Ex Parte Smaus et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11195186 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY WILLIAM SMAUS, MICHAEL TUUK, and
RAGHURAM S. TUPURI
____________

Appeal 2009-013862
Application 11/195,186
Technology Center 2100
____________

Before ERIC S. FRAHM, JASON V. MORGAN, and
BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to:
[a] mechanism for repairing way mispredictions in a cache. An
instruction cache in a processor is coupled to receive a fetch
address and a corresponding way prediction. A return address
stack is configured to store a return address corresponding to a
fetched branch instruction, a return address way prediction, and
information identifying the branch instruction. In response to
detecting the return address way prediction is incorrect, the
information identifying the branch instruction which is popped
from the return address stack is utilized to identify the
corresponding branch instruction and repair the return address
way prediction. If way misprediction is detected by the
instruction cache, the instruction cache is configured to search
additional ways for a hit. In the event of a hit in the additional
ways, the instruction cache is configured to convey an updated
way prediction. In the event of a miss, the instruction cache is
configured to convey a miss indication.
(Abstract.) Claim 1, which is illustrative of the invention, reads as follows
[bracketed material added for convenience]:
1. A processor comprising:
[a] an instruction cache coupled to receive a fetch address
and a corresponding way prediction, wherein said
instruction cache comprises a plurality of ways and
is configured to convey a way mispredict
indication responsive to detecting a way
misprediction; and
[b] a return address stack configured to store:
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[i] a return address corresponding to a fetched
branch instruction;
[ii] a non-sequential return address way prediction;
and
[iii] information identifying the branch instruction;
[c] wherein in response to detecting the non-sequential
return address way prediction is incorrect, the
information identifying the branch instruction is
utilized to repair the non-sequential return address
way prediction.
The Amendment, filed April 29, 2008, introducing the term “non-
sequential” into independent claims 1, 8, and 16, stands objected to under
35 U.S.C. § 132(a) as introducing new matter into the disclosure of the
invention.1
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention.

1 Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181
and a rejection is appealable to the Board of Patent Appeals and
Interferences. When the issue of new matter presented is the subject of both
an objection and a rejection, the issue is appealable. Manual of Patent
Examining Procedure (MPEP) § 2163.06, II. Review of New Matter
Objections And/Or Rejections (8th Ed., Rev. 8, July 2010). See also MPEP
§ 608.04(c) (“where the alleged new matter is introduced into or affects the
claims, thus necessitating their rejection on this ground, the question
becomes an appealable one, and should not be considered on petition even
though that new matter has been introduced into the specification also.”). To
the extent that the objection turns on the same issues as the rejection under
35 U.S.C. § 112, first paragraph, our decision with respect to the rejection is
dispositive as to the corresponding objection.

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Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pickett (US 6,073,230, June 6, 2000) in view of
McDonald (US 6,314,514 B1, Nov. 6, 2001).
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Feb. 20, 2009; Reply Br. filed June 8, 2009) and the
Answer (mailed April 7, 2009) for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).

