ARM LIMITED

Patent Trials and Appeals Board

Jul 2, 2020

15152781 - (D) (P.T.A.B. Jul. 2, 2020)

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.
15/152,781 05/12/2016 Ian Michael CAULFIELD JRL-550-1985 7525
73459 7590 07/02/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GIROUX, GEORGE
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN MICHAEL CAULFIELD

Appeal 2019-006974
Application 15/152,781
Technology Center 2100

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–13, and 17–21, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “ARM
Limited.” Appeal Br. 3.
Appeal 2019-006974
Application 15/152,781

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “executing micro-operations in
response to instructions fetched from a data store.” Spec., Abst. Claim 1,
reproduced below with emphasis, is illustrative of argued subject matter.
1. Processing circuitry comprising:
execute circuitry to execute micro-operations in response to
instructions fetched from a data store; and
control circuitry to determine, in dependence on availability of
at least one processing resource, how many micro-operations
are to be executed by the execute circuitry in response to a
given set of one or more instructions fetched from the data
store,
wherein said at least one processing resource comprises at least
one operand required for processing of said given set of one or
more instructions,
wherein the control circuitry comprises issue circuitry to issue
micro-operations for execution by the execute circuitry, and the
issue circuitry comprises an issue queue to queue
micro-operations awaiting issue, and
wherein the issue circuitry is configured to determine in
dependence on said availability of said at least one operand
required for processing of said given set of one or more
instructions, whether to split a single micro-operation queued
in the issue queue into multiple micro-operations to be issued
separately to the execute circuitry.
Appeal Br. 14 (Claims Appendix).
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Application 15/152,781

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Rejection
Claims 1, 2, 4–13, and 17–21 stand rejected under
35 U.S.C. § 102(a)(1) as anticipated by Airaud (US 2014/0215189 A1;
July 31, 2014). Final Act. 3–10.
OPINION
For the following reasons, we are persuaded of error in the
Examiner’s reliance on Airaud. We accordingly do not sustain the rejection
of claims 1, 2, 4–13, and 17–21.
Each independent claim recites the following argued limitation:
“determin[e] . . . whether to split a single micro-operation . . . into multiple
micro-operations.” Appeal Br. 14 (claim 1), 18 (claim 21), 6–7 (identifying
the argued limitation).
The Examiner finds Airaud’s invention anticipates the claimed
determination by splitting an instruction into micro-operations (herein
“μops” (plur.) or “μop” (sing.)) and then deciding whether to recombine
those μops into a single μop. Ans. 3–4. As part of this finding, the
Examiner concludes the broadest reasonable interpretation of the claimed
“determin[e] . . . whether to split” encompasses (i.e., reads on) determining
whether to maintain the above split (into μops) by deciding whether or not to
recombine the split (into a single μop). Id.
Appellant contends, inter alia, the claimed “determin[e] . . . whether
to split” does not encompass determining whether to maintain a split by
deciding whether or not to recombine the split. Reply Br. 5–6. In support,
Appellant contends the Examiner’s claim interpretation is “a linguistic
sleight-of-hand . . . us[ing] the word ‘split’ as an adjective, . . . [whereas]
claim 1 uses ‘split’ as a verb for the actual splitting of a micro-op.” Id. at 5.
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Appellant further contends the Examiner disregards the above grammatical
structure of the claimed “determin[e] . . . whether to split”—i.e., use of
“split” as a verb—by reading the limitation on Airaud’s determination of
whether to: retain a split-form of the instruction (i.e., to maintain the
existing μops); or generate an unsplit-form of the instruction (i.e.,
to recombine the μops). Id. at 6.
We are persuaded of error because, as Appellant argues, the
Examiner’s interpretation of the claimed “determin[e] . . . whether to split”
does not adhere to the limitation’s grammatical construction.2 Id. at 5–6;
see also Ans. 4. Before addressing the error, we note that grammar is one of
a patent applicant’s principal tools for “a fair chance to draft a precise
claim.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016)
(“This system—broad construction with a chance to amend—both protects
the public from overly broad claims and gives the applicant a fair chance to
draft a precise claim that will qualify for patent protection.”). It is, therefore,
no surprise the grammatical construction of claim limitations must be
heeded. See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (“A claim must
be read in accordance with the precepts of English grammar.”); Mformation
Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398
(Fed. Cir. 2014) (A claim’s listing of steps does not impose an order unless
“the claim language, as a matter of logic or grammar, requires . . . the order
written.”); HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270, 1274–75
(Fed. Cir. 2012) (“The district court did not examine adequately the claims
themselves. Phillips[ v. AWH Corp.], 415 F.3d [1303,] 1314 [(Fed. Cir.

