Ex Parte Burdass

Board of Patent Appeals and Interferences

Jun 15, 2009

10798890 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW BURDASS
____________

Appeal 2009-002029
Application 10/798,890
Technology Center 2100
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Decided:1 June 16, 2009
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002029
Application 10/798,890

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 9-15 and 24-30. Claims 1-8 and
16-23 have been canceled. The Appellant appeals therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on May 20, 2009. We reverse.

A. INVENTION
The invention at issue on appeal relates to a system and method
prefetching exception vectors. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 9, which further illustrates the invention, follows.
9. Apparatus for processing data, said apparatus
comprising:

a cache memory operable to store program instructions to be
executed;

an instruction pipeline including an instruction prefetch unit;
and

an exception controller, responsive to an exception signal
signaling an exception, for triggering exception processing by forcing
program execution starting from an exception handling program
instruction stored at a predetermined memory location; wherein upon
receipt of said exception signal part way through execution of a
current program instruction, said exception controller triggering a
lookup of said exception handling program instruction within said
cache memory and, if said exception handling program instruction is
not present within said cache memory, triggering a cache linefill
operation to read said exception handing program instruction from a
main memory to said cache memory, and, upon completion of
execution of said current program instruction, if said exception is still
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current, then said instruction prefetch unit fetches said exception
handling program instruction from said cache memory.

C. REFERENCES
The Examiner relies on the following references as evidence:

Nguyen U.S. 5,481,685 Jan. 2, 1996
Glass U.S. 5,784,602 Jul. 21, 1998
Birk U.S. 6,978,350 B2 Dec. 20, 2005
(FILED AUG. 29, 2002)

D. REJECTIONS
The Examiner makes the following rejections.

Claims 9-12 and 24-27 stand rejected under 35 U.S.C. 102(a) and (e)
as being anticipated by Birk.

Claims 13 and 28 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Birk in view of Nguyen.

Claims 14, 15, 29 and 30 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Birk in view of Glass.

II. ISSUE
Has the Examiner set forth a sufficient initial showing of anticipation
and obviousness of the claimed invention? The issue regarding the
independent claims turns on whether Appellant has shown the Examiner
erred by failing to identify a teaching of the “if . . . then . . . ” portion of the
claimed invention.

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III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. Id. at 415-16 (citing Great Atlantic & Pacific Tea
Co., v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950) and
Graham v. John Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed
principles based on its precedent that "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416. The operative
question in this "functional approach" is thus "whether the improvement is
more than the predictable use of prior art elements according to their
established functions." Id. at 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
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Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Leapfrog, 485 F.3d at 1162 (citing KSR,
550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (C.C.P.A. 1981).

IV. ANALYSIS
35 U.S.C. § 102
With respect to independent claim 9, Appellant’s representative at the
oral hearing indicated that the claimed invention operates in a specific
manner with specific timing as specified in the claim language. Appellant’s
representative contends that while the instruction has not been completed
yet, the system determines whether the exception handling process is located
in the cache memory prior to a specific instruction being completed. If the
exception process is not located in the cache memory, then the system
performs a cache line fill. Subsequent to the completion of the instruction,
the exception processing procedure should be loaded into the cache memory.
If the exception is still current then the instruction prefetch unit fetches said
exception handling program instruction from the cache memory (which was
previously loaded by the cache line fill operation).
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At the oral hearing, Appellant’s representative argued that page 4,
lines 6-12 of the Specification identifies the benefits of the claimed
“speculative prefetch” as soon as the exception occurs without waiting for
the completion of the currently executing instruction.
Appellant argues in the Brief that the Examiner fails to identify where
Birk teaches "upon completion of execution of said current program
instruction . . . " (App. Br. 7-9). The Examiner indicates that column 2 of
Birk supports the rejection of the limitation "if said exception is still current,
then said instruction prefetch unit fetches said exception handling program
instruction from said cache memory." (Ans. 4). Subsequently at page 8 of
the Answer the Examiner maintains that:

Putting this limitation in its complete context, it is appropriate to
determine the following: upon completion of the aborted instruction
(meaning, when it was reissued and completed) will the exception still
be current? The answer will always be "no"; the exception handler has
already run its course.

Therefore, the "if" limitation of the claim is never met by Birk,
meaning that the following limitation ("said instruction prefetch unit
fetches said exception handling program instruction from said cache
memory") is never required by the disclosure of Birk at the time of the
aborted instruction's completion. (emphasis in original).
(Ans. 8).

Here, the Examiner admits that Birk does not teach the claim
limitation for the apparatus recited in claim 9, but the Examiner maintains
that the claim limitation is never required by the disclosure of Birk at the
time of the aborted instructions completion and therefore this limitation need
not be met for Birk to anticipate the claimed invention.
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We disagree with the Examiner's position and claim interpretation,
and we find that the recited functionality in the "if . . . then . . . " statement
must be taught by Birk and furthermore must be present in the claimed
apparatus since the machine claim must have all of the recited functionalities
whether they are used in every conceivable combination of operations or
not. The Examiner seems to discount this claim limitation since Birk
teaches to abort the instruction and subsequently reload the process so as to
never be current and concludes therefore never requiring the “then” portion
of the "if . . . then . . . " limitation.
Additionally, we find that since Birk teaches to abort the instruction,
Birk cannot teach the limitation of independent claim 24 "upon completion
of the execution of said current program instruction, if said exception is still
current, then said instruction prefetch unit fetches said instruction handling
program instruction from the cache memory." (App. Br. 4). Since Birk
teaches to abort the instruction, Birk cannot teach upon completion of the
execution of the current program instruction since it has been aborted and
must be reloaded and then would not be "said current program instruction."
Therefore, we cannot sustain the rejection of independent claims 9
and 24 and dependent claims 10-12 and 25-27.

35 U.S.C. § 103
With respect to the Examiner's reliance upon the teachings of Nguyen
and Glass, the Examiner has not identified how the teachings of Nguyen and
class remedy the above noted deficiency in Birk. Therefore, we cannot
sustain the rejection of the dependent claims 13-15 and 28-30 based upon
obviousness.
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V. CONCLUSION
For the aforementioned reasons, Appellant has shown that the
Examiner has not set forth a sufficient initial showing of anticipation and
obviousness of the claimed invention.

VI. ORDER
We reverse the anticipation rejection of claims 9-12 and 24-27, and
we reverse the obviousness rejection of claims 13-15 and 28-30.

REVERSED.
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