Ex Parte Filippo et al

Board of Patent Appeals and Interferences

Apr 13, 2010

10817693 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL A. FILIPPO, JAMES K. PICKETT, and
ROGER D. ISAAC
____________________

Appeal 2009-004068
Application 10/817,6931
Technology Center 2100
____________________

Decided: April 13, 2010
____________________

Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and JAMES R.
HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 2, 2004. The real party in interest is Advanced
Micro Devices, Inc. (App. Br. 2.)
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STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 1, 3-9, and
11-23 under authority of 35 U.S.C. § 134(a). Claims 2 and 10 have been
cancelled. Claims 5, 13, and 20 have been indicated as containing allowable
subject matter. (Ans. 2.) The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellants’ Invention
Appellants invented a method and prefetch unit (cache prefetch
mechanism) (Spec. ¶ [0001])2 for prefetching data to a cache to improve
memory latency. (Spec. ¶ [0005].) The unit includes a stream storage
coupled to a prefetch control. The stream storage includes multiple
locations configured to store a plurality of data entries each corresponding to
a respective range of prefetch addresses. The prefetch control may be
configured to prefetch an address in response to receiving a cache access
request that includes an address that is within the respective range of
prefetch addresses of any of the data entries. (Spec. ¶ [0006].)

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A prefetch unit comprising:

2 We refer to Appellants’ Specification (“Spec.”); Amended Appeal Brief
(“Amend. App. Br.”) filed August 9, 2007; and Appeal Brief (“App. Br.”)
filed May 31, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed January 17, 2008.
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a stream storage including a plurality of locations
configured to store a plurality of entries, wherein each entry
includes a field corresponding to a respective range of prefetch
addresses; and
a prefetch control coupled to said stream storage and
configured to prefetch an
address in response to receiving a cache access
request including an
address that is within said respective range of
prefetch addresses of any of said plurality of entries;
wherein said respective range of prefetch addresses
corresponds to a range of addresses prefetched during a last
prefetch cycle.

References
The Examiner relies on the following references as evidence of
unpatentability:
Sander US 6,571,318 B1 May 27, 2003

Cooksey US 2003/0105938 A1 Jun. 5, 2003

Rejections on Appeal
The Examiner rejects claims 1, 9, and 17 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 1, 9, and 17 under 35 U.S.C. § 102(e) as
being anticipated by Sander.
The Examiner rejects claims 3, 4, 6-8, 11, 12, 14-16, 18, 19, and 21-
23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Sander and Cooksey.

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ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows.
1. Does the Examiner err in concluding that Appellants’ limitation
reciting “said respective range of prefetch addresses corresponds to a range
of addresses prefetched during a last prefetch cycle” does not comply with
the written description requirement under 35 U.S.C. § 112, first paragraph?
2. Does the Examiner err in finding the Sander reference
discloses: (1) “wherein each entry includes a field corresponding to a
respective range of prefetch addresses;” (2) “a prefetch control coupled to
said stream storage and configured to prefetch an address in response to
receiving a cache access request including an address that is within said
respective range of prefetch addresses of any of said plurality of entries;”
and (3) “wherein said respective range of prefetch addresses corresponds to
a range of addresses prefetched during a last prefetch cycle” as recited in
Appellants’ claim 1?
3. Does the Examiner err in presenting a proper obviousness
rejection for the disputed claims, in that: (1) the Sander reference is not a
proper reference under 35 U.S.C. § 103(c); (2) the Cooksey reference
teaches away from Appellants’ invention; and (3) the Cooksey reference
alone does not teach or suggest the limitations of disputed claims 3, 4, 6-8,
11, 12, 14-16, 18, 19, and 21-23?

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FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification describes a range of addresses
prefetched during a last prefetch cycle, as follows:
Prefetch control 215 may initiate a preliminary prefetch (block
312). Prefetch control 215 may prefetch the number of bytes
indicated by a default depth of defPFDepth beginning at Train
address + a default PFDistance. Prefetch control 215 may then
calculate a Propagation Region value to cover these prefetched
bytes (e.g., from Train address to Train address +
defPFDistance + defPFDepth) Prefetch control 215 may also
set the Prev Field of the entry to the address of the first byte
fetched (e.g., TrainAddr) (block 313). . . .
. . .
. . . [P]refetch control 215 receives an L1 access request
including an address (block 320). Prefetch control 215
compares the L1 access address to an address range of a
PrevRegion of each of the trained entries (i.e., train bit set)
within stream table 210 (block 321). If there is no matching
entry, the L1 access is ignored and no prefetch is performed
(block 332).
. . .
. . . Prefetch control 215 may also calculate the
PropagationRegion value to be the addresses just prefetched
(e.g., PropRegAddr + PFDepth + PFDistance) (block 326).
(Spec. ¶¶ [0046], [0048], [0049].)

