Ex Parte Brizek

Board of Patent Appeals and Interferences

Nov 19, 2008

10105201 (B.P.A.I. Nov. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN P. BRIZEK
__________

Appeal 2008-0688
Application 10/105,201
Technology Center 2100
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Decided: November 19, 2008
__________

Before JAMES D. THOMAS, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.

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THE INVENTION
The disclosed invention relates generally to processor-based
systems. More particularly, Appellant’s invention relates to processor-based
systems capable of implementing wireless communications (Spec. 1).
Independent claim 1 is illustrative:
1. A method comprising:

integrating an application processor with a storage;
establishing a virtual memory space in said storage;

detecting instructions directed to said memory space; and

granting instructions directed to said memory space
access to cryptographic functions.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Glew US 2003/0126454 A1 July 3, 2003
Noel US 6,125,430 Sep. 26, 2000
Eslinger US 6,910,094 B1 June 21, 2005
England US 2003/0097579 A1 May 22, 2003

THE REJECTIONS
1. Claims 1, 4, 10, 13, 16, 19, 21, and 27 stand rejected under
35 U.S.C. §102(e) as being anticipated by Glew.
2. Claims 2, 3, 11, 12, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Glew in view of Noel.
3. Claims 5-9, 14, and 22-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Glew in view of Eslinger.
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4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Glew in view of Eslinger and England.
5. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Glew in view of England.

CLAIM GROUPING
Appellant only presents arguments directed to the Examiner’s
rejection of independent claims 1, 10, and 16 as being anticipated under
35 U.S.C. § 102(e) by Glew (App. Br. 11-12). We consider each of
independent claims 1, 10, and 16 separately.
Appellant has not separately argued the Examiner’s rejection of
dependent claims 4, 13, 19, 21, and 27 as being anticipated under 35 U.S.C.
§ 102(e) by Glew. Therefore, Appellant has waived any arguments directed
to the separate patentability of these claims. See In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).
Appellant has not separately argued the Examiner’s rejection of
dependent claims 2, 3, 11, 12, 18, and 20 as being unpatentable under
35 U.S.C. § 103(a) over Glew in view of Noel. Therefore, Appellant has
waived any arguments directed to the separate patentability of these claims.
Appellant has not separately argued the Examiner’s rejection of
dependent claims 5-9, 14, and 22-26 as being unpatentable under 35 U.S.C.
§ 103(a) over Glew in view of Eslinger. Therefore, Appellant has waived
any arguments directed to the separate patentability of these claims.
Appellant has not separately argued the Examiner’s rejection of
dependent claim 15 as being unpatentable under 35 U.S.C. § 103(a) over
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Glew in view of Eslinger and England. Therefore, Appellant has waived
any arguments directed to the separate patentability of claim 15.
Appellant has not separately argued the Examiner’s rejection of
dependent claim 17 as being unpatentable under 35 U.S.C. § 103(a) over
Glew in view of England. Therefore, Appellant has waived any arguments
directed to the separate patentability of claim 17.

APPELLANT’S CONTENTIONS
Appellant contends that the Examiner erred in rejecting claims 1, 10,
and 16 as being anticipated by Glew for the following reasons:
1. The Examiner’s interpretation of “integrating” is unreasonable
because “integrate cannot simple mean to couple” in light of the Webster’s
Dictionary definition that describes “integrate” as “‘to form, coordinate, or
blend into a functioning or unified whole: unite.’” (App. Br. 11).
2. Regarding independent claims 10 and 16, Glew does not teach
establishing a virtual memory space on an integrated circuit that includes an
application processor (Id.).
3. “[T]he office action suggests that somehow Glew teaches detecting
an instruction directed to a virtual memory, citing paragraph 37. However,
paragraph 37 has no mention whatsoever of a virtual memory.” (Id.).
4. The Examiner suggests “that Glew teaches an encrypted AC
module 190 that could be decrypted via decryption key or, in other words,
access is granted by providing a decryption key, according to paragraph 39.
Even if that is true, [the reference] teaches away from the claimed invention.
Instead of using a decryption key in the claimed invention, one detects the
instructions directed to a virtual memory space and grants instructions
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directed to that space access to cryptographic functions. The claimed
invention has nothing to do with the use of a decryption key. Instead of
using a key, it simply detects accesses to a certain virtual memory space and
knows that these accesses are authorized.” (Id.11-12, emphasis added). 1

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Has Appellant shown that the Examiner’s interpretation
of “integrating” is unreasonable? (Independent claim 1).
2. Has Appellant shown that the Examiner erred in finding
that Glew discloses establishing a virtual memory space
on an integrated circuit including an application
processor, as required by the equivalent language of
independent claims 10 and 16?
3. Has Appellant shown that the Examiner erred in finding
that Glew teaches detecting an instruction directed to a
virtual memory, as required by the equivalent language
of independent claims 1, 10, and 16?

