Ex parte GUTTAG et al.

Board of Patent Appeals and Interferences

Nov 7, 1997

08160111 (B.P.A.I. Nov. 7, 1997)

Application for patent filed November 30, 1993. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KARL M. GUTTAG, KEITH BALMER,
ROBERT J. GOVE, CHRISTOPHER J. READ, JEREMIAH E. GOLSTON,
SYDNEY W. POLAND, NICHOLAS ING-SIMMONS and PHILLIP MOYSE
_____________
Appeal No. 96-1741
Application 08/160,1111
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1741
Application 08/160,111
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1-93, which
constitute all the claims in the application. Appellants have
indicated that the appeal is withdrawn with respect to claims
26 and 65 [supplemental reply brief, page 4]. Accordingly,
this appeal now involves only claims 1-25, 27-64 and 66-93.
The final rejection of the claims under 35 U.S.C. §
112 was withdrawn in the initial examiner’s answer [page 10],
but a new rejection of some of the claims on this ground was
made in this answer [page 8]. The second supplemental answer
subsequently indicated that the new rejection under Section
112 had been withdrawn [page 3]. Thus, there are no longer
any pending rejections of the claims under 35 U.S.C. § 112.
In a third supplemental examiner’s answer, the examiner
indicated that a rejection of claims 2, 3, 6, 12, 13, 27-31,
41, 42, 45, 51, 52 and 66-70 under 35 U.S.C. § 103 had been
withdrawn [page 2].
The claimed invention pertains to a data processing
apparatus having an arithmetic logic unit (ALU) with three
separate multibit digital inputs. The ALU performs mixed
arithmetic and Boolean operations on the three inputs. A
Appeal No. 96-1741
Application 08/160,111
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barrel rotator is connected to one of the three inputs for
rotating the digital signal received at that input. A mask
generator is also provided which generates a multibit digital
mask signal as one of the three inputs to the ALU. A function
control input to the ALU determines which operations will be
performed on the three multibit digital inputs received by the
ALU.
Representative claim 1 is reproduced as follows:
1. A data processing apparatus comprising:
an arithmetic logic unit having first, second and
third data inputs for multibit digital signals representing
corresponding first, second and third input signals, and a
function control input for receiving a function signal, said
arithmetic logic unit generating at an output a multibit
digital signal representing a mixed arithmetic and Boolean
combination of said first, second and third inputs
corresponding to said function signal, said mixed arithmetic
and Boolean combination including at least an arithmetic
combination of only said first and second inputs and an
arithmetic combination of only said first and third inputs;
a first data source supplying a first multibit digital
signal to said first data input of said arithmetic logic unit;
a second data source supplying a second multibit
digital signal;
a barrel rotator having a data input connected to said
second data source, a rotate control input receiving a rotate
control signal, and a data output connected to said second
data input of the arithmetic logic unit, said barrel rotator
Appeal No. 96-1741
Application 08/160,111
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left rotating said second multibit digital signal an amount
corresponding to said rotate control signal and supplying said
left rotated second multibit digital signal to said second
data input of said arithmetic logic unit;
a third data source supplying a third multibit digital
signal; and
a mask generator having a data input connected to said
third data source and a data output connected to said third
data input of said arithmetic logic unit, said mask generator
generating a multibit digital mask signal corresponding to
said third multibit digital signal.

The examiner relies on the following references:
Chu et al. (Chu) 4,785,393 Nov. 15, 1988
Pfeiffer et al. (Pfeiffer) 5,146,592 Sep. 08, 1992
Vassiliadis et al. (Vassiliadis) 5,299,319 Mar. 29, 1994
(filed Mar. 29,
1991)
Claims 1-25, 27-64 and 66-93 stand provisionally
rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-97
of copending application Serial No. 08/160,298. Claims 1, 7-
11, 14-25, 32, 34-40, 46-50, 53-64, 71, 73-78 and 91-93 also
stand rejected under 35 U.S.C. § 103 as unpatentable over the
teachings of Chu and Vassiliadis. Finally, claims 79-90 also
stand rejected under 35 U.S.C. § 103 as unpatentable over the
teachings of Chu, Vassiliadis and Pfeiffer.
