Ex Parte Gehman et alDownload PDFPatent Trial and Appeal BoardApr 9, 201411284864 (P.T.A.B. Apr. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JUDY M. GEHMAN and STEVE M. EMERSON ____________________ Appeal 2011-0133681 Application 11/284,864 Technology Center 2100 ____________________ Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and ELENI MANTIS MERCADER, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is LSI Logic Corp. (App Br. 3.) Appeal 2011-013368 Application 11/284,864 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 5-10, 13-18, and 21-24. Claims 3, 4, 11, 12, 19, and 20 have been canceled. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented an endian mapping engine that employs endian schemes (byte invariant, half-word invariant, word invariant, and double word invariant) for transferring data between components of a processing system. Spec. ¶¶ [0001], [0002]. In particular, the endian mapping engine (120) includes an identification unit (121) that employs a static or a dynamic endianness signal to identify each received endian scheme. The endian mapping engine (120) further includes a conversion unit (122) and a multiplexing unit (123), both coupled to the identification unit (121), for converting and multiplexing a received endian scheme between different formats, respectively. Id. ¶ [0006], Fig. 1. Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. An endian mapping engine for use with a processing system, comprising: an identification unit configured to identify sending and receiving endian schemes for data transfers between components of said processing system wherein each of said sending and receiving endian schemes is identified by Appeal 2011-013368 Application 11/284,864 3 employing at least one of a static and a dynamic endianness signal; and a conversion unit coupled to said identification unit and configured to convert said data transfers between said sending and receiving endian schemes corresponding to an employed endian format, wherein said endian schemes for said data transfers include all of the following group: byte invariant; half-word invariant; word invariant; and double-word invariant. Prior Art Relied Upon Bryant US 5,627,975 May 6, 1997 Chang US 2003/0115564 Al Jun. 19, 2003 Rejection on Appeal The Examiner rejects claims 1, 2, 5-10, 13-18, and 21-24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Chang and Bryant. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 6-11.2 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed March 18, 2011) and the Answer (mailed June 10, 2011) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-013368 Application 11/284,864 4 Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding that Bryant teaches or suggests an identification unit configured to identify endian schemes using a dynamic or a static endianness signal, as recited in claim 1? Appellants argue that Bryant does not describe the disputed limitations emphasized above. App. Br. 7-9. According to Appellants, while Bryant discloses a mechanism for converting data from a big endian format to a little endian format, such format conversion does not entail identifying the endian schemes (i.e., byte invariant, half-word invariant, word invariant, and double word invariant) effectuating such data transfers. App. Br. 7. Further, Appellants argue, irrespective of whether the endian formats disclosed in Bryant are similar to the claimed endian schemes, the conversion between formats disclosed in Bryant does not teach identifying the particular formats or schemes using a static or a dynamic endianness signal. According to Appellants, Bryant’s disclosure of the using a three-bit control, T-SIZE signal is for modifying addresses, as opposed to identifying the endian schemes. App. Br. 8-9. In response, the Examiner finds Bryant’s disclosure of an interbus buffer that employs a three-bit control signal, T-Size to coordinate data transfers (in a single-byte, half-word, word, and double word configurations) between different components in a processing system teaches the disputed limitations. Ans. 9-10. Based upon our review of the record before us, we find no error in the Examiner’s obviousness rejection regarding claim 1. We note at the outset Appeal 2011-013368 Application 11/284,864 5 Appellants do not dispute the Examiner’s finding that Bryant discloses a plurality of endian schemes (single-byte, half-word, word, and double word) for transferring data between components of a processing system. App. Br. 8. Instead, Appellants mainly argue, despite Bryant’s disclosure of transferring data using the cited endian schemes, Bryant does not particularly teach identifying the actual schemes using an endianness signal. Id. We note, however, the claim recites, inter alia, “an identification unit configured to identify . . . by employing at least one of a static and a dynamic endianness signal . . . .” Appellants are reminded that the recitation “configured to” is directed to nonfunctional claim language, which, in an apparatus claim, is not entitled any patentable weight.3 At best, such recitation is a statement of intended use,4 which merely indicates the 3 See Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014), (Rader, J., concurring) (“[A] system claim generally covers what the system is, not what the system does. Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157[] (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”). 4 Our reviewing court has held that a statement of intended use in an apparatus claim cannot distinguish over a prior art apparatus that discloses all the recited structural limitations and is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a Appeal 2011-013368 Application 11/284,864 6 capability or intent to identify the endian schemes using a static or dynamic endianness signal, as opposed to the identification unit actually identifying the endian scheme, as argued by Appellants. Therefore, because Appellants’ arguments are not commensurate with the scope of the claim, these arguments are not persuasive. Further, even if we gave patentable weight to the recited nonfunctional language/intended use limitation, such recitation would be met fully by an equivalent prior art structure disclosed in Bryant, which appears to be capable of performing the recited functions. As set forth by the Examiner in the rejection, Bryant discloses an interbus buffer that performs various data transfers using different endianness schemes. For each of the disclosed endianness schemes, Bryant utilizes a three byte data transfer, and identifies a three-bit control signal (T-size) indicating the byte size of the transaction. Col. 2, ll. 55-59. In other words, Bryant first specifies using a single eight byte data size for a double word data transfer. Col. 3, ll. 26-30. Second, Bryant specifies using two four-byte data size for a word data transfer. Col. 3, ll. 59-61. Third, Bryant discloses using four two-byte size for a half-word data transfer. Col. 4, ll. 43-45. Fourth, Bryant discloses using an eight single-byte size for a fixed size data transfer. Col. 5, ll. 23-27. We are therefore satisfied that the cited disclosures of Bryant teach or at least suggest the disputed limitations. It follows that Appellants have not shown error in the Examiner’s rejection of claim 1. statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). Appeal 2011-013368 Application 11/284,864 7 Regarding the rejections of claims 2, 5-10, 13-18, and 21-24, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2, 5-10, 13-18, and 21- 24 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner’s rejection of claims 1, 2, 5-10, 13-18, and 21-24 as set forth above. 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 msc Copy with citationCopy as parenthetical citation