Ex Parte Hellwig

Patent Trial and Appeal Board

Jul 6, 2017

12171926 (P.T.A.B. Jul. 6, 2017)

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.
12/171,926 07/11/2008 FRANK HELLWIG 42792-0033 (10046.0034) 3878
38881 7590 07/10/2017
Infineon Technologies AG
c/o Schiff Hardin LLP
666 Fifth Avenue
Suite 1700
NEW YORK, NY 10103
EXAMINER
RIVERA VARGAS, MANUEL A
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07/10/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lbrutman @ schiffhardin.com
patents-NY @ schiffhardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK HELL WIG
Appeal 2016-004813
Application 12/171,9261
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-25 under 35 U.S.C. § 102(e) over Chemoff.2
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Infineon Technologies AG is identified as the real party in interest. Appeal
Br. 1.
2 Chemoff, US 2009/0157359 Al, published June 18, 2009.
Appeal 2016-004813
Application 12/171,926
THE INVENTION
The subject matter of the claims on appeal relates to an apparatus for
profiling a computer system in which a register stores a variable for setting
the timing for when the apparatus will create an output, the counter counts
operations of the system, and the monitor monitors activities that occur
during each operation. Specification filed July 11, 2008 (“Spec.”). Abstract.
Independent claim 1 relates to the apparatus. Independent claim 20
relates to a method for profiling a processing system.
Claim 1—reproduced below—is representative.
1. An apparatus configured to profile a processing system,
comprising:
a resolution register configured to store a variable;
a counter configured to count operations of the system; and
a monitor configured to monitor a number of occurrences
per operation of the system, and output a result representing a
rate of occurrences for the counted number of operations, when
a value of the counter is equal to the variable stored in the
resolution register.
Appeal Brief filed March 27, 2014 (“Appeal Br.”) (Claims App’x), 8.
DISCUSSION
We have thoroughly reviewed the grounds of rejection set forth by the
Examiner, Appellant’s arguments, and the Examiner’s response.3 On this
record, we are unpersuaded by those arguments properly before us that the
3 We refer to the Specification, the Final Office Action issued January 2,
2014 (“Final Act.”), Appellant’s Appeal Brief, the Examiner’s Answer
issued July 31, 2014 (“Ans.”), and the Reply Brief filed September 30, 2014
(“Reply Br.”).
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Examiner erred reversibly and we determine that a preponderance of the
evidence supports the Examiner’s finding of anticipation.
The Examiner finds that Chemoff discloses, as recited in claim 1:
An apparatus to profile a processing system comprising a
resolution register configured to store a variable; a counter
configured to count operations of the system; and a monitor
configured to monitor a number of occurrences per operation of
the system, and output a result representing a rate of
occurrences for the counted number of operations, when a value
of the counter is equal to the variable stored in the resolution
register.
Final Act. 2-3, 6-7 (citing Chemoff, Abstract, 5, 17, 23, 27, 35-39, 49-
50, 62, 83, 86, Fig. 2, Table 4); see also Ans. 3.
Further, as to claims 6 and 7, and as to claims 12 and 13, the
Examiner finds Chemoff discloses an embodiment in which the counter is a
cycle counter and the monitor is an instmction monitor and an embodiment
in which the counter is an instmction counter and the monitor is an event
monitor, respectively. Final Act. 3—4; Ans. 3—4; Chemoff 23, 27, 29, 37,
42, Fig. 2.
The Examiner’s rejection in this case satisfies the notice requirement
to establish a prima facie case of anticipation because it identifies the theory
of unpatentability (anticipation), the prior art basis for the rejection
(Chemoff), and identifies where each limitation of the rejected claims is
shown in the prior art reference by paragraph number. We consider the
record to determine whether Appellant has identified reversible error in the
Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
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Application 12/171,926
the alleged error in the examiner’s rejections,” citing Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential)).
Appellant’s primary argument is to the patentability of independent
claim 1. Appellant maintains that the claimed apparatus is separate and
distinct from the processing system because the preamble recites “[a]n
apparatus configured to profile a processing system” and, as a result, “the
performance of the system is not affected by the measurements.” Appeal Br.
4; Spec. 15-16.
