Ex Parte Plondke et alDownload PDFPatent Trial and Appeal BoardMay 21, 201813369693 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/369,693 02/09/2012 Erich James Plondke 12371 7590 05/23/2018 Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM 4000 Legato Road, Suite 310 Fairfax, VA 22033 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 ATTORNEY DOCKET NO. CONFIRMATION NO. QC111429 7143 EXAMINER VICARY, KEITH E ART UNIT PAPER NUMBER 2182 NOTIFICATION DATE DELIVERY MODE 05/23/2018 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): meo.docket@mg-ip.com meo@mg-ip.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERICH JAMES PLONDKE, LUCIAN CODRESCU, CHARLES JOSEPH TABONY, and SWAMINATHAN BALASUBRAMANIAN1 Appeal2018-000643 Application 13/369,693 Technology Center 2100 Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-3, 5, 6, 18, 20, and 21, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify the real party in interest as QUALCOMM Incorporated (App. Br. 3). Appeal2018-000643 Application 13/369,693 STATEMENT OF THE CASE Appellants' invention is directed to "[ s ]ystems and methods for generating a floating point constant value from an instruction" that includes "a first field corresponding to a sign bit of the floating point constant value," "a second field corresponding to an exponent value of the floating point constant value," "a third field corresponding to a significand of the floating point constant value," and two additional fields indicating "first and second shift values" (Spec. ,r,r 8, 28; Abstract). "[T]he second field and the third field ... [are] shifted by [the] first and second shift values respectively" before "[ t ]he first field, the second field, and the third field are combined to form the floating point constant value" (Abstract). Claims 1 and 18 are independent. Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A method of generating a floating point constant value from an instruction, the method comprising: decoding a first field of the instruction as a sign bit of the floating point constant value; decoding a second field of the instruction to correspond to an exponent value of the floating point constant value; decoding a third field of the instruction to correspond to a significand of the floating point constant value; shifting the second field, based on a first shift value, and the third field, based on a second shift value, wherein a fourth field of the instruction comprises the first shift value and a fifth field of the instruction comprises the second shift value. REFERENCES and REJECTIONS ( 1) The Examiner rejected claims 1-3, 5, 6, and 18 under 35 U.S.C. § I03(a) based upon the teachings of Ishii (US 2006/0112160 Al; 2 Appeal2018-000643 Application 13/369,693 published May 25, 2006) and Ford (US 2005/0154773 Al; published July 14, 2005). (2) The Examiner rejected claims 20 and 21 under 35 U.S.C. § I03(a) based upon the teachings of Ishii, Ford, and Trissel (US 5,341,320; issued Aug. 23, 1994). ANALYSIS With respect to claim 1, the Examiner finds the combination of Ishii and Ford teaches "shifting the second field, based on a first shift value, and the third field, based on a second shift value, wherein a fourth field of the instruction comprises the first shift value and a fifth field of the instruction comprises the second shift value," as claimed (Final Act. 3--4; Ans. 19--22). Particularly, the Examiner finds Ishii teaches second and third fields of an instruction, the second and third fields corresponding to an exponent value and a significand, respectively, of a floating point constant value (Final Act. 3 ( citing Ishii Fig. 3A)). The Examiner recognizes Ishii does not teach shifting instruction fields as claimed, but finds Ford teaches an instruction encoding "a rotation (i.e. a circular shift)" of an 8-bit integer constant for shifting the integer (Ans. 20; Final Act. 4 (citing Ford ,r 9)). Based on these factual findings, the Examiner concludes a skilled artisan would have shifted the significand and exponent fields of an encoded floating point constant value as claimed, because "the basic idea included in F ord"-that "a particular value can be indirectly specified by an instruction ... including ... a rotate value"-is "applicable regardless of whether the particular value is an integer constant or an exponent or a significand of a floating point constant" (Ans. 17, 22). We do not agree. 