Ex Parte 7277975 et al

Patent Trial and Appeal Board

Nov 19, 2015

95000668 (P.T.A.B. Nov. 19, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,668 05/24/2012 7277975 ART-12-5017REX 3249
25226 7590 12/08/2015
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/08/2015 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 2015-004277
Reexamination Control 95/000,668
Patent 7,277,975 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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Patent 7,277,975 B2

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Sonics, Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134 and
315 the Examiner’s rejection of claims 1, 4, 5, 34, and 37 and Arteris, Inc.
(“Requester”) appeals the Examiner’s non-adoption of the various rejections
of claims 1, 4–10, 12, 13, 27, 28, and 30–37.1, 2 PO App. Br. 5–6, 3PR App.
Br. 4–5. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral
hearing was conducted on August 18, 2015.

STATEMENT OF THE CASE
This proceeding arose from a May 24, 2012 request by Arteris, Inc.
(“Requester”) for an inter partes reexamination of claims of U.S. Patent
7,277,975 B2, titled “Methods and Apparatuses for Decoupling a Request
From One or More Solicited Responses” and issued to Glenn S. Vinogradov
and Drew E. Wingard on October 2, 2007 (“the ’975 patent”).
The ’975 patent describes a method and system for communicating
information between blocks of a system across a communication fabric.
Spec. 1:38–39.

Claims 1, 6, 10, and 27 read as follows:

1. An apparatus, comprising:
a communication fabric to facilitate communications
between functional blocks of a system, wherein the
communication fabric implements either 1) a protocol that
blocks the communications fabric during a time between

1 Patent Owner Appeal Brief, Inter Partes Reexamination, dated May 19,
2014 (“PO App. Br.”).
2 Substitute Brief on Appeal by Appellant Requestor in an Inter Partes
Reexamination Proceeding, dated June 11, 2014 (“3PR App. Br.”).
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transmission of a request and a transmission of an associated
response, 2) a protocol that polls a responding block to solicit a
response to an issued request, or 3) a protocol that only
transfers data in the same direction as requests across the
communication fabric; and
translation logic to implement a higher level protocol
layered on top of an underlining protocol and the
communication fabric, wherein the translation logic converts
one initiator transaction into two or more write transactions and
then transmits the write transactions using the underlining
protocol of the communication fabric.

6. An apparatus, comprising:
a communication fabric to facilitate communications
between functional blocks of a system, and
translation logic to implement a higher level protocol
layered on top of an underlining protocol and the
communication fabric, wherein the translation logic combines
multiple initiator read requests into a single request that carries
the number of requests that were combined into the single
request and an address sequence associated with the requests.

10. A method, comprising:
converting two or more read requests from an initiator
into a single request that carries the number of the multiple
requests that are combined and an address sequence associated
with the multiple requests; and
transmitting the single request across a communication
fabric.

27. An apparatus, comprising:
a communication structure to facilitate communications
between functional blocks of a system, and
translation logic to convert multiple read requests from
an initiator functional block into a single request that carries the
number of the multiple requests that are combined and an
address sequence associated with the multiple requests.

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The cited references are as follows:

Holm et al. US 6,122,680 B2 Sept. 19, 2000
(“Holm “)
Levy et al. US 6,317,804 B1 Nov. 13, 2001
(“Levy”)
Sano et al. US 6,748,479 B2 June 8, 2004
(“Sano”)
Askar et al. US 6,757,755 B2 June 29, 2004
(“Askar”)
Walker et al. US 7,139,860 B2 Nov. 21, 2006
(“Walker”)

AMBA AXI Protocol v1.0 Specification, March 2004 (AMBA AXI
1.0);

AMBA AXI Protocol Revision r0p0 Specification, June 2003
(“AMBA AXI r0p0”);

Open Core Protocol Specification Release 2.0, 2003 (“OCP 2.0”);

Open Core Protocol Specification 2.0 Release Candidate, 2003 (OCP
2.0 RC”);

Open Core Protocol Specification Release 1.0, 2001 (“OCP 1.0”).