In our opinion, the claim does not require that the apparatus as
claimed is separate and distinct from the processing system. We give claim
terms the broadest reasonable interpretation consistent with the Specification
as it would be interpreted by one of ordinary skill in the art. In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2009) (During
prosecution of applications, “the PTO must give claims their broadest
reasonable interpretation consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”). “[A]s applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.” Id. The plain meaning of the
preamble does not require that the apparatus is separate and distinct from the
processing system. Further, we decline to import the limitation from the
Specification into the claim where we do not see a clear definition or
exposition in the Specification to so limit the meaning of the claim. See,
e.g., Superguide Corp. v. DirecTV Enterprises, Inc., 357 F.3d 870, 875 (Fed.
Cir. 2004).
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Likewise, the claim does not require that the rate be measured
dynamically during each operation, as the plain meaning of the phrase—to
monitor a number of occurrences per operation of the system, and output a
result representing a rate of occurrences for the counted number of
operations when a value of the counter is equal to the variable stored in the
resolution register (claim 1, emphasis added)—merely requires outputting a
rate of occurrences per operation based on the number of occurrences
determined by the number measured over the specified number operations,
i.e., the number represented by the stored variable.
Appellant contends that “Chemoff does not disclose a monitor
configured to monitor a rate, that is, occurrences during each operation of
the system.” Appeal Br. 4. Appellant also contends that Chemoff s
monitoring system only provides a count of events that is read and
transmitted, and that while Chemoff subsequently calculates a rate from this
count, it is calculated by the processor itself. Appeal Br. 5; see also Reply
Br. 1. Appellant further maintains that counting events to be measured and
then reading the count periodically is conventional (Appeal Br. 4) and that
this is what Chemoff discloses (Reply Br. 1).
Appellant’s arguments are limited to addressing some, but not all,
portions of Chemoff cited by the Examiner and, for each, proffering a
contention as to what is taught, followed by contentions that recited claim
elements are not found in the prior art. Appeal Br. 4-6.
Appellant contends that Chemoff s “Abstract merely discloses
gathering performance data” and that paragraphs 35 to 38 “merely disclose
counting events.” Appeal Br. 4. Appellant also addresses paragraphs 39,
49, 50, 62, 83, and 86, but in the same perfunctory manner. Appeal Br. 4-5.
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Appellant further contends that paragraphs 23 and 27 “disclose only an event
counter, as in the conventional systems described.” Appeal Br. 5.
We do not find Appellant’s arguments persuasive because they are
grounded on features—the separation of the apparatus from the processing
system and calculating the rate per operation during operation—that are not
required by claim 1 as it is properly construed. In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(It is well established that limitations not appearing in the claims cannot be
relied upon for patentability.). As highlighted by the Examiner, it appears
undisputed that Chemoff discloses counting events and then calculating a
rate of those events using a processor. See Ans. 3.
We also do not find Chemoff limited in the manner Appellant
contends. Chemoff s Abstract describes not merely gathering performance
data, but also describes that its profiling mechanism includes executing
program instmctions “by the one more processor cores while operating in
user mode.” Chemoff Abstract. Likewise, paragraphs 35 to 37 of Chemoff
are not limited to a discussion of counting events, but includes disclosure of
monitoring once profiling is enabled. Chemoff 35-37. Not addressed by
Appellant (see generally Appeal Br.; Reply Br.) is the discussion of
processes for profiling in paragraph 5, which is relied on by the Examiner
(Final Act. 2, 6-7; Ans. 3). Further, contrary to Appellant’s position,
paragraphs 23 and 27—describing the device in Figure 2—do not disclose
merely an event counter, because the device described includes, inter alia,
“profiling hardware that includes PMSRO and PMSR1.” Chemoff^ 23. In
sum, as set forth by the Examiner, Chemoff discloses a profiling mechanism
that includes a register, a counter, and a monitor for profiling a processing
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system. Further, the disclosed profiling mechanism includes statistical
profiling, which measures an occurrence rate as a function of time or on the
number of times an event has occurred, as Chemoff discloses its profiling
mechanism to provide profiling generally, but as an improvement to that
taught in the prior art, that includes statistical profiling, with the benefit of
not requiring interruption of the operating system. See, e.g., Chemoff
Abstract, ^ 5, 37, 83.
Still further, even if claim 1 required that the apparatus is separate and
distinct from the processing system and that the rate is measured during
operation, Appellant’s contentions and arguments grounded on Chemoff s
monitoring system not meeting such requirements are not persuasive
because the contentions that the monitoring system is separate from the
processor because it uses the processor for the calculation and that the rate
cannot be measured during operation because operation must be interrupted
to perform the calculation are unfounded. While not cited by the Examiner,
paragraph 25 of Chemoff discloses, inter alia, that a device with two
processors 15A and 15B may include with each processor hardware and
software that enables process profiling such that “processor 15A may be
configured to execute a monitor process . . . that may gather performance
data associated with user mode processes mnning on . . . processor core 15B
without interrupting the control flow of the processes being monitored.”
