Ex Parte Warner et al

Patent Trial and Appeal Board

Jul 30, 2013

11733857 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte CRAIG WARNER, DAN ROBINSON,
JOHN WASTLICK, and MICHAEL SCHROEDER
_____________

Appeal 2010-009742
Application 11/733,857
Technology Center 2100
______________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
MIRIAM L. QUINN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009742
Application 11/733,857

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 20.
We affirm-in-part.
INVENTION
The invention is system for using a non-inclusive cache. See Abstract
of Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A non-inclusive cache system comprising:
a noninclusive cache; and
a cache agent that receives a request for access to the
non-inclusive cache and denies the request for access to the
non-inclusive cache if the non-inclusive cache system exceeds a
predetermined level of activity;
wherein the cache agent processes the request or
forwards the request for processing if the request is denied
access to the non-inclusive cache.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 6, 9, 11, 12, 16, 17, 18,
and 20 under 35 U.S.C. § 103 as unpatentable over Hicks (U.S. 5,787,478)
and Kaczynski (U.S. 2005/0086439 A1). Answer 3-13.1
The Examiner has rejected claims 10 and 19 under 35 U.S.C. § 103 as
unpatentable over Hicks, Kaczynski, and Lynch (U.S. 6,061,766). Answer
13-15.

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
March 15, 2010.
Appeal 2010-009742
Application 11/733,857

3

The Examiner has rejected claims 13 through 15 under 35 U.S.C.
§ 103 as unpatentable over Hicks, Kaczynski, and Shibata (U.S. 5,987,571).
Answer 15-19.
The Examiner has rejected claims 7 and 8 under 35 U.S.C. § 103 as
unpatentable over Hicks, Kaczynski, and Arimilli (U.S. 6,704,843 B1).
Answer 19-21.
ISSUES
Appellants argue on pages 14 through 18 of the Appeal Brief and on
pages 2 and 3 of the Reply Brief that the Examiner’s rejection of claims 1
through 6, 9, 11, 12, 16 through 18, and 20 is in error.2 These arguments
present us with the issues:
a) did the Examiner err in construing the claim limitation “wherein
the cache agent processes the request or forwards the request for
processing if the request is denied to the non-inclusive cache,” as
recited in representative claim 1?
b) did the Examiner err in finding that the combination of Hicks and
Kaczynski teaches this feature?

With respect to claims 10 and 19, Appellants’ arguments on pages 18
and 19 of the Brief, present the same issues as discussed above.

With respect to claims 13 through 15, Appellants’ arguments on pages
19 through 21 of the Brief, present us with the issue:

2 Throughout this opinion we refer to Appellants’ Appeal Brief filed on
January 11, 2010 and Reply Brief dated May 12, 2010.
Appeal 2010-009742
Application 11/733,857

4

c) did the Examiner err in finding that the combination of Hicks,
Kaczynski and Shibata teaches a means for forwarding a request
that has been denied access to non-inclusive shared cache?

With respect to claims 7 and 8, Appellants’ arguments on pages 21
through 22 of the Brief, present us with the issue:
d) did the Examiner err in finding that the skilled artisan would
combine teachings of Arimilli with Hicks, Kaczynski, and Shibata?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in rejecting claims 1 through
12 and 16 through 20 (issues a, b, and d), however we agree with
Appellants’ conclusion that the Examiner erred in rejecting claims 13
through 15 (issue c).

Issue a)
The Appellants’ arguments have not persuaded us of error in the
Examiner’s claim construction. We have reviewed the Examiner’s response
on pages 21 through 23 of the Answer. We concur with the Examiner’s
interpretation that the claim is written in the alternative, and as such the art
rejection does not require finding that both elements are taught by the prior
art.

Appeal 2010-009742
Application 11/733,857

5

Issue b)
Appellants’ arguments center on the assertion:
[I]f Hicks et al. is modified in view of Kaczynski as asserted in
the Final Office Action, Appellant [sic] contends that the
combination would merely deny access to the non-inclusive
cache, and would not provide any mechanism for the cache
agent to process the denied request without re-submitting the
request. This is in direct contrast to Appellant’s claims, which
each recite [sic] processing of the request or forwarding the
request for processing if the request is denied.

Brief 17. We are not persuaded by this argument, as it is not commensurate
with the scope of the claim. As discussed above, the claim only requires
either reprocessing the request or forwarding the request for processing if the
request is denied. The Examiner finds, and we concur, that Kaczynski
teaches the processing of the request. Answer 22-23. Further, we note that
underlying Appellants’ argument is that the claim precludes a step of
resubmitting the request between the cache agent receiving the request and
the cache agent processing the request. Appellants have not shown, nor do
we find, that representative claim 1 includes such a limitation. Accordingly,
we are not persuaded of error in the Examiner’s rejection of representative
claim 1.
As issues a) and b) are the only issues presented with respect to the
Examiner’s rejection of claims 1 through 6, 9 through 12, and 16 through 20,
we sustain the Examiner’s rejection of these claims.

Issue c)
Appellants’ arguments have persuaded us that the Examiner erred in
finding that the combination of Hicks, Kaczynski, and Shibata teaches
Appeal 2010-009742
Application 11/733,857

6

“means for forwarding a request that has been denied access to the non-
inclusive shared cache.” The Examiner, in rejecting claim 13, relies upon
Shibata’s teaching of forwarding a request that has been denied access to the
non-inclusive cache. Answer 23. In making this finding, the Examiner finds
that the cache miss taught by Shibata behaves the same way as a cache
request that is denied. Answer 24. We disagree with the Examiner that this
meets the claim 13 limitation of denying cache to the non-inclusive shared
cache and forwarding a request that has been denied. As Appellants argue, a
cache miss and a denial of access to the cache are different because to
determine a cache miss, access to the cache is required. Reply Brief 5.
Accordingly, we do not sustain the Examiner’s rejection of claims 13
through 15.

Issue d)
Appellants have not persuaded us that the Examiner erred in finding
that the ordinarily skilled artisan would combine teachings of Arimilli with
Hicks, Kaczynski, and Shibata. Appellants argue that the Examiner’s reason
for the combination, because Kaczynski will need to check the size of the
queue to calculate level of activity, is in error, as Kaczynski does not need to
check the number of activities the system is processing. Brief 22. We
disagree with Appellants’ argument. While, as asserted by Appellants,
Kaczynski’s system may determine the congestion based on a request not
being serviced in a predetermine time or a number of requests having a
priority (Brief 22), such a teaching does not preclude use of other known
methods of determining congestion. Use of other method of determining
congestion, such as taught by Arimilli, merely represents the use of known
Appeal 2010-009742
Application 11/733,857

7

methods for their known purpose and to perform their known and
predictable results. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).3 Accordingly, Appellants’ arguments have not persuaded us of error
in the Examiner’s rejection, and we sustain the Examiner’s rejection of
claims 7 and 8.

DECISION
We sustain the Examiner’s rejection of claims 1 through 12 and 16
through 20. We do not sustain the Examiner’s rejection of claims 13 through
15.
The Examiner’s rejection of claims 1 through 20 is affirmed-in-part.
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-IN-PART

msc

3 See also Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (holding that “adaptation of an old idea or invention…using
newer technology that is commonly available and understood in the art” (i.e.,
updating a children’s toy with modern electronic components to gain the
commonly understood benefits of such adaptation), would have been
obvious to ordinarily skilled artisans).