Ex Parte Beaumont

Board of Patent Appeals and Interferences

Sep 15, 2009

10689390 (B.P.A.I. Sep. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK BEAUMONT
____________________

Appeal 2008-004268
Application 10/689,390
Technology Center 2100
____________________

Decided: September 15, 2009
____________________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Introduction
According to Appellant, the invention is a system and method for
rotating data in a plurality of processing elements using shifting and storing
operations to enable a three shears operation on the data (Abstract). The
storing operations are responsive to the processing element’s positions (id.).

Exemplary Claim(s)
Claims 1, 8, and 22 are exemplary claims and are reproduced below:
1. A method of rotating data in a plurality of processing elements,
comprising:
a plurality of shifting operations performed by a plurality of
processing elements connected in an array; and
a plurality of storing operations performed by said plurality of
processing elements, said shifting and storing operations coordinated to
enable a three shears operation to be performed on the data, and wherein
said plurality of storing operations is responsive to each processing
elements’ positions in said array.

8. A method of rotating data in a plurality of processing elements,
comprising:
a first shifting of a first plurality of data in a first direction;
a first storing of data by a first plurality of said processing
elements in response to said first shifting and the positions of said first
plurality of processing elements;
a second shifting of a second plurality of data in a second
direction perpendicular to said first direction;
a second storing of data by a second plurality of processing
elements in response to said second shifting and the positions of said
second plurality of processing elements;
a third shifting of a third plurality of data in a third direction
opposite to said first direction; and
a third storing of data by a third plurality of processing
elements in response to said third shifting and the positions of said third
plurality of processing elements.

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22. A method of rotating data in a plurality of processing elements,
comprising:
a first shifting of a first plurality of said processing elements in
response to said first shifting and the positions of said first plurality of
processing elements;
a second shifting of a second plurality of a data in a second pair of
directions perpendicular to said first pair of directions;
a second storing of data by a second plurality of processing elements
in response to said second shifting and the positions of said second
plurality of processing elements;
a third shifting of a third plurality of data in said first pair of
directions; and
a third storing of data by a third plurality of processing elements in
response to said third shifting and the positions of said third plurality of
processing elements.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Taylor 4,992,933 Feb. 12, 1991
Crozier 5,081,700 Jan. 14, 1992
Pechanek 6,338,129 B1 Jan. 8, 2002

Rejections
The Examiner rejected claims 1-6, 8-13, 15-20, 22-27, 29-34, and 36
under 35 U.S.C. § 103(a) as being unpatentable over Crozier and Pechanek
and claims 7, 14, 21, 28, and 35 under 35 U.S.C. § 103(a) as being
unpatentable over Crozier, Pechanek, and Taylor.

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GROUPING OF CLAIMS

(1) Appellant argues claims 1 and 36 as a group based on arguments
made with respect to claim 1 (App. Br. 8). We will, therefore, treat claim 36
as standing or falling with representative claim 1. Since dependent claims 2-
6 and 14-20 were not separately argued, we will also treat claims 2-6 and 14-
20 as standing or falling with representative claim 1.
(2) Appellant argues claims 8 and 15 as a group based on arguments
made with respect to claim 8 (App. Br. 8-9). We will, therefore, treat claim
15 as standing or falling with representative claim 8. Since dependent
claims 9-14 and 16-21 were not separately argued, we will also treat claims
9-14 and 16-21 as standing or falling with representative claim 8.
(3) Appellant argues claims 22 and 29 as a group based on arguments
made with respect to claim 22 (App. Br. 9-10). We will, therefore, treat
claims 29 as standing or falling with representative claim 22. Since
dependent claims 23-27 and 30-34 were not separately argued, we will also
treat claims 23-27 and 30-34 as standing or falling with representative claim
32.
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).

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ISSUE 1
35 U.S.C. § 103(a): claims 1 and 36

APPELLANT’S CONTENTIONS
Appellant contends the Examiner used an improper “could be” legal
standard, not the “more probable than not” legal standard required (App. Br.
5, § (vii)A.1.).

EXAMINER’S RESPONSE
In response, the Examiner maintains the Applicant took the statement
out of context and disagrees with Appellant.