Chemoff^ 25. Because the monitor process of Chemoff includes the rate
calculation, this embodiment describing monitoring of processor core 15B
without interrupting its processes by use of apparatus including monitor
logic 18A, which includes registers, and event counter 19A (Chemoff ^ 23,
25, Fig. 2) constitutes, inter alia, disclosure of an apparatus to profile a
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processing system separate from the processing system being monitored—
processor core 15B—that includes a register, counter, and monitor, and is
configured to provide a rate during operation of the processor core 15B.
As to dependent claims 6 and 7, further reciting that “the counter is a
cycle counter and the monitor is an instruction monitor,” Appellant contends
that “these claims further define the operations as cycles, and the
occurrences as instructions” (Appeal Br. 5), but does not direct us to any
portion of the Specification or proffer any argument for favoring Appellant’s
interpretation over that adopted by the Examiner in which the counter is a
cycle counter in that each event counted is a cycle being processed and the
monitor is an instruction monitor because it processes instructions from its
program ((Final Act. 3; Ans. 3—4). As with claim 1, we do not find the plain
meaning of the claim language contrary to that adopted by the Examiner and
we decline to import from the Specification further or contrary meaning.
Appellant addresses in a perfunctory manner each paragraph cited by
the Examiner, in the same manner as above in the argument as to claim 1.
However, we are apprised of no reversible error because, as explained by the
Examiner, the arguments are grounded on the prior art failing to disclose
features not required by the claim. Ans. 4.
As to Appellant’s further argument first raised in the Reply Brief that
“an event counter cannot be a cycle counter” (Reply Br. 2, citing Chemoff
^ 42), we find the argument untimely and deem it waived as there is no good
reason offered why it could not have been raised earlier in the Appeal Brief.
37 C.F.R. § 41.41(b)(2); cf. McBride v. Merrell Dow andPharms., Inc., 800
F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted) (“Considering
an argument advanced for the first time in a reply brief... is not only unfair
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to an appellee but also entails the risk of an improvident or ill-advised
opinion on the legal issues tendered.”).
As to dependent claims 12 and 13, further reciting that “the counter is
an instruction counter and the monitor is an event monitor,” Appellant
contends that “these claims further define the operations as instructions, and
the occurrences as events” (Appeal Br. 6), but as with claims 6 and 7 above,
does not direct us to any portion of the Specification or proffer any argument
for favoring their interpretation over that adopted by the Examiner in which
“the counter is an instruction counter because it counts based on its
instruction code given by the monitor logic [i.e., counts according to
instructions] and the monitor is an event monitor because it includes event
counters” (Final Act. 4; Ans. 4).
As with claims 1, 6, and 7, we do not find the plain meaning of the
claim language contrary to that adopted by the Examiner and we decline to
import from the Specification further or contrary meaning.
Appellant again addresses the cited portions of Chemoff in similar
perfunctory fashion as for claims 6 and 7 and contends that “[tjhere is no
disclosure in these portions of Chemoff of a monitor configured to monitor a
rate of events during each instmction of the system” (Appeal Br. 6, citing
Chemoff 23, 27, 29, Fig. 2); however, we are apprised of no reversible
error because the arguments are grounded on a different constmction than
that on which the rejection is grounded (Ans. 4).
As to Appellant’s further argument first raised in the Reply Brief that
“an event counter cannot be an instmction counter” (Reply Br. 2, citing
Chemoff^ 42), we find the argument untimely and deem it waived as there
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is no good reason offered why it could not have been raised earlier in the
Appeal Brief. 37 C.F.R. § 41.41(b)(2); cf. McBride, 800 F.2d at 1211.
Appellant also relies on the argument as to claim 1 for further
independent claim 20 (Appeal Br. 6) and on the dependency of the
dependent claims 2-19 and 21-25 from independent claims 1 and 20
(Appeal Br. 5).
Having been persuaded of no reversible error in the rejection of
independent claim 1, and of dependent claims 6,1, 12, and 13, as explained
above, we are further apprised of no reversible error in the rejections of
claim 20 on the basis of the arguments as to claim 1, or in the rejection of
dependent claims depending from either claim 1 or claim 20.
On balance, thus, the evidence of record weighs most heavily in favor
of the Examiner’s finding of anticipation.
DECISION
The Examiner’s decision rejecting claims 1-25 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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