Ex Parte Taylor

Board of Patent Appeals and Interferences

Sep 10, 2012

10299395 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD TAYLOR
____________

Appeal 2009-015304
Application 10/299,395
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2-9 and 11-20. Claims 1 and 10 have been canceled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellant’s invention relates to a reconfigurable processor. See
Abstract. Claim 13 is reproduced below with a key disputed limitation
emphasized:
13. A data processing apparatus consisting of one or more non-
reconfigurable devices connected thereto or incorporated therein, and a set
of programmable devices which can be selectively configured and/or
reconfigured by means of one or more software routines to execute one or
more of a plurality of different instructions, the apparatus being configured
to receive an instruction for execution, compare said instruction with
contents of an instruction set or list to determine whether or not said
instruction can be executed by any of said non-reconfigurable hardware
devices and, if not, determine if a predefined configuration of said
programmable devices exists to enable them to execute said instruction and,
if not, determine if a software routine exists for reconfiguring said
programmable devices to enable them to execute said instruction and, if said
software routine exists, replace said instruction with one or more pointers to
said software routine, the apparatus being further configured to update said
data processing apparatus in the event that an instruction is received which is
not executable in existing hardware, so as to include a programmable device
configuration to handle such an instruction if it is received again.

The Examiner relies on the following as evidence of unpatentability:
Tredennick US 4,342,078 July 27, 1982
Zaidi US 6,581,154 B1 June 17, 2003
(filed Dec. 31, 1999)
Patel US 6,826,749 B2 Nov. 30, 2004
(filed May 25, 2001)
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Jeffrey A. Jacob & Paul Chow, Memory Interfacing and Instruction
Specification for Reconfigurable Processors, Proc. of the 1999
ACM/SIGDA 7th Int’l Sym. on Field Programmable Gate Arrays 145-154
(1999) (“Jacob”).

M. Morris Mano & Charles R. Kime, Logic and computing design
fundamentals 111-116 (2000) (“Mano”).

The Rejections
1. The Examiner rejected claims 13-16 under 35 U.S.C. § 112,
second paragraph as being indefinite. Ans. 3.1
2. The Examiner rejected claims 11, 12, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Jacob and Patel. Ans. 4-6.
3. The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Jacob, Patel, and Tredennick. Ans. 6-7.
4. The Examiner rejected claims 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Jacob, Mano, and Zaidi. Ans. 7-11.
5. The Examiner rejected claims 2-9 and 17 under 35 U.S.C. § 103(a)
as unpatentable over Jacob, Zaidi, and Tredennick. Ans. 11-18.

THE INDEFINITNESS REJECTION
Regarding independent claim 13, the Examiner finds that the phrase,
“determine if a software routine exists for reconfiguring said programmable
devices to enable them to execute said instruction and, if said software
routine exists, replace said instruction with one or more pointers to said
software routine,” is unclear. Ans. 3, 20. In particular, the Examiner finds a

1 Throughout this opinion, we refer to: (1) the Appeal Brief filed March 19,
2009; (2) the Examiner’s Answer mailed June 19, 2009; and (3) the Reply
Brief filed August 19, 2009.
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disparity between the first recitation, which states the software routine is
used to reconfigure the programmable devices, and the second recitation,
which states the software routine through a pointer is used to replace an
instruction. Ans. 3, 19. The Examiner further explains that this claim
“states that the same software routine is used to replace an instruction and to
reconfigure the programmable devices[,]” as opposed to claim 17, which
properly recites different routines for these functions. Ans. 19.
Appellant argues claim 13 recites that the instruction is replaced with
a pointer to a software routine and does not recite a software routine is used
to replace the instruction. App. Br. 9; Reply Br. 2.

ISSUE
Under § 112, second paragraph, has the Examiner erred in rejecting
claim 13 by finding that phrase, “determine if a software routine exists for
reconfiguring said programmable devices to enable them to execute said
instruction and, if said software routine exists, replace said instruction with
one or more pointers to said software routine,” is indefinite?

ANALYSIS
We find Appellant’s contentions persuasive. We agree with Appellant
(see App. Br. 9) that claim 13 recites replacing the instruction for execution
with one or more pointers to the software routine and not the software
routine is used to replace an instruction to be executed, as the Examiner
contends. Thus, much of the Examiner’s indefiniteness rejection is not
commensurate in scope with claim 13.