Issue 1: Has Appellant met the burden of showing the Examiner erred
in the standard used in rejecting the claims under 35 U.S.C. § 103(a)?

ISSUE 2
35 U.S.C. § 103(a): claims 1-6 and 36
APPELLANT’S CONTENTIONS
Appellant argues neither Crozier nor Pechanek discloses shifting and
storing operations performed by a “plurality of processing elements
connected in an array” for performing a rotation of data (App. Br. 8,
§(vii)A.2.a.). Appellant further argues neither reference discloses the storing
operations are “responsive to each processing element’s position in said
array” (id.). Appellant contends Crozier has a certain configuration, and the
inherent method performed by the normal and usual operation of the rotation
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hardware will be significantly different from the method for rotating data in
a plurality of processing elements (id.). Pechanek discloses a nearest
neighbor torus connected computer with no mention of a method for rotating
data in the nearest neighbor torus connected computer (id.)
EXAMINER’S RESPONSE
The Examiner in contrast finds Appellant is attacking the references
individually (Ans. 15, §(10)(40)). Crozier teaches a three shears shifting
process done on a single processor while Pechanek teaches that many
computing tasks, such as image processing, can operate in parallel (id.).
Therefore, it would have been obvious to one of ordinary skill in the art that
image processing applications would be performed on the nearest neighbor
torus (id.).
Issue 2: Has Appellant met the burden of showing the Examiner erred
in finding Crozier and Pechanek teach the limitations of claims 1 and 8?

ISSUE 3
35 U.S.C. § 103(a): claims 8-13 and 15-20
APPELLANT’S CONTENTIONS
Appellant reiterates the arguments for claims 1 and 36 (App. Br. 8,
§(vii)A.2.b.). Additionally, Appellant contends the output of the barrel
shifter, which performs the first and third shifting operations, is never stored
in the rotation hardware (id.). Appellant further argues Pechanek does not
teach a method for rotating data in the nearest neighbor torus connected
computer (App. Br. 9, §(vii)A.2.b.).
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The Examiner states Appellant has only addressed how each reference
relates to the claims and has not addressed the combination of Crozier and
Pechanek (Ans. 15, §(10) 40.).
Issue 3: Has Appellant met the burden of showing the Examiner erred
in finding Crozier and Pechanek teach the limitations of claims 8 and 13?

ISSUE 4
35 U.S.C. § 103(a): claims 22-27 and 29-34
APPELLANT’S CONTENTIONS
Appellant again reiterates the arguments set forth above with respect
to claims 1 and 36 (App. Br. 9, §(vii)A.2.c.). Appellant further contends that
because rotating data by shifting data in a pair of directions is not carried out
by any references of record, to achieve the invention as recited, the
combination of Crozier and Pechanek would need further modification (id.).
Appellant argues the Examiner used hindsight to develop this modification
(id.).
EXAMINER’S RESPONSE
The Examiner states Crozier and Pechanek failed to teach first shifting
on a plurality of data in a first pair of directions, second shifting on a
plurality of data done in a second pair of directions, and third shifting on a
plurality of data done in a third pair of directions (Ans. 10, §(9) 21.).
However, the Examiner states that it would have been obvious to one of
ordinary skill in the art to perform a pair of shifts for each cycle of shifting
(id.). The Examiner then details how the disclosure in Figure 5 of Crozier
would lead one of ordinary skill in the art to realize shifting in two different
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directions would result in a saving of many shifting cycles; therefore, a
skilled artisan would implement this shifting (id.).
Issue 4: Has Appellant met the burden of showing the Examiner erred
in finding Crozier and Pechanek teach the limitations of claims 22 and 29?

ISSUE 5
35 U.S.C. § 103(a): claims 1-6, 8-13, 15-20, 22-27, 29-34, and 36

APPELLANT’S CONTENTIONS
Appellant next asserts the combination of Crozier and Pechanek has
no reasonable expectation of success (App. Br. 10, §(vii)A.3). Appellant
argues the normal and usual operation of the rotation hardware of Crozier
cannot be performed on the significantly different nearest neighbor torus
connected computer structure of Pechanek (id.). Appellant argues Crozier
may only be performed on hardware similar to that disclosed in Crozier to
have any reasonable expectation of success (id.).

