Ex Parte Burky et alDownload PDFPatent Trial and Appeal BoardMay 9, 201612423495 (P.T.A.B. May. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/423,495 04/14/2009 William E. Burky 50170 7590 05/09/2016 IBM CORP. (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 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 ATTORNEY DOCKET NO. CONFIRMATION NO. AUS920080824US 1 8645 EXAMINER HUISMAN, DAVID J ART UNIT PAPER NUMBER 2183 MAILDATE DELIVERY MODE 05/09/2016 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 WILLIAM E. BURKY, BRIAN R. MESTAN, DUNG Q. NGUYEN, BALARAM SINHAROY, and BENJAMIN W. STOLT Appeal2014-006368 Application 12/423,495 Technology Center 2100 Before THU A. DANG, JOHN P. PINKERTON, and NORMAN H. BEAMER, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 file this appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-9 and 11-19, which constitute all the claims pending in this application. Claims 10 and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part. 1 Appellants identify International Business Machines Corp. as the real party in interest. App. Br. 2. Appeal2014-006368 Application 12/423,495 STATEMENT OF THE CASE Introduction Appellants' generally describe the disclosed and claimed invention as follows: Mechanisms are provided for partial flush handling with multiple branches per instruction group. The instruction fetch unit sorts instructions into groups. A group may include a floating branch instruction and a boundary branch instruction. For each group of instructions, the instruction sequencing unit creates an entry in a global completion table (GCT), which may also be referred to herein as a group completion table. The instruction sequencing unit uses the GCT to manage completion of instructions within each outstanding group. Because each group may include up to two branches, the instruction sequencing unit may dispatch instructions beyond the first branch, i.e. the floating branch. Therefore, ifthe floating branch results in a misprediction, the processor performs a partial flush of that group, as well as a flush of every group younger than that group. Abstract. 2 Claim 1 is representative and reads as follows: 1. A method, in a data processing system, for partial flush handling, the method comprising: dispatching an instruction group to one or more execution units, wherein the dispatched instruction group includes a plurality of instructions including a floating branch instruction; and 2 Our Decision refers to the Final Office Action mailed June 19, 2013 ("Final Act."); Appellants' Appeal Brief filed Dec. 2, 2013 ("App. Br."); the Examiner's Answer mailed Feb. 20, 2014 ("Ans."); Appellants' Reply Brief filed Apr. 21, 2014 ("Reply. Br."); and, the Specification filed Apr. 14, 2009 ("Spec."). 2 Appeal2014-006368 Application 12/423,495 responsive to the floating branch instruction resulting in a branch misprediction, sending flush information to the one or more execution units, wherein responsive to the flush information, the one or more execution units flush any full instruction groups younger than the dispatched instruction group and any instructions within the dispatched instruction group that are younger than the floating branch instruction, without flushing any instructions within the dispatched instruction group that are older than the floating branch instruction, such that the one or more execution units perform a partial flush of the dispatched instruction group. References Cheong '480 US 6,553,480B1 Apr. 22, 2003 Talcott US 6,738,897 Bl May 18, 2004 Cheong '696 US 6,898,696B1 May 24, 2005 Chou US 8,099,586 B2 Jan. 17,2012 David A. Patterson and John L. Hennessy, Computer Architecture - A Quantitative Approach (2nd ed. 1996) ("Hennessy") Re} ections on Appeal3 Claims 1and11 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Chou. Claims 1-9 and 11-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480 and Talcott. With respect to claims 6 and 16, the Examiner further cites Hennessy as "extrinsic evidence showing some program statistics." Final Act. 10-11. 3 The Examiner's rejection of claims 10 and 20 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement has been withdrawn due to cancellation of claims 10 and 20. Ans. 2. 3 Appeal2014-006368 Application 12/423,495 Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chou. Issues Appellants' arguments in the Briefs present us with the following issues: 1. Did the Examiner err in rejecting claims 1 and 11 under 35 U.S.C. § 102(e) as being anticipated by Chou? 2. Did the Examiner err in rejecting claims 1 and 11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480 and Talcott? 3. Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480 and Talcott? 4. Did the Examiner err in rejecting claims 3 and 13 under U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480 and Talcott? 5. Did the Examiner err in rejecting claims 6 and 16 under U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480, Talcott, and Hennessy? 