3 Appeal2018-000643 Application 13/369,693 We agree with Appellants that Ishii and Ford, alone or in combination, fail to teach or suggest shifting both exponent and significand fields of an instruction by "two shift operations to be performed in the generation of a floating point constant value based on two encoded shift value fields" of the instruction, as required by claim 1 (App. Br. 8-9). Rather, Ishii and Ford generate floating point constant values without "any shifting of immediate [i.e., instruction-encoded] values based on fields encoded within an instruction itself' (Reply Br. 3 ( emphasis added) ( citing Ford ,r,r 40-44, Figs. 3--4); App. Br. 9). 2 We also do not find the Examiner has provided sufficient evidence to support the finding that the skilled artisan would modify Ishii' s floating point value instruction to include two encoded shift value fields, based on Ford's teaching of an integer's rotation. As Appellants point out, Ford's "described aspects of integer constants, including the above enhancements which involve a further rotation, do not apply to floating point constant values" (App. Br. 7 (citing Ford ,r,r 11-12)). This is because Ford's "'rotation' has a specific meaning in the case of integer constants ( described as changing a location of the immediate value within a register to fill the remaining bits with predetermined sequences of ones or zeros)" and "is not applicable in the case of shifts made to a significand/exponent [of a floating point constant value]" because "shifting the significand or the claimed second [exponent] field, e.g., to normalize a floating point number would not involve simply filling the entire register with a predetermined sequence of zeros or ones" (App. Br. 6; see Ford ,r 11). The Examiner's Answer does 2 We count the pages of the Reply Brief ( which are not numbered) starting from the first page. 4 Appeal2018-000643 Application 13/369,693 not respond to these arguments by Appellants, and merely restates that a "basic idea [ of circular shifting] is applicable regardless of whether the particular value is an integer constant or an exponent or a significand of a floating point constant" (Ans. 17; see also Ans. 10-11, 22). The Examiner further asserts the claimed shifting is predictable because "a rotation of a particular bit sequence by a particular value would predictably result in a particular rotated bit sequence" (Ans. 21-22). We remain unpersuaded by the Examiner's circular reasoning, which does not address Appellants' arguments regarding the particular effects of shifting as claimed (App. Br. 9; Reply Br. 3). Appellants explain the claimed shifting is not a predictable variation of Ford's integer "rotation, i.e., changing location within a register, of an integer constant"; rather, the claimed shifting of the significand ( third) field "results in changing the precision" and shifting the exponent (second) field "results in changing the magnitude[] of the floating point constant to be generated" (App. Br. 9; Reply Br. 3 (emphases added)). See In re Chaganti, 554 F. App'x 917, 922 (Fed. Cir. 2014) ("It is not enough to say that ... to do so would 'have been obvious to one of ordinary skill.' Such circular reasoning is not sufficient-more is needed to sustain an obviousness rejection.") The Examiner has also not shown that the additional teachings of Trissel cure the above-noted deficiencies of Ishii and Ford. Thus, for the reasons set forth above, we do not sustain the Examiner's rejection of independent claim 1 and claims 2, 3, 5, 6, and 20 dependent therefrom. We also do not sustain the Examiner's rejection of 5 Appeal2018-000643 Application 13/369,693 independent claim 18, argued for substantially the same reasons as claim 1, and claim 21 dependent therefrom (App. Br. 9-10). 3 DECISION The Examiner's decision rejecting claims 1-3, 5, 6, 18, 20, and 21 is reversed. REVERSED 3 In the event of further prosecution, we suggest the Examiner evaluate claims 18 and 21 for compliance with 35 U.S.C. § 101, e.g., whether claims 18 and 21 recite no more than program code, i.e., software per se (e.g., an abstraction) that does not fall within any of the four classes of statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed. Cir. 1994). For example, claim 18 recites "an instruction" comprising "fields" and "code for shifting." We further suggest the Examiner evaluate claims 1 and 18 for compliance with 35 U.S.C. § 101, particularly to determine whether claims 1 and 18 recite no more than an abstract idea of a mathematical procedure for converting and expressing numbers similar to Benson's algorithm for converting binary coded decimal numbers to pure binary. See Gottschalk v. Benson, 409 U.S. 63---65, 67 (1972) ("a method for converting binary-coded decimal (BCD) numerals into pure binary numerals" is "a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another," which is "not patentable"). 6 Copy with citationCopy as parenthetical citation