Patent Owner appeals the Examiner’s rejection of claims 1, 4, and 34
as anticipated by any one of Walker, AMBA AXI 1.0, or AMBA AXI r0p0;
claims 5 and 37 under 35 U.S.C. § 103(a) as unpatentable over any one of
Walker, AMBA AXI 1.0, or AMBA AXI r0p0 and any one of Holm, Levy,
or Sano; and claims 1 and 34 as anticipated by Askar.
Requester appeals the Examiner’s non-adoption of the rejection of
claims 12 and 30–37 under 35 U.S.C. § 112, first paragraph; claims 5–10,
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13, 27, and 28 either under 35 U.S.C. § 102(e) as anticipated by Walker,
under 35 U.S.C. § 102(a) as anticipated by AMBA AXI 1.0, or under
35 U.S.C. § 102(b) as anticipated by AMBA AXI r0p0; claims 9, 13, and 28
under 35 U.S.C. § 103(a) as unpatentable over any one of Walker, AMBA
AXI 1.0, or AMBA AXI r0p0 and any one of Holm, Levy, or Sano;
claims 1, 4–10, 13, 27, and 28 under 35 U.S.C. § 102(a) as anticipated by
any one of OCP 2.0 or OCP 2.0 RC; and claims 1, 4, and 5 under 35 U.S.C.
§ 102(b) as anticipated by OCP 1.0.

ISSUES
Did the Examiner err in rejecting claims 1, 4, 5, 34, and 37 and did the
Examiner err in not adopting the rejections of claims 1, 4–10, 12, 13, 27, 38,
and 30–37 on other grounds?

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).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
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“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).

CONTENTIONS AND ANALYSIS
Claims 1, 4, 5, 34, and 37 (Patent Owner’s Appeal)
Claim 1 recites “transaction logic converts one initiator transaction
into two or more write transactions.” Patent Owner argues that one of skill
in the art would have understood, under a broad but reasonable construction
in light of the Specification, that the term “transaction,” as recited in claim 1,
would have necessitated “a complete data communication that includes a
linked set of one or more data transfers along with its associated set of
control/header information” and that AMBA AXI 1.0 discloses a “transfer”
that is not a “transaction” because “the Examiner has not provided any
evidence or analysis of why or how a transfer in AMBA AXI 1.0 is a
transaction (i.e., why or how a transfer includes control/header
information).” PO App. Br. 16. In other words, Patent Owner argues that
AMBA AXI 1.0 fails to disclose a “transaction” that is associated [with] a
set of control/header information.
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 Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)
(citations omitted). “To begin with, 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). “[T]he claims themselves provide
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substantial guidance as to the meaning of particular claim terms.” Id., citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir 1996).
Claim 1 recites an initiator “transaction,” two or more write
“transactions,” and transmitting the write “transactions.” Claim 1 does not
recite additional characteristics of the “transactions.” Notably, claim 1 does
not recite that the “transactions” must include “control information.” Thus,
based on the express wording of the claims themselves, one of ordinary skill
in the art would understand the term “transactions” to include something that
may be transmitted but would not understand the term to include any other
specific characteristics, must less that “control information” must somehow
be present.
The Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Vitronics Corp., 90 F.3d at 1582. In the present case,
the Specification discloses that “[a] transaction may be a complete unit of
data communication that is composed of one or more requests and one or
more associated responses,” “[t]he purpose of a transaction may be to move
data between functional blocks,” “[a] request may be transferred as part of a
transaction,” and “[t]he request and the one or more responses form a
transaction,” and “the transfer of the request and the one or more responses
may be split.” Spec. 2:41–43, 46–47, 61–62, 3:56–58; See also 7:57–59.
We do not find, and Patent Owner does not point out that the Specification
also discloses, that a “transaction” must include “control information.” We
also note that the cited portions of the Specification provide only examples
of what a transaction “may be” and do not provide a definition of the term.
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Indeed, based on the record, it appears that the Specification does not
disclose “control information” at all.
Hence, a broadest reasonable construction of the term “transaction,”
in light of the Specification may include a “request” and “one or more
responses.” In addition, based on the Specification, one of ordinary skill in
the art would not understand that a “transaction” would require “control
information,” Patent Owner not having demonstrated that the Specification
discloses such a requirement.
Patent Owner further relies on expert testimony (Dr. Goossens) in
support of the contention that a “transaction” must include “control/header
information.” See, e.g., PO App. Br. 11 (citing “Affidavit Pursuant to
37 C.F.R. § 1.132 and MPEP 2616,” dated September 26, 2012 (“Goossens
Aff.”) 17; “Supplemental Affidavit Pursuant to 37 C.F.R. § 1.132 and MPEP
2616,” dated July 4, 2013 (“Goossens Supp. Aff.”) 8). Dr. Goossens
testifies that a transaction “must have destination address and other
control/header information.” Goossens Supp. Aff. ¶ 8. Other than this
unsubstantiated assertion, Dr. Goossens does not provide additional
evidence supporting this contention. Nor does Dr. Goossens demonstrate or
assert that one of ordinary skill in the art would have understood the term
“transaction” to require “control/header information,” under a broadest
reasonable construction. In fact, Patent Owner does not point out where Dr.
Goossens discusses construction of the term “transaction,” under a broadest
reasonable construction at all.
In addition, extrinsic evidence has been considered “less significant
than the intrinsic record.” Phillips, 415 F.3d at 1317–1318 (citing Renishaw
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PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)
and Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)).
In view of the intrinsic record as not supporting Patent Owner’s contention
that a “transaction” must include “control/header information,” as previously
discussed, Dr. Goossens’ unsubstantiated assertion that does not discuss a
broadest reasonable construction of the term “transaction” in light of the
Specification (as would have been understood by one of ordinary skill in the
art) is accorded little weight.
Hence, we conclude that under a broadest reasonable construction in
light of the Specification, one of ordinary skill in the art would have
understood that the term “transaction” includes the transfer or transmission
of a request or a response. We agree with the Examiner and Requester that
AMBA AXI 1.0 discloses this feature for at least the reasons set forth by the
Examiner. RAN 14–16, 3PR Resp. Br. 5–8. Nor does Patent Owner appear
to contest that AMBA AXI 1.0 discloses such a “transaction.”
In any event, even if Patent Owner’s contention is correct that a
“transaction” must include control information, we note that AMBA AXI
1.0 discloses this feature. For example, AMBA AXI 1.0 discloses
“transfers” that include “bytes . . . based on the address and control
information.” AMBA AXI 1.0 10-3. Patent Owner does not explain
sufficiently how a “transfer” that is “based on . . . control information”
somehow lacks the “control information” on which it is based.
Patent Owner provides similar arguments with respect to AMBA AXI
r0p0 and does not provide additional arguments in support of claims 4, 5, 34,
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and 37 with respect to either of the AMBA AXI 1.0 or AMBA AXI r0p0
references or arguments with respect to Holm, Levy, or Sano.
Affirmance of the Examiner’s rejection of claims 1, 4, 5, 34, and 37
based on AMBA AXI 1.0 or AMBA AXI r0p0 renders it unnecessary to
reach the propriety of the Examiner’s decision to reject those claims or not
to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009). We need not reach the propriety of the Examiner’s
rejection or non-adoption of any rejection of those claims over other
grounds.

Claims 12 and 30–37 under 35 U.S.C. § 112, first paragraph (Requester’s
Appeal)

Claim 12 recites that “the translation logic is geographically located
apart from its associated IP core.” Claim 30–37 recite a similar feature.
Requester argues that the Specification fails to support “geographically
located apart.” 3PR App. Br. 6–7. Patent Owner argues that the
Specification discloses this feature. PO Resp. Br. 3–4 (citing Spec Figs 1a–
b, 4:57–67, 5:42–44, 58–62). We are not persuaded by Requester’s
arguments for at least the reasons set forth by the Examiner. RAN 25.
The Examiner did not err in not adopting the proposed rejection of
claims 12 and 30–37 under 35 U.S.C. § 112, first paragraph.

Claims 6-10, 13, 27, and 28 (Requester’s Appeal)

Claim 6 recites translation logic that combines multiple initiator read
requests into a single request that carries the number of requests that were
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combined into the single request and an address sequence associated with
the requests. The Examiner does not adopt the proposed rejection of claims
6–10, 13, 27, and 28 as anticipated by Walker or the proposed rejection of
claims 9, 13, and 28 as unpatentable over Walker and any one of Holm,
Levy, or Sano because, according to the Examiner, “there is no description
in Walker of a data message operation that includes multiple read requests.”
RAN 13.
Requester argues that Walker discloses translation logic that combines
multiple initiator read requests into a single request that carries the number
of request that were combined into a single request and an address sequence
associated with the requests. 3PR App. Br. 8 (citing Walker 31:47–55,
31:63–32:29, 35:3–21).
In the portions of Walker cited by Requester, Walker discloses “read
request packets” and an NREAD_R request packet and a “requester . . .
request[ing] multiple transactions for a block of data.” Walker 31:47–49,
63. The NREAD_R request packet contains a “SIZE field and a 42-bit
PADDR (physical address field).” Id. at 31:65–66. The “SIZE field is an
indication of the number of bytes of payload in the packet” and “[t]he
PADDR and SIZE fields combined define a 45-bit address space in which
the physical address value (PADDR) defines address bits 44 to 3 and the
transaction size value (SIZE) defines the least significant address bits 2–0.”
Id. at 32:15–29. Walker also discloses a “data message operation” that
involves a “first NMESSAGE_R datum.” Id. at 34:61, 35:3. The
NMESSAGE_R datum “make[s] up the full message” and contain various
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fields and the “message may contain multiple packets.” Id. at 35:3–5, 10–
11, 13–15.
Hence, Walker discloses that a requester may request multiple
transactions and may use an “NREAD_R request packet” that contains a
“SIZE field” and a “PADDR field” that, in combination, define an address
space. Walker also discloses a message that may contain multiple packets
and may be made up of “NMESSAGE_R datum” that, in turn, contains
various fields. Requester does not explain sufficiently how any of these
disclosures equate to translation logic that combines multiple initiator read
requests into a single request that carries the number of requests that were
combined into the single request and an address sequence associated with
the requests, as recited in claim 6, for example.
As such, Requester has failed to demonstrate sufficiently that the
Examiner erred in not adopting the proposed rejection of claims 6–10, 13,
27, and 28 over Walker.
The Examiner does not adopt the proposed rejection of claims 6–10,
13, 27, and 28 as anticipated by AMBA AXI 1.0 or the proposed rejection of
claims 9, 13, and 28 as unpatentable over AMBA AXI 1.0 and any one of
Holm, Levy, or Sano because, according to the Examiner, AMBA AXI 1.0
fails to disclose translation logic that combines multiple initiator read
requests into a single request that carries the number of requests that were
combined into the single request and an address sequence associated with
the requests, as recited in claim 6, for example. See, e.g., RAN 17–19. The
Examiner provides similar reasons for the non-adoption of the proposed
corresponding rejections of the claims over AMBA AXI r0p0. Id.
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The Requester argues that AMBA-AXI 1.0 discloses “that the
translation logic . . . combines multiple initiator read requests into a single
request that carries the number of requests that were combined into the
single request and an address sequence associated with the requests”
because, according to Requester, AMBA-AXI 1.0 discloses “a burst read
transaction that results in a number of read transfers” and that “the AXI
protocol is burst based.” 3PR App. Br. 12–14 (citing AMBA-AXI 1.0 Fig.
1–1, 1–3, 1–4, 4–1; pages 1–2 to 1–6, 1–8, 2–6, 4–3). Requester provides
similar arguments with respect to AMBA-AXI r0p0. Id. at 19–20.
AMBA-AXI 1.0 discloses a protocol that is “burst-based” in which “a
read transaction uses the read address and read data channels.” AMBA-AXI
1.0, 1-3; Fig. 1-1. AMBA also discloses that a “read data channel conveys