6. Did the Examiner err in rejecting claims 8, 9, 18, and 19 under U.S.C. § 103(a) as being unpatentable over the combination of Cheong '480 and Talcott? 7. Did the Examiner err in rejecting claims 6 and 16 under U.S.C. § 103(a) as being unpatentable over Chou? 4 Appeal2014-006368 Application 12/423,495 ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments in the Appeal Brief and Reply Brief that the Examiner has erred. Appellants have persuaded us of error in the Examiner's rejection of (1) claims 1and11under35 U.S.C. § 102(e) as being anticipated by Chou, (2) claims 2, 4, 5, 8, 9, 12, 14, 15, 18, and 19 under 35 U.S.C. § 103(a) as being obvious in view of Cheong '480 and Talcott, and (3) claims 6 and 16 under 35 U.S.C. § 103(a) as being obvious in view of Chou. We disagree with Appellants' arguments the Examiner erred in rejecting claims 1, 3, 6, 7, 11, 13, 16, and 17 under 35 U.S.C. § 103(a) as being obvious in view of Cheong '480 and Talcott (and Hennessy regarding claims 6 and 16). Unless indicated otherwise, we adopt as our own the findings, conclusions, and reasons set forth by the Examiner relating to the rejection of claims 1, 3, 6, 7, 11, 13, 16, and 17 under 35 U.S.C. § 103(a) in view of Cheong '480, Talcott, and Hennessy in the action from \vhich this appeal is taken (Final Act. 10-28) and in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 21-3 8). For emphasis, we consider and highlight specific arguments as presented in the Briefs. Issue 1: Rejection of Claims 1and11under§102(e) Based on Chou Appellants argue the Examiner erred in rejecting claims 1 and 11 under 35 U.S.C. § 102(e) as being anticipated by Chou. App. Br. 3-9; Reply Br. 2--4. In particular, Appellants argue Chou does not disclose "dispatching an instruction group to one or more execution units" and "one or more execution units flush any full instruction groups younger than the dispatched instruction group," as recited in claim 1. App. Br. 2-6. Regarding claim 11, Appellants argue Chou does not disclose the limitations "the instruction 5 Appeal2014-006368 Application 12/423,495 fetch unit fetches a plurality of instructions ... and sorts [them] into an instruction group," "the instruction sequencing unit ... creates an entry for the instruction group in a group completion table," and "the one or more execution units flush any full instruction groups younger than the dispatched instruction group." App. Br. 3, 8; Reply Br. 1--4. The basic premise of Appellants' arguments is that the Examiner has erred in construing "an instruction group" as any arbitrary number of dispatched instruction groups. See App. Br. 7. The Examiner finds the broadest reasonable construction of "an instruction group" may comprise "any arbitrary number of instructions that are not necessarily dispatched at the same time." Ans. 17-19. Thus, the Examiner finds Chou's disclosure of" out-of-order execution" discloses instructions are sorted into groups because "Chou picks one or more instructions from a sequence based on resource availability, dependencies, etc., and dispatches the one or more instructions to the execution units appropriately." See Ans. at 19-20. We are persuaded by Appellants' arguments that the Examiner has erred. Regarding the construction of "an instruction group," during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Trans logic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). "Even under the broadest reasonable interpretation, the Board's construction cannot be divorced from the 6 Appeal2014-006368 Application 12/423,495 specification and the record evidence, and must be consistent with the one that those skilled in the art would reach." Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (internal quotations and citations omitted). "Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification." PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Here, we agree with Appellants the Specification and other cited art establish an instruction group is an entity of a plurality of instructions. App. Br. 2 and 7 (see Spec. i-fi-148, 55-59, 67, 79, 84--85). As Appellants argue, Cheong '480, which is cited and applied by the Examiner, evidences that "[t]he concept of issuing instructions as instruction groups is known in the art." App. Br. 6 (see Cheong '480, 6:49-7:13). Thus, based on the claim language, the Specification, and the evidence of record, we conclude the Examiner's interpretation of "an instruction group" as "any arbitrary number of instructions that are not necessarily dispatched at the same time" is overly broad and unreasonable. Accordingly, we agree with Appellants' arguments that Chou does not teach the limitations at issue because Chou does not teach dispatching a plurality of instructions as a single entity or flushing an instruction group as a single entity. App. Br. 7. Thus, we do not sustain