Ex Parte Dennis et al

Patent Trial and Appeal Board

Nov 6, 2014

12410760 (P.T.A.B. Nov. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/410,760 03/25/2009 Jack B. DENNIS 2222.4210002 3869
26111 7590 11/06/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
DANG, KHANH
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
11/06/2014 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 JACK B. DENNIS and SAM B. SANDBOTE
____________

Appeal 2012-004454
Application 12/410,760
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ claimed invention “relates to computer architecture. In
particular, the invention relates to multi-thread computers.” (Spec. 1.)
Independent claim 1, reproduced below, is representative of the subject
matter on appeal:

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1. An apparatus comprising:

an instruction resource configured to perform an
operation specified in a non-message instruction dispatched
from a first of a plurality of threads;

a peripheral message unit configured to send a command
message specifying a peripheral operation to a peripheral unit
over a peripheral bus responsive to a message instruction
dispatched from a second of the plurality of threads; and

an instruction processing unit configured to dispatch the
non-message instruction to the instruction resource and the
message instruction to the peripheral message unit during a
clock cycle.

REJECTIONS
A. The Examiner rejected claims 1–20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
B. The Examiner rejected claims 1–20 under 35 U.S.C. § 112, second
paragraph, as being indefinite.

C. The Examiner rejected claims 1–20 under 35 U.S.C. § 102(e) as
anticipated by Bernstein (U.S. Patent 6,668,317 B1; Dec. 23, 2003).

D. The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Motomura (U.S. Patent 5,815,727; Sept. 29, 1998) and Bernstein.

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Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of the §102
rejection C of claims 1–20 on the basis of representative claims 1, 13, and
15. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). 1
ANALYSIS
Rejection under § 112, first paragraph, written description
We reverse the Examiner’s rejection A of claims 1–20 under §112,
first paragraph (written description), for the same reasons argued by
Appellants. (App. Br. 11–15.) As pointed out by Appellants (App. Br. 12),
the Specification (at page 15 and Figure 7) literally describes the “non-
message instruction” claim limitation which is beyond what is required to
show possession of the claimed subject matter at the time of the invention.2
We are in accord with Appellants’ remaining arguments. (App. Br. 11–15.)

Rejection under § 112, second first paragraph
We reverse the Examiner’s rejection B of claims 1–20 under §112,
second paragraph, for the same reasons argued by Appellants. (App. Br. 16–
21.) As pointed out by Appellants, “a ‘non-message instruction’ is [broadly

1 Appellants filed a Notice of Appeal on June 10, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.

2 The invention claimed does not have to be described in ipsis verbis in order
to satisfy the written description requirement. Union Oil Co. of California v.
Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000).

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but reasonably] an instruction other than a ‘message instruction.’ (App. Br.
16.) We conclude the scope of the remaining claim terms the Examiner
concludes are indefinite would have been readily understood by an artisan
under their plain language meanings, as expressly claimed. We are in
accord with Appellants’ remaining arguments. (App. Br. 16–21.)

Rejection C under § 102
Regarding the rejection under §102 of claims 1–20, we have
considered all of Appellants’ arguments and any evidence presented. We
disagree with Appellants’ arguments with respect to representative claims 1,
13, and 15 and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Answer in response to Appellants’
arguments. (Ans. 38–47.) We highlight and address specific findings and
arguments regarding the representative claims for emphasis in our analysis
below.
As an initial matter of claim construction, our reviewing court guides
that the patentability of an apparatus claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see
also Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5
(Fed. Cir. Jan. 16, 2014) (Rader, J., concurring) which guides:
(“[A] system claim generally covers what the system is, not
what the system does. Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v.
Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
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matter whether he had conceived the idea of the use or not.’).
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).3
This reasoning is applicable to each of Appellants’ apparatus claims 1,
13, and 15 on appeal. Therefore, a question arises as to how much
patentable weight, if any, should be given to the contested functional
limitations recited in the apparatus claims. However, to the extent our
reviewing court may give such contested functional limitations patentable
weight, we consider the contested aspects of the Examiner’s rejection below.

