Ex Parte 7,191,273 et al

Patent Trial and Appeal Board

May 19, 2015

95000663 (P.T.A.B. May. 19, 2015)

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.
95/000,663 04/13/2012 7,191,273 ART-12-5014REX 4765
25226 7590 05/19/2015
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/19/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

ARTERIS, INC.,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2014-009395
Reexamination Control 95/000,663
Patent 7,191,273 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 95/000,663
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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 2–17 and 20–31.1 PO App. Br. 4. Requester appeals the
Examiner’s decision not to adopt the rejections of claims 1–31 over various
references. 3PR App. Br. 9–10.2 We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An oral hearing was conducted on April 15, 2015.

STATEMENT OF THE CASE
This proceeding arose from an April 13, 2012 request by Arteris, Inc.
(“Requester”) for an inter partes reexamination of claims of U.S. Patent
7,191,273 B2, titled “Method and Apparatus for Scheduling a Resource to
Meet Quality-Of-Service Restrictions,” and issued to Wolf-Dietrich Weber,
on March 13, 2007 (“the ’273 patent”).
The ’273 patent describes a method and system for scheduling access
to a resource. Spec. 1:12–13. Claim 2 reads as follows:
2. A method, comprising:
scheduling access to a resource to meet quality of service
guarantees for requests;
storing a first request in a first channel that is assigned with a
first priority level;
keeping track of scheduling history from the first channel;
demoting a priority level of the first channel based on
exceeding a tracked feature of scheduling history associated with the
first channel in a specified period of time, wherein the tracked feature
of scheduling history associated with the channel is a type of request
within a request stream; and
scheduling the first channel to issue the first request to a
resource to meet quality of service guarantees for requests.

1 Patent Owner Appeal Brief, dated August 16, 2013 (“PO App. Br.”).
2 Appeal Brief for Requestor’s Cross-Appeal, dated August 27, 2013 (“3PR
App. Br.”).
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The cited references are as follows:

Horst US 5,710,549 Jan. 20, 1998
Fong US 6,263,359 B1 July 17, 2001
Tetrick US 6,757,798 B2 June 29, 2004
Amalfitano US 7,933,249 B2 Apr. 26, 2011

Patent Owner appeals the Examiner’s rejection of claims 2–17 and
20–31 under 35 U.S.C. § 102(a) as anticipated by Fong.
Requester appeals the Examiner’s determination that Requester fails
to show a reasonable likelihood of prevailing (i.e., a substantial new
question of patentability) with respect to the Requester’s proposed rejection
of claims 1, 18, or 19 as anticipated by Fong or Amalfitano or as
unpatentable over Amalfitano, the combination of Amalfitano and Horst, or
the combination of Fong and Horst; claims 2–5, 7, 8, 10–13, 15, 16, 20–23,
25, 26, and 28–31 as unpatentable over Amalfitano and Tetrick; claims 2–20
and 20–31 as unpatentable over Fong and Tetrick; and claims 1–31 as
unpatentable over Fong.

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“[T]he Director shall determine whether the information presented in
the request shows that there is a reasonable likelihood that the requester
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would prevail.” 35 U.S.C. § 312(a). “A determination by the Director . . .
shall be final and non-appealable.” 35 U.S.C. § 312(c).

ANALYSIS

Requester’s Appeal

The Examiner determines that the information presented by Requester
fails to show that there is a reasonable likelihood that the Requester would
prevail with respect to the proposed rejections of claims 1, 18, or 19 as
anticipated by Fong or Amalfitano or as unpatentable over Amalfitano, the
combination of Amalfitano and Horst, or the combination of Fong and
Horst; claims 2–5, 7, 8, 10–13, 15, 16, 20–23, 25, 26, and 28–31 as
unpatentable over Amalfitano and Tetrick; claims 2–20 and 20–31 as
unpatentable over Fong and Tetrick; and claims 1–31 as unpatentable over
Fong. Order Granting Request for Inter Partes Reexamination, dated May
16, 2012, 3–13. Under 35 U.S.C. § 312(c), this determination is “final and
non-appealable.” Hence, the Examiner’s determination with respect to the
above stated grounds of rejection is not subject to appeal.

Patent Owner’s Appeal (Claims 2–17 and 20–31)

