, andlor
programmed with software instructions as described in the pseudocode of Search Table Procedure (cols. 11 and 12) or Alternate
Version of Search Table Procedure (cols. 11, 12, 13, and 14).
Pileggi Decl., Exh. A at ~ ~ 13-14.
This corresponding structure involves code identified in the '120 Patent as the "search
table procedure." The '120 Patent contains three descriptions of the "search table procedure"
code, one in flowchart form at FIG. 3, and two pseudo-code versions at cols. 11-14. All three
descriptions of the '120 Patent's "search table procedure" share a common structural feature:
namely, they all include code that, as part of a single process, both searches for a target
record (FIG. 3, boxes 39-40; or code "ifp/''.recod_contents.key = record_key then begin
position := p; previous-1Josition := previous-1J" in the pseudo-code descriptions) and
identifies expired record(s) (FIG. 3, box 38; or code "ifp".record_contents is expired" in the
pseudo-code descriptions). One of skill in the art would understand that this structure is

11

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
linked to the above noted function(s) of the record search means and the means for

identifying and removing. Pileggi Decl., Exh. A at ~ 15.
Support for the means ... for accessing of claim 1 is:
CPU 10 and RAM 11 of FIG. 1 and col. 3, lines 52-56; and,
Portions of the application software, user access software or operating
system software, as described at col. 4, lines 22-48, programmed with
software instructions that provide the insert, retrieve, or delete record
capability as described in the flowchart of FIG. 5 and col. 7, line 65 - col.
8, line 32, FIG. 6 and col. 8, lines 33-44, or FIG. 7 and col. 8, lines 45-59,
respectively, and/or programmed with software instructions that provide
the insert, retrieve or delete record capability as described in the pseudocode ofInsert Procedure (cols. 9 and 10), Retrieve Procedure (cols. 9, 10,
11, and 12), or Delete Procedure (cols. 11 and 12), respectively.9 Pileggi
Decl., Exh. A at ~ 16.
The structure in the specification that corresponds to the means ... for accessing and

means for inserting, retrieving, and deleting limitations (in claims 1 and 5, respectively)
includes, at least, code that invokes a version of the "search table procedure" as part of an
insertion, retrieval, or targeted record deletion, thereby causing the insertion, retrieval, or
deletion and the removal of one or more expired records to occur "at the same time." One of
skill in the art would understand that this structure is linked to the above noted function(s) of
the means .,. for accessing and the means ... for inserting, retrieving, and deleting of claims
1 and 5. Pileggi Decl., Exh. A at ~ 17.
In comparing means-plus-function claim elements to prior art features,first a prior art
function must be indentified that is identical to the claimed function. After this threshold
determination is performed, the structure of the prior art that performs this function is
identified and compared to that of the patent specification (such as defined above) for the
purpose of detennining structural equivalence.
As noted above, the adopted third party rejections provide no such analysis, and for
good reason ---the proper analysis demonstrates that the submitted art is systemically
different than the claimed invention of the '120 Patent.

For purposes of brevity, the entire structure corresponding to the means ... for inserting, retrieving, and
deleting limitation of claim 5 is not separately detailed. It is sufficient to note that it, too, involves code that
invokes the "search table procedure" as part of the normal hash table access (i.e., insert, retrieve, delete)
routines.

9

12

Control No. 901010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010

VI

THIRD PARTY CLAIM REJECTIONS ADOPTED BY THE OFFICE

A.

REJECTIONS UNDER 35 U.S.C. § 102

The Official Action has rejected Claims 1,3,5 and 7 under 35 U.S.C. §102 as being
unpatentable over Morrison. Patent Holder respectfully traverses the rejection.
Morrison describes a mathematical analysis by which an amount of excess space in a
dynamic dictionary may be computed. An assumption of the dynamic dictionary studied is
that is utilizes a "hashing with lazy deletion" technique. 10
In rejecting the above noted claims as anticipated by Morrison, the Office
incorporates the Third Party proposed rejection as detailed in claim charts CC-A (As
described by pages 25-32 of the Third Party Request). The cited aspects of the Request
merely provide conclusory statements that provide no analysis of any structure of the' 120
Patent relative to an equivalent structure of Morrison.
For example, the record search means of claims 1 and 5 includes the structure that the
'120 Patent identifies as the "search table procedure." The '120 Patent contains three
descriptions of the "search table procedure" code, one in flowchart form at FIG. 3,