Independent Claims 1, 13, and 15
Appellants contend “Bernstein fails to disclose ‘an instruction
processing unit configured to dispatch the non-message instruction to the
instruction resource and the message instruction to the peripheral message
unit during a clock cycle,’” as recited in claim 1. (App. Br. 23, underline
added, bold in original.) Appellants further contend: (1) “Nothing in the
concept of multithreading, as would be understood by one of ordinary skill
in the relevant art, is on its face understood to mean the performance of
multiple instances of an operation (e.g., dispatch) in a clock cycle” (App. Br.
24), and “Bernstein fails to provide any mechanisms for one clock cycle
dispatch of instructions to an instruction resource and a peripheral message
unit.” (Id., emphasis added.)

3 Superior Industries v. Masaba is a recent non-precedential opinion of the
Court of Appeals for the Federal Circuit. However, we consider the
concurring opinion by former Chief Judge Rader as guiding because it cites
precedential authority in support.
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Issue: Under §102, did the Examiner err in finding Bernstein
discloses: “an instruction processing unit configured to dispatch the non-
message instruction to the instruction resource and the message instruction
to the peripheral message unit during a clock cycle,” within the meaning of
independent claim 1? (Emphasis added; see also commensurate language
recited in independent claims 13 and 15.)
The Court of Appeals for the Federal Circuit has repeatedly
emphasized: “an indefinite article ‘a’ or ‘an’ in patent parlance carries the
meaning of ‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000) (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
973, 977 (Fed. Cir. 1999).)
The preambles of representative claims 1, 13, and 15 each recite: “An
apparatus comprising: . . . .” Given the aforementioned CAFC guidance,
we are not persuaded the Examiner’s interpretation is overly broad or
unreasonable, because the contested limitation “during a clock cycle”
broadly but reasonable covers one or more clock cycles. (Ans. 39.) During
prosecution before the Examiner, Appellants could have amended claim 1 to
recite:
an instruction processing unit configured to dispatch the non-
message instruction to the instruction resource and the message
instruction to the peripheral message unit during a single clock
cycle.

Our reviewing court guides: “[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. . . . [C]laims
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may embrace ‘different subject matter than is illustrated in the specific
embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (citations omitted). Because “applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).
This reasoning is applicable here. To the extent Appellants advance
further arguments (i.e., sum of the contents . . . of the program counter and
base register) regarding independent claims 13 and 15 (App. Br. 25–26), we
agree with and adopt the Examiner’s responsive arguments (Ans. 45–47).
We find Bernstein’s CPU (processor core 20) inherently has the capability of
index or offset addressing from a base address, where the index is added as
an offset to a base address (“sum of contents”) to address a memory or
register location. See Ans. 45. Therefore, on this record, we are not
persuaded the Examiner erred in finding Bernstein anticipates the invention
as claimed. Accordingly, we sustain § 102 rejection C of representative
independent claims 1, 13, and 15, and rejection C of remaining claims 2–12,
14, and 16–20 which fall therewith.
Rejection D of claims 1–20 under §103
Because “anticipation is the epitome of obviousness,” Jones v. Hardy,
727 F.2d 1524, 1529 (Fed. Cir. 1984), we sustain the Examiner’s §103
rejection D of claims 1–20 which also relies on the Bernstein reference
discussed above in the context of anticipation.

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REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 10–14) not in response to a shift in the Examiner's position in the
Answer, "[a]ny bases for asserting error, whether factual or legal, that are
not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion
Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.").

DECISION
We reverse the Examiner’s decision rejecting claims 1–20 under
§112, first paragraph (written description).
We reverse the Examiner’s decision rejecting claims 1–20 under
§112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1–20 under §102.
We affirm the Examiner’s decision rejecting claims 1–20 under §103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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