Ex Parte Pong

Patent Trial and Appeal Board

Feb 25, 2014

11529357 (P.T.A.B. Feb. 25, 2014)

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.
11/529,357 09/29/2006 Fong Pong 1875.9040001 8328
49579 7590 02/26/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BYRNE, HARRY W
ART UNIT PAPER NUMBER
2824
MAIL DATE DELIVERY MODE
02/26/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FONG PONG
____________

Appeal 2011-010751
Application 11/529,357
Technology Center 2800
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
JAMES C. HOUSEL, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13 and 21-23. We have jurisdiction
pursuant to 35 U.S.C. § 6. An oral hearing was conducted on February 11,
2014.

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Appellant’s claimed invention is directed to a local system on chip
(SOC) comprising a local on-chip memory and a local controller. In one
embodiment according to Appellant, the local controller is configured to
retrieve a message from a remote SOC on-chip memory and to store the
message in the local on-chip memory (mailbox) in response to receiving a
signal from the remote SOC (Spec. 0005). The local controller can be a
node controller and the local on-chip memory can be a static random access
memory (id.). For example, a local SOC can be interconnected via a
network with a group of SOC’s in a cluster system for communication
between the SOC units via messaging, such as “push” model or “pull” model
messaging (Spec. 0092-0094). Drawing Figure 4D is disclosed as
illustrating a flow chart showing example steps performed by a local SOC
during a pull model messaging process (Spec. 00106, 00180; Fig. 4D).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A local System on Chip (SOC), comprising:
a local controller; and
local on-chip memory;
wherein in response to receiving a signal from a remote SOC, the
local controller is configured to retrieve a message from a remote on-
chip memory of the remote SOC and store the message in the local
on-chip memory.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Hartsell 2003/0236745 A1 Dec. 25, 2003

The Examiner maintains the following ground of rejection:
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Claims 1-13 and 21-23 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hartsell.
On this appeal record, we affirm the stated rejection for substantially
the reasons and findings of fact set forth by the Examiner in the Answer.
We offer the following for emphasis.
Appellant argues the rejected claims 1, 2, 4, 5, 7-13, and 21-23
together as a group. Separate arguments are presented with respect to
dependent claim 3 and 6. We select claim 1 as the representative claim on
which we shall decide this appeal as to all of the rejected claims, with the
exception of claims 3 and 6. The latter claims are separately considered to
the extent separate substantive arguments traversing the Examiner’s
anticipation rejection of these dependent claims are presented.
Concerning representative claim 1, the Examiner has determined that
(Ans. 3):
Hartsell discloses a local System on Chip (SOC) (Fig. 1A and
1G and paragraph [0050]), including: a local controller
(paragraph [0250]); and local on-chip memory (paragraph
[0134]); where in response to receiving a signal from a remote
SOC (paragraph [0047]), the local controller is configured to
retrieve a message from a remote on-chip memory of the
remote SOC and store the message in the local on-chip memory
(paragraph [0081]).

In this regard, the Examiner has determined that Hartsell discloses a
system including, inter alia, a local System on Chip (SOC) including a local
controller and a local on-chip memory, wherein the local controller is a node
controller and the local on-chip memory is a static random access memory
(SRAM) (Ans. 4).
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Appellant does not specifically dispute the latter determinations of the
Examiner (App. Br. 10-15; Reply Br. 1-6). Rather, Appellant focuses on the
configured limitation presented in the wherein clause of claim 1and argues
that a local node (such as storage management engine 1040) of Hartsell
receives a message from a remote node (such as application processing
engine 1070) and sends data back to the remote node whereas in
representative claim 1, the local controller (node) receives a signal from the
remote SOC (node) and the local controller (node) retrieves a message from
the remote SOC rather than sending data or a message to the remote SOC, as
in Hartsell (App. Br. 11-12).
In essence, Appellant seems to acknowledge that the structure of
Hartsell relied upon by the Examiner for meeting the recited local controller
of a local SOC, which SOC has been found by the Examiner to further
include local on-chip memory, possesses message/data sending and
receiving functionalities. Appellant focuses the argument on the recited
controller configuration functionality and contests the Examiner’s
anticipation rejection over Hartsell on the basis that Hartsell does not
explicitly describe that the relied upon local controller structure thereof
performs the specific messaging protocol/functionality expressed in the
claim 1 recitation “in response to receiving a signal from a remote SOC, the
local controller is configured to retrieve a message from a remote on-chip
memory of the remote SOC and store the message in the local on-chip
memory” (App. Br. 5-12; Reply Br.1-6).1
However, the Examiner has not premised the rejection on an explicit
description of the claimed messaging protocol in Hartsell; rather, the

1 Arguments not presented in the Appeal Brief are waived.
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Examiner has determined that the relied upon controller structure of Hartsell,
in conjunction with the local memory, is capable of performing the recited
messaging and storing functions specified in representative claim 1(Ans. 6).
Although, “there is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims” In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997), “choosing to define an
element functionally, i.e., by what it does, [or can do,] carries with it a risk.”
Id. As stated by the court in Schreiber, 128 F.3d at 1478, quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

In this regard, the Examiner’s capability finding appears to be
reinforced by the claimed local controller configuration recitation, which
configuration is recited as taking place in response to receiving a signal
(data, instructions, etc.) (claim 1). Thus, the Examiner appears to have
reasonably found that the relied upon controller structure of Hartsell, which
structure Appellant seemingly acknowledges as being capable of receiving a
message (signal), would be reasonably expected to possess the further
capability of following any instruction/programming received via such a
received message/signal including an instruction to retrieve a remotely
stored message and locally store the message.
Appellant has not furnished any credible evidence or scientifically
based argument that serves to shift the burden of production back to the
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Examiner with regard to the argued functionality as representing a structural
distinction over the structure described by Hartsell in either the Appeal Brief
or the Reply Brief.
For the above reasons and based on this appeal record, we sustain the
Examiner’s anticipation rejection of claims 1, 2, 4, 5, 7-13, and 21-23 over
Hartsell.
Concerning separately argued claim 3, we perceive no merit in the
separate arguments pertaining to the specific controller
capability/functionality as further set forth in dependent claims 3 for reasons
analogous to those advanced above with respect to claim 1.
As regards, dependent claim 6, Appellant does not dispute the
Examiner’s determination that Hartsell discloses a RAID system as claimed
(App. Br. 16-17). Rather, Appellant argues that Hartsell does not describe
the message (App. Br. 16-17; Reply Br. 7). However, Appellant has not
articulated how the message content or a possible perception of message
content is relevant to distinguishing the claimed structure over that disclosed
by Hartsell.
On this appeal record, it follows that we shall sustain the Examiner’s
anticipation rejection as to all of the rejected claims.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims 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).

AFFIRMED

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