~U1d

two

pseudo-code versions at cols. 11-14. All three descriptions of the '120 Patent's "search table
procedure" share a common structural feature: namely, they all include code that, as part of a
single process, goth searches for a target record (FIG. 3, boxes 39-40; or code "if
p/\.recod_contents.key = record_key then begin position := p; previousyosition :=
previousy" in the pseudo-code descriptions) and identifies expired record(s) (FIG. 3, box 38;
or code "ifp/\.record_contents is expired" in the pseudo-code descriptions). Pileggi Decl.,
Exh. A at 1113-15.
There is simply no analysis of how Morrison provides any equivalent structure to the

record search means of claims 1 and 5, which both searches for and identifies a target record
and identifies expired ones of the records while searching. In fact, no such structure can be
said to exist, as Morrison provides no such functionality.
Morrisof! simply describes that items are inserted and sought as usual. II

Method Claims 3-4 and 7-8
It is believed that the method claims, as issued, include the aforementioned teatures

based upon a proper reading of these claims in light of the specification. Nevertheless, to
10

Morrison at Abstract.

1I

Jd.

13

Control No. 901010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
advance this reexamination to conclusion, base claims 3 and 7 are amended to explicitly
recite analogous features to those distinguished above. Specifically, the claims are clarified
to recite that the accessing of the linked list of records involves (at least in part) searching for
a target record, and that identification of expired records is performed while searching for the
target record.
Accordingly, Patent Holder respectfully Requests that the Rejection of claims 1,3, 5
and 7 under 35 U.S.c. §102 be withdrawn.

B.

The Official Action has rejected Claims 1-8 under 35 U.S.C. § 102 as being

unpatentable over Thatte. Patent Holder respectfully traverses the rejection.
Claim 1 of the '120 Patent recites a system for retrieving and storing data, including,
among other things,
the record search means including a means for identifying
and removing at least some of the expired ones of the
records from the linked list when the Hoked list is
acceSsed, and
means, utilizing the record search means, for accessing
the linked list and, at the same time, removing at least
some of the expired ones of the records in the linked
list.

(emphasis added)12.
Thatte describes a memory management system "for managing a block oriented
memory of the type in which each memory block has an associated reference count
representing the number of pointers to it from other memory blocks and itself." (Thatte,
abstract.) The memory management system includes a process called "reconciliation," which
performs garbage collection. This "reconciliation" process removes records from a block of
memory that are identified as "garbage." Pileggi Decl., Exh. B at ~13.
Thatte "operates in association with the MMU [memory management unit] which
performs three operations on the reference count filter, Insert, Delete, and Reconcile."
(Thatte, col. 6:64-67.) Pileggi Decl., Exh. B at

~14.

As explained in Thatte, if the system needs to insert a new record into the reference
count filter but finds that the reference count filter is full, all operations are suspended while
a reconciliation (garbage collection) process executes for the entire filter:
If the reference count filter is determined to be full, box 60, the MMU
suspends the insertion operation and performs a reconciliation operation, box
12

For the purposes of this discussion, claim 5 recites substantially similar functionality.

14

Control No. 90/010,856
Amendment in liJ; Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
62, on the reference count filter, as described below, to create a room in the
reference count filter so that the suspended insertion operation can be
completed. (Thatte, col. 7:21-26 (describing FIG. 6).)
Thatte's FIG. 6 shows the above-described suspension/resumption of an insertion
operation. As depicted, the suspension/resumption occurs at box 60 (illS REF. CNT. FILTER
FULL ?") in the flowchart.

I

r-~--.681

I

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";
8!1H£~'

I

L

RtCONCILIATION

_o ..~~Tt~

I
I
I
-..J

(annotation added)

The "Reconcile" or "reconciliation" process of Thatte defines the garbage collection
process. It is performed when the table isfull, and for the entire table:
" When the table is full, a reconciliation operation is performed to
identify those addresses which are contained in a set of binding
registers associated with the CPU, and any address not contained in the
binding registers are evacuated into a garbage buffer for subsequent
garbage collection operations." (Thatte, abstract.)
"If the reference count filter is determined to be full, box 60, the MMU
suspends the insertion operation and performs a reconciliation
operation." (Thatte, col. 7:21-23.)