The Sander and Cooksey References
2. We adopt the Examiner’s findings regarding the Sander
reference (Ans. 5-6 and 10-12), as well as the Sander and Cooksey
references (Ans. 6-8 and 13) as our own.

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PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought – the so-called “prima
facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is
on the USPTO “to produce the factual basis for its rejection of an application
under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)).
The Board of Patent Appeals and Interferences’ (Board’s) role on
appeal is to, “review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b) (2008). An appellant has 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) (“On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998), overruled in part on other grounds, KSR, 550
U.S. at 422).
The Board panel then reviews the rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
produced thereon. See Oetiker, 977 F.2d at 1445 (“In reviewing the
examiner’s decision on appeal, the Board must necessarily weigh all of the
evidence and argument.”) (emphasis added); see also 37 C.F.R.
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§ 41.37(c)(1)(vii) (appeal brief must include “[t]he contentions of appellant
with respect to each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on”). Specifically, the
Board reviews the particular finding(s) contested by an appellant anew in
light of all the evidence and argument on that issue. Ex parte Frye, No.
2009-006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010) (precedential).

Written Description
The written description requirement requires us to determine “whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language.” In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983) (citations omitted). Thus, “the description must ‘clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” Ariad Pharmaceuticals v. Eli Lilly and Co., ---
F.3d ----, 2010 WL 1007369, at *12 (Fed. Cir. 2010) (quoting Vas-Cath Inc.
v. Mahurkar, 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. Ariad, --- F.3d
----, 2010 WL 1007369 at *12 (citing Vas-Cath, 935 F.2d at 1563.)

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Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated 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 415-16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
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Consistent with KSR, 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, 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 proposed modification was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit recently found that adapting existing
electronic processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
2008) (quoting KSR, 550 U.S. at 421).

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ANALYSIS
Issue 1: Rejection of Claims 1, 9, and 17 under 35 U.S.C. § 112,
First Paragraph
The Examiner rejects Appellants’ claims 1, 9, and 17 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement because the claims contain subject matter – “said respective
range of prefetch addresses corresponds to a range of addresses prefetched
during a last prefetch cycle” (App. Br. 12, claim 1) – “which was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor(s), at the time the application was
filed, has possession of the claimed invention.” (Ans. 3, 4.) Appellants
contend that “the language recited in claims 1, 9, and 17 is supported in the
specification” (as originally filed) (App. Br. 7), and provide a number of
examples from their Specification. Accordingly, we decide the question of
whether the claimed subject matter complies with the written description
requirement.
After reviewing the record on appeal, we find Appellants’ arguments
to be persuasive. Appellants explain that support for the disputed limitation
– “said respective range of prefetch addresses corresponds to a range of
addresses prefetched during a last prefetch cycle” – is disclosed in
paragraphs [0029], [0030], [0046], [0048], and [0049] of Appellants’
Specification. (App. Br. 4-6). Although Appellants’ Specification does not
explicitly recite or define “respective range of prefetch addresses” or “a
range of addresses prefetched during a last prefetch cycle,” the cited portions
of the Specification describe a range of prefetched addresses previously
prefetched. (FF 1.) Accordingly, we find Appellants provide support for the
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limitation. “[T]he 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.
Ariad, --- F.3d ----, 2010 WL 1007369 at *12 (citing Vas-Cath, 935 F.2d at
1563.) We agree with the Examiner that Appellants’ Specification is not a
model of clarity in this regard; however, we find that it would reasonably
convey possession of the claimed limitation to one skilled in the art as of the
filing date.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s written description rejection of claims 1, 9, and 17.
Accordingly, we will not sustain the Examiner’s written description
rejection of these claims.

