Ex Parte Greiner et al

Patent Trial and Appeal Board

Mar 26, 2014

11972791 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAN F. GREINER and TIMOTHY J. SLEGEL
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Appeal 2011-012250
Application 11/972,791
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/972,791

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4-8, 11-15, and 18-27. Claims 2, 3, 9, 10, 16 and 17 were
cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The claims are directed to fetching and executing a move machine
instruction (Spec. ¶ [0013]). Independent claim 1, reproduced below, is
representative of the subject matter on appeal:
1. A method comprising:
fetching a move machine instruction in a program comprising
machine instructions, the move machine instruction defined for an
architecture, the move machine instruction comprising an opcode
field, a B1 field, a D1 field and a multi-purpose field;
executing the move machine instruction comprising:
determining a first operand memory address of a variable length
first operand based on the B1 field and a value of the D1 field;
responsive to the opcode field having a first value, wherein the
multi-purpose field is a 16 bit multi-purpose field consisting of a B2
field and a D2 field, moving a variable length second operand from a
memory location determined by the B2 field and a value of the D2
field, to the variable length first operand at the first operand memory
address; and
responsive to the opcode field having a second value, wherein
the multi-purpose field is a 16 bit immediate field, performing steps a)
and b) comprising:
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a) determining a size of the variable length second operand to
be any one of a 16 bit operand, a 32 bit operand or a 64 bit operand;
b) responsive to the variable length second operand being the
16 bit operand, storing the multi-purpose field at the first operand
memory address; and
c) responsive to the variable length second operand being any
one of the 32 bit operand or the 64 bit operand, storing a sign
extended value of the multi-purpose field at the first operand memory
address.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Andrew S. Tanenbaum, “Structured Computer Organization,” Prentice-Hall,
Inc., 1984, pp. 10-12 and 202-234 (hereinafter “Tanenbaum”).

z/Architecture, “Principles of Operation,” International Business Machines
Corporation, SA22-7832-04, 6th edition, April 2007 (hereinafter
“z/Architecture”).
REJECTION
Claims 1, 4-8, 11-15, and 18-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and suggestions
of Tanenbaum in view of z/Architecture (Ans. 4).1

1 We note a typographical error found in the Grounds of Rejection in the
Examiner’s Answer (Ans. 4). Claims 3, 10, and 17 were cancelled and
therefore should be removed from the Examiner’s rejection heading.
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GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the
obviousness rejection of claims 1, 4-8, 11-15, and 18-27 on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
CONTENTIONS
Appellants contend, inter alia:
In fact, neither Tanenbaum or z/Architecture, alone or in
combination contemplate an instruction having a “multi-
purpose field” according to the invention, wherein “responsive
to the opcode having a first value, wherein the multi-purpose-
field is a 16 bit multi-purpose field consisting of a B2 field and
a D2 field[,]”[ ] wherein “responsive to the opcode field having
a second value, wherein the multi-purpose field is a 16 bit
immediate field[,]”[ ] wherein the “16 bit multi-purpose field”
specifies either “a memory location” or “a sign extended value”
according to the invention.

Furthermore, neither Tanenbaum or z/Architecture, alone or in
combination contemplate executing a move instruction having
an multi-purpose field of the invention wherein “the multi-
purpose field” that either specifies “moving a variable length
second operand from a memory location determined by the B2
field and a value of the D2 field, to the variable length first
operand at the first operand memory address” or stores “the
multi-purpose field at the first operand memory address” or
stores “a sign extended value of the multi-purpose field at the
first operand memory address” as shown in the claim.
(App. Br. 24).

2 Appellants filed a Notice of Appeal on December 31, 2010. 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 Manual of Patent Examining Procedure (MPEP)
(rev. 8, July 2010).
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ANALYSIS
At the outset, we observe the Examiner revised the detailed statement
of rejection in the Answer to focus on the teachings of the z/Architecture
reference, instead of Tanenbaum, as explained by the Examiner:
The bulk of applicants' arguments were predicated on the
examiner's previous use of citations to Tanenbaum when
rejecting applicants claims. Rather than waste time arguing with
applicants as to whether specific prior art teachings of
Tanenbaum are relevant to applicants' instructions[,] the
examiner chose to provide applicants with citations to the
z/Architecture reference supplied by applicants which is a
description of applicants' assignee's (IBM) instruction set
architecture.
(Ans. 11; cf. with Final Office action 2-10).
Precedent guides that the ordering of references in a § 103 rejection is
insignificant regarding the Examiner’s ultimate legal conclusion of
obviousness. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“[W]e deem
it to be of no significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in view of A, or
to term one reference primary and the other secondary.”).
Here, Appellants advance arguments directed to the Examiner’s
findings and conclusions in the Final Office action (mailed Oct. 5, 2010),
and primarily focus on the teachings of Tanenbaum. (App. Br. 23-33).
However, Appellants’ arguments (id.) in the Brief do not rebut the
Examiner’s specific findings with respect to the z/Architecture reference, as
set forth and clarified in the grounds of rejection and responsive comments
in the Answer (see Ans. 3-13). In particular, Appellants have not filed a
Reply Brief to rebut the Examiner’s specific findings regarding the teachings
and suggestions of the z/Architecture reference, to explain why the
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Examiner has erred. Arguments not made are considered waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2004).
Thus, to the extent Appellant have addressed the z/Architecture
reference in the Brief as a secondary reference (App. Br. 24), these
statements are not a substantive response to the Examiner’s new detailed
findings in the Answer regarding the teachings and suggestions of the
z/Architecture reference. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
To the extent the Examiner may have shifted his/her position to
clarify the basis for the rejection, Appellants have not availed themselves of
the opportunity to file a petition under 37 C.F.R. §1.181(a) explaining why
the ground of rejection set forth in the Answer should be designated as a
new ground of rejection. We note that any objection that an Examiner’s
Answer contains a new ground of rejection (not identified as such) is waived
if not timely raised by filing of a petition under 37 C.F.R. §1.181(a) within
two months of the Answer. See MPEP §1207.03 (IV).

Combinability of the References under §103
Regarding Appellants’ teaching away argument (App. Br. 25), our
reviewing court guides that "[w]hat the prior art teaches and whether it
teaches toward or away from the claimed invention ... is a determination of
fact." Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085,
1088 (Fed. Cir. 1995). "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
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direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551,553 (Fed. Cir. 1994). Teaching an alternative or
equivalent method, however, does not teach away from the use of a claimed
method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Here, we find Appellants’ “teaching away” argument (App. Br. 25)
pointing to Tanenbaum (p. 213) falls short of a teaching that would
discourage one of ordinary skill in the art from contemplating a move
instruction having a multi-purpose immediate field, as claimed. (Claim 1).
Moreover, Appellants’ “teaching away” argument fails to cite facts relevant
to the Examiner’s specific findings regarding the teachings and suggestions
of the z/Architecture reference. (see Ans. 4-13). Therefore, we are not
persuaded there is a sufficient “teaching away” in the art to overcome the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness.
For the aforementioned reasons, on this record, we find the
preponderance of the evidence does not support Appellants’ contentions that
the Examiner erred.
Accordingly, we sustain the § 103 rejection of claim 1, and claims
4-8, 11-15, and 18-27 (not argued separately).3

3 While arguments directed to independent claims 8 and 15 are presented
separately in Appellants’ Brief, Appellants state “Independent claims 1, 8,
and 15 comprise substantially the same limitations and therefore have
substantially the same arguments for overcoming the Examiners rejection.”
(App. Br. 23).
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 4-8, 11-15, and
18-27 under § 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). See
37 C.F.R. § 41.50(f).
AFFIRMED

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