1 We note that our reviewing court has determined that “[t]eaching away is
irrelevant to anticipation.” Seachange International, Inc., v. C-Cor, Inc.,
413 F.3d 1361, 1380 (Fed. Cir. 2005), citing Celeritas Tech., Ltd., v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001).
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4. Are the claimed “cryptographic functions”
non-functional descriptive material? (Independent claims
1, 10, and 16)

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, 1375-76 (Fed. Cir. 2005) (citation omitted).
Appellant has 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). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case.
FINDINGS OF FACTS
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
The Glew reference
1. Glew discloses a “computing device 100 [that] may comprise one or
more processors 110 coupled to a chipset 120 via a processor bus
130.” (Para. [0017]; see also Figs. 1A-1E).
2. Glew discloses that “chipset 120 may comprise one or more integrated
circuit packages or chips that couple the processors 110 to system
memory 140, a physical token 150, private memory 160, a media
interface 170, and/or other I/O devices of the computing device 100.”
(Para. [0017]; see also Figs. 1A-1E).
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3. Glew discloses that “[e]ach processor 110 may be implemented as a
single integrated circuit, multiple integrated circuits, or hardware with
software routines (e.g., binary translation routines).” (Para. [0018];
see also Figs. 1A-1E).
4. Glew discloses that “[t]he AC module 190 may comprise code 210
and data 220.” (Para. [0033]; see also Fig. 2).
5. Glew discloses that “[i]t should be appreciated that the AC module
190 may reside in a contiguous region of the memory 140 that is
contiguous in the physical memory space or that is contiguous in
virtual memory space.” (Para. [0036]; see also Fig. 2)
6. Glew discloses that processors 110 may comprise cache memories
(Para. [0017]).

ANALYSIS
Issue 1
We decide the question of whether Appellant has shown that
the Examiner’s interpretation of “integrating” is unreasonable.
(Independent claim 1).
The Examiner asserts that the recited limitation of “integrating”
is met by Glew even using Appellant’s own argued dictionary
definition (i.e., “integrate” as “‘to form, coordinate, or blend into a
functioning or unified whole: unite.’”) (See App. Br. 11).
We note that our reviewing court has stated: “[w]hen the applicant
states the meaning that the claim terms are intended to have, the claims are
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examined with that meaning, in order to achieve a complete exploration of
the applicant’s invention and its relation to the prior art.” In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989).
Here, we agree with the Examiner because Appellant’s own proffered
dictionary definition for “integrate” merely requires forming a “unified
whole” (see App. Br. 11). Therefore, we find that Glew’s one or more
processors 110 (i.e., application processor) form a “unified whole” (i.e.,
computing device 100) that includes memory 140 that is coupled to
processors 10 (FF 1-2) (see also Glew’s Figs. 1A-1E). Accordingly, we find
Appellant has not shown that the Examiner’s interpretation of “integrating”
is unreasonable regarding independent claim 1 (“integrating an application
processor with a storage”). Furthermore, no integrated circuit is recited in
claim 1.
In contrast, we note that the language of independent claims 10 and 16
is distinguished from the language of claim 1, in that claims 10 and 16
positively recite an “integrated circuit.” See discussion of Issue 2 infra.

Issue 2
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Glew discloses establishing a virtual memory
space on an integrated circuit including an application processor, as required
by the equivalent language of independent claims 10 and 16.
Contrary to the findings of the Examiner (Ans. 4-5, 11), we note that
Glew clearly discloses that “[e]ach processor 110 may be implemented as a
single integrated circuit, multiple integrated circuits, or hardware with
software routines” (FF 3). Glew also discloses that processors 110 are
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coupled to system memory 140 by chipset 120 that may comprise one or
more integrated circuit packages or chips (FF 2). While Glew does disclose
that processors 110 may comprise cache memories (FF 6), we do not find,
and the Examiner does not establish, that virtual memory is implemented by
the internal processor 110 cache memory. Instead, the Examiner merely
responds that the code of AC module 190 “could reside” in external memory
140 that is contiguous in virtual memory space (Ans. 11, ¶3). Although
“virtual memory space” is mentioned in Glew’s paragraph [0036], we
nevertheless find that Glew does not disclose specific details regarding how
the virtual memory space is implemented. Therefore, we find that Glew does
not disclose a single integrated circuit that includes an application processor
and a virtual memory space. Accordingly, we find Appellant has established
that the Examiner erred in determining that Glew discloses establishing a
virtual memory space on an integrated circuit including an application
processor, as required by the equivalent language of independent claims 10
and 16. We note that Issue 2 is dispositive regarding our reversal of claims
10-27.