EXAMINER’S RESPONSE
The Examiner teaches Pechanek explicitly states a nearest neighbor
torus is a conventional approach to parallel processing architectures which
includes image processing (Ans. 16). Therefore, the Examiner concludes
one of ordinary skill in the art at the time of the invention would be able to
implement the method of rotating data from Crozier onto the processor of
Pechanek (id.).

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Issue 5: Have Appellant met the burden of showing the Examiner
erred in concluding one skilled in the art at the time of the invention would
have had success in including the rotation technique of Crozier onto the
processor of Pechanek?

ISSUE 6
35 U.S.C. § 103(a): claims 1-6, 8-13, 15-20, 22-27, 29-34, and 36
APPELLANT’ CONTENTIONS
Appellant next assert the Examiner has only provided a broad
conclusory statement as to why it would have been obvious to one of
ordinary skill in the art to implement Crozier’s method of image rotation on
the parallel processor of Pechanek (App. Br. 11, §(vii)A.4). Also, Appellant
argue Pechanek discloses the technique introduces latency and Crozier
discloses the rotation hardware efficiently processes images by reducing the
character generator memory required for image storage (id.).

EXAMINER’S RESPONSE
The Examiner agrees Pechanek adds latency into transferring data
from a processing element to another, but that is not the same as “no
motivation to combine the references.” But, Pechanek discloses image
processing can draw upon the efficiency of parallel processing and Crozier
shifts data (Ans. 16 §(10) 40.). Therefore, the combination is capable of
performing multiple shifts in a cycle – an efficiency that is motivation to
combine (id. at 17).

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Issue 4: Has Appellant met the burden of showing the Examiner erred
in concluding one skilled in the art at the time of the invention would have
been motivated to include the rotation technique of Crozier onto the
processor of Pechanek?

FINDINGS OF FACT (FF)
Crozier Reference
(1) Crozier describes a system, method, and architecture for
shifting the output of a bit matrix character generator ninety degrees to
provide ninety degrees shifted characters (Abstract). A barrel shifter barrel
shifts bit slices of the bit matrix characters coupled to a linear array shifter
for linear array shifting the information that was first barrel shifted (id.).
(2) Crozier teaches rotation of a character using alphanumeric bit
positions (col. 5, ll. 39-41 and Figs. 5A – 5D). In the first step, micro
columns S2 through S8 have been barrel shifted by 1 through 7 bit positions
respectively (col. 5, ll. 44-46 and Figs. 5A and 5B). The end around bit
shifted character 5B is further linear array shifted by end around shifting the
horizontal rows R1 through R8 zero through seven bit positions to provide
information at the input of the barrel shifter 28 via line 35 (col. 5, ll. 46-50
and Figs. 5B and 5C). This information is again barrel shifted during the
second pass to provide a character having bit positions or alphanumeric bit
positions (col. 5, ll. 50-55 and Figs. 5C and 5D) which is the equivalent of
the character H shifted 90 degree (Figs. 4A and 4D).

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Pechanek Reference
(3) Pechanek relates to processing systems in general and, more
specifically, to parallel processing architectures (col. 1, ll. 8-10).
(4) Many computing tasks can be developed that operate in parallel
on data such as image processing, pattern recognition, and computer
graphics applications (col. 1, ll. 13-20).
(5) Since a torus connected computer may be obtained by adding
wraparound connections to a mesh-connected computer, a mesh-connected
computer, one without wraparound connections, may be thought of as a
subset of torus connected computers (col. 1, ll. 50-54).
(6) The conventional torus-connected array includes sixteen
processing elements connected in a four by four array 10 of processing
elements (col. 2, ll. 6-8).
(7) Each processing element communicates to its nearest North
(N), South (S), East (E) and West (W) neighbor with point to point
connections (col. 2, ll. 10-12). An example connection is a wraparound
connection, representing one of the wraparound interfaces that forms the
array into a torus configuration (col. 2, ll. 12-16).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18
(1966), stated that three factual inquiries underpin any determination of
obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy.