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Additionally, even assuming that “the claimed limitation [in claim 13]
states that the same software routine is used to replace an instruction and to
reconfigure the programmable devices” (Ans. 19), we fail to see why a
software routine that performs more than one function is indefinite. See
Ans. 19. That is, we find that a skilled artisan would recognized a routine
can include subroutines to multiple functions, including both reconfiguring
the programmable devices and replacing an instruction depending on the
condition of the data processing apparatus.
Also, when reading the disputed recitation in light of the disclosure,
Appellant states that “if such a software routine exists, replacing said
instruction in said instruction set or stream with [a] software routine or one
or more pointers thereto . . .” (Spec. 6:1-3) and if
a suitable configuration has not been previously defined and stored,
the apparatus is arranged to either replace the instruction with an error
handling routine (as in prior art systems when an instruction cannot be
executed), or go to a software routine (if one is available) which
reconfigures the programmable devices to enable them to execute the
instruction. This process is carried out dynamically while the
instruction set or stream is being executed.

Spec. 6:21-26. We therefore find that those skilled in the art would
understand what is claimed when read in light of the Specification. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted).
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 13 and (2) independent claims 14-16
which recite commensurate limitations.

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THE OBVIOUSNESS REJECTION OVER JACOB, MANO, AND ZAIDI
Regarding representative claim 13, the Examiner finds that Jacob
teaches a set of programmable devices selectively configurable and/or
reconfigurable by means of a software routine to execute different
instructions. Ans. 8. However, the Examiner finds that Jacob does not teach
determining if a software routine exists for reconfiguring the programmable
devices to enable them to execute the instruction and, if the routine exists,
replace the instruction with one or more pointer as recited and relies on Zaidi
to cure this deficiency (Ans. 9-10).
Appellant argues Jacob does not teach a software routine is used to
execute an instruction. App. Br. 11. Appellant also asserts that Zaidi only
converts macro instructions into micro instructions and does not disclose
programmable devices reconfigurable in the manner claimed. App. Br. 12;
Reply Br. 3. Appellant adds that Zaidi’s conversion does not teach a routine
to replace an instruction with a pointer to a software routine that executes the
instruction. Reply Br. 3.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 13 by finding
that Jacob, Mano, and Zaidi collectively would have taught or suggested an
apparatus configured to, “determine if a software routine exists for
reconfiguring said programmable devices to enable them to execute said
instruction and, if said software routine exists, replace said instruction with
one or more pointers to said software routine?”

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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 13, which calls for, in pertinent part, an apparatus to be
configured to determine if a software routine exists for reconfiguring the
programmable devices to enable them to execute an instruction. As the
Examiner notes (Ans. 8), Jacob teaches Table 1 is used to keep track of the
field programmable gate array (FPGA) configuration, which are described
both as configuration and reconfiguration bits at specific addresses in
memory. Jacob 147-148; Fig. 1. Jacob’s Table 1 shows five functions or
routines (e.g., FPGA function 0000, 0001, 0010, 0011, 0100) that execute
different instructions and that these functions can be dynamically loaded.
Jacob 147-148. Contrary to Appellant’s assertion (App. Br. 11), Jacob
suggests programmable devices that can be selectively configured and/or
reconfigured by means of a routine (e.g., loaded configuration) to execute
different pending instructions.
Additionally, we agree with the Examiner (Ans. 21-22) that
Appellants are attacking the cited references individually (see App. Br. 11-
12) and that such an approach does not show nonobviousness where the
rejection, as is here, is based on the combination of Jacob, Mano, and Zaidi.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Nonetheless, the Examiner admits that Jacob alone does not teach the
recitation of an apparatus configured to determine if a software routine exists
for reconfiguring said programmable devices to enable them to execute said
instruction and relies on Zaidi in combination with Jacob to cure the
deficiencies. See Ans. 9-10, 21-23.
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Zaidi teaches a micro-instruction sequencer (MIS) logic 203 that
transforms macro-instructions into one or more micro-operations (uops)
and/or Super-uop (Suops) by referencing the micro code ROM (UROM),
where the uops and Suops are stored. Col. 3, ll. 57-61; Fig. 2. Zaidi’s logic
suggests that software or programming is used to configure or reconfigure
the device. Zaidi further describes using the expander 210 to perform scalar
or packed operations. Col. 4, ll. 3-7; Fig. 2. When combined with Jacob’s
programmable devices, these teachings in Zaidi demonstrate that software
routines exist for reconfiguring the programmable device (e.g., routines that
transform a macro-instruction configuration to micro-instruction
configurations) to enable them to execute the instruction. Thus, as broadly
as recited in claim 13, we disagree with Appellant and conclude that Jacob
and Zaidi collectively teach programmable devices that are reconfigured “in
the manner claimed” (App. Br. 12).
Also, merely pointing out what claim 13 recites and then asserting
without any further argument that the cited references fail to teach “if said
software routine exists, replace said instruction with one or more pointers to
said software routine” (see App. Br. 10-12) is not considered a separate
argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). For the first time in the Reply Brief (Reply Br. 3), Appellant
elaborates slightly by contending that converting macro-instructions into
micro-instructions does not disclose replacing an instruction with one or
more pointers to said software routine. Reply Br. 3. Yet, the Examiner cites
to Zaidi in columns 3 and 4 (Ans. 9-10), where Zaidi discusses that, if Suops
are generated, the MIS logic references the macro-instructions operations
code (opcode) or any applicable associated information to determine
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whether the operation to be performed relative to each Suops is packed or
scalar (col. 3, ll. 63- col. 4, l. 11). By referencing the macro-instructions
opcode (see id.), Zaidi at least suggests replacing an instruction itself (e.g.,
the macro-instruction) with a pointer to a software routine (e.g., the
reference to the opcode). And when combining this teaching with Jacob, the
combination teaches or suggests replacing an instruction with one or more
pointer to the software routine as recited. See also Ans. 10, 22-23.
Independent claims 14-16 are commensurate in scope with the above
disputed limitation and are separately argued. App. Br. 13-20. Appellant
repeats the argument of claim 13 for claims 14-16. Compare App. Br. 10-12
with App. Br. 13-20. For example, Appellant argues that neither Jacob nor
Zaidi teaches the limitation of an “apparatus being configured to . . .
determine if a software routine exists for reconfiguring said programmable
devices to enable them to execute said instruction and, if said software
routine exists, replace said instruction with one or more pointers to said
software routine . . .” in claim 14 or similar recitations in claims 15 and 16.
App. Br. 13-20. We are not persuaded for the reasons discussed previously.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claims 13-16.

