Ex Parte Agarwala et al

Patent Trial and Appeal Board

Nov 21, 2014

11717441 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MANISH AGARWALA and JOHN M. JOHNSEN

Appeal 2012-0081151
Application 11/717,441
Technology Center 2100
____________________

Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Texas Instruments Inc. App.
Br. 2.
Appeal 2012-008115
Application 11/717,441

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4–13, and 15. Claims 14 and 16 have been
objected to as being dependent upon a rejected base claim, but would
otherwise be allowable if rewritten in independent form to include the
limitations of the base claim and intervening claims. Claim 3 has been
canceled. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method for synchronizing trace data streams
(510, 520, 530, 540, 550, 560) obtained from a target apparatus (201–204) to
perform debugging operations thereof. Spec. 13:5–12. In particular, each of
the received trace data streams is forwarded to a respective one of a plurality
of buffers (511, 5521, 531, 541, 551, 561), which, in turn, feeds the data
streams to a trace data communication path (570) (write side) to
subsequently combine the buffered trace data streams into a single data
stream (read side) for export. Spec. 20:4–27. Alternatively, the trace data
path transmits the data streams from the write side to the read side without
combining them. Spec. 25:5–26.

Representative Claim
Independent claim 1 is representative. It reads as follows:
1. A method of communicating, from a write side of a
trace data communication path to a read side of the
trace data communication path, trace data extracted
Appeal 2012-008115
Application 11/717,441

3
from a target apparatus for debugging operation of the
target apparatus, said trace data including a timing
data stream, a program counter data stream, and a data
stream, comprising:
transmitting said trace data from the write side to the
read side without combination of said streams;
detecting at the write side whether a timing data
stream first-in-first-out buffer overflows and, if so,
setting, at the write side, a timing corruption flag, a
program counter corruption flag and a data corruption
flag, and
transmitting, from the write side to the read side, an
indication of the timing corruption flag, the program
counter corruption flag and the data corruption flag.

Prior Art Relied Upon
Fujii et al. US 5,898,695 Apr. 27,1999
Swoboda et al. US 2002/0055828 A1 May 9, 2002
Swaine et al. US 2003/0229823 A1 Dec. 11,2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, and 5–7 stand rejected under non-statutory obviousness-
type double patenting as being unpatentable over the combination of
Agarwala and Swaine.
Claims 1, 2, 4–13, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Fuji and Swoboda.

Appeal 2012-008115
Application 11/717,441

4
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 7–10 and the Reply Brief, page 2.2

Double Patenting Rejection
Dispositive Issue 1: Under non-statutory obviousness double
patenting, did the Examiner err in finding the combination of Agarwala and
Swaine teaches or suggests transmitting trace data streams from the write
side to the read side without combining the trace data streams, as recited in
independent claim 1?
Appellants argue the proffered combination of references does not
teach or suggest the disputed limitations emphasized above. In particular,
Appellants argue that although Swaine discloses an embodiment for
combining the trace data streams, and another alternative embodiment for
not combining the data streams, Swaine indicates that the former
embodiment for combining the trace streams is more advantageous and
preferred than the latter because the former conserves bandwidth.
Accordingly, Appellants submit that because this preferred embodiment

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 14, 2011), the Reply Brief (filed
April 20, 2012), and the Answer (mailed February 17, 2012) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-008115
Application 11/717,441

5
cannot be eliminated from Swaine, the proposed combination does not teach
the disputed limitations. App. Br. 7–8.
In response, the Examiner finds because Swaine discloses two
alternative embodiments, one of which teaches not combining received trace
data streams, Swaine teaches the disputed limitations. Ans. 14–15.
On this record, we find no error in the Examiner’s non-statutory
obviousness double patenting rejection. We note at the outset Appellants do
not dispute the Examiner’s finding that Swaine teaches an embodiment
wherein a plurality of trace data streams are not combined. However,
Appellants argue because such embodiment is not preferred, it cannot be
relied upon to teach the disputed limitations. We do not agree with
Appellants. Irrespective of whether the cited embodiment is preferred or
not, it suffices that it teaches or suggests the disputed limitations. In light of
the undisputed fact that Swaine discloses that the trace data streams can be
transmitted from the write side to the read side without being combined into
a single data stream, we are satisfied that Swaine would have complemented
Argawala to predictably result in the claimed invention as set forth in the
Answer. Accordingly, Appellants have not shown error in the Examiner’s
rejection of claim 1 under non-statutory obviousness double patenting.
Because Appellants have either not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2, and 5–7
fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2012-008115
Application 11/717,441

6
Obviousness Rejection
Dispositive Issue 2: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Fujii and Swoboda teaches or suggests
communicating trace data extracted from a target apparatus for debugging
operation thereof, as recited in claim 1?
Appellants argue the proffered combination does not teach or suggest
the disputed limitations emphasized above. App. Br. 8. In particular,
Appellants argue because Fujii is related to a decoder that filters TS packets
carrying audio/video data, whereas the claim invention is directed to
communicating trace data extracted from a target apparatus for debugging
operation thereof, Fujii is not pertinent art. App. Br. 9.
In response, the Examiner finds Fujii’s disclosure of “flags/bytes [are]
used to indicate transmission error/failure in the stream (trace data) and
allow (sic) user/system to recognize a presence of any error (for debugging
purpose)” teaches that the TS packets with specific flags provide trace
information that can be extracted and used for transmission error
correction/detecting. Ans. 17. Accordingly, the Examiner submits Fuji’s TS
packets are not only used for filtering transport streams, but also for
performing the functions of communicating transport trace data for
debugging operation. Id. at 18.
On the record before us, we do not find error in the Examiner’s
obviousness rejection of claim 1. We note at the outset Appellants do not
dispute the Examiner’s findings with respect to Fujii as set forth above. In
particular, we find reasonable the Examiner’s unrebutted explanation that
Appeal 2012-008115
Application 11/717,441

7
Fuji’s disclosure as explained above fairly pertains to the problem
transmitting trace data for the purpose of the debugging. Hence, we find the
cumulative weight and the totality of the evidence on this record reasonably
support the Examiner’s finding that the combined disclosures of Fujii and
Swoboda would have taught or suggested the disputed limitations.
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of representative claim 1. It
therefore follows that Appellants have not shown that the Examiner erred in
finding that the combination of Fujii and Swoboda renders claim 1
unpatentable.
Because Appellants have either not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2, 4–13, and
15 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-008115
Application 11/717,441

8
DECISION
We affirm the Examiner’s rejections of claims 1, 2, 4–13, and 15 as
set forth above. 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

lv