Issue 2: Rejection of Claims 1, 9, and 17 under
35 U.S.C. § 102(e)
Appellants argue the patentability of claims 1, 9, and 17 as a group.
(App. Br. 9.) We select independent claim 1 as the representative claim.
We therefore treat claims 9 and 17 as standing or falling with representative
claim 1. We address only those arguments that Appellants present in the
Brief. Arguments that Appellants could have made but chose not to make in
the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2007).
Appellants contend that the Sander reference does not disclose: (1)
“wherein each entry includes a field corresponding to a respective range of
prefetch addresses;” (2) “a prefetch control coupled to said stream storage
and configured to prefetch an address in response to receiving a cache
access request including an address that is within said respective range
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of prefetch addresses of any of said plurality of entries;” and (3) “wherein
said respective range of prefetch addresses corresponds to a range of
addresses prefetched during a last prefetch cycle,” as recited in
Appellants’ claim 1. (Emphasis added.) (App. Br. 9.) The Examiner finds
that Sander discloses each feature of Appellants’ claim 1 (and claims 9 and
17) and maintains that the claim is properly rejected. (Ans. 5-6, 10-12; FF
2.) Specifically, the Examiner finds that Sander discloses “a prefetch unit
comprising: a stream storage including a plurality of locations . . . (Fig 2:#44
stride detect table, column 10 lines 27-35, Fig 3: address [35:6] #66, #68
represents address range being prefetched); and a prefetch control (Fig 1:
#42) coupled to said stream storage.” (Ans. 5.) Appellants’ do not dispute
the Examiner’s findings with respect to Sander disclosing the prefetch unit,
stream storage/stride detect table, or the prefetch control. Rather, Appellants
focus on the limitations described supra, and discussed in detail infra.
Accordingly, we decide the question of whether the Examiner erred in
finding the Sander reference discloses each of the features of Appellants’
claim 1.
After reviewing the record on appeal, we agree with the Examiner’s
findings and find the Sander reference discloses each of the claimed features
of Appellants’ claim 1. We begin our analysis by construing Appellants’
claim 1. We determine the scope of the claims in patent applications not
solely based on the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the [S]pecification” and “in light of
the [S]pecification 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)
(citations omitted).
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We note at the outset, as a general proposition, merely reciting that
data corresponds to a particular type of data – e.g., a data entry that includes
a field corresponding to a respective range of prefetch addresses – as
opposed to some other unique identifier, essentially constitutes non-
functional descriptive material as it does not further limit the claimed
invention either functionally or structurally. Such non-functional descriptive
material does not patentably distinguish claims over the prior art that
otherwise renders the claims unpatentable. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004).3
We also note that a statement of intended use in an apparatus claim
cannot be used to distinguish the claim over the prior art apparatus. See In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Sinex, 309 F.2d
488, 492 (CCPA 1962). It is well established that the manner or method in
which a “machine is to be utilized is not germane to the issue of patentability
of the machine itself.” In re Casey, 370 F.2d 576, 580 (CCPA 1967). See
e.g., Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates.”); Catalina Marketing
International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809-810 (Fed.
Cir. 2002). A claimed apparatus must be described by its structure, and not

3 See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008)
(precedential) (discussing cases pertaining to non-functional descriptive
material); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005), aff’d by In re
Mathias, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36, unpublished); Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative), aff’d by In re
Curry, No. 2006-1003 (Fed. Cir. 2006) (Rule 36, unpublished) (both cases
treating data as non-functional descriptive material).
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its intended use. The mere recitation of an intended use in a claim will not
be given any patentable weight. In re Dense, 156 F.2d 76, 77 (CCPA 1946).
We have carefully reviewed claim 1 and interpreted its scope in view
of current legal guidance. See In re Ngai, 367 F.3d at 1338; Boehringer, 320
F.3d at 1345. With regard to the limitations actually recited in
representative claim 1, we find the labeling of certain features, as discussed
supra, is a non-functional distinction – specifically, “wherein each entry
includes a field corresponding to a respective range of prefetch addresses” –
as the “names” or “labels” for the data entered into the storage (the entry,
i.e., data entry) do not functionally distinguish the storage (stream storage,
i.e., memory) itself from prior art storage or memory. In other words, the
labels for the data do not change the functionality of or provide an additional
function to the storage of claim 1. Similarly, we find the recitations of “a
prefetch control” (coupled to said stream storage) “configured to prefetch an
address in response to receiving a cache access request including an address
that is within said respective range of prefetch addresses of any of said
plurality of entries,” and “wherein said respective range of prefetch
addresses corresponds to a range of addresses prefetched during a last
prefetch cycle,” to be merely statements of intended use.
Thus, we broadly but reasonably construe Appellants’ claim 1 and
find that it only recites as its structural limitations “a stream storage
including a plurality of locations . . . and a prefetch control coupled to said
stream storage.” As we discussed supra, the Examiner finds that Sander
discloses a prefetch unit including a stream storage, as well as a prefetch
control coupled to the stream storage (Ans. 5), and Appellants do not dispute
these findings. We find unpersuasive Appellants’ attempts to distinguish
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their claim 1 over the Sander reference based on the content of the data
stored in the storage, and the intended use (functions) of the prefetch control.
Moreover, the Examiner provides detailed findings and conclusions
with respect to the Sander reference (Ans. 5-6, 10-12.) Appellants did not
file a Reply Brief, nor did Appellants provide any persuasive evidence
supporting the assertions of alleged error in the Examiner’s position.
Accordingly, Appellants have not persuaded us to find error in the
Examiner’s anticipation rejection of claims 1, 9, and 17.