The Supreme Court reaffirmed and relied upon the Graham three
pronged test in its consideration and determination of obviousness in the fact
situation presented in KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 415-16
(2007). The Court stated:
While the sequence of these [Graham] questions might be
reordered in any particular case, the factors continue to define
the inquiry that controls. If a court, or patent examiner,
conducts this analysis and concludes the claimed subject matter
was obvious, the claim is invalid under § 103.
KSR, 550 U.S. at 407. Further, the Court stated:
To facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F.3d 977, 988 (C.A. Fed. 2006) (“[R]ejections
on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness”).
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Id. at 418.

ANALYSIS
We note that the Reply Brief is properly used to respond to points of
argument raised by the Examiner in the Answer and not as a means for
presenting new arguments. See Optivus Tech., Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not raised in an opening
brief is waived). We have fully considered the responses in the Reply Brief
to the extent that Appellant restates previous arguments or address new
points raised by the Examiner in the Answer. However, we decline to
address any new arguments not originally presented in the principal Brief.

Issue 1
We find the Examiner applied the correct legal standard. Although
the Examiner used, in a parenthetical statement, “could be” in stating
“Pechanek disclosed a plurality of processing elements that the image
rotation method of Crozier could be done on,” the Examiner set forth the
proper basis for rejection further in the section addressing the rejection (See
Final Rej. 4, 10. and Ans. 4, §(9) 3.). Specifically, the Examiner stated
“[o]ne of ordinary skill in the art would have been motivated . . . ” and “it
would have been obvious to one of ordinary skill in the art to implement”
Crozier’s method into the system of Pechanek.
Therefore, we find the Examiner did not err.

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Issue 2
With respect to Appellant’s arguments, we find the arguments
unpersuasively focus on the individual differences between claims 1 and 36
and the Crozier and Pechanek references. It is apparent, however, from the
Examiner’s line of reasoning in the Answer, that the basis for the
obviousness rejection is the combination of Crozier and Pechanek. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F. 2d
413, 425 (CCPA 1981); In re Merck & Co., 800 F. 2d 1091, 1097 (Fed. Cir.
1986).
In other words, while Appellant contends that the references cannot be
combined because Crozier does not teach processing elements connected in
an array, this limitation is taught by Pechanek (FF 6). Additionally,
Pechanek teaches communicating to its nearest neighbor (FF 7) and Crozier
teaches rotating data (FF 2).
Accordingly, we find the combination of Crozier and Pechanek
teaches the invention as recited in claims 1 and 36.

Issue 3
Again, we find Appellant’s arguments unpersuasively focus on the
individual differences between the claim (here, claims 8 and 15) and the
Crozier and Pechanek references. As stated above, we find Pechanek
teaches an array of processing elements (FF 6). Appellant is also arguing
limitations not recited in the claim (e.g., “the output of the barrel shifter is
never stored in the rotation hardware”). We find Pechanek teaches
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communicating in four different directions (FF 7) and Crozier teaches
shifting data (FF 1).
Based on the teachings of Pechanek and Crozier, we find the
combination of Pechanek and Crozier teaches the invention as recited in
claims 8 and 15.

Issue 4
In response to arguments repeated (i.e., arguments with respect to
claims 1 and 36 and claims 8 and 15), we find as stated above.
As to Appellant’s further arguments, we conclude that it would have
been obvious to one of ordinary skill in the art to perform a pair of shifts for
each cycle of shifting. Pecahanek teaches communicating with other
processing elements in four different directions (FF 7). As stated by the
Examiner, it would have been obvious to one of ordinary skill in the art to
perform a pair of shifts for each cycle of shifting (Ans. 10, §(9) 21.). We
agree with the Examiner’s conclusion that one of ordinary skill in the art
would realize the up shifting process could be applied to shift columns going
down to result in a lesser number of shifts and thus, shifting cycles (id. at 10-
11).
We further find the Examiner did not use improper hindsight. In KSR,
the U.S. Supreme Court reaffirmed that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421. See also
Graham., 383 U.S. at 36. Nevertheless, in KSR, the Supreme Court also
qualified the issue of hindsight by stating that “[r]igid preventative rules that
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deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.
In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. at 417.

