ARM LIMITED

Patent Trials and Appeals Board

Jun 17, 2020

2019001961 (P.T.A.B. Jun. 17, 2020)

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.
14/870,594 09/30/2015 Todd RAFACZ JRL-550-1910 7004
73459 7590 06/17/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SAVLA, ARPAN P
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD RAFACZ and HUZEFA SANJELIWALA
____________

Appeal 2019-001961
Application 14/870,594
Technology Center 2100
____________

Before JOHN A. JEFFERY, JASON J. CHUNG, and CARL L.
SILVERMAN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ARM
Limited. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention categorizes access requests into regions for
prefetching data. See generally Spec. 3–4. When an access request is
received for a new, previously unrequested region, prefetch control circuity
determines whether there is an adjacent region with a predetermined number
of access request addresses. See id. 4–5. If a predetermined number of
access request addresses exist for the adjacent region, then access request
addresses to the new region are prefetched. See id. 5. Claim 1 is illustrative:
1. A prefetch apparatus comprising:
access request reception circuitry to receive access
requests, each access request having an access request address;
request tracking storage to store a plurality of region
entries, wherein each region entry corresponds to a region of
memory space and corresponds to a plurality of access request
addresses within that region of memory space,
and wherein the request tracking storage is responsive to
reception of each access request to update access information in
its corresponding region entry;
and prefetch control circuitry responsive to the access
request reception circuitry receiving a new region access
request which belongs to a new region for which there is no
region entry,
and when the request tracking storage has an adjacent
region entry corresponding to an adjacent region of memory
space to the new region for which the access information
indicates that at least a predetermined number of the access
request addresses in the adjacent region of memory space have
been accessed, to initiate a region prefetching process for all
access request addresses in the new region.

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THE REJECTIONS
The Examiner rejected claims 1–4, 8–11, 13, and 15–19 under 35
U.S.C. § 102(a)(1) as anticipated by de la Iglesia (US 2010/0115206 Al;
published May 6, 2010). Final Act. 5–9.2
The Examiner rejected claims 5–7 and 12 under 35 U.S.C. § 103 as
unpatentable over de la Iglesia and McCauley (US 2013/0346703 Al;
published Dec. 26, 2013). Final Act. 9–11.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as
unpatentable over de la Iglesia and Dasika (US 2015/0121014 Al; published
Apr. 30, 2015). Final Act. 11–12.

THE ANTICIPATION REJECTION
The Examiner finds that de la Iglesias discloses every recited element
of independent claim 1 including the following:
when the request tracking storage has an adjacent region entry
corresponding to an adjacent region of memory space to the
new region for which the access information indicates that at
least a predetermined number of the access request addresses in
the adjacent region of memory space have been accessed, to
initiate a region prefetching process for all access request
addresses in the new region.
Final Act. 5–6. In the rejection, the Examiner maps the recited
prefetch control circuitry to de la Iglesia’s prefetch controller. See
Final Act. 6. The Examiner also finds “at least a predetermined

2 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 20, 2018 (“Final Act.”); (2) the Appeal Brief filed July 16, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed November 2, 2018
(“Ans.”); and (4) the Reply Brief filed January 2, 2019 (“Reply Br.”).
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number of the access request addresses in the adjacent region of
memory space have been accessed” is taught by de la Iglesia in that
the total number of read and write blocks of an address region “are
used to pre-fetch an address region different from the address region
currently being accessed.” See id. 12–13.
Appellant argues de la Iglesia’s prefetch controller 18, prefetch
table 34, and prefetch groups 40A and 40B do not teach the above-
recited limitation. See Appeal Br. 8. According to Appellant, de la
Iglesia’s paragraph 39 fails to teach a predetermined number of access
requests addresses in prefetch groups 40A or 40B. See id. Appellant
further contends the number of accesses made to a memory’s area in
de la Iglesia fails to teach the recited “number of access request
addresses.” See id. 8–9. Appellant further argues de la Iglesia’s
confidence factor and area counter fail to teach the recited
predetermined number of access request addresses. See id. 8.
Appellant further contends the number of accesses to a memory taught
in de la Iglesia does not teach the recited “number of access request
addresses.” See id. 8–9. Appellant further argues de la Iglesia’s count
register 256 indicates repeated access to a single memory address and
thus cannot teach the recited predetermined number of the access
request addresses. See id. 9. Appellant emphasizes the word
“addresses” when quoting the disputed claim language, and contends
that it is unreasonable to interpret the claim language to include a
single access request address. See id. Appellant further argues “de la
Iglesia is not concerned with the memory locations accesses within a
region.” Id. Appellant adds that determining how many blocks are
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read and written in de la Iglesia’s region 40 does not teach the
determining “a predetermined number of the access request addresses
in the region of memory space have been accessed.” See id.
Appellant further provides an example of de la Iglesia’s register 228
recording 50 writes to the same access address, and contends that, in
this example, the register would indicate a value of “50” despite
accessing and writing to the same address. See Appeal Br. 9–10.
Appellant adds that de la Iglesia’s single register cannot store or track
different access requests addresses for a larger memory space region
(see id. 10), and that mapping multiple addresses to de la Iglesia’s
address region is improper. See id. Appellant further emphasizes the
words “number of,” “addresses,” and “having been accessed,” and
argues de la Iglesia fails to teach the corresponding claim language.
See id.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that del la Iglesia discloses “when the request tracking storage has an
adjacent region entry corresponding to an adjacent region of memory space
to the new region for which the access information indicates that at least a
predetermined number of the access request addresses in the adjacent region
of memory space have been accessed”?