15

Control No. 90/D 10,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
"As mentioned above, after an insert operation is suspended due to a
full reference count filter, the MMU needs to make a room in the
reference count filter so that the suspended insert operation can be
resumed and completed. The MMU 40 makes the necessary room by
performing a reconciliation operation, box 62." (Thatte, col. 7:40-45.)
In other words, once processing is suspended based upon the state of the Reference
Count Filter, the reconciliation operation sweeps through the entire reference count filter,
identifies records that are no longer needed, and moves them to a separate" garbage buffer."
These aspects are shown in steps 64-69 of Fig. 6. (See Pileggi Decl., Exh. Bat ,-r19.)

.~----10peration

During
Suspension
Only

ft!tONClllaT'OH

-

------

o"£lunOH

-

At the point of a suspension (to garbage collect) at box 60, the insert operation would
not have progressed to the point where the linked list into which the new record would
ultimately be inserted had been accessed. Thus, once operation is suspended, there cannot be
an access to the linked list and removal of expired records at the same time. This is because
any access of data by Thatte is suspended until after global garbage collection for the entire
table is completed (See box 51 of Fig. 6). Yet, this functionality is explicitly required by all
the means-plus-function claims of the '120 Patent. Thus, not only is the function not found in
Thatte, but, as a result, there can be no corresponding structure. Pileggi Decl., Exh. Bat ,-r20.

16

Control No. 90/010,856
Amendment in .Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
Method Claims 3-4 and 7-8
It is believed that the method claims, as issued, include the aforementioned features

based upon a proper claim interpretation in light of the specification. Nevertheless, to
advance this reexamination to conclusion, base claims 3 and 7 are amended to explicitly
recite analogous features to those distinguished above. Specifically, the claims are clarified
to recite that the accessing of the linked list of records is (at least in part) to search for a target
record, and that identification of expired records is performed while searching for the target
record.
Accordingly, Patent Holder respectfully Requests that the Rejection of claims 1-8
under 35 U.S.C. § 102 be withdrawn.

C.

REJECTIONS UNDER 35 U.S.C. §103
The Official Action has rejected Claims 1-8 under 35 U.S.C. §103 as being

unpatentable over Dirks in view of Morris. Patent Holder respectfully traverses the rejection.
Dirks is directed to an open addressed hash table. Dirks attempts to provide a solution
to the problem of "efficiently allocating and de-allocating large amounts of address space in a
virtual memory system that does not require excessive processing time and therefore does not
result in unacceptable delays in the operation of a computer." (col. 2:59-63.) Dirks
purportedly addresses this problem, explaining, "virtual memory space is managed in a
manner which allows new address ranges to be allocated and de-allocated in a constant, small

amount o/time, such that the need for a single complete sweep of all memory allocation
records in a page table, to remove unused entries and prepare the addresses for further use,
can be avoided." (col. 2:66-3:5.) "Thus, rather than halting the operation of the computer for
a considerable period of time to scan the entire page table when a logical address area is
deleted, the memory manager of the present invention carries out a limited, time-bounded

examination upon each address allocation." (col. 3:26-29.). Pileggi Decl., Exh. C at ~)lO
In operation, page table 18 of Dirks is swept to collect inactive mappings by cleaning
small sequential segments of the page table. Dirks describes this sweep operation in terms of
numerically indexed table entries -

"entries 0-19 in the page table are examined. . .. entries

20-39 in the page table are examined" (col. 7: 19-31). Dirks is not directed to navigation of
list-type data stmctures. For this teaching, the Morris reference has been identified.
Dirks performs its "limited, time-bounded examination" using the following
procedures: (i) "each time a VSID is assigned from the free list to a new application or thread,
17

