Ex Parte Chang et al

Patent Trial and Appeal Board

Mar 26, 2013

11629731 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YEOW KHAI CHANG and SANTHI LAKSHMINARAYANAN
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Appeal 2010-011436
Application 11/629,731
Technology Center 2100
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows, with
emphasis added:
1. A host controller, for transferring data over a bus communication
system, under the control of a processor, wherein data is transferred in a
plurality of individual transactions and a processor interrupt request is
generated on completion of a transaction, wherein the host controller
comprises a logic module, configurable in response to a first input by the
processor, such that, when a processor interrupt request is generated on
completion of a transaction from a first group of said plurality of individual
transactions, an interrupt request is sent by the logic module to the processor
based on a prioritization of said first group as determined by said first input,
whereas when a processor interrupt request is generated on completion of a
transaction associated with each of a plurality of individual transactions
associated with a second group of said plurality of individual transactions,
an interrupt request is sent to the processor after all of said processor
interrupt requests associated with said second group are generated, wherein
transactions associated with said second group are mutually exclusive from
said transactions associated with said first group.

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The Examiner’s Rejections1
(1) The Examiner rejected claims 1-7 under 35 U.S.C. § 102(b) as
being anticipated by Wang (U.S. Patent No. 6,742,076 B2, issued May 25,
2004). (Ans. 3-5.)
(2) The Examiner rejected claims 8-13 as being unpatentable under
35 U.S.C. § 103(a) over Wang in view of Appellants’ Admitted Prior Art
found at page 4, lines 18-20 of the Specification (hereinafter, “AAPA”).
(Ans. 5-6.)

1 The Examiner has presented a new interpretation for how Wang classifies
transactions into different groups “on-the-fly” (Ans. 9; see also Advisory
Action mailed March 10, 2010). We note that the appropriate venue for
Appellants to object to any asserted new grounds of rejection was by petition
to the Supervisory Patent Examiner under MPEP § 1002.02(d), Petitions and
Matters Decided by Supervisory Patent Examiners. No such petition has
been filed in the instant case. In addition, Appellants have argued the
rejections of claims 1-13 on the basis of the new interpretation of Wang
(Reply Br. 3-9), and therefore have recognized the Examiner’s new
interpretation and had an opportunity to respond in the Reply Brief.
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Appellants’ Contentions2
(1) Appellants contend (App. Br. 4-7; Reply Br. 3-6) that the
Examiner erred in rejecting claims 1-7 under 35 U.S.C. § 102(b) for
numerous reasons, including:
(a) Wang’s Figure 3B fails to teach or suggest sending an interrupt
request after all interrupt requests for a second group are generated (App. Br.
4-7);
(b) Wang does not generate interrupts based on mutually exclusive
transactions as claimed, because Wang’s transactions that are used to cause
the accelerated interrupt (i.e., the first group of transactions) are also used in
generating a batch complete interrupt (Reply Br. 3-6).
(2) Appellants contend (App. Br. 7-8; Reply Br. 7-9) that the
Examiner erred in rejecting claims 8-13 under 35 U.S.C. § 103(a) as being
unpatentable over Wang and AAPA for numerous reasons, including:

2 Appellants present only general arguments as to the merits of Wang
regarding the anticipation rejection of claims 1-7 and do not argue any
specific claim(s) in the Briefs (see App. Br. 4-7; Reply Br. 3-6), other than
the mention of claim 1 by way of example (see Reply Br. 4). Separate
patentability is not argued for claims 1-7, and Appellants rely on the
arguments as to claims 1-7 (rejected for anticipation) with regard to the
obviousness rejections of claims 8-13 (App. Br. 7-8). We select independent
claim 1 as representative of the group of claims rejected under § 102(b)
consisting of claims 1-7, pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(iv). We decide the appeal of dependent claims 8-13 on the
basis of independent claims 1, 4, and 6, from which they ultimately and
respectively depend. In view of the foregoing, our analysis will only address
the substance of representative claim 1.