ANALYSIS
We begin by construing the key disputed limitation of claim 1 that
recites, in pertinent part “when the request tracking storage has an adjacent
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region entry corresponding to an adjacent region of memory space to the
new region for which the access information indicates that at least a
predetermined number of the access request addresses in the adjacent region
of memory space have been accessed . . . .” (emphasis added). Our
emphasis underscores that, when considered in context, the term “when”
indicates that this is a conditional limitation. See MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan.
2018) (citing Ex parte Schulhauser, Appeal 2013-007847 (PTAB Apr. 28,
2016) (precedential)). Although the limitations at issue in Schulhauser were
rendered conditional by the recitation of “if’ (see Schulhauser at 6–8), we
nevertheless discern no meaningful distinction between the recitation of “if’
and “when” in this context. One dictionary definition of “when” is “in the
event that: IF.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1345–46
(1993).
For an apparatus claim, the broadest reasonable interpretation of a
conditional limitation requires that the prior art disclose structure capable of
performing the conditional limitation. See Schulhauser at 14, 15 (“[I]n order
to show anticipation . . . of a claim reciting structure that performs a function
tied to a condition precedent, the Examiner must cite prior art that discloses .
. . such structure.”); see also MPEP § 2111.04(II) (citing Schulhauser). On
the other hand, a conditional limitation need not be satisfied to anticipate a
method claim. See Schulhauser at 10 (“If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”); see also
MPEP § 2111.04 (II).
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Here, because claim 1 is an apparatus claim, de la Iglesia must
disclose a structure that can perform the elements in the recited “when”
clause. But because independent claim 9 is a method claim, the recited
“when” condition need not be satisfied for de la Iglesia to anticipate the
claim. See MPEP § 2111.04 (II). Thus, even if we were to accept
Appellant’s contentions with respect to de la Iglesia’s alleged failure to
disclose the elements associated with the recited “when” condition—which
we do not—these arguments are nevertheless incommensurate with the
scope of claim 9 that does not require the “when” condition to be satisfied to
anticipate the claim.3
Turning to the rejection, we first clarify the Examiner’s mapping.
First, the Examiner maps the recited “prefetch control circuitry” to de la
Iglesias’s prefetch controller 18. Final Act. 6. Second, the Examiner
apparently maps the recited “receiving a new region access request which
belongs to a new region for which there is no region entry” to de la Iglesia’s
teaching of an event that does not have an associated prefetch group. See
Final Act. 6 (citing de la Iglesia paragraph 39 which teaches event 3’s
address range does not have a corresponding prefetch group).
The Examiner appears to map the “new region for which there is no
region entry” to de la Iglesia’s region 40B. See Final Act. 6 (citing
paragraph 39 which teaches that region 40B is created in response to no
prefetch group entry being associated with newly requested blocks 160–
180).