the Examiner's rejection of claims 1and11under35 U.S.C. § 102(e) in view of Chou. Issue 2: Rejection of Claims 1and11 under § 103(a) in View of Cheong '480 and Talcott Appellants argue the rejection of claims 1 and 11 under 35 U.S.C. 7 Appeal2014-006368 Application 12/423,495 § 103(a) is in error because it is based on the incorrect assumption that there may be a group in Cheong '480 that may be partially flushed. App. Br. 13- 16. According to Appellants, there is no teaching in Cheong'480 that an instruction group includes both a branch instruction and a no-op instruction, and the Examiner improperly assumes that an instruction group may have both a branch and a no-op instruction. Id. at 10-11; Reply Br. 4--5, 11. Appellants further argue Cheong teaches flushing all instructions in an instruction group and, in Cheong, there are no instructions within the dispatched instruction group that are younger than the floating branch instruction. App. Br. at 13-16. Appellants further argue Cheong teaches away from partial flushing, and a partial flush would require one to invent mechanisms to track individual instructions to flush, and to refetch, which would require undue experimentation. App. Br. 15-16. Thus, Appellants argue the Examiner has used improper hindsight "using the claims as a template for recreating the current invention." Id. Concerning partial flushing of an instruction group, Appellants argue the Examiner has fabricated, concocted, and invented an embodiment based on Cheong '480 in which an instruction group ends in a no-op and includes a conditional branch instruction followed by a younger instruction before the no-op. See id. 16; Reply Br. 6. Appellants also argue there is no teaching in Cheong '480 of a partial flush of an instruction group. See App. Br. at 11-12. Appellants' arguments are unconvincing. First, we agree with the Examiner's finding that, in Cheong '480's second embodiment in which the instruction group ends with a no-op, any slot 21 Oa---d may hold any instruction (other than a no-op), including a branch instruction. Ans. 23. As the Examiner finds, Cheong '480 teaches a delimiter identifier 21 Oe is used 8 Appeal2014-006368 Application 12/423,495 to end an instruction group, which may be a branch (BR) instruction or, alternately, in another embodiment, "the delimiter identifier is a no-operation (no-op) instruction." See Ans. 21 (Cheong '480, Figure 2, 7:2-10). The Examiner also finds, and we agree, in this second embodiment, "any existing branch must exist somewhere other than at the end of a group." Ans. 21. The Examiner notes that Hennessy teaches "that as many as 24 % of instructions may be branches in the small number of example programs shown." Ans. 22 (citing Hennessy 105). As the Examiner also finds, Cheong '480 teaches each instruction in instruction group 210 is typically augmented with a few additional bits, "generally to identify the instruction as a branch or not." Ans. 23 (citing Cheong 7: 14--17). Thus, we agree with the Examiner's finding that a person of ordinary skill in the art would have recognized that a branch could "appear anywhere in [slots] 21 Oa-d [of Cheong '480]; it is simply a matter of where the branch is required in the program." Ans. 23. Based on these findings, we are not persuaded by Appellants' arguments the Examiner has ( 1) improperly assumed that an instruction group in Cheong '480 may have both a branch and a no-op instruction and (2) fabricated, concocted, and invented an embodiment based on Cheong '480 in which an instruction group ends in a no-op and includes a conditional branch instruction followed by a younger instruction before the no-op. Instead, we agree with the Examiner that the rejection is not based on a fabrication, but on the teachings and suggestions of the cited references. See Ans. 22. Second, we are not persuaded by Appellants' arguments that there is no teaching in Cheong '480 of a partial flush of an instruction group. See 9 Appeal2014-006368 Application 12/423,495 App. Br. 11-16. Here, the Examiner's rejection is based on the combined teachings of Cheong '480 and Talcott. Final Act. 11-12; Ans. 24. In particular, the Examiner finds Talcott teaches, responsive to the floating branch instruction resulting in a branch misprediction, the instructions younger than the mispredicted branch must be flushed, while the older instructions are not flushed. Final Act. 11 (citing Talcott 4:64---67). The Examiner further finds: Therefore, based on the teachings of Talcott, one of ordinary skill in the art would have recognized that if this one particular group could be partially flushed such that older instructions 21 Oa and 21 Ob are not flushed and instructions 21 Od and 21 Oe are flushed, then at least some time will be saved by not having to re-execute instructions 21 Oa and 21 Ob (as would be the case if they were flushed as part of the group flush taught by Cheong). Therefore, the examiner maintains the partial flush of the dispatched group is obvious. Note that any younger full groups may be group flushed, thereby preserving the benefits of group flush in Cheong for all but the group with the mispredicted branch. Ans. 24. Because the Examiner relies on Talcott as teaching or suggesting the partial flushing of an instruction group in the event of a branch misprediction, Appellants' arguments that Cheong '480 does not teach partial flushing are unpersuasive. See Ans. 28. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). 10 Appeal2014-006368 Application 12/423,495 Third, we are not persuaded by Appellants' argument that Cheong teaches away from partial flushing of an instruction group because the purpose of Cheong "is to simplify the overhead of managing instructions by completing and flushing instruction groups as a whole." See App. Br. 11. Even though Cheong '480 teaches processing of instruction groups as a whole, Cheong' 480 does not teach away from partial flushing of an instruction group because it does not "criticize, discredit, or otherwise discourage the solution claimed .... " See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Teaching an alternative method does not teach away from the use of a claimed method. In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also, Ex parte Shuping, No. 2008-0394, 2008 WL 336222, at *2 (BPAI 2008) ("[T]eaching a way is not teaching away.") (Citation omitted). Fourth, we are not persuaded by Appellants' arguments that the use of partial flushes as taught by Talcott with full group flushes as taught by Cheong '480 would require undue experimentation and "is an extremely clear case of hindsight reconstruction." See App. Br. 16. Appellants' undue experimentation argument is speculative, not supported by persuasive evidence, and insufficient to persuade us that the proposed combination of references would have led to anything other than predictable results or that the references are otherwise not properly combinable. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument is not the kind of factual evidence required to rebut a prima facie case of obviousness); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence"). Furthermore, "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 11 Appeal2014-006368 Application 12/423,495 1332 (Fed. Cir. 2012) (citations omitted); see also, Jn re Keller, 642 F.2d 413, 425 (CCPA 1981) (The "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). In regard to Appellants' "impermissible hindsight" argument, we find no such hindsight in the Examiner's rejection. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the appellants' disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, as explained supra, the Examiner's finding of obviousness in view of the combination of Cheong '480 and Talcott is based on the teachings of the references and the knowledge of a person of ordinary skill in the art. As discussed supra, Appellants have not provided persuasive evidence that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013). 12 Appeal2014-006368 Application 12/423,495 Thus, for these reasons, we sustain the Examiner's rejection of claims 1 and 11under35 U.S.C. § 103(a) in view of Cheong '480 and Talcott. For the same reasons, we also sustain the Examiner's rejection of dependent claims 6, 7, 16, and 17, which are not separately argued. See 37 C.F.R. § 41.37(c)(l)(iv). Issue 3: Rejection of Claims 2, 4, 5, 12, 14, and 15 under § 103(a) in View of Cheong '480 and Talcott Appellants contend Cheong does not teach "an effective address tag of an instruction after the floating branch instruction to identify the instruction after the floating branch instruction to be speculatively executed," as recited in claim 2. App. Br. 17-20; Reply Br. 12-13. In particular, Appellants argue claim 2 requires "two separate effective address tags for two separate instructions," a first address tag to identify the first instruction in the dispatched instruction group and a second address tag to identify the instruction following the floating branch instruction. App. Br. 18; Reply Br. 12. The Examiner concludes claim 2 does not require a second, separate address tag and finds that Cheong teaches "a single tag does both identifications, and hence anticipates this limitation." Ans. 31. We agree with Appellants that the Examiner erred in rejecting claim 2. Appellants argue, and we agree, Cheong teaches a single effective address, which is the address of the starting instruction, i.e., first instruction 21 Oa, of the dispatched instruction group. App. Br. 17 (citing Cheong Figure 3B, 9:26-29). Although we agree with the Examiner's findings that Cheong teaches or suggests an instruction group that ends in a no-op and includes a conditional branch instruction followed by a younger instruction before the no-op, as discussed supra regarding issue 2, we agree with Appellants that 13 Appeal2014-006368 Application 12/423,495 Cheong does not teach or suggest an effective address tag to identify the instruction after the floating branch instruction. Thus, we do not need to, and do not, decide the issue of whether claim 2 requires separate address tags because we agree with Appellants that Cheong teaches only the effective address of the starting instruction of the dispatched instruction group and does not expressly or inherently teach or suggest an effective address tag of an instruction after the floating branch instruction, as required by claim 2. Thus, we do not sustain the Examiner's rejection of claim 2. For the same reasons, we do not sustain the rejection of claim 12, which contains similar limitations to those of claim 2. For the same reasons, we also do not sustain the Examiner's rejections of claims 4 and 5, which depend directly or indirectly from claim 2, and claims 14 and 15, which depend directly or indirectly from claim 12. Issue 4: Rejection of Claims 3 and 13 under § 103(a) in View of Cheong '480 and Talcott Appellants contend the Examiner erred in rejecting claim 3 because, although Cheong teaches a trouble bit, "Cheong still teaches flushing the entire instruction group. Therefore, the trouble bit is not a partial flush bit." App. Br. 20-22; Reply Br. 13-14. The Examiner finds that Appellants are arguing Cheong individually and that "Cheong in view of Talcott has taught partial flushing when the branch is not the last instruction in the instruction group." Ans. 33-34. In the Final Office Action, the Examiner finds as follows regarding claim 3: However, Cheong has taught a trouble bit that is used to indicate a problem condition experienced during execution of a given instruction. See the abstract. When an instruction 14 Appeal2014-006368 Application 12/423,495 completes abnormally, its trouble bit is set, and this bit may be used to trigger a flush. See column 9, lines 42-44. So, even though Cheong hasn't disclosed that this bit is set upon branch misprediction, a misprediction is a trouble condition that needs to trigger a flush. Therefore, one of ordinary skill in the art would have recognized that the trouble bit for a mispredicted branch could be set to trigger a flush for that branch. As a result, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Cheong such that the entry further comprises a partial flush bit, the method further comprising: responsive to the floating branch instruction resulting in a branch misprediction, setting the partial flush bit in the group completion table. Note that by using an already- existing trouble bit to indicate misprediction and partial flushing, additional hardware indicators would not need to be added to the system. This is another advantage of the proposed modification. Final Act. 13. For the reasons stated by the Examiner, we agree with the Examiner's findings in the Final Office ii~ction and ii~ns\'l/er and adopt them as our O\'l/n. Accordingly, we sustain the Examiner's rejection of claim 3, as well as claim 13, which is argued together with claim 3. Issue 5: Rejection of Claims 6and16 under§ 103(a) in View of Cheong '480, Talcott, and Hennessy Appellants contend the Examiner erred in rejecting claim 6 because Cheong does not teach the limitation "that the dispatched instruction group includes two branch instructions." App. Br. 22-24; Reply Br. 14--15. Appellants argue "Cheong only ever proposes placing a single branch in an instruction group; Talcott does not teach instruction groups at all; and, [H]ennessy does not teach instruction groups at all." App. Br. 24. Regarding claim 6, the Examiner finds as follows: 15 Appeal2014-006368 Application 12/423,495 Again, appellant is arguing references separately. The prior art shows a group of instructions that ends in a no-op. The group may be 5 instructions wide (as shown in Fig.2 of Cheong), or it may be longer (see column 6, lines 61-65). Branches are common instructions, as shown in Hennessy, and depending on the program design and purpose, branches may occur often (i.e., on average about 1 out of every 4 instructions). However, there could even be two branches back to back or only separated by 1 or 2 instructions. Therefore, multiple branches could occur in a single 5-instruction group. Location of branches is a result of program design and can vary between programs. Also, the longer the group, the more likely multiple branches will exist in the group. Finally, recall column 7, lines 14-1 7 of Cheong which sets forth bits for each instruction in the group to indicate whether that instruction is a branch. While there is no explicit teaching of multiple branches, these bits certainly leave open the possibility of multiple branches, and can accommodate multiple branches. And, even if there were multiple branches in a group in Cheong, the full flushing could still occur for younger groups. Ans. 35-36. We are not persuaded by Appellants' arguments. As the Examiner finds, Appellants attack the references individually, where the Examiner's rejection is based on the combination of Cheong, Talcott, and Hennessy. See Merck, 800 F.2d at 1097 ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). Appellants have not provided persuasive evidence or argument to rebut the above findings of the Examiner based on the combination of the cited references. Accordingly, we agree with the Examiner's findings and, therefore, sustain the Examiner's rejection of claim 6. For the same reasons, we sustain the Examiner's rejection of claim 16, which is argued together with claim 6. 