Issue 3: Rejection of Claims 3, 4, 6-8, 11, 12, 14-16, 18, 19, and 21-23
under 35 U.S.C. § 103(a)
Appellants argue the patentability of claims 3, 4, 6-8, 11, 12, 14-16,
18, 19, and 21-23 as a group. (App. Br. 10.) We select dependent claim 3 as
the representative claim. We therefore treat claims 4, 6-8, 11, 12, 14-16, 18,
19, and 21-23 as standing or falling with representative claim 3.
Appellants contend that: (1) the Sander reference is not a proper
reference under 35 U.S.C. § 103(c); (2) the Cooksey reference teaches away
from Appellants’ invention; and (3) the Cooksey reference alone does not
teach or suggest the limitations of disputed claims 3, 4, 6-8, 11, 12, 14-16,
18, 19, and 21-23. (App. Br. 9-10.) The Examiner finds that the Sander and
Cooksey references teach or suggest each feature of Appellants’ claims and
maintains that the claims are properly rejected. (Ans. 6-8 and 13; FF 2.)
Specifically, the Examiner finds that “Sander does not describe [claim 3’s]
aspect of the next address field. However, Cooksey’s paragraph 33 discloses
a prefetching scheme with data structure in which prefetching are chained
(i.e having pointer to the next address).” (Ans. 6.) Appellants do not
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dispute the Examiner’s finding. The Examiner also finds that Appellants did
not submit any evidence supporting their contention that the Sander
reference is commonly owned and should be disqualified as prior art under
§ 103(c). (Ans. 13.) The Examiner further found that Cooksey does not
teach away from Appellants’ invention. (Ans. 13.) Accordingly, we decide
the question of whether the Examiner presents a proper case of obviousness
for the disputed claims.
After reviewing the record on appeal, we agree with the Examiner’s
findings and will affirm the obviousness rejection of the disputed claims for
the reasons that follow.
The Sander Reference:
Appellants assert that the Sander reference should be disqualified as
prior art due to common ownership. We disagree. Appellants did not timely
file evidence of common ownership. Instead, Appellants merely state that
“Appellant just realized Sander is only available as prior art under 35 US.C.
§102(e) [sic]” and “Sander is disqualified as prior art under 35 U.S.C.
§ 103(c) since the instant Application and Sander were. . . [commonly]
owned.” (App. Br. 9, 10.) (emphasis added). While Appellants’ statement
may provide adequate evidence of common ownership (see MPEP
§ 706.02(l)(2)(II)) if presented during prosecution, the Examiner has the
discretion to enter evidence on the record after a final rejection, and such a
decision is petitionable, but not appealable.4 Here, the Appellants did not

4 Decisions within the Examiner’s discretion, such as whether or not
to enter a declaration after final rejection, are reviewed only by way of
petition, not appeal. “Review of an examiner’s refusal to enter an affidavit
as untimely is by petition and not by appeal to the Board of Patent Appeals
and Interferences.” MPEP § 715.09 (citing In re Deters, 515 F.2d 1152
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seasonably provide evidence for the Examiner’s consideration during
prosecution. The first mention of common ownership was in Appellants’
Brief. Appellants’ representative’s statement was not timely submitted, and
the Examiner has declined to consider it.
The Board does not sua sponte consider previously unsubmitted
evidence not entered in the record by the Examiner. See 37 C.F.R.
§ 41.37(c)(1)(xi)(2004) (“Reference to unentered evidence is not permitted
in the brief.”) See, e.g., 37 C.F.R. 41.37(c)(1)(ix) (Appellants’ Brief
requires an evidence appendix containing copies of evidence “relied upon by
appellant in the appeal, along with a statement setting forth where in the
record that evidence was entered in the record by the examiner.” See
37 C.F.R. § 41.33(d) for submitting new evidence after notice of appeal and
prior to appeal brief. Here, Appellants failed to provide timely evidence of
common ownership during prosecution of their application, and therefore
failed to submit that evidence prior to the filing of their Brief. Nor have
Appellants provided a showing of good and sufficient reasons why the
evidence is necessary and was not earlier presented. See 37 C.F.R.
§ 41.33(d). Thus, we find that Appellants have not disqualified the Sander
reference as prior art under § 103(c).

(CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941)). We must
carefully observe the “line of demarcation between appealable matters for
the Board of Patent Appeals and Interferences (Board) and petitionable
matters for the Director of the U.S. Patent and Trademark Office (Director)”
MPEP § 1201. Cf., In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002)
(Examiner’s refusal to enter amendment after final may be the subject of a
petition, but may not be reviewed by the Board); 37 C.F.R. § 1.127 (“From
the refusal of the primary examiner to admit an amendment, in whole or in
part, a petition will lie to the Director under § 1.181.”)

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Teaching Away:
Appellants next assert that the Cooksey reference teaches away from
Appellants’ invention. We note that Appellants’ claim 3 is directed to
additional limitations of the storage entries. As we previously discussed
supra, limitations to the entries are non-functional descriptive material that
does not distinguish the invention.
Notwithstanding this issue, we will address Appellants’ alleged
teaching away by Cooksey. Whether a reference teaches away from a
claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). A reference may be said to teach away from the invention
if the reference criticizes, discredits, or otherwise discourages modifying a
reference to arrive at the claimed invention. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004); In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[W]hen the prior
art teaches away from combining certain known elements, discovery of a
successful means of combining them is more likely to be nonobvious.”
KSR, 550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 51-52
(1966)). We will not, however “read into a reference a teaching away from
a process where no such language exists.” DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006).
The Examiner finds that Cooksey does not teach away from
Appellants’ invention. (Ans. 13.) Additionally, we find no explicit criticism
in Cooksey of Appellants’ storage entry configuration, or utilizing a “next
address,” a “prefetch depth,” or a “prefetch distance.” Thus, we find
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unpersuasive Appellants’ argument that Cooksey teaches away from the
claimed invention.
Cooksey Doesn’t Teach the Limitations of the Disputed Claims
Appellants do not separately argue dependent claim 3. They instead
assert that Cooksey alone does not teach the limitations of the disputed
claims. (App. Br. 10.) As we previously discussed supra, Sander is proper
prior art, and the Examiner rejects Appellants’ claim 3 in view of the
combination of the Sander and Cooksey references. Because Appellants do
not address this rejection, we find their argument unpersuasive.
Moreover, the Examiner provides detailed findings and conclusions
with respect to the Sander and Cooksey references (Ans. 5-6, 10-12.)
Appellants did not file a Reply Brief, nor did Appellants provide any
persuasive evidence supporting the assertions of alleged error in the
Examiner’s position. For all the foregoing reasons, Appellants have not
persuaded us of error in the Examiner’s obviousness rejection of claims 3, 4,
6-8, 11, 12, 14-16, 18, 19, and 21-23. Accordingly, we affirm the
Examiner’s obviousness rejection of these claims.

CONCLUSION OF LAW
On the record before us, we find the Examiner erred in rejecting
claims 1, 9, and 17 under 35 U.S.C. § 112, first paragraph, as not complying
with the written description requirement. We also find Appellants have not
established that the Examiner erred in finding the Sander reference discloses
each of the limitations as recited in Appellants’ claim 1. We further find
Appellants have not established that the Examiner erred in presenting a
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Application 10/817,693

20
proper prima facie case of obviousness for claims 3, 4, 6-8, 11, 12, 14-16,
18, 19, and 21-23.

DECISION
We reverse the Examiner’s rejection of claims 1, 9, and 17 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s rejection of claims 1, 9, and 17 under
35 U.S.C. § 102(e).
We affirm the Examiner’s rejection of claims 3, 4, 6-8, 11, 12, 14-16,
18, 19, and 21-23 under 35 U.S.C. § 103.
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

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Meyertons, Hood, Kivlin, Kowert & Goetzel (AMD)
P.O. Box 398
Austin, TX 78767-0398