3 Although the scope and breadth of claim 9’s conditional limitation is not
dispositive here, we nonetheless raise this issue for the Examiner to consider
after this opinion.
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It appears the Examiner maps the recited “when the request tracking
storage has an adjacent region entry corresponding to an adjacent region of
memory space to the new region” to de la Iglesia’s region 40A (i.e., the
adjacent region) and 40B (i.e., the new region). See Final Act. 6 (citing
paragraphs 78 and 79 that characterize 40A and 40B as “contiguously
accessed blocks of storage”); see also de la Iglesia Fig. 5 element 20
(indicating adjacent regions 40A and 40B); id. ¶ 31 (“The aggregation
combines transactions that occur in adjacent or overlapping block address
ranges.”).
The Examiner also apparently maps “for which the access information
indicates that at least a predetermined number of the access request
addresses in the adjacent region of memory space have been accessed to
initiate a region prefetching process for all access request addresses in the
new region” to the number of access requests associated with region 40A.
See Final Act. 6 (citing paragraph 78 teaching region 40B is prefetched
when there is a storage access to any part of region 40A); Ans. 4 (citing Fig.
8 teaching in operation 330 “[i]f storage operation occurs to any part of
Area 40A prefetch entire region 40B”).
According to Appellant, de la Iglesia’s prefetch controller 18 and
prefetch table 34 with groups 40A and 40B in Figures 1 and 3 do not teach
the disputed claim limitations. See Appeal Br. 8. Appellant adds that de la
Iglesia’s paragraph 39 does not teach the disputed claim limitations because
“[t]here is no disclosure [that] a predetermined number of the access request
addresses have been accessed in either the first or the second prefetch group
40A or 40B.” Id.
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These arguments are unavailing because not only are they
incommensurate with the scope of the claim, these arguments do not
persuasively rebut the Examiner’s findings.
As noted above, operation 330 of de la Iglesias’s Figure 8 is “[i]f
storage operation occurs to any part of Area 40A, prefetch entire region
40B.” Thus, if any request to access (i.e., storage operation) occurs to
region 40A—a memory space region that is adjacent to region 40B as shown
in de la Iglesias’s Figure 5—then the entire region 40B, namely all access
request addresss in that region is prefetched. Our emphasis on the word
“any” underscores that de la Iglesias’s operation 330 in Figure 8 prefetches
the entire region 40B when indicating a predetermined number of access
request addresses were accessed in adjacent region 40A, namely at least one
access request address in region 40A.
To be sure, de la Iglesias’s predetermined number of access request
addresses is necessarily only one in operation 330, despite possibly being
more than one as emphasized in the “at least one” language above.
Nevertheless, nothing in the claim or the Specification precludes the recited
predetermined number from being just one despite Appellant’s arguments to
the contrary. See Reply Br. 4–8. Not only is the term “predetermined” not
defined in Appellant’s Specification, unlike various other terms whose
concrete definitions leave no doubt as to their meaning (see, e.g., Spec. 19–
20), we decline to import into the claim the particular embodiments that
Appellant contends require the recited “predetermined number” to be two or
more (see Reply Br. 5–7). See Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
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against confining the claims to those embodiments. . . . [C]laims may
embrace different subject matter than is illustrated in the specific
embodiments in the specification.”) (citations and internal quotation marks
omitted). We also find unavailing Appellant’s contention that de la Iglesia’s
confidence factor and area counter do not teach the recited predetermined
number of access request addresses. See Appeal Br. 8. In short, this
argument does not persuasively rebut the Examiner’s reliance on the
functionality of operation 330 in de la Iglesias’s Figure 8 noted above. As
shown in that figure, the confidence factor and area count are considered
before operation 330 and are, therefore, merely precursors to indicating the
predetermined number of access request addresses to adjacent region 40A in
operation 330 as noted above.
Nor are we persuaded by Appellant’s contention that “the number of
accesses made to an area of memory is not the same as the number of access
request addresses.” Appeal Br. 8–9. Notably, each storage access operation
(i.e., access request) in de la Iglesias has a corresponding address. See de la
Iglesias ¶ 31 (teaching events are storage access operations); ¶ 38 (teaching
events include address ranges). Thus, de la Iglesia teaches a number of
access request addresses.
We likewise find unavailing Appellant’s contention that de la Iglesia’s
count register only records requests to a single memory address (see Appeal
Br. 9), and thus “no reasonable interpretation of this claim language
understood in light of the specification by a person of ordinary skill in the art
would encompass just a single access request address.” Id. As noted above,
nothing in the Specification or the claims requires excluding a single access
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request from the recited “predetermined number.”4 Accord MPEP § 2111.01
(IV) (“The only exceptions to giving the words in a claim their ordinary and
customary meaning in the art are (1) when the applicant acts as their own
lexicographer; and (2) when the applicant disavows or disclaims the full
scope of a claim term in the specification”).
Turning to the Specification, the summary of claimed subject matter
in the Appeal Brief includes citations from the Specification relevant to the
recited “predetermined number.” See Appeal Br. 3–4 (citing portions of
pages 4–5 and 14–155 as support for the element that includes
“predetermined number”). These portions of the Specification do not define
the “predetermined number” unlike other terms whose concrete definitions
leave no doubt as to their meaning. See, e.g., Spec. 19–20. Nor does the
Specification otherwise indicate that the predetermined number excludes
one. See Spec. 4–5 (page 4 line 29 through page 5 line 4 characterizing the
predetermined number as a threshold; page 14 line 16 through page 15 line
12 teaching an adjacent region accessed more than a defined threshold).
Thus, although the Specification describes specific embodiments where the
predetermined number is greater than one, the Specification nonetheless