Control No. 90/010,856
Amendment in li,x Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
a fixed number of entries in the page table are scanned to determine whether they have
become inactive" (col. 7:2-4); (ii) lithe number of page table entries that are examined upon
each allocation of a VSID in the free list can be determined from the total number of entries
in the page table and the number of threads and applications that are allowed to be active at
any given time." 13 ; (iii) liThe predetermined number of entries that are swept is identified as
k, where k = total number of page table entries 1 maximum number of active treads. In the
example given previously, k=10000/500=20." (col. 8:27-33); (iv) "it is not necessary that the
number of examined entries be fixed for each step. Rather, it might vary from one step to the
next. The only criterion is that the number of entries examined on each step be such that all
entries in the page table are examined in a determinable amount of time or by the occurrence
ofa certain event, e.g. by the time the list of free VSIDs is empty." (col. 7:40-46.). These
operations are generally referred to in Dirks as a "recycle sweep.!1

The Memory Segment Sweeps of Dirks are Independent of Data Access

Notably, in Dirks, the entries that are examined during a particular segment of the
recycle sweep are in no way related to, or associated with, the VSID allocated before the
sweep of the entries. The swept entries are also unrelated to any pages that have been
mapped to physical memory and entered into the hash table prior to the sweep. Indeed, the
sweep proceeds through predetermined portions of the page table without any correlation
with non-garbage collection uses of the table (e.g., insertion or searching of pages mapped to
physical memory).
The recycle sweeps of Dirks are also triggered by events -

the assignment of VSIDs

to threads or applications (see col. 7, lines 2-4, "each time a VSID is assigned from the free
list to a new application or thread, a fixed number of entries in the page table are scanned
... ") -

that do not involve accesses to the page table. As Dirks is directed to allocation of

new memory space, there is no discussion of initiating recycle sweeps upon, or in response
to, non-garbage collection accesses of the page table, for example for insertion, deletion or
retrieval operations. Pileggi Decl., Exh. C at ~~13-14

13 "For example, if the page table contains 10,000 entries and 500 threads/applications are allowed t() be active
at any given time, the 10,000 page table entries should be covered in a maximum of 500 steps (assuming each
thread and application is assigned one segment each). The number of entries that are swept in each step is
therefore 10,0001500=20 entries per step." (col. 7:14-25)

18

Control No. 901010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23, 2010
Dirks in Combination with Morris
Aside from the failure of Dirks to describe any structure by which a removal of
records is correlated to a data access (record search means), the combination of Dirks with
Morris would require a change in the basic operating principle of Dirks. If the proposed
modification or combination of the prior art would change the principle of operation of the
prior art invention being modified, then the teachings of the references are not sufficient to
render the claims primafacie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA
1959). In this instance, the suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in Dirks, as well as a change in the basic
principle under which Dirks was designed to operate.
Simply stated, the recycle sweep of Dirks' garbage collection is well suited to the
linear array (open) hash table for which it is designed, but would require an entirely different
operating principle if used in combination with a chained hash table data structure, such as
those claimed in the' 120 Patent. This is because Dirks clearly articulates that the sweeps
should be arranged such that all entries in the page table are examined on a regular schedule
(see col. 7, lines 44-46: "all entries in the page table are examined in a determinable amount
of time or by the occurrence of a certain event, e.g. by the time the list of free VSIDs is
empty"). Dirks achieves this objective by assuring that the number of entries scanned on
each sweep be predetermined, such that the time needed to scan these entries is predictable.
This approach, however, does not translate in a reasonable way to a chained hash
table, in which records are unpredictably distributed among chains of different lengths. In a
chained hash table, examining a predetermined number of entries on each sweep, as
described in Dirks, may require traversing multiple chains and examining a potentially large
and indeterminate number of table entries (anchor points). In particular, if an initially
accessed chain does not contain the predetermined number of records to be examined, then
the examination would need to proceed down the table to find another chain on which to
continue the examination, but that process might involve examining a potentially large
number of anchor points in the table, with the number limited only by the table size. Such a
modification would destroy the predictability of the Dirks design, and change its basic
operating principle of a "limited, time-bounded examination." Pileggi Decl., Exh. C at ~~ 1516.