ISSUES
Appellants argue independent claims 1, 8, and 16 together and do not
present any separate arguments for dependent claims 2-7, 9-15, and 17-20.
Therefore, we select claim 1 as the representative claim, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
The issues raised by Appellants positions are:
Issues under 35 U.S.C. §§ 112 and 132(a)
Is the term “non-sequential return address way prediction,” as recited
in claim 1, supported by Appellants’ originally filed disclosure, as it would
be understood by one of ordinary skill in the art?
Does the term “non-sequential return address way prediction,” as
recited in claim 1, render claim 1 indefinite?
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Issues under 35 U.S.C. § 103(a)
Does Pickett teach or suggest “a return address stack configured to
store . . . a . . . return address way prediction” (hereinafter “limitation
[b ii]”), as recited in claim 1?
Does Pickett in combination with McDonald teach or suggest that “in
response to detecting the. . . return address way prediction is incorrect, the
information identifying the branch instruction is utilized to repair the …
return address way prediction” (hereinafter “limitation [c]”), as recited in
claim 1?
ANALYSIS
35 U.S.C. §§ 112 and 132(a)
The positions of Appellants and the Examiner pertaining to the
objection under 35 U.S.C. § 132(a) are closely related to their respective
positions pertaining to the Examiner’s rejections of claims 1-20 under
35 U.S.C. § 112, first and second paragraphs. See Moba, B.V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003) (“a rejection of an
amended claim under § 132 is equivalent to a rejection under § 112, first
paragraph”) (quoting In re Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981)).
Therefore, we consider positions taken with regard to the § 132(a) objection
in conjunction with positions take with regard to the § 112 rejections.
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
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allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” Ariad Pharmaceuticals v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (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, 598
F.3d at 1351 (citing Vas-Cath, 935 F.2d at 1563.)
The term “non-sequential” was first introduced into independent
claims 1, 8, and 16 by an Amendment filed April 29, 2008 (Ans. 3). The
term does not appear in the Specification (App. Br. 12). Appellants point to
the use of the term “sequential” (see Spec. 3:25-4:11, 25:2-11) and the
reference to “cases which are not generally sequential” (Spec. 4:6) in the
Specification as “support[ing] the terminology ‘non-sequential’ in
association with the context which is way prediction.” (App. Br. 12.)
Appellants’ arguments that claim 1 complies with the written description
requirement of 35 U.S.C. § 112, first paragraph (App. Br. 13) and is not
indefinite under 35 U.S.C. § 112 second paragraph (App. Br. 14-15) rely on
the same passages of the Specification and make substantially similar
contentions.
We disagree with Appellants’ contentions. The broadest reasonable
meaning, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), of
“sequential” is “adj. . . . 1: of, relating to, or arranged in a sequence,”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1068 (10th Ed., 1999),
while the broadest reasonable meaning of “sequence” is “n . . .2: a
continuous or connected series . . . 3 a: order of succession,” id.
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Accordingly we construe sequential to encompass relating to or arranged in
an order of succession or continuous or connected series, while non-
sequential encompasses not relating to or arranged in an order of succession
or a continuous or connected series.
As pointed out by the Examiner (Ans. 9), as used in claim 1 “non-
sequential” is open to multiple interpretations. For example, Appellants’
contention (App. Br. 12) notwithstanding, it is unclear from the claim and
the Specification whether “non-sequential” refers to the “return address” or
the “way prediction.” (Id.) Appellants’ Specification describes “fetch
scenarios” that are sequential, and further provides information to that may
enable the person of ordinary skill to identify when a “fetch scenario” is
sequential or non-sequential (see Spec. 3:25-4:11, 25:2-11). However, as
pointed out by the Examiner (Ans. 9), Appellants have not identified any
disclosure in Appellants’ Specification that would enable the person of
ordinary skill to identify that Appellants had possession of an invention in
which a “return address way prediction,” as distinct from a “fetch scenario,”
is “non-sequential.” Nor have Appellants pointed to any disclosure that
would allow the person of ordinary skill to identify when a “return address
way prediction,” as distinct from a “fetch scenario,” is sequential or non-
sequential, i.e., whether the return address or way prediction is or is not
relating to or arranged in an order of succession or a continuous or
connected series.
Therefore, Appellants have not persuaded us that the Examiner erred
in finding that the claim phrase “non-sequential return address way
prediction” is: (1) unsupported by Appellants’ originally filed disclosure;
and thus (2) fails to comply with the written description requirement; and is
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(3) indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention. We adopt the
Examiner’s findings (Ans. 3-4) and explanations (Ans. 8-10) as our own.
Accordingly, we will sustain the Examiner’s objection to the Amendment
filed April 29, 2008, and the rejections of claim 1 and claims 2-20, not
separately argued, under 35 U.S.C. § 112, first and second paragraphs.

35 U.S.C. § 103(a)
Appellants contend that Pickett does not teach limitation [b ii] recited
in claim 1 (App. Br. 16-18; Reply Br. 6-8). The Examiner found that
limitation [b ii] is taught by Pickett at column 15, lines 61-62 together with
column 21, lines 17-19 (Ans. 5). As pointed out by the Examiner (Ans. 11),
Appellants arguments do not directly address the Examiner’s findings. For
example, Appellants’ Briefs appear to be silent as to the meaning to be given
to Pickett’s column 15, lines 61-62. Arguments that do not address the
grounds of rejection have little persuasive value.
We have reviewed the Examiner’s findings (Ans. 5) and explanations
(Ans. 10-11) regarding limitation [b ii] in light of Appellants’ arguments
(App. Br. 16-18; Reply Br. 6-8). We find that the Examiner’s findings and
explanations (Ans. 5, 10-11) are reasonable and we are not persuaded that
the Examiner erred.
Appellants contend that Pickett does not teach limitation [c] recited in
claim 1 (App. Br.18-19; Reply Br. 8-9). However, the Examiner found that
limitation [c] would have been obvious to a person of ordinary skill in the art
in view of the combination of Pickett and McDonald (Ans. 6). Appellants
arguments address the disclosure of Pickett (App. Br.18-19; Reply Br. 8-9)
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and merely state, without more, that “McDonald [does not] disclose such
features” (App. Br. 18). “But one cannot show non-obviousness by
attacking references individually where, as here, the rejection[] [is] based on
[a] combination[] of references.” In re Keller, 642 F.2d 413, 426 (CCPA
1981). Appellants’ arguments are unpersuasive because, as pointed out by
the Examiner (Ans. 11), they attack the references individually and do not
address the combination of Pickett and McDonald (Ans. 6) cited in the
grounds of rejection.
Accordingly, Appellants have not persuaded us of error in the
Examiner’s rejection of claim 1 as unpatentable over Pickett in view of
McDonald. Therefore, we will sustain the rejection of claim1 and claims 2-
20, not separately argued, under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to object to the Amendment filed April
29, 2008 under 35 U.S.C. § 132(a) as introducing new matter into the
disclosure of the invention is affirmed.
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is affirmed.
The decision of the Examiner to reject 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 Appellants regard as the
invention is affirmed.
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The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Pickett in view of McDonald 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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