Creamer, Thomas E. et al.

Patent Trials and Appeals Board

Apr 13, 2020

14181917 - (D) (P.T.A.B. Apr. 13, 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.
14/181,917 02/17/2014 Thomas E. Creamer BOC920060033US2_8134-0078 4640
73109 7590 04/13/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
CHU JOY, JORGE A
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. CREAMER and CURTIS E. HRISCHUK
Appeal 2019-000336
Application 14/181,917
Technology Center 2100
Before JAMES W. DEJMEK, SCOTT E. BAIN, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21–40, which constitute all claims pending in the
application. Claims 1–20 have been cancelled. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as IBM
Corporation. Appeal Br. 1.
Appeal 2019-000336
Application 14/181,917

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BACKGROUND
The Claimed Invention
The invention relates to a multi-core processor architecture, and
particularly, to more efficiently offloading functions to certain cores in a
multi-core environment. Spec. ¶¶ 1–6. Claims 21, 30, and 39 are
independent. Claim 21 is representative of the invention and the subject
matter in dispute, and reads as follows:
21. A method of allocating a plurality of cores in a multi-core
processing environment, comprising:
allocating, dynamically, the plurality of cores into a plurality of
different service pools, each of the plurality of service pools
corresponding to a particular function;
preloading, into each of the plurality of cores, a soft co-
processor corresponding to a particular function associated with a
particular service pool to which a particular core is assigned;
receiving, from a primary processor, a request to offload a
selected function;
selecting, from a service pool associated with the selected
function, a soft co-processor; and
assigning the selected co-processor to perform the selected
function.
Appeal Br. 25 (Claims Appendix) (emphases added).
References
The references relied upon by the Examiner are:
Name Reference Date
Emeis et al. (“Emeis”) US 7,478,097 B2 Jan. 13, 2009
Birns et al. (“Birns”) US 6,647,440 B1 Nov. 11, 2003

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The Rejections on Appeal2
Claims 21–40 stand rejected under pre-AIA 35 U.S.C. § 112, ¶ 2 as
indefinite. Final Act. 4–5.
Claims 21, 22, 24–29, 31–36, and 38–40 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Applicant Admitted Prior Art
(“AAPA”) and Emeis. Final Act. 9–17.
Claims 23, 30, and 37 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over AAPA, Emeis, and Birns. Final Act. 18–19.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error regarding the indefiniteness and nonstatutory double patenting
rejections. As to those rejections, we adopt as our own the findings and
reasons set forth in the rejections and in the Examiner’s Answer, and we
provide the following for highlighting and emphasis. Appellant has,
however, persuaded us of error regarding the obviousness rejections.

2 In the Final Action, the Examiner also rejects Claim 21 on the ground of
nonstatutory double patenting over claim 1 of U.S. Patent No. 8,713,574 B2.
Final Act. 6–9. Neither Appellant nor the Examiner address this rejection in
the briefs, and the record indicates that a terminal disclaimer was filed and
entered February 1, 2018. Accordingly, we consider the nonstatutory double
patenting rejection to be moot.

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Rejection Under 35 U.S.C. § 112, ¶ 2
The Examiner finds the limitation “a particular function” indefinite,
because that precise phrase is recited twice in claim 21 in two different
contexts. Ans. 4–5. Specifically, claim 21 recites both “allocating,
dynamically, the plurality of cores into a plurality of different service pools,
each of the plurality of service pools corresponding to a particular function”
and “preloading, into each of the plurality of cores, a soft co-processor
corresponding to a particular function.” Id. 4 (emphasis added). The
Examiner finds it is “unclear from the context of the claim whether the same
particular function is preloaded into all of the cores or each core is preloaded
with functions that differ from each other.” Id. We agree.
Appellant argues that the claim could have either of the meanings
referenced by the Examiner, and that the Examiner is conflating claim
breadth with indefiniteness. Reply Br. 2–3; see also In re Miller, 441 F.2d
689, 693 (CCPA 1971) (“breadth [of a claim] is not to be equated with
indefiniteness”). Appellant, however, uses the exact same phrase “particular
function” twice in claim 21, each time with the antecedent basis “a,” but in
two different contexts. As the Examiner concludes, it is unclear whether
both uses of “particular function” refer to the same particular function, or
different.
If a claim is amenable to two or more plausible claim constructions,
the Office is justified in requiring an applicant to more precisely define the
metes and bounds of the invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite. Ex parte Miyazaki,
89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential); see also
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
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2008) (“it is highly desirable that patent examiners demand that applicants”
resolve any “ambiguity in the patent claims . . . during prosecution”). As the
Examiner finds, Appellant’s use of the same phrase in different contexts is
unclear. For the foregoing reasons, we discern no error in the Examiner’s
finding that claim 21 is indefinite.
We do not agree, however, with the Examiner’s apparent finding that
the term “soft co-processor” itself is indefinite. Final Act. 4 (“[i]t is unclear
in the context of the claim what constitutes a soft co-processor”); Ans. 5.
Appellant’s Specification defines a soft co-processor as “code and/or data
[i.e., software] that is preloaded into the core memory for performing the
specific function(s) to be offloaded to that core.” Spec. ¶ 23. This is in
contrast to the Specification’s description of a “hard-wired” co-processor.
Spec. ¶ 5.
For the foregoing reasons, we sustain the indefiniteness rejection of
claim 21. For the same reasons, we sustain the same rejection of claims 30
and 39, which recite the same limitation, and we sustain the rejection of the
remaining claims (all of which are dependent).
Rejections Under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “preloading . . . a soft co-processor corresponding to a particular
function associated with a particular service pool,” as recited in claim 21.
Appeal Br. 12; Reply Br. 4–5. Appellant further, and alternatively, argues
that the prior art does not teach or suggest any “request to offload a selected
function,” as recited in claim 21. We are persuaded by the latter argument,
and do not reach the former.
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The Examiner finds the AAPA teaches or suggests a “request” to
offload a selected function in its disclosure that “the functions to which the
co-processor is suited can be offloaded from the main processor to the co-
processor.” Final Act. 10 (emphasis added); Ans. 7. The Examiner explains
that offloading a function “implies a request” was made. Final Act. 10. As
Appellant argues, however, the Examiner provides no support for the latter
finding. Reply Br. 6. “[A]ny communication” that offloads functions to the
co-processor is not the same as a “request” to perform the action. Ans. 7.
Accordingly, on this record, we are persuaded of error.
In addition, we also agree with Appellant’s argument (Appeal Br. 17–
18) that the Examiner has not provided sufficient findings indicating that
Emeis is analogous art and therefore may be combined with AAPA to
constitute the obviousness rejection. A reference is analogous art if it is
“from the same field of endeavor” or if it is “reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004).
Emeis concerns distributed computing networks, and specifically, the
allocation of functions among control nodes across a distributed network.
Emeis Abstract, 5:18–26. Emeis discloses software images deployed to
application nodes “based on the input received from [a] system
administrator.” Emeis 1:53–60, 5:5–10. Appellant’s invention, in contrast,
is directed to a computer system architecture, namely, a multi-core processor
architecture. The Examiner finds that Emeis’ teachings related to a
distributed network are “reasonably pertinent to the problem” of Appellant’s
application because both involve classifying tasks according to functionality
and selecting execution of those tasks. Ans. 8. A prior art reference is
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“reasonably pertinent” if it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his or her invention as a whole. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). On this record, however, we
are not directed to sufficient evidence that an inventor of a multi-core
processor architecture reasonably would have directed his or her attention to
a distributed (network) computing system such as that in Emeis, when
considering the problem of allocating the cores.
For each of the foregoing reasons, we are persuaded of error regarding
the Examiner’s obviousness rejection of claim 21. For the same reasons, we
are persuaded of error regarding the same rejection of remaining
independent claims 30 and 39, which recite limitations commensurate in
scope with the disputed limitation above. For the same reasons, we are also
persuaded of error regarding the rejection of the remaining claims, all of
which are dependent. Accordingly, we do not sustain the obviousness
rejections of claims 21–40.
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SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–40 112 Indefiniteness 21–40
21, 22, 24–
29, 31–36,
38–40
103 AAPA, Emeis 21, 22, 24–
29, 31–36,
38–40
23, 30, 37 103 AAPA, Emeis,
Birns
23, 30, 37
Overall
Outcome
21–40
DECISION
We affirm the Examiner’s decision rejecting claims 21–40.
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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED