Ex Parte 6643765 et al

Board of Patent Appeals and Interferences

Dec 9, 2010

95000089 (B.P.A.I. Dec. 9, 2010)

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.
95/000,089 04/15/2005 6643765 33142.12 2037
7590 12/09/2010
Leonard Guzman
MCDERMOTT WILL & EMERY LLP
600 13th Street N. W.
Washington, DC 20005-3096
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/09/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

INTEL CORPORATION
Respondent
v.

MICROUNITY SYSTEMS ENGINEERING, INC.
Patent Owner, Appellant
____

Appeal 2010-008981
Inter partes Reexamination Control No. 95/000,089
United States Patent 6,643,765 B1
Technology Center 3900
____________

Before SALLY C. MEDLEY, ALLEN R. MacDONALD, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-008981
Reexamination Control 95/000,089
Patent 6,643,765 B1

Appellant, patent owner Microunity Systems Engineering, Inc.,
appeals under 35 U.S.C. §§ 134(b) and 306 from a Right of Appeal Notice
rejecting claims 1-30. (App. Br. 3.) We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a request by Intel Corporation for an inter
partes reexamination of U. S. Patent 6,643,765 B1, titled “Programmable
Processor With Group Floating Point Operations,” and issued to Craig
Hansen and John Moussouris (Nov. 4, 2003). An oral hearing of this appeal
transpired before the BPAI on November 17, 2010.
The ‘765 patent describes dynamic partitioning of data in a
microprocessor. Claim 1 on appeal reads as follows:
1. A programmable media processor comprising:
a general purpose processor architecture, capable of operation
independent of another host processor, having a virtual memory addressing
unit, an instruction path and a data path;
an external interface operable to receive data from an external source
and communicate the received data over the data path;
a cache operable to retain data communicated between the external
interface and the data path;
at least one register file configurable to receive and store data from the
data path and to communicate the stored data to the data path; and
a multi-precision execution unit coupled to the data path, the multi-
precision execution unit configurable to dynamically partition data received
from the data path to account for an elemental width of the data wherein the
elemental width of the data is equal to or narrower than the data path,
the multi-precision execution unit being capable of performing group
floating-point operations on multiple operands in partitioned fields of
operand registers and returning catenated results.

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The Examiner relied upon the following prior art references:

WO 97/07450 Hansen (Feb. 27, 1997)

Nobuhiro Ide et al., “A 320-MFLOPS CMOS Floating-Point Processing
Unit for Superscalar Processors,” IEEE J. Solid State Circuits, Vol. 28, No.
3 (March, 1993).
Tom Asprey et al., “Performance Features of the PA7100 Microprocessor,”
IEEE Micro 22-35 (June 1993).
Claims 1-4, 7, 17, 25, and 27-30 stand rejected under 35 U.S.C.
102(b) as anticipated based on Hansen.
Claims 1-30 stand rejected under 35 U.S.C. 103(a) as obvious based
on Hansen and Ide.
Claims 1-4, 7, 17, 25, and 27-30 stand rejected under 35 U.S.C.
103(a) as obvious based on Asprey and Ide.
ISSUES
Appellant does not contest the Examiner’s findings concerning what
Hansen teaches. Rather, Appellant disputes the Examiner’s finding that
Hansen constitutes an intervening prior art reference. (App. Br. 5-7; Ans. 5.)
This dispute raises the first issue of whether the parent of the ‘765 patent,
U.S. 6,295,599, provides written description support for “dynamic
partitioning” as recited in claim 1, thereby antedating Hansen as a prior art
reference.
Appellant and the Examiner also disagree over the meaning of
“dynamically partition” and also, whether Ide teaches this limitation. (App.
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Br. 21-23; Ans. 5.) Thus, the second issue on appeal is whether Ide teaches
or renders obvious dynamic partitioning as set forth in claim 1.
FINDINGS OF FACT (FF)
1. The ‘599 patent introduces a computer listing appendix as follows:
“Included herewith as an Appendix are 5 sheets of microfiche of 309
frames.” (‘599 patent, col. 1, ll. 14-15.) The body of the ‘599 patent refers
to the appendix in terms of the computer instructions, including ensemble,
operand, or other data manipulation operations, in at least eight other
instances. (See Ans. 12-13 (listing and briefly describing the citations to the
appendix).)
2. The Examiner found that written descriptive support exists for the
concept of dynamic retrieval in the ‘599 patent, provided that the appendix is
included as part of the ‘599 disclosure, but does not provide support for the
structure claimed: “The cited appendix pages simply detail the functional
algorithmic steps that a system or user must perform to achieve group
floating-point operations, but also fails to disclose any description of how a
circuit structure would be designed to perform these operations as claimed.”
(Action Closing Prosecution 9 (Mar. 2, 2006).)
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); accord In re Wertheim,
541 F.2d 257, 263 (CCPA 1976) (initial burden on Examiner to present
evidence showing why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims).
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For written description support, specific terms need not be recited in
the supporting disclosure. In re Anderson, 471 F.2d 1237, 1244 (CCPA
1973) (“The question, as we view it, is not whether ‘carrying’ was a word
used in the specification as filed but whether there is support in the
specification for employment of a term in a claim; is the concept of carrying
present in the original disclosure?”) “Properly viewed, the ‘ordinary
meaning’ of a claim term is its meaning to the ordinary artisan after reading
the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.
2005) (en banc).
ANALYSIS
Appellant’s arguments that the ‘599 patent, including the microfiche
computer program listing appendix (see FF 1), provides written descriptive
support for dynamic partitioning, are persuasive. (See e.g., App. Br. 15-19
(tying claim language to the ‘599 patent, and references therein, to the ‘599
patent appendix to support dynamic partitioning).) As Appellant points out,
the Examiner concedes that the ‘599 patent, including its appendix, provides
written descriptive support for the dynamic partitioning software code
appearing in the appendix. (App. Br. 17; accord FF 2.) Given this
concession of support for the concept of dynamic partitioning, the fact that
the word “dynamically” does not appear in the ‘599 patent or its appendix is
not significant. See Anderson, 471 F.2d at 1244.
On one hand, as indicated supra, the Examiner finds descriptive
support for the dynamic partitioning algorithm/code described in the
appendix and body of the ‘599 patent (FF 2), but on the other hand,
alternatively or otherwise contends that the ‘599 patent’s references to the
lengthy appendix are too tenuous or oblique to describe the dynamic
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partitioning algorithm/code with requisite specificity (see Ans. 11-14).
Notwithstanding this contention asserting a lack of a descriptive link
between the ‘599 patent body and appendix (Ans. 11-14), Appellant, with
support of expert testimony (First Van Dyke Decl. ¶ 24, App. Br. Ex. F),
persuasively demonstrates that specific passages in the body of the ‘599
patent sufficiently link ensemble group operand data partitioning and
pseudocode descriptions there to the particular dynamic partitioning
software in the appendix. (App. Br. 14-17.)
As also indicated supra (FF 2), the Examiner additionally maintains
that the ‘599 patent does not describe the specific hardware structure
required by the execution unit which performs the dynamic partitioning as
recited in claim 1. In response, Appellant, relying on expert testimony,
persuasively shows that skilled artisans would have been in possession of
the claimed generic “execution unit” hardware required by claim 1. (See
App. Br. 18-19.) In addition, expert testimony (Second Van Dyke Decl. ¶¶
