ATI Technologies ULC et al.Download PDFPatent Trials and Appeals BoardMar 22, 20222021001565 (P.T.A.B. Mar. 22, 2022) Copy Citation 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. 16/221,163 12/14/2018 Philip Ng 1458-0710 3553 102347 7590 03/22/2022 Polansky & Associates, P.L.L.C. 12600 Hill Country Blvd Suite R-275 Austin, TX 78738 EXAMINER DANG, PHONG H ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): admin@patentwerks.net ppolansky@patentwerks.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PHILIP NG and VYDHYANATHAN KALYANASUNDHARAM ____________________ Appeal 2021-001565 Application 16/221,163 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, RICHARD M. LEBOVITZ, and DAVID J. CUTITTA II, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-10, 12-19, 21-28, and 30-36. Appeal Br. 3. Claims 2 and 3 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant states “[t]he real parties in interest in this appeal are ATI Technologies ULC and Advanced Micro Devices, Inc.” Appeal Br. 3. Appeal 2021-001565 Application 16/221,163 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. An apparatus comprising: [A.] a memory with at least one memory chip; [B.] a memory controller coupled to the memory; and [C.] a bus interface circuit coupled to the memory controller and adapted to send and receive data on a data bus; [D.] the memory controller and bus interface circuit together adapted for: [i.] receiving a plurality of request messages over the data bus, wherein the bus interface circuit is adapted to receive the plurality of request messages inside a packet received over the data bus; [ii.] within a selected first one of the request messages, receiving a source identifier, a target identifier, a first address for which memory access is requested, and first payload data; [iii.] storing the first payload data in the memory at locations indicated by the first address; [iv.] within a selected second one of the request messages, receiving a chaining indicator associated with the first request message, and second payload data, the second request message including no address for which memory access is requested; [v.] based on the chaining indicator, calculating a second address for which memory access is requested based on the first address; and [vi.] storing the second payload data in the memory at locations indicated by the second address. Appeal 2021-001565 Application 16/221,163 3 REFERENCES2 The Examiner relies on the following references: Name Reference Date Mandal US 2007/0079044 A1 Apr. 5, 2007 Brewer US 2019/0243700 A1 Aug. 8, 2019 Mittal US 10,409,743 B1 Sept. 10, 2019 REJECTIONS The Examiner rejects claims 1, 3-10, 12-19, 21-28, and 30-36, under 35 U.S.C. § 103 as being unpatentable over the combination of Brewer, Mittal, and Mandal. Final Act. 4-14. Appellant presents patentability arguments. Appeal Br. 8-12. Appellant does not present separate arguments for claims 1, 3-10, 12-19, 21-28, and 30-36. We select claim 1 as representative. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 3-10, 12-19, 21-28, and 30-36 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. We highlight the following points. A. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Appellant’s independent claim[] 1 . . . recite[s] a limitation that the plurality of chained request messages are inside a packet received over the data bus. The Final Office Action cites Mandal as disclosing this limitation. 2 All citations herein are by reference to the first named inventor only. Appeal 2021-001565 Application 16/221,163 4 Appeal Br. 8 (emphasis added). As depicted in Mandal FIG. 3, the two requests are merged into a single request specified by a single header 316, which includes an address range that spans both original requests and a request type (Mandal at paragraph [0042]). The original payloads are concatenated in payload portion 318 (id.). The new request in packet 314 is not two chained requests but a single new request which combines the prior two requests. The text of Mandal also refers to the new request as a single “merged” request, not two requests chained together (Mandal at paragraph [0064], “At step 516, the new request is marked as merged”). By contrast, the claims require two distinct request messages, including “a chaining indicator associated with the first request message, and second payload data, the second request message including no address for which memory access is requested” (Claim 1). The new request of Mandal does not include . . . a “chaining indicator” as claimed[.] Appeal Br. 9-10 (emphasis added). We are unpersuaded by Appellant’s argument, which is premised on Mandal failing to disclose the limitation (as paraphrased by Appellant in the Appeal Brief) of “the plurality of chained request messages are inside a packet received over the data bus.” Appeal Br. 8. Appellant does not address the actual reasoning of the Examiner’s rejection. Instead, Appellant attacks the Mandal reference singly for lacking a teaching that the Examiner relied on a combination of Mittal and Mandal to show. In particular, the rejection did not rely on Mandal for teaching the “chained” aspect disputed by Appellant. Rather, the Examiner relied on Mittal (in the rejection of claim 1) to show “chained requests” (Final Act. 5) and relied on Mandal to show it was known to send “a plurality of request messages inside a single packet over a data bus” (Final Act. 6). The Examiner then reasoned that it would have been obvious to modify the combination of Brewer to include Appeal 2021-001565 Application 16/221,163 5 functionality from Mittal and Mandal. Id. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references) B. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. [T]he Office Action erred in its analysis under the first prong of the Graham test, the scope and content of the prior art, in finding that the merged request of Mandal includes a “second request message” or a second distinct request in any form. . . . As Appellants pointed out above, a request in Mandal includes payload data and accompanying address and request type data. The merged payload data of Fig. 3, 318, shows the contents of the payload portion of the merged request, not two requests. Appeal Br. 11 (emphasis added). We are unpersuaded by Appellant’s argument. Again, Appellant does not address the actual reasoning of the Examiner’s rejection. Instead, Appellant attacks the Mandal reference singly for lacking a teaching that the Examiner relied on a combination of Mittal and Mandal to show. The Examiner relied on Mittal (in the rejection of claim 1) to show “a selected second one of the request messages” (Final Act. 5) as in [D][iv] of the claim, not Mandal. Appeal 2021-001565 Application 16/221,163 6 C. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Not only does the cited prior art lack the claimed limitations concerning multiple chained requests in a packet, it also provides no apparent reason why one of ordinary skill in the art would modify Brewer as suggested. If one of ordinary skill in the art were to make modifications to Brewer in view of Mittal and Mandal, it still would not produce the claimed limitations of multiple of chained request messages inside a packet. The use of “merged” commands of Mandal with the modified Brewer system would lack several features and benefits of the claimed invention. First, the claimed invention allows for larger packets sizes that may include multiple requests and intervening requests not part of chain, as set forth, for example, in claim 5. Further, merging requests as done in Mandal requires that all the requests be available at the arbiter and ready to merge and send before a merged request can be assembled. By contrast, the claimed invention allows for further requests to be chained in a separate packet (claim 7, for example) linked to the original chained requests in the same packet. None of the cited prior art describes or otherwise renders obvious these features. Appeal Br. 12. We are unpersuaded by Appellant’s argument. Appellant’s argued features are not commensurate with the scope of claim 1. Claim 1 does not require the particular features being argued. Contrast to Appellant’s claims 5 and 7, which are not argued separately in this appeal. D. Furthermore, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Appellant provides this brief to respond to arguments presented in the Answer’s “Response to Arguments” section. Appeal 2021-001565 Application 16/221,163 7 With respect to the first issue on appeal, the Response to Arguments section, paragraph A, argues that Appellant is attacking the references individually rather than the combination. However, Appellant’s argument is simply to establish that Mandal does not teach what it is cited in the rejection as teaching. . . . A person of ordinary skill in the art, provided with the teaching of Mandal to merge multiple requests into a new distinct request in a larger packet, would have no reason to make the suggested modification of linking the requests within a packet as if they were separate request like the linked requests of Mittal. Instead, a combination of Mittal and Mandal would include packets with merged requests according to Mandal, which would hypothetically be linked to other requests in other packets as taught in Mittal. Therefore, even the cited combination would not produce the claimed invention. To construct the claimed invention based on Mittal and Mandal would require changing the technique of Mandal and separating the merged requests within a packet into discrete requests, then adding chaining indicators within the larger packet of Mandal seen in Mandal FIG. 3, 314. The only way to produce such a contortion of the prior art teachings is to use impermissible hindsight. Reply Br. 2 (emphasis added). We are unpersuaded by Appellant’s argument. As a preliminary matter, we note that Appellant states: “Appellant provides this brief to respond to arguments presented in the Answer’s “Response to Arguments” section.” (Reply Br. 2 (emphasis added)). This is incorrect. The Answer merely repeats the analysis of the Final Action while only adding a comment observing that Appellant is attacking the Mandal reference individually. As to Appellant’s remaining Reply Brief arguments directed to paragraph A of the Examiner’s Answer, Appellant presents for the firsttime Appeal 2021-001565 Application 16/221,163 8 new arguments against the rejection which was presented in the Final Action. These Reply Brief arguments were not previously argued in the Appeal Brief, nor are they responsive to arguments newly raised by the Examiner in the Answer. Rather, these are belated arguments (e.g., “changing the technique of Mandal” and “impermissible hindsight” (Id.))3 that reasonably should have been raised in the original Appeal Brief. In the absence of a showing of good cause by Appellant, we decline to consider an argument raised for the first time in the Reply Brief, as the Examiner has not been provided a chance to respond. See 37 C.F.R. § 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal brief will not be considered when filed in a reply brief, absent a showing of good cause explaining why the argument could not have been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Appellant has provided no showing of good cause. E. For these reasons, we conclude the Examiner does not err in rejecting claim 1 as being unpatentable over the combination of Brewer, Mittal, and Mandal. 3 Although we label these examples as arguments, they are little more than conclusory attorney assertions without supporting analysis. Appeal 2021-001565 Application 16/221,163 9 CONCLUSION The Examiner does not err in rejecting claims 1, 3-10, 12-19, 21-28, and 30-36 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejections of claims 1, 3-10, 12-19, 21-28, and 30- 36 as being unpatentable under 35 U.S.C. § 103 are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-10, 12- 19, 21-28, 30-36 103 Brewer, Mittal, Mandal 1, 3-10, 12- 19, 21-28, 30-36 Overall Outcome 1, 3-10, 12- 19, 21-28, 30-36 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation