Ex Parte Al Sukhni et al

Patent Trial and Appeal Board

Sep 26, 2014

11262171 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HASSAN F. AL SUKHNI and JAMES C. HOLT
____________________

Appeal 2012–005131
Application 11/262,171
Technology Center 2100
____________________

Before MICHAEL J. STRAUSS, CATHERINE SHIANG, and
MINN CHUNG, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3–10, and 22–27. Claims 2 and 11–21 are canceled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to decoupled precomputation prefetching of
computer program instructions. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method comprising:
generating, at a processing unit, a first prefetch graph based on
a sequence of instructions of a program stream that are
committed in an execution pipeline of the processing unit
between a first iteration and a second iteration of a first
load instruction of the program stream; and
generating, at the processing unit, a second pre etch graph from
the first prefetch graph based on a subset of the sequence
of instructions that affect an address value associated
with the first load instruction, wherein generating the
second prefetch graph includes filtering out an instruction
from the sequence of instructions based on a comparison
of an instruction type of the instruction with an identified
set of one or more instruction types.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang (Wang ’083) 1
Wang (Wang ’101)
Ahmad
US 2002/0144083 A1
US 2002/0144101 A1
US 2004/0250164 A1
Oct. 3, 2002
Oct. 3, 2002
Dec. 9, 2004

1 Referenced as “Wang/Collins” and/or simply “Collins” in the Examiner’s
Answer and Appellants’ Appeal Brief and Reply Brief.
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REJECTIONS2
The Examiner made the following rejections:
Claims 22 and 26 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite. Ans. 4–6.
Claims 1, 6–10, 22–24, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wang ’101 and Ahmad. Ans. 6–11.
Claims 3–5 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang ’101, Ahmad, and Wang ’083. Ans. 11–13.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4–12)
and Reply Brief (Reply Br. 2–4), the issues presented on appeal are:
1. Whether the Examiner erred in concluding the recitation “executing
the instruction loop independent of any triggering event” renders
claims 22 and 26 indefinite under 35 U.S.C. § 112 second paragraph.
2. Whether the Examiner erred in finding Wang ’101’s multiple
iterations of a criterion instruction teaches the disputed limitation of
generating a prefetch graph based on a sequence of instructions

2 In connection with the rejections under 35 U.S.C. § 103(a) Appellants
argue the rejection of independent claim 1 and dependent claim 4. Separate
patentability is not argued for independent claims 24 or for dependent claims
3–10, 22, 23, and 25–27. “A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence). Further, merely
restating with respect to a second claim an argument, previously presented
with respect to a first claim, is not an argument for separate patentability of
the two claims. Therefore, based on Appellants’ arguments, we decide the
appeal of the rejection of claims 1, 3, 5–10, and 22–27 under 35 U.S.C.
§ 103(a) based on claim 1 alone and the appeal of claim 4 separately. See
37 C.F.R. § 41.37(c)(1)(vii).
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committed between iterations of a load instruction as required by
claim 1.
3. Whether the Examiner erred in concluding the combination of
Wang ’101’s generation of a prefetch graph by filtering instructions
and Ahmad’s filtering instructions based on an instruction type
teaches or suggests generating a second prefetch graph based on an
instruction type as required by claim 1.
4. Whether the Examiner erred in combining the teachings of Wang ’101
and Ahmad in rejecting claim 1.
5. Whether the Examiner erred in concluding Wang ’101 and Ahmad
when combined with Wang ’083’s general-purpose registers storing
integer values evidence an integer load instruction type which is
filtered from the instruction sequence thereby teaching or suggesting
the disputed limitation of claim 4.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–13) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 13–21) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
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Rejection Under 35 U.S.C. § 112 Second Paragraph
In connection with the rejections of claims 22 and 26 under 35 U.S.C.
§ 112 second paragraph, Appellants contend because “[o]ne skilled in the art
understands that instructions included at a program stream have associated
information, and that this information can trigger different events at an
instruction pipeline,” the term “any triggering event” is definite. App. Br.
11. The Examiner finds “[a]ll part of the claimed invention are [at] least
‘associated with’ each other because they are all a part of the same invention
[and t]herefore the scope of a ‘triggering event’ can seemingly include any
source of action or control in the system.” Ans. 20. The Examiner
concludes “[d]ue to such broad ‘triggering event’ scope, it is unclear how the
instruction loop execution could possibly be ‘independent of any triggering
event.’” Id.
Absent sufficient evidence or argument in rebuttal to the Examiner’s
rationale concluding the disputed language of claims 22 and 26 renders the
claims indefinite, we find no error in the rejection under 35 U.S.C. § 112,
second paragraph. Appellants’ argument in the Appeal Brief amounts little
more than a general assertion of compliance with the requirements of
35 U.S.C. § 112, second paragraph (App. Br. 11) to which the Examiner
responds with an explanation detailing specific inconsistencies found in the
claims rendering the claims indefinite (Ans. 20–21). Because Appellants
have not availed themselves of the opportunity to challenge in their Reply
Brief the Examiner’s reasons for finding the disputed limitation indefinite as
proffered in the Answer, the Examiner’s reasoning is unrebutted and, we
find, otherwise reasonable. Therefore, we find no error in the Examiner’s
conclusion of indefiniteness.
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In connection with the informalities found by the Examiner based on
the language “associated with an instruction included at the instruction”
recited in claim 26 (Ans. 6), other than acknowledge “a grammatical error”
and assert the claim is not indefinite (App. Br. 12), Appellants make no
substantive argument in response. Therefore, we find no error in the
Examiner’s conclusion.
For the reasons supra, we sustain the rejections of claims 22 and 26
under 35 U.S.C. § 112 second paragraph.

Rejections Under 35 U.S.C. § 103(a)
Claim 1
a. generating a prefetch graph based on a sequence of instructions
committed between iterations of a load instruction
Appellants contend Wang ’101’s directed acyclic graph (DAG) trace
is determined by sliding an analysis window along an instruction sequence
until a criterion instruction is found but is unrelated to and fails to teach a
first iteration and a second iteration of a load instruction as required by claim
1. App. Br. 7. Appellants argue Wang ’101’s loop with multiple iterations
of a criterion instruction fails to teach generating a prefetch graph based on a
sequence of instructions committed between iterations of the instruction as
required by claim 1. Id. The Examiner responds by finding Wang ’101’s
criterion instruction can be a load instruction (Ans. 4) such that the DAG
associated with the criterion instruction teaches a DAG related to a load
instruction (id.). The Examiner further finds Wang ’101’s DAG is built and
rebuilt during several iterations of the corresponding load and related
instructions of a loop. Id. The Examiner concludes Wang ’101 teaches or
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suggests the disputed limitation of “generating, at a processing unit, a first
prefetch graph based on a sequence of instructions . . . between a first
iteration and a second iteration of a first load instruction of the program
stream.” Ans. 7, 14.
We agree with the Examiner. Appellants’ argument addressing
Wang ’101’s sliding analysis window is unpersuasive because it does not
address the Examiner’s findings. Furthermore, because Wang ’101’s
criterion instruction is associated with the DAG, under a broad but
reasonable interpretation of the recited “based on” relationship between the
prefetch graph and load instruction of claim 1, and absent sufficient
evidence or argument to the contrary, we agree with the Examiner Wang
’101’s DAG associated with the criterion instruction teaches or suggests a
prefetch graph based on a sequence of instructions including a load
instruction. Because Wang ’101’s sequence of instructions forms a loop that
is iteratively executed with the DAG being built and rebuilt, we also agree
the reference teaches or suggests the entirety of the disputed limitation.

b. generating a second prefetch graph based on an instruction type
Appellants contend Ahmad is limited to filtering information sent to an
external debug system via a trace port and fails to teach filtering an
instruction to generate a prefetch graph as required by claim 1. App. Br. 8.
Appellants argue the Examiner’s finding that “filtering and fine-tuning
program code is extremely common in the art” (App. Br. 9; Ans. 12) is not a
proper basis for a conclusion of obviousness and “the fact that some types of
filtering or fine-tuning may be known or may be desirable does not imply
that the recited features are also known in the art” (App. Br. 9). The
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Examiner responds by explaining the disputed limitation, while not
disclosed by the references individually, is taught or suggested by the
combination of Wang ’101 and Ahmad. Ans. 15. In particular, the Examiner
finds “Wang teaches generating a second prefetch graph by filtering
instructions, while Ahmad teaches filtering instructions based on an
instruction type.” Ans. 15–16. The Examiner concludes it would have been
obvious to modify Wang ’101 to filter instructions based on instruction type
as taught by Ahmad to provide an additional tool to optimize the instructions
in a DAG, reduce storage requirements, and improve speed during DAG
rebuilding. Ans. 16–17.
We are unpersuaded of error by Appellants’ arguments. Appellants are
arguing the teachings of Ahmad separately without considering the
combined teachings of Wang ’101 and Ahmad. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981)). Appellants have not explained why it would not be obvious
to use the filtering of Ahmad in the system of Wang ’101 or presented
evidence the combination would not result in teaching or suggesting the
disputed limitation. In contrast, we find the Examiner’s findings and
conclusion of obviousness to be supported by the evidence of record.
Therefore, in the absence of sufficient evidence, Appellants’ contention is
not persuasive of Examiner error.

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c. One skilled in the art would not combine the references as proposed
Appellants contend “[n]either Wang [’101] nor Ahmad provide any
motivation for combining their disparate teachings [nor is there any]
teaching in either reference as to how the two systems would interact or
combine to reduce storage space or improve speed, as asserted by the
Office.” App. Br. 9. Appellants argue “[c]ombining the debug system of
Ahmad with the DAG trace system of Wang would not reduce the storage
space or improve the speed of the DAG trace system in any manner.” Id.
The Examiner responds “the test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference. Rather, as discussed above, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Ans. 18.
We agree with the Examiner. The Examiner explains use of Ahmad’s
filtering of instruction based on instruction type in Wang ’101’s system
would reduce storage requirement and improve speed. Although Appellants
contest the Examiner’s findings, insufficient evidence is provided to
persuade us the Examiner has erred.3 In particular, Appellants fail to provide
sufficient evidence or argument that the combination yields anything other
than predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). We are also not persuaded that combining the respective familiar

3 Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984.)
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elements of the cited references in the manner proffered by the Examiner
was “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s
proffered combination of familiar prior art elements according to their
established functions would have conveyed a reasonable expectation of
success to a person of ordinary skill at the time of the invention. We further
find the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. Therefore, we find
unpersuasive of error Appellants’ contention that the combination of
Wang ’101 and Ahmad is improper.
For the reasons supra, Appellants’ arguments are unpersuasive of
Examiner error. Accordingly, we sustain the rejections of independent claim
1 and, for the same reasons, independent claim 24 under 35 U.S.C. § 103(a)
over Wang ’101 and Ahmad together with the rejection of dependent claims
6–10, 22, 23, 26, and 27 not separately argued. We further sustain the
rejection of dependent claims 3, 5, and 25 under 35 U.S.C. § 103(a) over
Wang ’101, Ahmad, and Wang ’083, these dependent claims also not
separately argued.
Claim 4
In connection with claim 4, Appellants contend even if Wang ’083’s
instructions using a general purpose register were to imply integer
operations, “there is no disclosure in any of the cited references of filtering
based on an integer load instruction type.” App. Br. 11. The Examiner
responds by finding Wang ’083 (i.e., “Wang/Collins” or “Collins”) teaches
filtering both add and load instruction types, both of which can be an integer
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type. Ans. 19. The Examiner concludes claim 4 is unpatentable over the
combination of Wang ’101, Ahmad, and Wang ’083.
We are not persuaded of error. Although Appellants reply by asserting
Figure 6 of Wang ’083 “discloses only that an integer load instruction can be
used in a sequence of instructions” but not “that filtering was performed
based on the integer load instruction type in any manner” (Reply Br. 4),
Appellants do not address the Examiner’s specific findings. In particular,
the Examiner finds Figure 6 of Wang ’083 depicts “[an] exemplified p-slice
subset comprises load and add instructions that are filtered from the
instruction sequence; the other load and add instructions of sequence 602
can be seen to have been filtered out when creating the p-slice.” Ans. 19.
The Examiner further finds the Figure “explicitly shows filtering an integer
load (program 602 line 404991: ‘ld4 r21 =[r15]’; this load instruction is of
the integer type because it loads a value into integer register ‘r21’; that is,
‘r21’ is shorthand for general-purpose integer register 21; this instruction is
filtered based on its type – a delinquent integer load instruction ).” Id.
Absent sufficient evidence or argument in rebuttal, we find the Examiner’s
rationale to be reasonable, as is the conclusion of obviousness.
Appellants’ contention is further unpersuasive of error because the
Examiner relies on the combination of Wang ’101 and Ahmad, not Wang
’083, for teaching or suggesting filtering based on a load instruction type
(Ans. 7, 11) as required by claim 3. Wang ’083 is included for the specific
teaching of an integer load instruction type. Ans. 12. Therefore, Appellants’
argument asserting Wang ’083 fails to teach filtering based on an integer
load instruction type (App. Br. 11) is not persuasive of error because
Appellants are arguing the teachings of Wang ’083 separately without
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considering the combined teachings of Wang ’101, Ahmad, and Wang ’083.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d at 425).
For the reasons supra, Appellants’ contentions are not persuasive of
Examiner error. Therefore, we sustain the rejection of claim 4 under
35 U.S.C. § 103(a) over Wang ’101, Ahmad, and Wang ’083.
CONCLUSIONS
1. The Examiner did not err in concluding the recitation “executing the
instruction loop independent of any triggering event” renders claims
22 and 26 indefinite under 35 U.S.C. § 112, second paragraph.
2. The Examiner did not err in finding Wang ’101’s multiple iterations
of a criterion instruction teaches the disputed limitation of generating
a prefetch graph based on a sequence of instructions committed
between iterations of a load instruction as required by claim 1.
3. The Examiner did not err in concluding the combination of
Wang ’101’s generation of a prefetch graph by filtering instructions
and Ahmad’s filtering instructions based on an instruction type
teaches or suggests generating a second prefetch graph based on an
instruction type as required by claim 1.
4. The Examiner did not err in combining the teachings of Wang ’101
and Ahmad in rejecting claim 1.
5. The Examiner did not err in concluding Wang ’101 and Ahmad when
combined with Wang ’083’s general-purpose registers storing integer
values evidence an integer load instruction type is filtered from the
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instruction sequence thereby teaching or suggesting the disputed
limitation of claim 4.

DECISION
The Examiner’s decision to reject claims 1, 3–10, and 22–27 is
affirmed.
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).

AFFIRMED

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