THE OBVIOUSNESS REJECTION OVER JACOB, ZAIDI,
AND TREDENNICK

Appellant repeats the arguments presented when addressing claim 13
concerning Jacob and Zaidi when addressing representative claim 17.2

2 Notably, claim 17 recites “perform at least one of the following” steps (a)-
(c) (emphasis added) and later recites “wherein the processor is configured
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Compare App. Br. 10-12 with 21-23. We are not persuaded for the reasons
previously discussed. For the foregoing reasons, Appellant has not
persuaded us of error in the rejection of independent claim 17 or dependent
claims 2-9 not separately argued with particularity (App. Br. 21-23).

THE REMAINING OBVIOUSNESS REJECTIONS
Regarding representative claim 18, Appellant argues Jacob does not
teach replacing the pending instruction with a pointer to one or more
instruction of a software routine as recited. App. Br. 23-25.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 18 by finding
that Jacob and Patel collectively would have taught or suggested performing
at least the step of “reconfiguring at least one of reconfigurable elements to
enable said reconfigurable elements to execute said pending instruction”?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 18. Notably, claim 18 recites “performing . . . at least one
of the following” (emphasis added) and thus requires that only one of the
two recited steps be performed. That being so, demonstrating whether Jacob
teaches the replacing step (a) is not necessary to meet the required
limitations in claim 18. See App. Br. 23-25; Ans. 28.

to perform each of the operations (a)-(c)” (emphasis added). If there is
further prosecution, the Examiner should consider whether these recitations
in claim 17 and, similarly in claim 18, are consistent.
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Concerning the “reconfiguring” step (b), Appellant merely points out
what claim 18 recites and then asserts that Jacob and Patel fail to teach the
“reconfiguring” step (b). See App. Br. 24-25. Merely asserting that the
cited art fails to teach a feature is not considered a separate argument for
patentability. See Lovin, 652 F.3d at 1357. Additionally, Appellant presents
no additional argument or evidence to rebut the Examiner’s finding that
Jacob teaches performing at least recited step (b). Ans. 4-5. Thus, the
Examiner’s findings concerning the “reconfiguring” step remain unrebutted.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 18 or dependent claims 11, 12, 19, and 20
not separately argued with particularity (App. Br. 21-23).

CONCLUSION
The Examiner erred in rejecting claims 13-16 under § 112, second
paragraph.
The Examiner did not err in rejecting claims 2-9 and 11-20 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 2-9 and 11-20 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)(iv).

AFFIRMED

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