14-20) shows that at the time of the invention, skilled microprocessor
artisans would have recognized that the pseudocode disclosed in the ‘599
patent appendix describes the logic involved, thereby resembling a blueprint
for hardware logic, specifically a form of HDL (hardware description
language) code invariably leading to the corresponding hardware logic
circuit via a small set of off-the-shelf synthesis tools employed as standard
industry practice by such skilled artisans. (App. Br. 18-19; Reb. Br. 7-9.)
As Appellant further points out, the Examiner did not rebut this
testimony. (App. Br. 19.) Rather, the Examiner contends that Appellant’s
evidence merely shows that skilled artisans would have been led, at most, to
different “obvious variant[s]” (i.e., presumably hardware variants
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implementing the logic code). (See Ans. 29.) According to the Examiner,
this set of known obvious variants fails to satisfy a written description of the
invention. (See id.)
But this rationale fails to consider that the claim is drawn to a generic
execution unit. Further, the Examiner’s rationale and Appellant’s argument
and evidence coalesce to show that a small set of well-known software
conversion tools reasonably convey the generic hardware claimed, thereby
satisfying the written description requirement. Moreover, as Appellant
argues, “[t]he MPEP specifically instructs that ‘the written description
requirement may be satisfied through disclosure of function and minimal
structure when there is a well-established correlation between structure and
function.’” (App. Br. 18, citing MPEP 2163(II)A(3)(a)(i) (emphasis
deleted).)
Nonetheless, according to the Examiner, since the appendix includes
not only computer code, but other documentation, it was improper for the
USPTO to enter it as part of the ‘599 patent disclosure. In the alternative,
the Examiner contends that that even if the entry of the (microfiche)
appendix had been proper, the appendix does not constitute part of the ‘599
patent disclosure because the body of the patent does not employ the phrase
“incorporated by reference” (in conjunction with the introductory reference
to the appendix (see FF 1)). Without the appendix, or alternatively, with
only the computer code portion of the appendix, the Examiner maintains that
the ‘599 patent does not support a written description of dynamic
partitioning. (See Ans. 15-24.)
Appellant’s arguments show that the applicable rules in force at the
time of filing of the ‘599 patent mandated neither that appendices must
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preclude documentation describing computer code, nor that appendices must
be introduced by using the phrase “incorporated by reference.” (See App.
Br. 8-10 (quoting 7th Ed. MPEP sections and 37 C.F.R §§ 1.77(a)(6) &
1.96(c) applicable at the ‘599 patent filing date (1999)). In apparent
compliance with the rules presumably according to the prior examiner’s,
applicant’s, and the agency’s implied understanding thereof, the prior
examiner entered the appendix, which the body of the ‘599 patent refers to at
least nine times (FF 1). Finally, as Appellant argues, the descriptive text in
the appendix aids the ‘599 patent disclosure by further describing the code.
(App. Br. 14-16; Reb. Br. 7-13.) Under the circumstances here, the
appendix constitutes a proper portion of the disclosure. Cf. Southwest
Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1287, 1291, 1296-97 (2000)
(public entitled to rely on printing error by USPTO in not including a
“computer listing printout appendix of source code” as part of a certified
copy of a patent).
With respect to the meaning of “dynamic partitioning” and the
Examiner’s finding that Ide teaches it, expert evidence and argument
provided by Appellant show that in the term “dynamic” means “on the fly”
or “characterized by continuous change” in the microprocessor data
processing arts. (App. Br. 22, citing Ex. I, Second Van Dyke Decl. at ¶¶ 17-
23 (quoting trade dictionaries and distinguishing Ide’s static partitioning).)
The Examiner’s interpretation of “dynamic” encompasses static instructions
performed in a microprocessor, effectively reading “dynamic” out of the
claim, as Appellant argues. (App. Br. 22-23.) The Examiner does not
contend that dynamic partitioning would have been obvious in view of Ide.
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As such, the Examiner did not demonstrate that Ide discloses or renders
obvious the dynamic partitioning recited in claim 1.
Based on the foregoing discussion, the Examiner has not established
that Hansen constitutes an intervening prior art reference or that Ide
discloses or renders obvious dynamic partitioning as recited in claim 1. As
the Examiner’s rejections rely on one or the other of these two propositions,
we will not sustain any of the rejections, including the rejections of the
dependent claims which all depend from claim 1.
CONCLUSION
Based on the evidence and arguments of record, the ‘599 patent
provides descriptive support for, and Ide does not disclose or suggest,
dynamic partitioning as set forth in claim 1.
DECISION
The Examiner’s decision to reject claims 1-30 is reversed.
REVERSED

ak

Leonard Guzman
McDermot Will & Emery, LLP
600 13th Street NW
Washington, DC 20005-3096

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Third Party Requester:
David L. McCombs
Haynes and Boone, LLP
2323 Victory Avenue
Suite 700
Dallas, Texas 75219