Ex Parte Dwyer et al

Board of Patent Appeals and Interferences

Feb 3, 2012

09975764 (B.P.A.I. Feb. 3, 2012)

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.
09/975,764 10/09/2001 Harry Dwyer Dwyer 5-13 9496
47386 7590 02/03/2012
RYAN, MASON & LEWIS, LLP
1300 POST ROAD
SUITE 205
FAIRFIELD, CT 06824
EXAMINER
LANE, JOHN A
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
02/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARRY DWYER, and JOHN SUSANTHA FERNANDO
____________

Appeal 2009-010651
Application 09/975,7641
Technology Center 2100
____________

Before JOHN A. JEFFERY, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Agere Systems, Inc.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-8 and 11-39. Claims 9 and 10 are objected
to as being dependent upon a rejected base claim. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to a method for adaptively locking and
unlocking frames in cache memories. (See Spec., 1:5-7.)
Claim 1 is illustrative:
1. A cache memory, comprising:
a plurality of cache frames for storing information from
main memory; and
an adaptive frame locking mechanism for locking a number
of most recently used frames associated with a task.

Appellants appeal the following rejection:

Claims 1-8 and 11-36 under 35 U.S.C. § 103(a) as unpatentable over
admitted prior art (Spec. pages 1-3, hereinafter APA) and Malamy (US
5,353,425, Oct. 4, 1994); and
Claims 9 and 10 are objected2 to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.

2 We shall not address the Examiner’s objection to claims 9 and 10 (see
Ans.1), as these matters should have been raised via a timely petition by
Appellants pursuant to 37 C.F.R. § 1.181 since we do not have jurisdiction
over such petitionable matters. See e.g., Ex parte Frye, 94 USPQ2d 1072,
1077-78 (BPAI 2010) (precedential).

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ANALYSIS
Appellants argue claims 1-8 and 11-36 as a group (App. Br. 4-6). For
claims 2-8 and 11-36, Appellants essentially repeat the same argument made
for claim 1. We will, therefore, treat claims 2-8 and 11-36 as standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young,
927 F.2d 588, 590 (Fed. Cir. 1991).

Issue 1: Did the Examiner err in finding that the combination of APA
and Malamy discloses locking a number of most recently used frames
associated with a task, as set forth in claim 1?

Appellants contend that “the admitted prior art actually teaches away
from the present invention by teaching to lock all frames associated with a
task.” (App. Br. 4.) Appellants further contend that “Malamy . . . actually
teaches away from the present invention by teaching to block the
replacement of the most recently used cache lines regardless of the task they
are associated with.” (App. Br. 5, emphasis original.)
The Examiner found that “[t]he admitted prior art found on pages 1-3
of the present specification teaches a cache for storing a plurality of frames
from main memory. . . . Malamy is introduced as teaching locking pages or
blocks in a cache in accordance with a most recently used locking scheme.”
(Ans. 4.) We agree with the Examiner.

Here, Appellants concede that “the admitted prior art teaches to lock
all frames associated with a task, if the task is interrupted by another task.”
(App. Br. 4.)
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Appellants’ Specification specifically states:
Cache frame locking, for example, is a technique that prevents the
contents of specified cache frames from being evicted. In this
technique, a specified group of fames is “locked” and the blocks they
contain may not be evicted until they are unlocked. . . . Locking and
unlocking may be exercised by the execution of a special instruction .
. . The locking of some of an executing task’s frames prior to another
task’s execution ensures that blocks in those frames are not evicted.
(Spec. 2:2-9.)
In other words, Appellants’ Specification clearly discloses locking some of
an executing’s task’s frames (i.e., frames associated with a task) prior to
another task’s execution. The only limitation that the Examiner found
missing from APA was locking “most recently used frames” and thus, the
Examiner turns to Malamy to disclose this feature.
Malamy discloses:
In the PLRU [Pseudo-Least-Recently-Used] replacement scheme each
cache memory line is assigned an MRU (or Most-Recently-Used) bit
which is stored in the TAG table. The MRU bit for each cache
memory line is set to a “1” each time a “hit” occurs on the cache
memory line. Thus, a “1” in the MRU bit indicates that the cache
memory line has been used recently. . . . If the MRU bit for a
particular cache memory line is set to a “1”, then the cache controller
does not replace that cache memory line since it was used recently.
(Col. 3, ll. 13-25.)
In other words, Malamy discloses that memory lines most recently used are
not replaced (i.e., locked).
We find that the recited “locking a number of most recently used
frames associated with a task” (see independent claims 1 and 29) is
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strikingly similar (at least conceptually) to the combined teachings of APA’s
locking some of an executing’s task’s frames and Malamy’s locking most
recently used frames, and thus the Examiner’s reliance on this functionality
is therefore persuasive.
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted, emphasis added). This reasoning is applicable here.
Similarly, independent claims 15, 23, and 33 recite, inter alia,
“locking said number of most recently used frames if a task is interrupted by
another task.” Appellants admit, and we agree, that APA discloses locking
frames . . . if a task is interrupted. (See App. Br. 4.) “Admissions in the
specification regarding the prior art are binding on the patentee for purposes
of a later inquiry into obviousness.” PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) (citations omitted).
Thus, for at least the reason noted above, we also find that the combined
teachings of APA and Malamy teaches and/or suggests locking recently used
frames if a task is interrupted by another task.

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Teaching Away Arguments
As for Appellants’ contention that APA teaches away from locking a
number of most recently used frames because it teaches to lock all frames
associated with a task, we disagree with this contention. For instance,
Appellants’ Specification does not state to lock “all” frames, but rather states
“locking of some of an executing task’s frames.” (see Spec. 2:2-9.) Thus,
Appellants are misrepresenting their own disclosure.
As for Appellants’ contention that Malamy teaches away from the
present invention because Malamy teaches to block the replacement of cache
lines regardless of the task they are associated with (see App. Br. 5), we also
find this argument unpersuasive. Specifically, we do not find, and
Appellants have not establish, that APA and/or Malamy criticizes, discredits,
or otherwise discourages locking a number of most recently used frames
associated with a task. “[T]he prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternative
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference...would be led in a direction divergent from the
path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335
(Fed. Cir. 2001). We do not find this to be the situation before this Board.

Dependent Claims
As for the numerous dependent claims, Appellant merely argues that
neither reference (APA nor Malamy) teaches or suggests the limitations of
the dependent claims without providing any meaningful analysis that
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explains why the Examiner erred. (App. Br. 5-6.) A statement which
merely points out what a dependent claim recites will not be considered
an argument for separate patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Moreover, arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). Cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”)
Based on the record before us, we find that the Examiner did not err in
rejecting independent claims 1, 15, 23, 29, and 33. Accordingly, we affirm
the rejections of claims 1, 15, 23, 29, and 33, as well as associated dependent
claims 2-8, 11-14, 16-22, 24-28, 30-32, and 34-36.

DECISION
We affirm the Examiner’s § 103 rejection of claims 1-8 and 11-36.
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) (2010).
AFFIRMED

Vsh