Ex Parte Gschwind

Patent Trial and Appeal Board

Dec 30, 2014

11762156 (P.T.A.B. Dec. 30, 2014)

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.
11/762,156 06/13/2007 MICHAEL GSCHWIND YOR920070143US1
(163-177)
1269
49267 7590 12/31/2014
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
CALDWELL, ANDREW T
ART UNIT PAPER NUMBER
2183
MAIL DATE DELIVERY MODE
12/31/2014 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 MICHAEL GSCHWIND
____________

Appeal 2012-008949
Application 11/762,156
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

Appeal 2012-008949
Application 11/762,156
2
STATEMENT OF THE CASE
The Examiner finally rejected claims 1–20. Appellant appeals from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to "spatial register partitioning with a
multi-bit cell register file." (Title). Claim 1, reproduced below, is
representative of the claimed subject matter:

1. A multi-bit storage cell for a register file, comprising:
[a] a first set of storage elements for a vector slice, each
of the storage elements in the first set respectively
corresponding to a particular one of a plurality of thread sets for
the vector slice;
[b] a second set of storage elements for a scalar slice,
each of the storage elements in the second set respectively
corresponding to a particular one of at least one thread set for
the scalar slice; and
[c] at least one selection circuit, connected to said first set
and said second set of storage elements, for selecting, for a
given instruction issued by a given thread, a particular one of
the storage elements from any of said first set and said second
set of storage elements based upon the given instruction being a
vector instruction or a scalar instruction and based upon a
corresponding set from among the pluralities of thread sets to
which the given thread belongs.
(Elements lettered).
Appeal 2012-008949
Application 11/762,156
3
REJECTIONS
R1. The Examiner rejected claims 1–20 under 35 U.S.C. § 112, first
paragraph, as failing to disclose the best mode contemplated by the inventor.
Evidence of concealment of the best mode is based upon copending U.S.
Application No. 11/762,137, filed June 13, 2007. (Ans. 5).
R2. The Examiner rejected claims 1–20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Ans. 7)
R3. The Examiner rejected claims 1–20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(Ans. 8).
R4. The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as
being obvious over Liao (US Patent No. 6,571,328 B2). (Ans. 9).
R5. The Examiner rejected claims 1–20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
(Ans. 14–15).

GROUPING OF CLAIMS
We address rejections R1–R4 separately, infra.
Based on Appellant's arguments, we decide the appeal of rejection R5
of claims 1–20 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).
1

1
Appellant filed a Notice of Appeal on Aug. 17, 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
Appeal 2012-008949
Application 11/762,156
4
ANALYSIS
R1. § 112 – best mode
Regarding the best mode of claims 1, 3, and 10, the Examiner finds:
As pointed out above, in the examiner's judgment the
technology set forth in Application No. 11/762,137 is an
integral part of the claimed invention in this application
necessary to enable its scope and embodiments. This led the
examiner to the logical conclusion that without the technology
set forth in Application No. 11/762,137, applicant had failed to
disclose his best mode and failed to describe and enable his
invention.
(Ans. 19).
Whether the best mode requirement has been satisfied is a question of
fact. Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, 1312 (Fed. Cir.
2002). Two specific factual questions must be answered to determine
whether there has been a violation of the best mode requirement: The first is
whether, at the time of filing the patent application, the inventor had a best
mode of practicing the claimed invention—a subjective question. The
second is whether, assuming the inventor had a preference for one mode
over all others, the inventor objectively concealed his preferred mode from
the public. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1360
(Fed. Cir. 2011).
Regarding rejection R1, we have reviewed Appellant's arguments in
the Briefs, the Examiner’s rejection, and the Examiner’s response to the
Appellant's arguments. Appellant contends the Examiner erred in finding

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) 8
th

ed., Rev. 8, July 2010.
Appeal 2012-008949
Application 11/762,156
5
Appellant's co-filed application No. 11/762,137 was sufficient evidence to
show the inventors concealed the best mode in the instant application.
2

(App. Br. 16–17).
Regarding the first of the two factual inquiries
3
(i.e., at the time of
filing, did the inventor know of a better mode of practicing the claimed
invention than the mode disclosed in the specification?), Appellant is correct
"there is no evidence [of record] that the Inventor subjectively believed
[application No. 11/762,137] to be the best mode." (App. Br. 17, emphasis
added). Regarding the second prong (did the inventor conceal his preferred
mode from the public?), we note that filing a co-pending application does
not provide objective evidence the inventor concealed his preferred mode
from the public.
Accordingly, we reverse rejection R1 of claims 1–20.

R2. § 112 – written description
Regarding rejection R2, the Examiner finds:
By failing to disclose the best mode contemplated by applicant
for critical elements of applicant's claimed invention, applicant
has called into question the adequacy of applicant's written
description.
(Ans. 7).