16 Appeal2014-006368 Application 12/423,495 Issue 6: Rejection of Claims 8, 9, 18, and 19 under § 103(a) in View of Cheong '480 and Talcott Appellants contend the Examiner erred in rejecting claim 8 because Cheong does not expressly or inherently teach or suggest "the flush information comprises a group tag of the dispatched instruction group to be partially flushed, a group mask that indicates which instruction groups are to be fully flushed, and an instruction mask that indicates which instructions in the dispatched instruction group are to be flushed," as recited in claim 8. App. Br. 25-27; Reply Br. 16. The Examiner finds as follows: The examiner concedes that Cheong by itself has not taught partial flush. But, as modified based on the teachings of Talcott, a partial flush of a group containing a mispredicted branch would be carried out to avoid having to redo the instructions older than that branch. If a partial flush of a group is performed, the system has to indicate which instructions in the group are to be flushed and which are not to be flushed (using tags/mask/bits). This is inherent in Cheong, as modified, i.e., in the combination of art, not in Cheong by itself. Ans. 36. We are persuaded by Appellants' arguments that the Examiner has erred. In an obviousness analysis, it is proper to use inherency to account for a claim limitation that is not expressly disclosed by the prior art. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194--1195 (Fed. Cir. 2014); see also In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). Our reviewing court, however, has limited the application of inherency in an obviousness analysis to situations where the limitation at issue is the "natural result" of the combination of prior art elements. Id. at 17 Appeal2014-006368 Application 12/423,495 1195. Although we agree with the Examiner that the combination of Cheong '480 and Talcott teaches partial flushing of an instruction group in the event of a branch misprediction, as discussed supra regarding issue 2, the Examiner's finding that the combined system must use "tags/mask/bits" is insufficient to demonstrate the claimed "group tag," "group mask," and "instruction mask," as recited in claim 8, are the natural result of the combination of prior art elements. Instead, the Examiner's findings and conclusions are seen as improperly relying on speculation as to the teachings of the prior art. In re Warner, 379 F.2d 1011, 1016(CCPA1967) (Patent Office required to produce factual basis for rejection). Thus, we do not sustain the Examiner's rejection of claim 8 and the rejection of claim 18, which recites similar limitations. For the same reasons, we also do not sustain the rejection of claims 9 and 19, which depend from claims 8 and 18, respectively. Issue 7: Rejection of Claims 6 and 16 under§ 103(a) in View of Chou Appellants argue Chou does not teach or suggest "the dispatched instruction group includes two branch instructions," as recited in claim 6, and as similarly recited in claim 16. App. Br. 27-28; Reply Br. 16. The Examiner finds, "[a]ccording to broadest reasonable interpretation, Chou has taught dispatching instruction groups." Ans. 38. For the reasons discussed supra regarding issue 1, we are persuaded by Appellants' argument Chou does not teach dispatching instruction groups including two branch instructions because Chou does not teach or suggest dispatching a plurality of instructions as a single entity. Thus, we do not sustain the Examiner's rejection of claims 6 and 16 under 35 U.S.C. § 103(a) in view of Chou. 18 Appeal2014-006368 Application 12/423,495 DECISION We reverse the Examiner's decision rejecting claims 1 and 11 under 35 U.S.C. § 102(e). We affirm the Examiner's decision rejecting claims 1, 3, 6, 7, 11, 13, 16, and 17 under 35 U.S.C. § 103(a) in view of the combination of Cheong '480 and Talcott (and Hennessy regarding claims 6 and 16). We reverse the Examiner's decision rejecting claims 2, 4, 5, 8, 9, 12, 14, 15, 18, and 19 under 35 U.S.C. § 103(a) in view of the combination of Cheong '480 and Talcott. We reverse the Examiner's decision rejecting claims 6 and 16 under 35 U.S.C. § 103(a) in view of Chou. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 19 Copy with citationCopy as parenthetical citation