Claim 2 recites storing a request in a channel. Patent Owner argues
that Fong fails to disclose a “channel” because, according to Patent Owner,
one of ordinary skill in the art would have understood the claim term
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“channel” to mean “the hardware mechanism for storage of requests” and
Fong supposedly fails to disclose this feature. PO App. Br. 18–22.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, and the language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)
(citations omitted). In construing the claim term “channel,” we first turn to
the claim itself because “the context in which a term is used in the asserted
claim can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005).
Patent Owner does not demonstrate persuasively that a “channel,” as
recited in claim 2, for example, must be a “hardware mechanism.” Patent
Owner therefore fails to demonstrate that one of ordinary skill in the art
would have understood, broadly but reasonably, the claim term “channel” to
be a “hardware mechanism” based on the context of the claim.
We apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. In re
Amer. Acad. of Sci. Tech Ctr., 367 F.3d at 1369 (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)). While no explicit definition of the term
“channel” is identified in the Specification, we note that the Specification
does disclose that a “channel” is “logically or physically implemented.”
Spec. 2:31–32. Patent Owner does not explain how one of ordinary skill in
the art would have reasonably understood a “channel” that is explicitly
disclosed as “logically” implemented to be required to be a “hardware
mechanism.” We therefore are not persuaded that one of ordinary skill in
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the art would have understood, in light of the Specification, that a “channel,”
as recited in claim 2, for example, would have been required to be a
“hardware mechanism.”
Instead, the Specification discloses that requests “are stored in a
channel” and a channel may be “logically or physically implemented.” The
Specification further illustrates a “channel” as a box or series of boxes.
Spec. 2:29–32, Fig. 1. Likewise, Fong discloses that a “job is analogous to a
requester” and that a “class has only one requester [or job].” Fong 4:15, 19.
Fong also discloses that a class may be depicted as a box or series of boxes
in an illustration. Fong Figs. 1–2. If a class “has” a requester, or job, as
disclosed in Fong, one of skill in the art would have understood that the class
stores the requester, or job, as the class would store the request (from a
requester) in order to “have” it. Patent Owner does not point out a sufficient
difference between the class of Fong that “has” a request and the “channel,”
as recited in claim 2, that logically “stores” a request. In both cases, a
request is contained within a component that may be depicted as a box or a
series of boxes in an illustration. See e.g., Spec. Fig. 1, Fong Figs. 1–2.
Claim 2, for example, recites a “priority level.” Patent Owner does
not dispute the Examiner’s proposed broad but reasonable construction of
the term “priority” (as “the quality or state of being prior” or “precedence in
date or position,” or “superiority in rank, position, or privilege”). RAN 7.
But Patent Owner argues that Fong fails to disclose “priority level” (as
opposed to “priority”), as recited in claim 2. Hence, Patent Owner argues
that while Fong discloses “priority,” Fong supposedly fails to disclose a
“level” of priority. We are not persuaded by Patent Owner’s arguments.
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Fong discloses a “class” that “has only one requester,” that “a job is
analogous to a requester” and that the job class (that has one requester
analogous to one job) may “include one” job. Fong 4:15, 19, 24–25. Hence,
in Fong, a “class” has a “job,” which is also a “requester.” Fong also
discloses that the “job classes” are “arranged in a general ‘hierarchy’” such
that a job class is “at each level of the scheduling hierarchy.” Fong 2:43–44,
67. This “hierarchical scheme is used together with the migration
mechanism associated with each class, which drops a job [analogous to a
“requester” or a “job class”] to a lower class” “upon its exceeding a set of
criteria.” Fong 8:30–31, 42–44. Hence, Fong discloses each job class
(containing one job, which is one requester) is at a “level of the scheduling
hierarchy” and that a job class (at a particular “level” in the hierarchy and
analogous to one job) is dropped to a lower class (at a particular lower
“level” in the hierarchy). Patent Owner does not point out sufficient
differences between Fong’s disclosure of each job class being associated
with a “level” in a hierarchy and one job class dropped to a lower class
(which is associated with another (lower) “level” in the hierarchy), and the
“level” as recited in claim 2, for example. In either case, a “level” is
provided that is associated with a “priority” (that is “dropped” or
“demoted”).
Patent Owner argues that dropping a job (or job class) to a lower class
(at a lower priority “level” in the hierarchy), as disclosed by Fong, is “not
the same . . . as demoting the priority level of all the requests stored in a
channel by temporarily demoting the priority level of that channel.” PO
App. Br. 11 (citing Supplemental Affidavit Pursuant to 37 C.F.R. 1.132 and
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MPEP 2616, dated November 24, 2012 (“Janstch Supp. Aff.”)). Dr. Janstch
avers that claim 2 requires that “a channel is demoted” while, according to
Dr. Janstch, Fong discloses “a job is migrated [or “demoted”].” Janstch
Supp. Aff. 14. As indicated above, Fong discloses that a job class has “one
job” and that the “migration mechanism” is “associated with each job class”
in which a “job of one class” is “migrated to another lower class.” Fong
8:29–31. In other words, Fong discloses migration of a job class (that has
one job) to a lower class. Patent Owner and Dr. Janstch do not explain
sufficiently a difference between Fong’s disclosure of “migrating” (i.e.,
demoting”) a priority level of a job class (containing one job and at a
particular “level” of hierarchy, or priority) to a lower class (i.e., at a lower
“level” of hierarchy, or priority) and demoting a priority level of a channel.
In both cases, a system component (i.e., a “channel” or a “job class”) that
contains a “job” or “request” is migrated/demoted to a (lower) job
