Ex Parte Chowdhuri

Board of Patent Appeals and Interferences

Jun 8, 2009

11390627 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BHASKAR CHOWDHURI
____________
Appeal 2008-004832
Application 11/390,6271
Technology Center 2100
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Decided:2 June 9, 2009
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Before LANCE LEONARD BARRY, JEAN R. HOMERE, and JAY P.
LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on March 28, 2006. This application is a continuation of an
application filed March 14, 2003. The real party in interest is Marvell
International, Ltd.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 4, 7 through 11, and 14 through 29.3 Claims 5,
6, 12, and 13 have been deemed allowable if rewritten in independent form
to include the limitations of their respective base claims and any other
intervening claims. (Fin. Rej. 19-20). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appellant’s Invention
Appellant invented an apparatus for providing bus arbitration using
dynamic priorities based on the waiting periods for a request. (Spec. 1, para.
[0002].) In particular, Figure 4 depicts an arbiter (400) that serves as the
arbitrator in a communication system. (Spec. 8, para. [0028].) The arbiter
(400) comprises an arbiter core (402) and a plurality of request shapers
(404A through 404N). (Spec. 8, para. [0028].) Upon receiving a request
from a requestor (102A through 102N), the request shapers (404A through
404N) determine a priority level, and pass the request and priority level to
the arbiter core (402). (Spec. 8, para. [0028].) The request shapers (404A
through 400N) can increase the priority level based on the passage of time
with reference to a delta period. (Spec. 8, para. [0028].) As depicted in

3The Examiner indicates that claims 20, 21, 27, and 28 would be allowable
if: 1) rewritten or amended to overcome the rejection under 35 U.S.C.
§ 112, first paragraph, and 2) rewritten in independent form to include the
limitations of their respective base claims and any other intervening claims.
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Figure 5, a request shaper (404A through 404N) contains a first counter
(502) and a second counter (508). (Spec. 9, para. [0030].) The first counter
(502) assigns to each request an age indicative of the counting cycles of the
clock signal (“CLK”). (Spec. 9, para. [0030].) An equality comparator
(504) then compares the count in the first counter (502) to the delta period.
(Spec. 9, para. [0031].) When the delta period expires, the output of the
equality comparator (504) goes high, thereby resetting the first counter (502)
and incrementing the second counter (508). (Spec. 9-10, para. [0031].)
Thus, when the delta period expires, the request is increased to the
maximum priority level. (Spec. 10, para. [0031].)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. An arbitration circuit for granting access to a shared
resource among requestors, comprising:

N request shapers, where N is an integer greater than one, each
comprising:

an input unit to receive a request from a requestor;

an age unit to assign an age to the request and to increase
the age of the request when the requestor is not granted access
to the shared resource;

a priority unit to assign a priority level to each of the
requests and to selectively increase the priority level of the
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request based on the age of the respective one of the requests
and a delta period of the request; and

an arbiter core to receive the requests from the N request
shapers and to selectively grant access to the shared resource to
each of the requestors corresponding to the requests based on
the priority level and age of the requests,

wherein said delta period of one of said N request shapers is
different than said delta period of another of said N request
shapers.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatenability:
Giroir US 4,672,536 Jun. 9, 1987
Gulick US 5,778,200 Jul. 7, 1998

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 15 through 29 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1 through 4, 7 through 11, 14 through 19, 22 through 26, and
29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Giroir and Gulick.

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II. ISSUES
1. Appellant contends that “assign[ing] an age to the request after
the requestor requests access to the shared resource” is described in the
Specification in such a way as to reasonably convey to an ordinarily skilled
artisan that the inventor had possession of the claimed invention. (App. Br.
12; Reply Br. 5-6). The Examiner finds that the claim recitation
“assign[ing] an age to the request after the requestor requests access to the
shared resource” does not comply with the written description requirement.
(Ans. 25-26). Therefore the first issue before us is whether Appellant has
shown that the Examiner erred in concluding that the claimed invention fails
to comply with the written description requirement. In particular, the issue
turns on whether Appellant’s original disclosure supports the claim
recitation of “assign[ing] an age to the request after the requestor requests
access to the shared resource.”
2. Appellant contends that the proffered combination of Giroir and
Gulick fails to teach assigning a priority level to a request based on an age
and a delta period, wherein the delta period of one of N request shapers is
different than the delta period of another of the request shapers. (App. Br. 8;
Reply Br. 2). In particular, Appellant argues that Gulick fails to disclose
increasing the priority level based on different time periods. (App. Br. 9;
Reply Br. 3-4). The Examiner avers that Gulick’s disclosure of establishing
priority for a request based on counter values and corresponding lapses of
time teaches assigning a priority level to a request based on an age and
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various time periods, respectively. (Ans. 22-24). Therefore, the second
issue before is whether Appellant has shown that the Examiner erred in
finding that the disclosures of Giroir and Gulick teach assigning a priority
level to a request based on an age and a delta period, wherein the delta
period of one of N request shapers is different than the delta period of
another of the request shapers, as recited in independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are supported by a
preponderance of the evidence.

Appellant’s Invention
1. As depicted in step 302 of Figure 3, the arbiter (200) receives a
plurality of requests from requestors (102). (Spec. 7, para. [0025].) In step
304, when a request is received, an age is assigned by one of the counters
(206). (Spec. 7, para. [0025].)
2. A delta period is a time increment, difference, or change. (App.
Br. 10; Reply 3). When two requestors have different delta periods, passage
of time has a different effect on the respective priorities of the requestors.
(App. Br. 9; Reply 3).

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Giroir
3. Giroir discloses an arbitration method and device that can be
used in a multiple processor system in which several components can gain
access to a common bus. (Col. 1, ll. 10-16.)