19

Control No. 90/010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
Method Claims 3-4 and 7-8
It is believed that the method claims, as issued, include the aforementioned features

based upon a proper claim interpretation in light of the specification. Nevertheless, to
advance this reexamination to conclusion, base claims 3 and 7 are amended to explicitly
recite analogous features to those distinguished above. Specifically, the claims are clarified
to recite that the accessing of the linked list of records is (at least in part) to search for a target
record, and that identification of expired records is performed while searching for the target
record.
Accordingly, Patent Holder respectfully Requests that the Rejection of claims 1-8
under 35 U.S.C. § 103 be withdrawn.

D.

The Official Action has rejected Claims 2, 4, 6 and 8 under 35 U.S.C. § 103 as

being unpatentable over Morrison in view of Dirks. Patent Holder respectfully traverses the
rejection.
As noted above, Morrison does not provide all of the features of the issued claims for
which it has been asserted. Likewise, Dirks has also been demonstrated as deficient in a
similar regard. As such, these references in combination cannot present a prima facie case of
obviousness. Moreover, the proposed combination would destroy the basic premise of
Morrison, as its mathematical analysis of the "space complexity" of hashing with lazy
deletion expressly relies on an assumption that all expired records are deleted. 14
Furthermore, the claimed means for dynamically determining. .. has not been
properly examined as no structure of the specification or art has been compared to ascertain
structural equivalence. MPEP 2183. Therefore, these claims are independently
distinguishable in addition to the clear deficiencies of the base claims.
Accordingly, Patent Holder respectfully Requests that the Rejection of claims 2, 4,6
and 8 under 35 U.S.C. §103 be withdrawn.

E.

The Official Action has rejected Claims 2, 4, 6 and 8 under 35 U.S.C. § 103 as

being unpatentable over Morrison in view of Thatte. Patent Holder respectfully traverses the
rejection.

14 See page 1159, where Morrison observes that "N(t)-t-W(t) remains constant between arrivals, and W(t)= 0
immediately after an arrival." The W(tJ here represents the number of expired records, which is assumed by
Morrison to be zero after a new insertion that triggers a purging of all expired records.

20

Control No. 901010,856
Amendment in Ex Parte Reexamination of U.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010
As noted above, Morrison does not provide all of the features of the issued claims for
which it has been asserted. Likewise, Thatte has also been demonstrated as deficient in a
similar regard. As such, these references in combination cannot present a prima facie case of
obviousness. Moreover, a person skilled in the art would have no motivation to modify
Morrison in the manner proposed because deleting fewer than all expired records in Morrison
would destroy its basic premise.
Additionally, the claimed means for dynamically determining. .. has not been
properly examined as no structure of the specification or art has been compared to ascertain
structural equivalence. MPEP 2183. Therefore, these claims are independently
distinguishable in addition to the clear deficiencies of the base claims.
Accordingly, Patent Holder respectfully Requests that the Rejection of claims 2, 4, 6
and 8 under 35 U.S.C. § 103 be withdrawn.

VII

NEW CLAIMS
New Claims 9-12, by virtue of their dependency, are distinguishable over all art of

record at least for the aforementioned rationales.
Further, these claims recite more detailed aspects of the '120 Patent neither disclosed
nor suggested by the art of record. For example, as the art of record does not disclose or
suggest identifying expired records while searching for a target record, the more detailed
recitation of this methodology as recited in claims 9-12, by definition, is also absent from all
art of record.
Accordingly, Patent Holder respectfully requests that these are allowable.

21

Control No. 901010,856
Amendment in bX Parte Reexamination ofD.S. Patent No. 5,893,120 in Reply to Office
Action of July 23,2010

VIII

CONCLUSION
Consequently, in view of the foregoing amendment and remarks, it is respectfully

submitted that the present reexamined patent, is valid over the submitted prior art, in
condition for a reexamination certificate, and such action is respectfully requested at an early
date.
Respectfully submitted,

OBLON, SPIVAK, McCLELLAND,
MAIER & NED
T, L.L.P.

//~---- ~--7

Customer Number

22850

"Scott A. cKeown
Attorney of Record
Registration No. 42,866

Tel: [phone]
Fax: [phone]
(OSMMN 07/09)

22