Ex Parte Barlow et al

Board of Patent Appeals and Interferences

May 2, 2012

10413488 (B.P.A.I. May. 2, 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.
10/413,488 04/15/2003 Stephen Barlow 14528.00319 2906
16378 7590 05/03/2012
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
PETRANEK, JACOB ANDREW
ART UNIT PAPER NUMBER
2183
MAIL DATE DELIVERY MODE
05/03/2012 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 STEPHEN BARLOW, NEIL BAILEY, TIMOTHY
RAMSDALE, DAVID PLOWMAN, and ROBERT SWANN
____________________

Appeal 2010-001534
Application 10/413,488
Technology Center 2100
____________________

Before: LANCE LEONARD BARRY, JOHN A. JEFFERY, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001534
Application 10/413,488
2
STATEMENT OF CASE
The Patent Examiner rejected claims 1-12. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
INVENTION
Claim 1, which follows, is illustrative of the claimed subject matter.
1. A processor core comprising:
an execution unit for executing a plurality of instructions;
and
a register file comprising:
a first plurality of registers accessible to the
plurality of instructions; and
a dedicated register, wherein only one instruction
in the plurality of instructions is able to read from the
dedicated register and write to the dedicated register.

REFERENCES AND REJECTIONS
Suzuoki US 6,807,620 Oct. 19, 2004
Mann, Programming the 29K RISC Family” PTR Prentice-Hall Inc., pp. 27-
33 and 107-114, 1994.

Claim 1-12 stands rejected under 35 U.S.C §112 first paragraph as
failing to comply with the written description requirement.
Claims 1-6, 11, and 12 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Mann.
Claim 7-10 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Mann and Suzuoki.

Appeal 2010-001534
Application 10/413,488
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DISCUSSION
Based on the dependencies of the claims, we will decide the appeals
of claims 1-12 on the basis of claims 1 and 12. Therefore, the issues before
us follow.
Did the Examiner err in finding that the amendment to independent
claims 1 and 12, requiring that only one of a plurality of instructions is able
to read from and write to a dedicated register, lacks an original adequate
written description?
Did the Examiner err in finding that Mann teaches that only one of a
plurality of instructions is able to both read from and write to a dedicated
register, as required by independent claims 1 and 12?
We address the issues seriatim.

WRITTEN DESCRIPTION REJECTION
The Examiner finds that the Specification's "Paragraph 37, which the
applicant cites for support for the newly claimed limitation, states that the
PC [i.e., program counter] register is only accessible to 'move and branch
instructions.' Thus, paragraph 37 clearly shows that a plurality of
instructions are able to access the PC register." (Ans. 3.)
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.'" Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (quoting Vas-Cath, 935 F.2d 1555, 1563) (Fed. Cir. 1991). "In other
words, the test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
(citing Vas-Cath, 935 F.2d at 1563).
Appeal 2010-001534
Application 10/413,488
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Here, we agree with the Appellants that the first table in Paragraph 37
teaches that "[t]he branch instruction opcode, b, can write the content from
Ra into the program counter, pc . . . . [The move instruction], mov is the
only opcode that may enable a read from the pc register and a write to the pc
register . . . ." (App. Br. 6-7.)
Therefore, we conclude that the Examiner erred in finding that the
amendment to independent claims 1 and 12, requiring that only one of a
plurality of instructions is able to read from and write to a dedicated register,
lacks an original adequate written description.

OBVIOUSNESS REJECTIONS
The Examiner finds that Mann "uses a single instruction (i.e. a move
instruction) that has three different variants (i.e. MFSR, MTSR, and
MTSRIM) that move data differently according to the variants. The move
instruction with the three variants is capable of performing reads and writes
to the special register, which the PC is one of . . . ." (Ans. 15.)
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, we agree with the Appellants that "[i]n Mann (Section 3.1.5,
table 3-7), there are three data move instructions . . . . Move instruction . . .
MFSR, reads from a dedicated register (SPECIAL). Move
instructions . . . MTSR and MTSRIM, write to a dedicated register
(SPDEST). Three is not the same as 'only one.'" (Reply Br. 10.) More
specifically, Mann characterizes Table 3-7 as listing a plurality of "Data
Move Instructions," p. 108, not variants of a single instruction.
Appeal 2010-001534
Application 10/413,488
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Therefore, we conclude that the Examiner erred in finding that Mann
teaches that only one of a plurality of instructions is able to both read from
and write to a dedicated register, as required by independent claims 1 and
12.

DECISION
We reverse the rejections of claims 1 and 12 and those of claims 2-11,
which depend therefrom.

REVERSED

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