Gulick
4. Gulick discloses a computer system with an improved bus
arbiter for arbitrating bus access between various computer components.
(Col. 1, ll. 7-11.)
5. As depicted in Figure 1, the bus arbiter (180) is configured to
dynamically vary a level of arbitration priority provided to computer
components based upon a lapse of time from when the computer component
last owned the bus (120). (Col. 4, ll. 21-25.) In particular, the bus arbiter
(180) includes aging factor counter units (210). (Col. 4, ll. 33-38.) The
aging factor counter units (210) generate signals indicative of a lapse of time
from which certain masters of the bus (120) last owned the bus (120). (Col.
4, ll. 39-41.) Different initial count values may be set for different aging
factor counter units (210). (Col. 5, ll. 4-5.) Additionally, the bus arbiter
(180) includes programmable registers (212) for setting and storing the
initial count value of each aging factor counter unit (210). (Col 4., ll. 53-
55.) An arbitration control unit (202) processes bus requests, prioritizes
contending requests, and anoints the winning computer component. (Col. 4,
ll. 62-65.)
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IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Written Description
The Court of Appeals for the Federal Circuit has held that “[t]o fulfill
the written description requirement [under 35 U.S.C. § 112], the patent
specification must describe an invention in sufficient detail that one skilled
in the art can clearly conclude that the inventor invented what is claimed.”
Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967-968 (Fed. Cir. 2006)
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(quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed.
Cir. 2003)). Put another way, “the applicant must … convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis in original).
Obviousness
“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 indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 416.
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The operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 417.
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR, 550 U.S. at 418.

V. ANALYSIS
35 U.S.C. § 112, first paragraph
Independent claim 15 recites in relevant part an age unit to assign an
age to the request after the requestor requests access to the shared resource.
As detailed in the Findings of Fact section, Appellant’s Specification
states that when the arbiter (200) receives a request from a requestor (102),
an age is assigned by one of the counters (206). (FF 1.) An ordinarily
skilled artisan would immediately discern from the cited portions of the
original disclosure that the age is assigned after the request is received. We
find the Examiner’s alternative interpretation of the claim language (Ans.
25-26) to be an improper basis for establishing that Appellant did not
possess the claimed invention at the time of filing. We are satisfied that
Appellant’s original disclosure supports that an age is assigned after a
request is received. We therefore agree with Appellant that an ordinarily
skilled artisan would be able to discern from the original disclosure that
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Appellant had possession of the inventive concept of assigning an age to a
request after the request is received from a requestor. (App. Br. 12; Reply
Br. 5-6). It follows that Appellant has shown that the Examiner erred in
finding that the claimed invention does not comply with the written
description requirement. Therefore, we will not sustain the Examiner's
rejection of claims 15 through 29.

35 U.S.C. § 103
Independent claim 1 recites in relevant parts: (1)…a priority unit to
assign a priority level to each of the requests and to selectively increase the
priority level of the request based on the age of the respective one of the
requests and a delta period of the request…; and (2)…wherein said delta
period of one of said N request shapers is different than said delta period of
another of said N request shapers.
As set forth in the Findings of Fact section, Appellant admits that a
delta period is a time increment, a time difference, or a time change. (FF 2.)
When two requestors have different delta periods or different time periods,
the time periods have a different effect on the respective priorities of
accessing a bus. (FF 2.) As detailed above, Giroir discloses an arbitration
method and device that can be used in a multiple processor system in which
several components can gain access to a common bus. (FF 3.) Further,
Gulick discloses an improved bus arbiter (180) for arbitrating bus access
between various computer components. (FF 4.) In particular, Gulick
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discloses that the priority of each bus request is increased or decreased based
upon a lapse of time from when a respective computer component last
accessed or owned the bus. (FF 5.) We find that the disclosed lapse of time
since a computer component accessed the bus would have suggested the use
of a time difference or delta period in assigning a priority level to a request.
We therefore agree with the Examiner that Gulick’s teaching of prioritizing
bus requests based on the last time a computer component accessed or
owned the bus amounts to increasing the priority level based on different
time periods. In other words, it would have been obvious to a person having
ordinary skill in the art that Gulick’s disclosure would compliment Giroir’s
teaching by increasing or decreasing arbitration priority for multiple bus
requests based on different time periods. We therefore do not agree with
Appellant that the combination of Giroir and Gulick fails to teach delta
periods and increasing the priority level of bus requests based on different
delta periods. (App. Br. 9; Reply Br. 3). It follows that Appellant has not
shown that the Examiner erred in concluding that the combination of Giroir
and Gulick renders claim 1 unpatentable.
Appellant did not provide separate arguments with respect to the
rejection of claims 1 through 4, 7 through 11, 14 through 19, 22 through 26,
and 29. Therefore, we select independent claim 1 as being representative of
the cited claims. Consequently, claims 2 through 4, 7 through 11, 14
through 19, 22, through 26, and 29 stand and fall with representative claim
1. 37 C.F.R. § 41.37(c)(1)(vii).
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VI. CONCLUSIONS OF LAW
1. Appellant has shown that the Examiner erred in concluding that
claims 15 through 29 fail to comply with the written description requirement
under 35 U.S.C. § 112, first paragraph.
2. Appellant has not shown that the Examiner erred in concluding
that the combination of Giroir and Gulick renders claims 1 through 4, 7
through 11, 14 through 19, 22 through 26, and 29 unpatentable under
35 U.S.C. § 103(a).

VII. DECISION
We reverse the Examiner’s decision rejecting claims 15 through 29.
However, we affirm the Examiner’s decision rejecting claims 1 through 4, 7
through 11, 14 through 19, 22 through 26, and 29.
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

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