class/channel at a lower priority level.
Claim 2 recites demoting a priority level of a channel based on
exceeding a tracked feature in a specified period of time. Patent Owner also
argues that Fong fails to disclose demoting a priority level “in the specified
period of time.” PO App. Br. 15. We disagree with Patent Owner.
For example, as previously discussed, Fong discloses demoting a
priority level based on exceeding a tracked feature, as recited in claim 2.
Fong also discloses that certain jobs or tasks have “priority” over other jobs
or tasks based on various functions (e.g., a “time-based function”) or
“individual parameters of each objective” (the job “priority” being at a
“level of the scheduling hierarchy” – Fong 2:67). Fong also discloses that
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demoting a level of hierarchy (i.e., a “priority level”) is accomplished by
“[a]djustment of the parameter values . . . upon expiration of a certain time.”
See, e.g., Fong 7:21–24, 27, 34–36, 38–41. In other words, Fong discloses
changing or demoting a priority level associated with a task or job (or “job
class”) in a “specified period of time” (i.e., based on exceeding an
“expiration of a certain time”).
Regarding claims 20–28, Patent Owner argues that Fong fails to
disclose the “corresponding ‘273 structure for these means plus function
independent claims 20 and 28.” PO App. Br. 24. In particular, Patent
Owner argues that claim 20 recites a means for storing a first request in a
first channel and a means for demoting a priority level of the first channel,
which, according to Patent Owner, is “a physical device to store requests
[corresponding to the means for storing]” and “a job is clearly intended to
access the resource first as it has a higher priority, but that priority is
temporarily demoted based on exceeding a tracked feature [corresponding to
the means for demoting].” PO App. Br. 24.
“The use of the word ‘means,’ which is part of the classic template for
functional claim elements, gives rise to ‘a presumption that the inventor used
the term advisedly to invoke the statutory mandates for means-plus-
functions clauses’.” Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d
1420, 1427 (Fed. Cir. 1997) citing York Prods., Inc. v. Cent. Tractor Farm
& Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996). Claim 1 recites the
word “means” for functional claim elements. Therefore, a presumption of a
means-plus-function clause arises and we “must look to the specification and
interpret that language in light of the corresponding structure, material, or
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acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994).
Claim 20 recites “means for storing a first request in a first channel.”
Turning to the Specification to “interpret that language in light of the
corresponding structure, material, or acts described therein,” we note that the
Specification discloses a “channel” that is “logically or physically
implemented” and “accommodates requests from one requester.” Spec.
2:30–34. We do not identify any specific “structure” disclosed in the
Specification pertaining to the “means for storing a first request in a first
channel” other than the depiction of the channel as a box or series of boxes.
Spec. Fig. 1. Nor does Patent Owner point out any specific corresponding
structure disclosed in the Specification. Hence, the “means for storing” a
request, as recited in claim 20, for example, corresponds to a structure,
material, or acts as described in the Specification as a structure that logically
or physically accommodates a request from a requester and may be
illustrated as a generic box or series of boxes. As previously discussed,
Fong discloses a structure (i.e., job class) that is depicted as a generic box or
series of boxes (Fong Fig. 1–2) that logically or physically accommodates a
request (from a requester).
Likewise, we do not identify any specific “structure” disclosed in the
Specification corresponding to the “means for demoting a priority level of
the first channel” and the Patent Owner does not point out such a structure
disclosed in the Specification. Nor do we identify any specific “structure”
disclosed in the Specification that “demotes” a priority level at all. Rather,
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we identify the closest structure corresponding to a “means for demoting a
priority level of the first channel” as an “arbitration unit 30” that “is
responsible for scheduling access by each channel to the resource 35” and
“selects the channel that can proceed to service.” Spec. 2:40–41, 59–60. In
this “arbitration process,” a request “with the highest priority of service is
examined” and if the request is “within their bandwidth allocation,” the
request is “issued.” If the request is “not within allocation,” then “the
request from [a] channel . . . at a level of a next-lower priority, [is]
examined.” Spec. 4:18–19, 24–31.
While the Specification does not disclose that a specific structure
“demotes” a priority level, the Specification does disclose that the
“arbitration unit 30” selects a lower priority request over a higher priority
request if the higher priority request is, for example, “not within allocation,”
thus effectively “demoting” the priority level of the higher priority request.
We therefore identify the “arbitration unit 30,” disclosed in the Specification
as the structure corresponding to the claimed “means for demoting a priority
level of the first channel.” The “arbitration unit 30” is disclosed in the
Specification as a unit that is capable of selecting a lower priority request
over a higher priority request and can be depicted as a generic shape in an
illustration. See e.g., Spec. Fig. 1. As previously discussed, Fong discloses
a structure that can be depicted as a generic shape in an illustration and that
is capable of selecting a lower priority request over a higher priority request.
The Examiner did not err in rejecting claims 2–17 and 20–31.
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DECISION
We affirm the Examiner’s rejection of claims 2–17 and 20–31 under
35 U.S.C. § 102(a) as anticipated by Fong.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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PATENT OWNER:

MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, CA 94304-1018

THIRD PARTY REQUESTER:

PATENT GROUP C/O DLA PIPER US LLP
203 N. Lasalle Street
Suite 1900
Chicago, IL 60601