This reasoning is applicable here.
Accordingly, we conclude the invention as recited in claims 22 and 29
would have been obvious to one or ordinary skill in the art.

Issue 5

Based on the Examiner’s findings as to Penchanek’s teaching, that
both references are being directed toward data movement and image
processing, and that an ordinarily skilled artisan would have found it
obvious to implement rotating data into a parallel processing architecture,
we find the combination of the Crozier and Penchanek has a reasonable
expectation of success. In particular, we find the predictable use of familiar
prior art elements according to their established functions would have
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clearly conveyed a reasonable expectation of success to a person of ordinary
skill in the art at the time of the invention.

Appellant argues each reference individually again, stating that each
only discloses one type of architecture. However, Appellant has failed to
consider the combination of the technology, and that one skilled in the art
would have had the skills to implement rotating data in a parallel
architecture.

Issue 6
We disagree with Appellant’s contention that the Examiner has only
provided a broad conclusory statement as to why it would have been obvious
to one of ordinary skill in the art to implement Crozier’s method of image
rotation of the parallel processor of Pechanek. Indeed, the Examiner has set
forth reasons why one of ordinary skill in the art would have been motivated
(Ans. 4, §(9) 3. – Ans. 14, §(9) 39. and Ans. 15, §(10) 40. – Ans. 17, §(10)
40.) with which we agree. Appellant has not presented any persuasive
arguments as to why the Examiner’s reasoning and rationale is in error.
Thus, we conclude the Examiner articulated reasons for each argued claim,
with a rational underpinning to support the legal conclusion of obviousness.

CONCLUSION
Based on the findings of facts and analysis above, we conclude
Appellant has not met the burden of showing the Examiner erred in rejecting
the claims under 35 U.S.C. § 103(a).
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We further conclude Appellant has not met the burden of showing the
Examiner erred in finding Crozier and Pechanek teach the limitations of
claims 1 and 8, claims 8 and 13, and claims 22 and 29.
We conclude Appellant has not met the burden of showing the
Examiner erred in concluding one skilled in the art at the time of the
invention would have had success in including the rotation technique of
Crozier onto the processor of Pechanek.
Additionally, we conclude Appellant has not met the burden of
showing the Examiner erred in concluding one skilled in the art at the time
of the invention would have been motivated to include the rotation technique
of Crozier onto the processor of Pechanek
Accordingly, Appellant has not met the burden of showing the
Examiner erred in rejecting of claims 1-6, 8-13, 15-20, 22-27, 29-34, and 36
under 35 U.S.C. § 103(a) as being unpatentable over Crozier and Pechanek.
Additionally, Appellant have not met the burden of showing the
Examiner erred in rejecting of claims 7, 14, 21, 28, and 35 under
35 U.S.C. § 103(a) as being unpatentable over Crozier and Taylor.

Obviousness Rejection Over Crozier, Pechanek, and Taylor
Regarding the obviousness rejections of claims 7, 14, 21, 28, and 35
under 35 U.S.C. § 103(a) as being unpatentable over Crozier, Pechanek, and
Taylor, we find that Appellant has not persuasively rebutted the Examiner's
prima facie case of obviousness for these claims, but merely refers to the
previous arguments made in connection with claim 1 (App. Br. 11, §(vii)B.).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellant to present
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evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellant did not particularly point out errors in the Examiner’s reasoning to
persuasively rebut the Examiner's prima facie case of obviousness, we will
sustain the rejection for the same reasons indicated previously.

DECISION
The Examiner’s rejection of claims 1-6, 8-13, 15-20, 22-27, 29-34,
and 36 under 35 U.S.C. § 103(a) as being unpatentable over Crozier and
Pechanek is affirmed.
The Examiner’s rejection of claims 7, 14, 21, 28, and 35 under
35 U.S.C. § 103(a) as being unpatentable over Crozier, Pechanek, and
Taylor is affirmed.
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

erc

JONES DAY
222 East 41st Street
New York NY 10017-6702