4 As noted previously, the broadest reasonable interpretation of the recited
predetermined number is at least one access request address, which includes
not only one, but also more than one such address. Despite this breadth, to
the extent that the Examiner interpretation of the recited predetermined
number as any possible number of access request addresses (Ans. 4)
somehow includes zero addresses, such an interpretation is unreasonable on
this record. Nevertheless, we see no harmful error in the Examiner’s
articulated interpretation of the recited predetermined number to the extent
that it is limited to one or more access request addresses.
5 On page four of the Appeal Brief, it appears “page 5, line 12” is a
typographical error and the correct citation should be “page 15, line 12.”
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does not explicitly exclude one from being the predetermined number. See
id. Nor will we import these embodiments, let alone an unstated exclusion
of one, into the claims. See Phillips 415 F.3d at 1323 (“[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments”).
Nor does the word “addresses” in the context of claim 1 preclude the
number one from being the recited predetermined number. For example, the
request “[p]lease select a predetermined number of playing cards from the
deck” does not exclude selecting only one card from the deck. The word
“cards” merely indicates that a selection can include one or more cards.
Nor do we find availing Appellant’s contention that “de la Iglesia is
not concerned with the memory locations accessed within a region. . . ,” and
“determining the number of blocks read from or written to a particular
address region 40 is not the same as determining that at least a
predetermined number of the access request addresses in the adjacent region
of memory space have been accessed.” Appeal Br. 9 (quotation marks and
underlines omitted). Again, neither the claims nor the Specification
excludes just one access address from the recited predetermined number of
access request addresses. Region 40A in de la Iglesia is associated with a
particular block range address (see, e.g., de le Iglesia ¶ 38), and thus an
access request to region 40A is an access request to at least one address.
Appellant’s contention that de la Iglesia fails to teach determining
“that at least of predetermined number of the access request addresses in the
adjacent region of memory space have been accessed” (see Appeal Br. 9) is
also unavailing. Even Appellant’s own example—a hypothetical
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embodiment with 50 writes to a single access address (see id. 9–10)—fully
meets the recited predetermined number of access request addresses, namely
one. Notably, a region access in de la Iglesia’s region 40A is not confined to
any particular number of read or write operations. See de la Iglesia ¶ 78
(teaching a storage access in any part of region 40A).
Appellant’s additional contention with respect to the feasibility of de
la Iglesia’s register to “store all the data necessary to track how many
different access request addresses have been accessed for a larger region of
memory” (see Appeal Br. 10) is also unavailing because this argument is not
commensurate with scope of the claim language. The claim does not require
many different access request addresses: it requires indicating that a
predetermined number of access request addresses have been accessed. As
noted above, de la Iglesia teaches the recited predetermined number because,
among other things, it teaches at least one access request address in the
adjacent region of memory space (i.e., region 40A). See de la Iglesia ¶¶ 38,
78–79; Fig. 8 (operation 330).
Nor do we find availing Appellant’s contention that de la Iglesia fails
to teach “using a predetermined number of access request addresses in an
adjacent region having been accessed to initiate prefetching a region
prefetching process for all access request addresses in the new region.” See
Appeal Br. 10 (underlining in original). As emphasized above, the recited
“have been accessed” language is in the past tense: thus, the claim requires
indicating a predetermined number of access request addresses that have
been accessed (i.e., that were accessed previously).
As noted previously, de la Iglesias’s operation 330 in Figure 8
prefetches the entire region 40B responsive to indicating a predetermined
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number of access request addresses, namely at least one such address, was
accessed in adjacent region 40A. Our emphasis on the term “was”
underscores that indicating the predetermined number of access request
addresses—even just one—in region 40A occurs before prefetching the
entire region 40B in operation 330 of de la Iglesias’s Figure 8. See de la
Iglesias ¶ 78. That is, even if just one access request address in region 40A
was accessed in de la Iglesias’s operation 330, the prefetch of all such
addresses in region 40B would not occur but for indicating that the address