both the read data and any read response information from the slave back to
the master” and includes “the data bus” and “a read response indicating the
completion status of the read transaction.” Id. at 1-5. In other words,
AMBA-AXI 1.0 discloses a “read transaction” in which requested
information is returned “from the slave back to the master.” Requester does
not explain sufficiently how this discloses combining multiple initiator read
requests into a single request, for example.
Requester argues that “[t]o the extent the specifying of a burst read
transaction that results in a number of read transfers is considered to be a
combining [of] multiple read requests into a single read request, AMBA-
AXI r0p0 [and 1.0] discloses that the translation logic . . . combines multiple
initiator read requests into a single request.” 3PR App. Br. 19. However,
Requester does not explain sufficiently how “specifying of a burst read
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transaction” would be considered to be combining multiple read requests
into a single read request. Hence, we are not persuaded by Requester’s
argument.
The Examiner does not adopt the proposed rejection of claims 6–10,
13, 27, and 28 as anticipated by OCP2 or OCP 2.0 RC because, according to
the Examiner, OCP2 and OCP 2.0 RC fail to disclose translation logic that
combines multiple initiator read requests into a single request that carries the
number of request that were combined into the single request and an address
sequence associated with the requests, as recited in claim 6, for example.
See, e.g., RAN 21–22.
Requester argues that OCP 2.0 RC discloses this feature because OCP
2.0 RC discloses that “[r]equest information is given for each transfer,” that
“[a] burst is a set of transfers . . . . linked together into a transaction having a
defined address sequence and number of transfers,” and that a “[s]ingle
request” may be provided for “multiple data bursts” in which “request
information is given only once for the entire burst.” 3PR App. Br. 26–27
(citing OCP 2.0 RC 41–42).
OCP 2.0 discloses that a “burst is a set of transfers that are linked
together into a transaction,” may be “imprecise” or “precise,” may be a
“request [for] information [that] is given for each transfer,” and that a
“single request” may result in “multiple data bursts” in which “information
is given only once for the entire burst.” OCP 2.0 41–42. In other words,
OCP 2.0 discloses either a “precise” or “imprecise” “burst” in which a
request for information is made and a response to the request (i.e., “multiple
data bursts”) that may be “given only once for the entire burst.” At best,
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OCP 2.0 appears to disclose a single request for information that is provided
in multiple data bursts. Requester does not explain sufficiently how OCP
2.0 also discloses translation logic that combines multiple initiator read
requests into a single request that carries the number of request that were
combined into the single request, as recited in claim 6, for example.
The Examiner did not err in refusing to adopt the proposed rejections
of claims 6–10, 13, 27, and 28 as anticipated by Walker, AMBA AXI 1.0,
AMBA AXI r0p0, OCP 2.0, or OCP 2.0 RC and claims 9, 13, and 28 as
unpatentable over any one of Walker, AMBA AXI 1.0, or AMBA AXI r0p0
and any one of Holm, Levy, or Sano.

CONCLUSION
We sustain the Examiner’s rejection of claims 1, 4, and 34 as
anticipated by AMBA AXI 1.0 or AMBA AXI r0p0 and claims 5 and 37 as
unpatentable over either AMBA AXI 1.0 or AMBA AXI r0p0 and any one
of Holm, Levy, or Sano. We also sustain the Examiner’s non-adoption of
the proposed rejections of claims 12 and 30–37 under 35 U.S.C. § 112, first
paragraph, claims 6–10, 13, 27, and 28 as anticipated by any of Walker,
AMBA AXI 1.0, AMBA AXI r0p0, OCP 2.0 RC, or OCP 2.0 and claims 9,
13, and 28 as unpatentable over any of Walker, AMBA AXI 1.0, or AMBA
AXI r0p0 and any one of Holm, Levy, or Sano.

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DECISION
We affirm the Examiner’s rejection of claims 1, 4, 5, 34, and 37.
We also affirm the Examiner’s decision not to reject claims 6–10, 12,
13, 27, 28, and 30–37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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 RD
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

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