Appeal No. 2005-2583
Application No. 09/328,893
evidence not previously relied upon in the brief and any reply brief(s) are not
permitted in the request for rehearing except as permitted by paragraphs (a)(2)
and (a)(3) of this section. When a request for rehearing is made, the Board shall
render a decision on the request for rehearing. The decision on the request for
rehearing is deemed to incorporate the earlier opinion reflecting its decision for
appeal, except for those portions specifically withdrawn on rehearing, and is final
for the purpose of judicial review, except when noted otherwise in the decision on
rehearing.
Appellants argue, on page 3 of the request for rehearing, that the combination of
Bennett and Bosse does not suggest the claimed invention. Specifically, appellants assert
that Bennett is concerned with a organizing computer memory whereby objects can be
swapped between a hard drive and memory. Appellants argue, in the paragraph bridging
pages 3 and 4 of the request for rehearing:
[s]waping of objects to a hard disk is different from storing an object in a
database. A database is generally a collection of data arranged into individual
records and organized in a way that the records can easily be accessed, managed
and updated. A database is hence, searchable. Therefore, no pointer or stub
vector [such as used by Bennett] is required as a surrogate in main memory.
We are not persuaded of error in our decision or the new grounds or rejection
based upon Bennet and Bosse. Claim 1 recites the limitations “if there is no sufficient
memory space, swapping at least one (MO1) of the stored objects (MO1, MO2) out of the
memory (MEM) to a database (DB) according to at least one predeterminable criterion
(step 130); and reading the requested object (MO*) from the database (DB) and writing it
into the memory (MEM) (step 140).” Thus, claim 1 recites swapping objects out of
memory to a database. Appellants’ arguments rely upon a proffered definition of a data
base but does not identify any support for the definition in the appellants’ originally filed
specification. Our reviewing court has stated that they view “extrinsic evidence in
general as less reliable than the patent and its prosecution history in determining how to
read claim terms, for several reasons. First, extrinsic evidence by definition is not part of
the patent and does not have the specification’s virtue of being created at the time of
patent prosecution for the purpose of explaining the patent’s scope and meaning” Phillips
v. AWH Corp., 415 F.3d 1303, 1308 75 USPQ2d 1321, 1330 (Fed. Cir. 2005). While we
concur with appellants that one description of a database is as a collection of data
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