Ex Parte Rose et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10998178 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW CHISTOPHER ROSE, ANDREW JAMES BOLT, and
DONALD ROBERT SINCLAIR
____________

Appeal 2009-014659
Application 10/998,178
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-20 and 22. Claim 21 was cancelled during
prosecution. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We Reverse.
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INVENTION
Appellants’ invention relates generally to testing software. More
particularly, the invention on appeal is directed to testing software to be run
on a multi-processor system. (Spec. 1, ll. 3-5)
ILLUSTRATIVE CLAIM
1. A test system for testing software to be run on a data processing
apparatus having a plurality of processors configured to share
access to a memory system, at least a part of the memory system
having a memory ordering type specifying at least one ordering
freedom which allows memory access requests to that part to be
processed out of order from an original program order, the test
system comprising:

a processor simulator for each processor of the data
processing apparatus, each processor simulator being
configured to execute a sequence of instructions in
program order;

at least one access buffer unit, each access buffer unit
being associated with one of the processor simulators and
being configured to receive memory access requests
issued by that processor simulator when executing
memory access instructions within the sequence of
instructions;

each access buffer unit comprising:

at least one buffer configured to store memory
access requests issued by the associated processor
simulator; and

a controller configured to select an eviction policy,
and to apply that selected eviction policy to
determine an order in which the memory access
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requests are output from the access buffer unit to
the memory system;

the eviction policy being selected such that when the
controller applies that selected eviction policy, the at
least one ordering freedom specified by the memory
ordering type of said part of the memory system is
exercised in a manner compliant with the memory
ordering type but to a degree exceeding that expected
within the data processing apparatus.

REJECTIONS
1. The Examiner rejected claims 1, 2, 8, 11, 12, and 22 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement.

2. The Examiner rejected claims 1-20 and 22 under 35 U.S.C. §112, second
paragraph, as being indefinite.

3. The Examiner rejected claims 1-20 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Averill (U.S. 5,794,012),
Clarke (U.S. 6,751,583 B1), and Ebrahim (U.S. 5,893,165).

Rejection under 35 U.S.C. 112, first paragraph (enablement)
ISSUE (1)
Under §112, first paragraph, did the Examiner err in concluding that
claims 1, 2, 8, 11, 12, and 22 fail to comply with the enablement
requirement?
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ANALYSIS
The Final Office Action (mailed July 23, 2008) contains a rejection of
claims 1, 2, 8, 11, 12, and 22 under 35 U.S.C. 112, first paragraph. (Final
Office Action, 3-5). Appellants present a detailed traversal of this rejection
in the principal Brief. (App. Br. 10-18). Because the Examiner did not
reproduce the rejection or otherwise address Appellants’ arguments in the
Answer, Appellants state in the Reply Brief that they “believe that the
rejection under 35 U.S.C. §112, first paragraph is withdrawn.” (Reply Br.
1).
However, we find no affirmative statement in the Answer that the
enablement rejection under §112, first paragraph rejection has been
withdrawn. To the contrary, the Examiner expressly states that “[t]he
appellant’s statement of the grounds of rejection to be reviewed on appeal is
correct.” (Ans. 2). Moreover, on page 2 of the “Advisory Action Before
Filing of an Appeal Brief,” mailed Nov. 20, 2008, the Examiner finds
Applicant’s arguments unpersuasive regarding the enablement rejection
under 35 U.S.C. § 112, first paragraph.
On this record, we find the Examiner has not withdrawn the rejection
under 35 U.S.C §112, first paragraph (enablement). However, because the
Examiner’s Answer is silent regarding Appellants’ arguments in the Brief
with respect to this rejection, we reverse the Examiner’s rejection of claims
1, 2, 8, 11, and 22 under 35 U.S.C §112, first paragraph (enablement) for
the same reasons argued by Appellants in the Brief. For the reasons
advanced by Appellants (App. Br. 10-17), we are persuaded that the original
Specification, as filed, is sufficiently complete to enable one of ordinary skill
in the art to make and use the claimed invention without undue
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experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

Rejection under 35 U.S.C. 112, second paragraph
ISSUE (2)
Under §112, second paragraph, did the Examiner err in
concluding that claims 1-20 and 22 are indefinite?

ANALYSIS
The Examiner presents four enumerated grounds in support of the
rejection of claims 1-22 under §112, second paragraph. (Ans. 5).
Regarding the Examiner’s first and third enumerated grounds, the
Examiner essentially contends that the claim language does not lead to
structural differences in the system claims because the limitations are
statements of intended use. (Ans. 5).
With regard to the Examiner’s second enumerated ground, the
Examiner contends that “[i]t is unclear what eviction policy would lead to a
system being ‘exercised to a degree exceeding that expected within the data
processing apparatus’. Further, there are no metes and bounds established
for the expected degree.” (Ans. 5) (underline in original).
Regarding the Examiner’s fourth enumerated ground, the Examiner
contends that claim 1 has omitted “structural and method steps that would
enable an eviction policy to detect the bug,” and is thus incomplete for
omitting essential steps/elements, such omission amounting to a gap
between the elements. (Ans. 5, citing MPEP §2172.01).
We reverse the Examiner’s § 112, second paragraph rejection
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regarding grounds one, three, and four for essentially the same reasons
argued by Appellants in the Briefs. We also reverse the Examiner’s § 112,
second paragraph rejection regarding ground two, with the following
qualification:
To the extent that Appellants’ arguments rely on the “insolubly
ambiguous” standard applied by the Federal Circuit to issued patent
claims,1 2 we note that the USPTO employs a lower threshold of ambiguity
when reviewing a pending claim for indefiniteness than those used by post-
issuance reviewing courts: “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential).3

1 See App. Br. 19: “The case law identified above makes clear that the test is
one of insoluble ambiguity.”
2 The Federal Circuit has held in post-issuance patent infringement cases
that the definiteness requirement does not compel absolute clarity and only
claims not amenable to construction or “insolubly ambiguous” are indefinite.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
2005).

3 “Indefiniteness under 35 U.S.C. § 112 ¶ 2 is an issue of claim
construction,” Cordis Corp. v. Boston Scientific Corp, 561 F.3d 1319, 1331
(Fed. Cir. 2009, and a different standard of claim construction is applied by
the PTO during prosecution of patent applications. During ex parte
prosecution, the USPTO determines the scope of the claims by giving the
language “t[he] broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp, 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). Because “applicants may amend claims to narrow their scope, a
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Thus, a claim that is not indefinite under the Federal Circuit’s
“insolubly ambiguous” standard (as applied to issued patent claims), may be
found indefinite under the USPTO Miyazaki standard of review that employs
a lower threshold of ambiguity for pending patent application claims. (Id.).
However, here, the Examiner has not fully developed the record by
considering the Miyazaki standard of review, and applying it to the claims at
issue. For this reason, and for the additional reasons articulated by
Appellants in the Briefs, we reverse the Examiner’s rejection of claims 1-
22 under 35 U.S.C. § 112, second paragraph.

Obviousness Rejection
ISSUE (3)
Based upon our review of the administrative record, we have
determined that the following issue is dispositive regarding the Examiner’s
obviousness rejection under appeal:

Under §103, did the Examiner err in finding that the cited
combination of Averill, Clarke, and Ebrahim would have taught
or suggested the eviction policy being selected such that when
the controller applies that selected eviction policy, the at least
one ordering freedom specified by the memory ordering type of
said part of the memory system is exercised in a manner
compliant with the memory ordering type but to a degree
exceeding that expected within the data processing apparatus,
within the meaning of independent claims 1, 11, and 22?

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).
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ANALYSIS
Appellants contend that the cited references, in particular Ebrahim,
fail to disclose or suggest the “eviction policy” as claimed. (App. Br. 29).
Based upon our review of the record, we agree for the essentially the same
reasons argued by Appellants in the Briefs.
The Examiner relied on Ebrahim to teach or suggest the claimed
“eviction policy.” (Ans. 10). In particular, the Examiner contends:
Here performing the memory transaction would require the
transaction (operation to performed in memory, e.g. read or
write) to be dispatched/evicted to the memory (See element 148
& 130). Just because Ebrahim does not use the term "Eviction
Policy" does not mean it fails to teach the limitation which is
clearly taught as above.
(Ans. 22-23)
We agree with the Examiner that the phrase “eviction policy” does not
have to be expressed in literal form within the reference.4 However, we
agree with Appellants that the Examiner has not considered the language of
the claim as a whole regarding the disputed “eviction policy” limitation.
(Reply Br. 10).
Claim terms are not interpreted in a vacuum, devoid of the context of
the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction . . . demands
interpretation of the entire claim in context, not a single element in

4 Cf. Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991)( “An anticipatory reference . . . need not duplicate
word for word what is in the claims.”).
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isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered....”).
Here, the eviction policy as claimed is selected such that “the at least
one ordering freedom specified by the memory ordering type of said part of
the memory system is exercised in a manner compliant with the memory
ordering type but to a degree exceeding that expected within the data
processing apparatus.” (Claim 1; see also the commensurate language of
independent claims 11 and 22).
For essentially the same reasons argued by Appellants in the Briefs
(App. Br. 23-30), we agree the Examiner has not established where these
limitations are taught or suggested in the cited combination of references.
As pointed out by Appellants, the cited portions of Ebrahim ensure that the
memory transactions are carried out in a permitted ordering according to the
various memory model it supports. (Reply Br. 10; see also e.g., Ebrahim col.
4, ll. 60-61.) We agree with Appellants that there is no indication in the
cited portions of Ebrahim that teaches or suggests “selecting an eviction
policy such that ‘the at least one ordering freedom specified by the memory
ordering type of said part of the memory system is exercised in a manner
compliant with the memory ordering type but to a degree exceeding that
expected within the data processing apparatus.’” (Reply Br. 10-11,
emphasis added).
Accordingly, we reverse the Examiner’s § 103 rejection of
independent claims 1, 11, and 22, and associated dependent claims 2-10 and
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12-20 for essentially the same reasons argued by Appellants, as discussed
above.

DECISION
We reverse the Examiner’s 35 U.S.C. 112, first paragraph rejection of
claims 1, 2, 8, 11, 12, and 22.
We reverse the Examiner’s 35 U.S.C. §112, second paragraph
rejection of claims 1-20 and 22.
We reverse the Examiner’s 35 U.S.C. §103 rejection of claims 1-20
and 22.

ORDER
REVERSED

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