Appeal No. 96-1741
Application 08/160,111
5
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants'
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answers.
It is our view, after consideration of the record
before us, that the provisional obviousness-type double
patenting rejection should be sustained. We are also of the
view that the collective evidence relied upon and the level of
skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1, 7-11, 37, 40, 46-50, 76 and 79-93. We
reach the opposite conclusion with respect to claims 14-25,
Appeal No. 96-1741
Application 08/160,111
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32, 34-36, 38, 39, 53-64, 71, 73-75, 77 and 78. Accordingly,
we affirm.
We consider first the provisional rejection of claims
1-25, 27-64 and 66-93 on the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1-97 of copending application Serial No. 08/160,298.
According to the examiner, the only difference between the
claims of this application and the claims of the copending
application is the recitation of a shifter in the claims of
the copending application in place of the barrel rotator
recited in the claims in this application. The examiner
provides a reason as to why it would have been obvious to the
artisan to use a barrel rotator in place of the claimed
shifter of the copending application [answer, pages 3-4].
Appellants’ only response to this rejection is to
indicate that the rejection should be held in abeyance until
all other issues have been resolved in accordance with the
procedure of MPEP § 804 [brief, page 4]. The section of the
MPEP referred to by appellants merely provides guidance to the
examiner as to what to do when an application is otherwise
ready for allowance except for the double patenting rejection.
Appeal No. 96-1741
Application 08/160,111
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The MPEP does not relieve an applicant of the burden of
arguing the merits of the rejection. In fact, section 804
specifically states that the merits of a provisional double
patenting rejection can be addressed by the examiner and
applicant without waiting for a patent to issue [page 800-15,
section B]. Thus, the merits of the obviousness-type double
patenting rejection can be considered even though there are
other rejections pending against the claims.
Since the examiner has pointed out the difference
between the claims of this application and the claims of
copending application Serial No. 08/160,298 and the
obviousness of this difference, and since appellants have
provided no substantive response to this rejection, we are
constrained on this record to sustain the examiner’s
provisional rejection of claims 1-25, 27-64 and 66-93 on the
ground of obviousness-type double patenting.
We now consider the rejection of claims 1, 7-11, 14-
25, 32, 34-40, 46-50, 53-64, 71 and 73-93 under 35 U.S.C. §
103. As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
Appeal No. 96-1741
Application 08/160,111
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is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
We now consider the rejection of claim 1 as
unpatentable over Chu and Vassiliadis. Claims 9-11, 37, 40,
48-50, 76 and 91-93 are not separately argued and have been
grouped with claim 1. The examiner has pointed out that Chu
teaches an ALU which performs mixed arithmetic and logical
operations on three inputs received at the ALU. The examiner
indicates that Chu does not teach the claimed operations
performed only on the first and second inputs and on the first
and third inputs [answer, pages 4-6]. The examiner cites
Vassiliadis to teach an ALU which performs mixed arithmetic
and logical operations on any two inputs of a three input ALU.
Appeal No. 96-1741
Application 08/160,111
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The examiner also explains why it would have been obvious to
the artisan to replace the Chu ALU with the Vassiliadis ALU.
In our view, the examiner has at least presented a prima facie
case of the obviousness of claim 1. Therefore, we consider
appellants’ arguments and the relative persuasiveness of the
arguments.
Appellants’ first argument is that Chu does not teach
the claimed ALU for performing the operations A±B and A±C as
recited in claim 1. The examiner has acknowledged this
deficiency in Chu which is why the reference was combined with
Vassiliadis. Appellants argue that Vassiliadis also does not
provide this teaching because Vassiliadis teaches that two
operand ALU functions are achieved by forcing one input to
zero [brief, page 7]. According to appellants, claim 1
recites that the ALU combinations are achieved by control of
the function of the ALU and not by forcing one input to zero.