2 The Examiner introduces the contested claim interpretation in the Answer
and therefore Appellant’s response in the Reply Brief is timely.
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2005)]. . . . Modifiers should be placed next to the words they modify.
William Strunk, Jr. & E.B. White, The Elements of Style 30
(4th ed. 2000).”); see also Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of the
claims themselves . . . to define the scope of the patented invention.”).
Because “split” is a verb in the claimed “determin[e] . . . whether to
split” a μop, the determination is a claimed choice between two actions: do
nothing to the μop; split the μop.3 The Examiner reads this claimed choice
on Airaud’s choice between two other actions: do nothing to a set of μops;
recombine the μops. Even assuming (arguendo) the above difference lacks a
patentable distinction, that is an unanswered question of obviousness—not
anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008) (“[D]ifferences between the prior art reference and a
claimed invention, however slight, invoke the question of obviousness, not
anticipation.”). The rejection accordingly could not rest on, for example,
showing (arguendo) the claimed choice between actions (i.e., do nothing or
split) and Airaud’s cited choice between actions (i.e., do nothing or
recombine) achieve a same result.

3 The disputed claim limitation recites, more particularly, “circuitry
. . . configured to” perform the determination. Such claim language can
prompt an issue of whether a limitation conveys only an intended use of the
invention. See, e.g., Koninklijke Philips N.V. v. Zoll Med. Corp.,
656 F. App’x 504, 519 (Fed. Cir. 2016) (reflecting that issues of intended
use can arise for circuitry “configured to” perform a function). No such
issue arises from the Examiner’s finding that Airaud’s invention actually
performs the at-issue determination. See, e.g., Ans. 3 (“Airaud teaches
. . . the decision of whether to split.”); Final Act. 4 (“[Airaud’s] control
circuitry . . . decides . . . whether multiple micro-operations . . . will be
issued.” (emphasis omitted)).
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The Examiner also finds that Airaud’s above splitting of an instruction
into μops discloses the claimed “determin[e] . . . whether to split.” Ans. 4–
5. In this regard, the Examiner states in toto:
Furthermore, [Airaud’s] first decision of whether a single
micro-op instruction will be split into multiple micro-ops is
made as the instruction is sent from the decoder to . . . the issue
queue. As the . . . issue control circuitry . . . coordinates
activities between the decoder and issue queue circuitry (see,
e.g., Airaud[] fig. 1 and para. 0048)[,] this also [discloses] . . .
the claimed [determination by ]issue circuitry.
Id.
The Examiner’s finding does not achieve a prima facie case that
Airaud discloses the claimed “determin[e] . . . whether to split” a μop. See
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (notice requirement for a
finding of anticipation). Though a prima facie case of anticipation can
sometimes be achieved by mapping specific claim features to specific
disclosures of a prior art reference (see, e.g., id. at 1363–34), the above
finding provides no such specific mapping. The finding may prompt its
reader to surmise that the Examiner’s alternative finding reads the claimed
“determin[e] . . . whether to split” on Airaud’s decision to “stall the
operation of the decoder” (Airaud ¶ 48) that splits an instruction into μops
(id. ¶ 16). Our decision cannot turn on such speculation. See In re
Biedermann, 733 F.3d 329, 336 (Fed. Cir. 2013) (An affirmance cannot raise
a “question . . . [of] whether the Board and the examiner properly relied on
the same . . . factual underpinnings.”).

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OVERALL CONCLUSION
We reverse the Examiner’s decision to reject claims 1, 2, 4–13,
and 17–21.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference Affirmed Reversed
1, 2, 4–13,
17–21 102(a)(1) Airaud
1, 2, 4–13,
17–21

REVERSED