Issue 3
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Glew teaches detecting an instruction directed
to a virtual memory, as required by the equivalent language of independent
claims 1, 10 and 16?
While Appellant notes that paragraph [0037] is silent regarding a
virtual memory, the Examiner clarifies that it is paragraph [0036] of Glew
that discloses a virtual memory (Ans. 11, ¶3) (FF 5). Appellant had an
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opportunity to address the Examiner’s clarification in a Reply Brief, but
chose not to do so. We note that Glew discloses that “[t]he AC module 190
may comprise code 210 and data 220.” (FF 4). Glew also discloses that
“[i]t should be appreciated that the AC module 190 may reside in a
contiguous region of the memory 140 that is contiguous in the physical
memory space or that is contiguous in virtual memory space.” (FF 5).
Therefore, we find that Glew discloses executing AC module code that may
(in one embodiment) reside in virtual memory. We further find that
executing code in virtual memory necessarily involves detecting (i.e.,
reading) the instruction code. Therefore, we find that Appellant has not
shown that the Examiner erred in determining that Glew teaches detecting an
instruction directed to a virtual memory, as required by the equivalent
language of independent claims 1, 10, and 16.

Issue 4
We decide the question of whether the claimed “cryptographic
functions” are non-functional descriptive material. (See Independent claims
1, 10, and 16).
Functional descriptive material consists of data structures or computer
programs which impart functionality when employed as a computer
component. Non-functional descriptive material refers to data content that
does not exhibit a functional interrelationship with the substrate and does not
affect the way the computing processes are performed.2

2 See Ex parte Nehls,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte Curry, 84
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Based upon our review of each independent claim on appeal, we find
that merely granting access to “cryptographic functions” for instructions that
are directed to virtual memory does not actually invoke (i.e., execute) any of
the claimed cryptographic functions (see independent claims 1, 10, and 16).
In other words, we find that the recited “cryptographic functions” are
non-functional descriptive material that, as claimed, have no effect on the
recited step or function of granting instructions access to cryptographic
functions, or on any of the other steps (or equivalent functional language)
recited in each of independent claims 1, 10, and 16. Thus, the claimed
“cryptographic functions” are not used to do or change anything in the
aforementioned independent claims. Because we find the claimed
cryptographic functions bear no functional relationship to the substrate (i.e.,
the recited storage or memory), we accord the claimed cryptographic
functions no patentable weight as being non-functional descriptive material.
Accordingly, we conclude that Appellant’s argument directed to the claimed
cryptographic functions (see contention 5 supra) does not meet the burden of
showing that the Examiner erred (independent claims 1, 10, and 16).

CONCLUSION OF LAW
Appellant has not established that the Examiner erred in rejecting
claims 1 and 4 under 35 U.S.C. § 102(e) over Glew based upon our analysis
of Issues 1, 3, and 4 supra.

USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal No. 2006-1003, aff’d
Rule 36 Jun. 12, 2006); Manual of Patent Examining Procedure § 2106.01 (8th ed., Rev.
6, Sept. 2007).

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Appellant has not established that the Examiner erred in rejecting
claims 2 and 3 under 35 U.S.C. § 103(a) over Glew in view of Noel based
upon our analysis of Issues 1, 3, and 4 supra.
Appellant has not established that the Examiner erred in rejecting
claims 5-9 under 35 U.S.C. § 103(a) over Glew in view of Eslinger based
upon our analysis of Issues 1, 3, and 4 supra.
Appellant has established that the Examiner erred in rejecting claims
10, 13, 16, 19, 21, and 27 under 35 U.S.C. § 102(e) over Glew based upon
our analysis of Issue 2 supra.
Appellant has established that the Examiner erred in rejecting claims
11, 12, 18, and 20 under 35 U.S.C. § 103(a) over Glew in view of Noel
based upon our analysis of Issue 2 supra.
Appellant has established that the Examiner erred in rejecting claims
14 and 22-26 under 35 U.S.C. § 103(a) over Glew in view of Eslinger based
upon our analysis of Issue 2 supra.
Appellant has established that the Examiner erred in rejecting claim
15 under 35 U.S.C. § 103(a) over Glew in view of Eslinger and England
based upon our analysis of Issue 2 supra.
Appellant has established that the Examiner erred in rejecting claim
17 under 35 U.S.C. § 103(a) over Glew in view of England based upon our
analysis of Issue 2 supra.

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DECISION
The Examiner’s decision rejecting claims 1-9 is affirmed.
The Examiner’s decision rejecting claims 10-27 is reversed.
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-IN-PART

pgc

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