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(a) the same reasons provided with regard to the anticipation rejection
of claims 1, 4, and 6 over Wang (App. Br. 7-8);
(b) that there is no motivation to replace Wang’s transaction
descriptors (XDi) with AAPA’s packet transfer descriptors (App. Br. 8); and
(c) the Examiner has not reconciled the differences between USB
transactions (Wang’s XDi) and the claimed packet-based descriptors for
transactions (Reply Br. 8).
Principal Issue on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4-9)
and the Reply Brief (Reply Br. 3-9), the principal issue presented on appeal
is:
Did the Examiner err in rejecting claims 1-13 as being anticipated or
obvious because Wang fails to disclose “an interrupt request is sent to the
processor after all of said processor interrupt requests associated with said
second group are generated, wherein transactions associated with said
second group are mutually exclusive from said transactions associated with
said first group,” as recited in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (App. Br. 6-7) and the Reply Brief (Reply Br.
1-3) that the Examiner has erred. We disagree with Appellants’ contentions.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, as well as the Advisory Action
mailed March 10, 2010, and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3-9).
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We concur with the conclusions reached by the Examiner, and highlight and
address specific findings and arguments for emphasis as follows.
Anticipation Rejection of Claims 1-7
We agree with the Examiner (Ans. 3-4 and 7-9; Advisory Action
mailed March 10, 2010) that: (i) Wang’s Figures 1A and 3B and descriptions
in column 5, lines 35-40 and column 8, lines 6-21 and 48-60 disclose that an
interrupt request is sent to the processor after the entire group of transactions
is completed as set forth in representative claim 1; (ii) Wang’s groups are
“mutually exclusive” inasmuch as this phrase is defined in the Specification
and claims as originally filed; and (iii) the claims do not require a “pre-set
classification system” as argued by Appellants.
We also agree with the Examiner (Ans. 7) that column 2, lines 19-24
of Wang describe subject matter that is prior art to Wang, and not Wang’s
invention/embodiments, therefore column 8, lines 6-21 disclose that
interrupt requests are sent when a batch of transactions (i.e., the second
group of transactions) is complete.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
Appellants’ contentions (Reply Br. 3-6) that Wang’s transactions are
not mutually exclusive are not persuasive. Appellants do not provide any
specific definition for the phrase “mutually exclusive” in the originally filed
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Specification, nor do Appellants act as their own lexicographer and use the
phrase “mutually exclusive” in any unconventional way. Appellants do state
that “interrupt requests” are sent to a system CPU after the interrupt requests
are “generated for example as a result of the completion of a transaction”
(Spec. 2:2-3; see also claim 1 as originally filed at Spec. 7:1-9). However,
the Specification is otherwise silent as to the definition of mutually
exclusive, or what would make plural transactions from different groups
mutually exclusive.
The plain and ordinary meaning of “mutually exclusive,” when
applied to first and second groups of transactions as claimed, is that no
transaction in the first group is also a transaction in the second group, and no
transaction in the second group is also a transaction in the second group.
Under the broadest reasonable interpretation of claim 1, in light of the
Specification, the recitation of first and second groups of transactions being
“mutually exclusive” encompasses Wang’s USB transactions that meet the
accelerated interrupt condition (i.e., the recited first group of transactions)
and USB transactions in a particular batch that do not meet the accelerated
interrupt condition (i.e., the second group of transactions) shown in Figure
3B and described at column 8, lines 6-21 and 48-60 (see also col. 7, l. 40 to
col. 9, l. 14 describing Fig. 3B). Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1364. In other words, because the transactions in Wang’s batch of USB
transactions that meet the accelerated interrupt condition are not in common
with the group of transactions for the particular batch that do not meet the
accelerated interrupt condition, Wang’s transactions, as divided into two
groups as shown in Figure 3B and described in the corresponding detailed
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description, meet the limitation of being mutually exclusive as recited in
representative claim 1.
In view of the foregoing, we sustain the Examiner’s anticipation
rejection of representative claim 1, independent claims 4 and 6, as well as
claims 2, 3, 5, and 7 depending therefrom.
Obviousness Rejection of Claims 8-13
With regard to the Examiner’s obviousness rejection of claims 8-13,
all based on Wang, we sustain this rejection for the same reasons as
provided for representative claim 1, and for the following additional reasons.
Appellants admit (see App. Br. 3 and 4) that page 4, lines 18-20 of the
Specification discloses that “data is transferred in a plurality of individual
transactions and a processor interrupt request is generated on completion of
a transaction.” This same limitation, word for word, is recited in
independent claims 1, 4, and 6 on appeal. Appellants’ Specification (Spec.
4:17-22) describes this subject matter as conventional.
We also agree with the Examiner (Ans. 6 and 9-10) that (i) page 4,
lines 17-22 of Appellants’ Specification discloses “packet transfer
descriptors” as claimed, and (ii) sufficient motivation has been reasonably
articulated for the modification of Wang with AAPA’s packet transfer
descriptors.

PETITIONABLE MATTERS
Appellants also seek our review of the Examiner’s new interpretation
of Figure 3B of Wang, which Appellants assert changes the basis for the
rejections and presents new grounds of rejection. Reply Br. 2-3. We take
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this opportunity to direct the Appellants’ attention to MPEP § 1201, which
states:
The line of demarcation between appealable matters for
the Board of Patent Appeals and Interferences (Board) and
petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed. The
Board will not ordinarily hear a question that should be decided
by the Director on petition, and the Director will not ordinarily
entertain a petition where the question presented is a matter
appealable to the Board. . . .
MPEP § 1201, 8th ed., Rev.9, August 2012. In the present case, Appellants
have not filed a petition to resolve the Examiner’s objections prior to the
matter reaching the Board.
In any event, we note that Appellants’ arguments directed to the
asserted new interpretation of Wang “as disclosing ‘grouping classifications
are determined on-the-fly’ and that this inherently implies that ‘each
transaction is classified into one of the groups when the host controller 100
receives it’” (Reply Br. 3) as not pertinent to the Examiner’s reliance upon
Wang’s Figure 3B as disclosing the limitations recited in representative
claim 1, because claim 1 does not require that transactions have a pre-set
classification or that they are determined on-the-fly, or in any particular
order at all. Claim 1 merely requires the transactions to be in groups that are
mutually exclusive.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-7 under 35 U.S.C.
§ 102(b) as being anticipated by Wang.
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(2) The Examiner did not err in rejecting claims 8-13 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Wang and
AAPA.

DECISION
The Examiner's rejections of claims 1-13 are 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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