Based on this argument, appellants assert that claim 1 is not
suggested by the collective teachings of Chu and Vassiliadis.
In our view, appellants’ interpretation of claim 1 is
not commensurate with the language of claim 1. Claim 1 does
not require that the two operand functions be implemented in
Appeal No. 96-1741
Application 08/160,111
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any specific manner. Claim 1 only recites that the ALU
receive a control function input and that the ALU perform the
operations A±B and A±C. The ALUs of Chu and Vassiliadis
clearly receive an input function control signal, and
Vassiliadis clearly performs the noted operations as pointed
out by the examiner. Appellants are attempting to import
their disclosed preferred embodiment into the claim which is
not appropriate. Claims are given their broadest reasonable
interpretation during prosecution before the Patent and
Trademark Office.
Since we have determined that the examiner has
presented a prima facie case for the obviousness of claim 1,
and since appellants have not presented a compelling reason to
find error in the examiner’s case, we sustain the rejection of
claim 1 and of claims 9-11, 37, 40, 48-50, 76 and 91-93 which
are grouped therewith.
We now consider the rejection of claims 7 and 46 which
are grouped together. Claim 7 depends from claim 1 and
recites that a plurality of data registers receives an input
from the output of the ALU and an input from the output of the
barrel rotator. The examiner has provided a reasonable
Appeal No. 96-1741
Application 08/160,111
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analysis as to why the presence of registers, as broadly
recited in claim 7, would have been obvious to the artisan in
view of the applied prior art. Appellants argue that Chu does
not show such a register at the output of the barrel rotator,
but this argument fails to address the obviousness of broadly
providing such a register. Appellants also argue that “claims
7 and 46 require storage of both the output of the arithmetic
logic unit and the output of the barrel rotator during the
same operation. Neither Chu et al nor Vassiliadis et al show
the claimed simultaneous storage of these two outputs in any
mode” [brief, page 8]. We agree with the examiner that this
argument of appellants is not commensurate in scope with the
claimed invention. We find nothing in claim 7 which requires
the simultaneous storage as argued by appellants. Since
appellants’ arguments are not persuasive of error by the
examiner, we sustain the rejection of claims 7 and 46.
With respect to claims 8 and 47 which are grouped
together, the examiner asserts that Chu teaches a one’s
constant source to supply a barrel rotator [answer, page 6].
Appellants argue that insertion of 1's into the shifter of Chu
does not make obvious the specific digital signal whose value
Appeal No. 96-1741
Application 08/160,111
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is “0001" as recited in claim 8 [brief, page 9]. The examiner
responds that Chu can provide a single bit of value “1" to the
shifter which would meet the recitation of claim 8 [answer,
pages 12-13]. Appellants reply that their inputs to the barrel
rotator are so different from the Chu rotator that Chu does
not make the claimed invention obvious [reply brief, page 12].
When the scope of claim 8 is considered, we agree with
the examiner that the broad recitation of applying a data
input of value “0001" would have been obvious to the artisan
in view of Chu’s teaching of inserting 1's into the shifter
118. We are of the view that the artisan would have
recognized the obviousness of making any number of the least
significant bits “1" based upon the amount of shift or
rotation desired. Therefore, we sustain the rejection of
claims 8 and 47. With
respect to claims 14 and 53 which are grouped together, the
examiner relies on the mask of Chu to render the invention of
these claims obvious [answer, page 6]. Appellants argue that
Chu does not form the mask as recited in claim 14 [brief, page
10]. We agree with appellants’ argument with respect to these
claims. The mask in Chu is used to modify one of the other
Appeal No. 96-1741
Application 08/160,111
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two inputs to Chu’s ALU, and is not used as the third operand
input to an ALU. The examiner has not indicated why the mask
in Chu would have been modified to correspond to the third
multibit digital input signal when the Chu ALU is replaced by
the Vassiliadis ALU. The examiner also has not explained why
a specific mask value as recited in claim 14 cannot be
patented. The examiner has simply stated that any mask value
would have been obvious to the artisan. Although the
examiner’s conclusion may be correct in theory, it is not
supported by any evidence on this record, and appellants have
made a point of arguing the patentability of this specific
feature. Since appellants have specifically argued the
limitations of claim 14, and since the examiner’s general
conclusion of obviousness is not supported by the record, we
do not sustain the Section 103 rejection of claims 14 and 53.