in region 40A was accessed.
Appellant’s arguments in the Reply Brief are also unavailing. See
Reply Br. 2–8. First, Appellant’s contention that the Examiner’s delayed
explanation in the Answer ostensibly violates a section of the MPEP
pertaining to compact prosecution (see Reply Br. 3 (citing MPEP § 2103 (I))
is a petitionable matter that is not before us. See MPEP § 706.01 (“[T]he
Board will not hear or decide issues pertaining to objections and formal
matters which are not properly before the Board.”); see also MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition . . . .”); MPEP § 1207.03(b) (“37 CFR 41.40 sets forth
the exclusive procedure for an appellant to request review of the primary
examiner’s failure to designate a rejection as a new ground of rejection via a
petition to the Director under 37 CFR 1.181”).
Appellant also argues the existence of a region entry already indicates
that one access occurred to a region and, therefore, it ostensibly does not
make sense to also provide information that an access request has been made
to the region. See Reply Br. 4. This argument is unavailing because it
ignores de la Iglesia’s teaching that access request addresses are recorded for
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region 40A. See de la Iglesia ¶ 55 (indicating that storage operations (i.e.,
requests to read and write) are recorded for address region 40A). Even
assuming, without deciding, that the access request information in de la
Iglesia is redundant, that would not still not preclude de la Iglesia from
anticipating the claim.
Appellant also argues that the Specification provides guidance that the
scope of the recited predetermined number cannot include one. See Reply
Br. 5–7. The disclosure cited by Appellant includes embodiments that
involve a “plurality of access requests” (see id. 5); “counting the number of
set access indications” (see id.); “a sufficient number of [] access request[s]”
(see id.); and 13 address accesses. See id. 6–7.
Although this disclosure informs our understanding of the recited
predetermined number, we decline to import these disclosed embodiments
into the claims. See Phillips 415 F.3d at 1323 (“[A]lthough the specification
often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments); see
also MPEP § 2111.01 (II). (“Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim.”).
Additionally, unlike various terms that are defined explicitly (see, e.g., Spec.
19–20), the Specification does not define the recited predetermined number
or otherwise limit the number to more than one. Thus, again, we are not
persuaded that the claims or the Specification exclude the number one from
the recited predetermined number.
Appellant’s argument that de la Iglesia does not teach a predetermined
number of one (see Reply Br. 7) is also unavailing. For example, Figure 8
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operation 330 of de la Iglesia teaches prefetching 40B if any part of Area
40A is accessed. The word “any” teaches a determination of at least one
access request.
Appellant’s argument that de la Iglesia fails to teach a “number of
access requests” because the read and write registers are not added together
(see Reply Br. 8) is also unavailing. As previously indicated, de la Iglesia
teaches at least one access request to region 40A (see, e.g., Fig. 8 operation
330operation 330) and therefore teaches the predetermined number of access
requests includes at least one.
Appellant’s argument that de la Iglesia does not compare a number of
access requests to the specific value of one is also unavailing because the
arguments are not commensurate with the scope of the claim language. That
is, the claim does not recite “comparing.” But even if it did, operation 330
of de la Iglesia’s Figure 8 teaches prefetching 40B if any part of Area 40A is
accessed. Requiring a determination of whether any part of Area 40A is
accessed requires logically comparing an access request to a threshold of at
least one.
Appellant’s argument that de la Iglesias fails to teach “the access
information indicates that at least a predetermined number of the access
request addresses in the adjacent region of memory space have been
accessed” because paragraphs 71, 73, and 74 merely teach that the number
of read and write blocks are “used” (see Reply Br. 8) is also unavailing. Not
only does this contention fail to persuasively rebut the functionality of
operation 330 in de la Iglesias’s Figure 8 that indicates that at least one
access request addresses was accessed in region 40A as explained above, the
storage operations in de la Iglesia are also characterized as a “sequence of
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accesses.” See ¶ 37. Thus, storage operations represent addresses that have
been accessed
Therefore, for the reasons indicated above, we are not persuaded that
the Examiner erred in rejecting claim 1, and claims 2–4, 8–11, 13, and 15–
19 not argued separately with particularity.