2
See also Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531 (Fed.
Cir. 1991) (“invalidity for failure to set forth the best mode requires that (1)
the inventors knew of a better mode of carrying out the claimed invention
than they disclosed in the specification, and (2) the inventors concealed that
better mode.”) .
3
See Wellman, Inc., 642 F.3d at 1360.
Appeal 2012-008949
Application 11/762,156
6
Appellant contends:
The MPEP provides explicit guidelines for stating a written
description rejection. The Examiner has not complied with
these guidelines and the present rejection is deficient. MPEP
§2163.04(I) provides the requirements, stating that the
Examiner "must set forth express findings of fact" that: A.
Identify the claim limitation(s) at issue; and B. Establish a
prima facie case by providing reasons why a person skilled in
the art at the time the application was filed would not have
recognized that the inventor was in possession of the invention
as claimed in view of the disclosure of the application as filed.
The Examiner has made no effort to meet these explicit
requirements.
(App. Br. 17)
We are persuaded by Appellant's contentions. Specifically, we agree
the Examiner did not "[e]stablish a prima facie case [under § 112, first
paragraph, written description] by providing specific reasons why a person
skilled in the art at the time the application was filed would not have
recognized the inventor was in possession of the claimed invention in view
of the original disclosure of the application as filed." (App. Br. 17; see also
Ans. 7). Therefore, we reverse rejection R2 of claims 1–20.

R3. § 112 – Indefiniteness
Regarding rejection R3, the Examiner concludes: "Applicant's claims
1-20 are of undue breadth . . . [i]n the absence of any description of an
embodiment of these elements in this application, the true scope of the
language of applicant's claims is unclear." (Ans. 8). The Examiner further
finds: “Applicant has laid claim to all possible implementations of the
critical elements of applicant's claims, recited previously, while the only
implementation actually shown is depicted in U.S. Application No.
Appeal 2012-008949
Application 11/762,156
7
11/762,137 which has never been incorporated by reference in this
application.” (Ans. 9).
Appellant urges: “[t]he Examiner has muddled this rejection with the
above Best Mode and Written Description rejections.” (App. Br. 20).
Appellant additionally cites to the MPEP § 2173. (Id.)
Appellant is correct. The U.S. Supreme court guides an enablement
rejection (under § 112, first paragraph) is appropriate when the claim
limitation encompasses any and all structures or acts for performing a recited
function, including those which were not what the applicant had invented
(i.e., the disclosure fails to provide enablement commensurate with the scope
of the claim). See Halliburton Oil Well Cementing Co. v. Walker, 329 U.S.
1 (1946). Moreover, breadth is not indefiniteness provided the skilled
artisan is reasonably apprised of the meaning of the claim. Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004).
Because the Examiner failed to show the claims are indefinite under
§ 112, second paragraph, we reverse Rejection R3 of claims 1–20. We
further address the enablement issue raised by the Examiner under rejection
R5, infra.

R4. § 103 – obviousness
Regarding rejection R4, we have reviewed Appellant's arguments in
the Briefs, the Examiner’s rejection, and the Examiner’s response to the
Appellant's arguments. After reviewing the prosecution history of this
application, we concur with Appellant the Examiner failed to provide
evidence to support the repeated taking of Official Notice for independent
claims 1, 3, and 10, in response to Appellant’s timely traverse and demand
Appeal 2012-008949
Application 11/762,156
8
for such evidence. (App. Br. 23–24; Ans. 22–24). Therefore, we reverse
rejection R4 of independent claims 1, 3, and 10, and associated dependent
claims 2, 4–9, and 11–20.

R5. § 112 – enablement
R5. Claims 1–20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. (Ans. 14,
New Grounds of Rejection).
The Examiner finds and concludes:
The only elements in applicant's claim 1 which might support a
claim to invention were how applicant created correspondence
between the storage elements and any thread or thread set and
how applicant's selection circuit supported this linkage.
However, applicant never made clear in this application how
applicant envisioned implementing these critical elements.
Applicant claims any and all means and/or methods for creating
correspondence between the storage elements and any thread or
thread set and any and all means and/or methods related to how
applicant's selection circuit supports this linkage without
disclosing any means or method for doing so.
(Ans. 15–16).
Appellant contends:
People having ordinary skill in the art would be perfectly
capable of understanding that the claimed correspondence could
represent any appropriate correspondence, from the most trivial
to the most complex–it is not necessary for Applicants [sic] to
describe that process, and it is tangential to the actual invention
at hand.
(Reply Br. 6).
We are not persuaded because attorney “argument . . . cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see
Appeal 2012-008949
Application 11/762,156
9
also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments
or conclusory statements are insufficient to rebut a prima facie case). Here,
Appellant's conclusory statement fails to present substantive arguments and
supporting evidence persuasive of error regarding the Examiner’s legal
conclusion the description in the Specification fails to sufficiently inform an
artisan how to make and use (enable) the claimed invention. (See Reply Br.
6).
Therefore, we sustain rejection R5 of representative claim 1, and the
grouped claims 2–20 rejected under rejection R5, which fall therewith. (See
Grouping of Claims, supra).
DECISION
We reverse the Examiner's rejection R1 of claims 1–20 under § 112,
first paragraph, best mode requirement.
We reverse the Examiner's rejection R2 of claims 1–20 under § 112,
first paragraph, written description requirement.
We reverse the Examiner's rejection R3 of claims 1–20 under § 112,
second paragraph.
We reverse the Examiner's rejection R4 of claims 1–20 under 35
U.S.C. § 103.
We affirm the Examiner's rejection R5 of claims 1–20 under § 112,
first paragraph, enablement requirement.
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).

Appeal 2012-008949
Application 11/762,156
10
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

kis