Claims 17, 20 and 23 recite a specific mask signal in
a manner similar to claim 14. The examiner’s rejection of
these claims is supported in the same manner as the rejection
of claim 8. Therefore, we also do not sustain the Section 103
rejection of these claims for the same reasons just discussed.
Claims 56, 59 and 62 are grouped with these claims. Claims
Appeal No. 96-1741
Application 08/160,111
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15, 16, 18, 19, 21, 22, 24 and 25 depend from one of claims
14, 17, 20 and 23 and incorporate the limitations just
discussed. Claims 54, 55, 57, 58, 60, 61, 63 and 64 depend
from one of claims 53, 56, 59 and 62 and incorporate the
limitations just discussed. Accordingly, we do not sustain
the Section 103 rejection of any of these claims.
Claims 32 and 34 recite that the mask is formed from a
repetition of or replication of a pattern. The examiner
argues that the Chu mask generator meets this claim recitation
while appellants argue that the insertion of 1's in Chu does
not perform the claimed repeated digital pattern. We agree
with appellants that the examiner has not demonstrated how the
Chu mask generator would meet the claim limitations when the
Chu ALU is replaced with the Vassiliadis ALU. Claims 71 and
73 are grouped with these claims. Claims 35 and 74 depend
from claims 34 and 73, respectively. Thus, we do not sustain
the Section 103 rejection of any of these claims.
With respect to claims 36, 38 and 39, the examiner has
grouped these claims with the rejection of claims 32, 34 and
35, but the examiner has not specifically addressed the
features of these claims. Appellants argue that the examiner
Appeal No. 96-1741
Application 08/160,111
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has failed to point to any teaching or suggestion in the
applied prior art which renders the limitations of these
claims obvious. We agree. The examiner has failed to
establish a prima facie case of obviousness for the invention
as recited in claims 36, 38 and 39. Claims 75, 77 and 78 are
grouped with these claims. Therefore, we do not sustain the
Section 103 rejection of these claims.
We now consider the rejection of claims 79-90 as
unpatentable over the teachings of Chu, Vassiliadis and
Pfeiffer. Although appellants nominally indicated that these
claims were grouped with claim 40, this rejection includes the
additionally applied Pfeiffer reference so that the nominal
grouping is technically not applicable. The only argument
offered by appellants for the patentability of these claims is
that they incorporate the limitations of claim 40 by
dependence. Since we have previously determined that the
rejection of claim 40 would be sustained, and since appellants
have offered no compelling reason for the patentability of
claims 79-90, we also sustain the Section 103 rejection of
these claims.
Appeal No. 96-1741
Application 08/160,111
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In summary, the provisional rejection of claims 1-25,
27-64 and 66-93 on the ground of obviousness-type double
patenting is sustained. The rejection of claims 1, 7-11, 14-
25, 32, 34-40, 46-50, 53-64, 71 and 73-93 under 35 U.S.C. §
103 is sustained with respect to claims 1, 7-11, 37, 40, 46-
50, 76 and 79-93 but is reversed with respect to claims 14-25,
32, 34-36, 38, 39, 53-64, 71 and 73-75, 77 and 78.
Accordingly, the decision of the examiner rejecting claims 1-
25, 27-64 and 66-93 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

)
KENNETH W. HAIRSTON )
Appeal No. 96-1741
Application 08/160,111
17
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
Robert D. Marshall
Texas Instruments Incorporated
P. O. Box 655474
Dallas, TX 75044