THE OBVIOUSNESS REJECTION OVER DE LA IGLESIA AND
MCCAULEY

Claim 7
In rejecting dependent claim 7, the Examiner cites McCauley
paragraphs 38 through 39, paragraph 42, and Figure 6 element 605 as
teaching, among other things, (1) a region tag; (2) an offset in an offset
range; (3) an upper half of an offset range; and (4) a lower half of an offset
range. See Final Act. 10. The Examiner further finds addresses above or
below a line offset are examined based on McCauley’s direction bit and line
offset. See Ans. 5–6 (citing McCauley ¶ 42).
Appellant argues McCauley teaches a line offset, but fails to teach the
remaining elements of claim 7. See Appeal Br. 11.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 7 by finding
that de la Iglesias and McCauley collectively teach or suggest “a region tag”;
“an offset in an offset range”; and “the offset being in a lower half of the
offset range to examine the access information in the adjacent region of
memory space below the access request address and is responsive to the
offset being in a upper half of the offset range”?
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ANALYSIS
“The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness.” MPEP § 2142. See also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements. ”), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here,
we are persuaded that the Examiner’s obviousness rejection of claim 7 is
deficient because the Examiner’s findings in the Final Rejection and the
Answer fail to address adequately the elements of claim 7 recited above.
See Final Act. 10; Ans. 5–6. For example, there is no mapping of the recited
region tag or the upper and lower half of the offset range. See Final Act. 10;
Ans. 5–6. Consequently, we are left to speculate regarding what exactly
constitutes these elements in the prior art.
McCauley’s paragraphs 38 and 39 teach, among other things, a 40-bit
physical address, a page address, a line offset for address 505, and a
direction bit, but we fail to see—nor has the Examiner shown—how these
elements teach or suggest a region tag and an upper or lower half of an offset
range as claimed. Nor does the Final Rejection and Examiner’s Answer
articulate any specific mapping of these recited features, let alone explain
why these features would have been obvious. See Final Act. 10; Ans. 5–6.
McCauley Figure 6 shows that stream entries 605 include, among other
things, a page address, line offset, prefetch flags, direction bit, initial line
offset, and access history, but, again, the Examiner fails to show these
elements or their accompanying disclosure teaches or suggests the region tag
or upper and lower half offset ranges, let alone explain why these features
Appeal 2019-001961
Application 14/870,594

19
would have been obvious. See Final Act. 10; Ans. 5–6. Nor will we
speculate in that regard here in the first instance on appeal.
In response to Appellant’s argument that McCauley fails to teach the
above recited elements of claim 7 (see Appeal Br. 11–10), the Examiner
finds that McCauley’s line offset and direction bit cause addresses to be
examined above and below the line offset. See Ans. 5–6. Again, the
Examiner does not articulate any specific mapping of the recited region tag
or the recited upper and lower half offset ranges, let alone explain why these
features would have been obvious. See Final Act. 10; Ans. 5–6. Appellant
additionally points out, and we agree, that there is no teaching in McCauley
where the offset is in the recited offset range, let alone prefetch control
circuitry that is responsive to the particular location of that offset as claimed.
See Reply Br. 9–10.
Because the Examiner has not shown that McCauley teaches or
suggests the recited elements of claim 7, or that de la Iglesias cures that
deficiency, we are persuaded that the Examiner erred in rejecting dependent
claim 7.

Claims 5, 6, and 12
We do, however, sustain the Examiner’s obviousness rejection of
claims 5, 6, and 12. Final Act. 9–11. Because the rejection of these claims
is not argued separately with particularity, we are not persuaded of error in
the rejection of these claims for the reasons previously discussed.

Appeal 2019-001961
Application 14/870,594

20
THE OBVIOUSNESS REJECTION OVER DE LA IGLESIA AND
DASIKA

We also sustain the Examiner’s obviousness rejection of claim 14
over de la Iglesias and Dasika. Final Act. 11–12. Because this rejection is
not argued separately with particularity, we are not persuaded of error in this
rejection for the reasons previously discussed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
1–4, 8–
11, 13,
15–19
102(a)(1) de la Iglesia 1–4, 8–11, 13,
15–19

5–7, 12 103 de la Iglesia,
McCauley
5, 6, 12 7
14 103 de la Iglesia,
Dasika
14
Overall
Outcome
1–6, 8–19 7

TIME PERIOD FOR RESPONSE
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).

AFFIRMED IN PART