Ex Parte Avss et al

Patent Trial and Appeal Board

Oct 31, 2013

11755511 (P.T.A.B. Oct. 31, 2013)

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.
11/755,511 05/30/2007 Prasad Avss AVSS 5-1 9240
47384 7590 11/01/2013
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
PARTRIDGE, WILLIAM B
ART UNIT PAPER NUMBER
2183
MAIL DATE DELIVERY MODE
11/01/2013 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
____________

Ex parte PRASAD AVSS and JACOB MATHEWS
____________

Appeal 2011-006862
Application 11/755,5111
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
JENNIFER M. MEYER, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to a
processor configured to operate with multiple operation codes. The
Examiner has rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,

1 The real party in interest is LSI Corporation.
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Application 11/755,511

2
we refer to the Appeal Brief (filed Oct. 18, 2010), the Answer (mailed Dec.
29, 2010), and the Reply Brief (filed Feb. 28, 2011).

STATEMENT OF THE CASE

The claims relate to a processor configured to operate with multiple
operation codes for each of a plurality of instructions. The processor
comprises memory circuitry and processing circuitry coupled to the memory
circuitry. The processing circuitry is configured to decode a first operation
code to produce a given one of the instructions and to decode a second
operation code different than the first operation code to also produce the
given instruction. Thus, the same instruction is produced for execution by
the processing circuitry regardless of whether the first operation code or the
second operation code is decoded. The assignment of multiple operation
codes to a given instruction may occur in conjunction with the design of the
processor, and dynamic selection of a particular one of those operation codes
may be performed in conjunction with assembly of code for execution by the
processor. Abstract.
Claims 1-8 and 24-35 are on appeal. Claims 1, 25, and 29 are
independent. App. Br. 2. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below:
1. A processor comprising:
memory circuitry; and
processing circuitry coupled to the memory circuitry and
configured to retrieve operation codes from the memory
circuitry and to decode said operation codes to produce
corresponding instructions for execution by the processing
circuitry;
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wherein the processing circuitry is configured to decode
a first operation code to produce a given one of the instructions
and to decode a second operation code different than the first
operation code to also produce the given one of the instructions,
that same instruction thereby being produced for execution by
the processing circuitry regardless of whether the first operation
code or the second operation code is decoded;
wherein the first and second operation codes each
correspond only to the given one of the instructions.

The claims stand rejected as follows:
1. Claims 1-3, 6-8, 24, 25, 28-30, and 33-35 stand rejected under
35 U.S.C. § 103(a) as obvious over Mills2 and Subramanyan3. (Ans.
4-7).
2. Claims 4, 5, 26, 27, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Mills, Subramanyan, and Kobayashi4. (Ans.
7-9).

THE SUBRAMANYAN REFERENCE
The Federal Circuit reviews the Board’s factual determinations for
substantial evidence, In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000),
and the Board’s legal conclusions de novo, In re Klopfenstein, 380 F.3d
1345 (Fed. Cir. 2004). “Whether an asserted anticipatory document
qualifies as a ‘printed publication’ is a legal conclusion based on underlying
factual determinations.” In re Lister, 92 USPQ2d 1225, 2009-1060, slip op.

2 Mills, US 5,721,945, Feb. 24, 1998.
3 The provenance of Subramanyan will be discussed in the body of the
opinion.
4 Kobayashi, US 4,774,688, Sep. 27, 1988.
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5 (Fed. Cir. 2009)(quoting Cooper Cameron Corp. v. Kvaerner Oilfield
Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002)).
All claims appealed in the action stand rejected over the combination
of, at least, Mills and Subramanyan. (Ans. 4, 7). We first review the
Subramanyan reference to determine whether it qualifies as a reference
under 35 U.S.C. § 102.
The Examiner cites the Subramanyan reference as:
Subramanyan, “Processors, Chapter 6, Operand Addressing and
Instruction Representation”, 2005, pp 1-23.

(Ans. 3; PTO-8925). The Examiner characterizes the Subramanyan slide
presentation as “a copy of lecture notes from 2005 for a CS250 class.” (Ans.
4). This lack of bibliographic specificity prompts the question whether the
Subramanyan reference was “‘sufficiently accessible to the public interested
in the art’” so as “to qualify as a printed publication within the meaning of
§102.” Lister, at 1227; In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
1989)(quoting Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1568
(Fed. Cir. 1988)).
A reference is considered publicly accessible if it was “disseminated
or otherwise made available to the extent that persons interested and
ordinarily skilled in the subject matter or art exercising reasonable diligence,
can locate it.” Lister, at id. (quoting Kyocera Wireless Corp. v. Int’l Trade
Comm’n, 545 F.3d 1340, 1350 (2008)). Whether a reference is publicly
accessible is determined on a case-by-case basis based on the “facts and
circumstances surrounding the reference’s disclosure to members of the

5 Notice of References Cited, PTO-892, mailed 12/14/2009.
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public.” Lister at 1227 (quoting Klopfenstein, 380 F.3d at 1350 (listing four
factors relevant to whether a slide presentation was a printed publication)).
The record does not show that the Subramanyan reference was
publically displayed more than a year prior to the filing of Appellants’
application.6 Moreover, on the record before us, none of the four
Klopfenstein factors are present to suggest that the Subramanyan slide
presentation qualifies as a printed publication.7 Nor does the record suggest
the Subramanyan reference was indexed or cataloged in a “‘meaningful way
that would permit a researcher to locate it.” Lister, at 1230.
Appellants have not raised the issue of the qualification of
Subramanyan as a reference. “The Board will generally not reach the merits
of any issues not contested by an appellant.” (Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307,

6 Subramanyan displays an indicia “2005,” but without indicating its
significance. A Google® search of the term “Subramanyan Operand
Addressing” returned two hits (on the first page of 2.1 million pages) for the
Subramanyan document: the undated document, itself, and a “Course Hero”
listing of a Peurdue CS 250 course dated “Fall 2008.” The Google® search
of the title “Processors, Chapter 6, Operand Addressing and Instruction
Representation” does provide a URL,
http://www.eca.cs.purdue.edu/CS250/ir/lec/Chap6.pdf, that produced the
document with the front page displaying the year 2005. However, it is
unclear as to when this URL became publicly available in this printed format
after the actual presentation.
7 “The factors relevant to the facts of this case are: the length of time the
display was exhibited, the expertise of the target audience, the existence (or
lack thereof) of reasonable expectations that the material displayed would
not be copied, and the simplicity or ease with which the material displayed
could have been copied.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004).

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1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to
make for a given ground of rejection as waived)). The Frye doctrine is one
of general applicability which does not preclude the Board from raising an
issue sua sponte. In the present appeal, the Board lacks a sufficient factual
basis to draw the legal conclusion, and to so certify to our reviewing court,
that the Subramanyan document qualifies as a printed publication. (Lister,
id. at 5).
In view of the foregoing, we find Subramanyan to be not qualified as
a reference against the present application.
OBVIOUSNESS
Because each claim stands rejected over the combination of, at least,
Mills and Subramanyan (Ans. 4, 7) and because we find that Subramanyan
does not qualify as a reference, we find the prima facie case is not made.

ORDER
The rejection of claims 1-8 and 24-35 under 35 U.S.C. § 103 is
REVERSED.

REVERSED

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