Ex Parte Inoue

Board of Patent Appeals and Interferences

May 16, 2011

10812177 (B.P.A.I. May. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/812,177 03/29/2004 Keisuke Inoue SCEI 3.0-170 3379
530 7590 05/16/2011
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
05/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Keisuke Inoue
____________________

Appeal 2009-006550
Application 10/812,1771
Technology Center 2100
____________________

Before JAY P. LUCAS, THU A. DANG and DEBRA K. STEPHENS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from multiple rejections of claims 1 to 11, 13 to
24, 26 to 31, 33 to 60 and 63 to 89 under authority of 35 U.S.C. § 134(a).
Claims 12, 25, 32, 61 and 62 are cancelled. The Board of Patent Appeals
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed March 29, 2004. The real party in interest is Sony
Computer Entertainment, Inc.
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We affirm.
Appellant’s invention relates to a method and system for managing
the heat generated in a computer component by varying the operations the
component is tasked to perform. In the words of Appellant:
The present invention relates to methods and
[an] apparatus for performing thermal management
in a processing environment, and, in particular, for
reducing thermal hot spots by effectively
allocating instructions and tasks.
. . . .
In accordance with aspects of the present
invention, thermal scheduling methods are
provided. In a preferred embodiment, a
component has a thermal threshold, and the
method includes providing a plurality of operations
to be performed by the component. Thermal
information associating the operations with a
thermal attribute is provided. The thermal attribute
represents a value related to the amount of heat
expected to be generated or incurred by the
component during performance of the operation.
The order in which the operations are to be
performed is scheduled based on the thermal
attribute so that the thermal threshold is not
exceeded.
. . . .
In another preferred embodiment, a method
first obtains program code having a series of
operations, and determines thermal attributes
associated with one or more of the operations. The
thermal threshold of a component is also
determined. The operations are scheduled for
execution by the component in accordance with
the thermal attributes so that the thermal threshold
is not exceeded.
(Spec. ¶¶ [0002], [0009], and [0014]).
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The following illustrates the claims on appeal:
Claim 1:
1. A method of scheduling operations to be
performed by a component having a thermal
threshold comprising:

providing a plurality of operations to be
performed by the component;

associating the operations with a thermal
attribute, the thermal attribute representing a value
related to a heat amount expected to be generated
or incurred by the component during performance
of the operations;

determining a cooling attribute;

scheduling the operations in an order of
performance based on the thermal attribute and the
cooling attribute so that the thermal threshold is
not exceeded; and

generating the order of performance for use
in execution of the operations.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chauvel 2002/0065049 A1 May 30, 2002

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REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 11, 24, 26 to 31, 33, 34, 53 to 60 and 63 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to non-
statutory subject matter.
R2: Claims 1 to 11, 13 to 24, 26 to 31, 33 to 60 and 63 to 89 stand rejected
under 35 U.S.C. § 112 (paragraph 2) for being unduly multiplied.
R3: Claims 1 to 11, 24, 26 to 31, 33 to 44, 53 to 60 and 63 stand rejected
under 35 U.S.C. § 102(b) for being anticipated by Chauvel.

We will review the rejections in the order presented and as argued in
the Briefs. We have only considered those arguments that Appellant
actually raised in the Briefs. Arguments Appellant could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue for rejection R1 issue is whether Appellant has shown that
the Examiner erred in rejecting the claims under 35 U.S.C. § 101. The issue
hinges on the current law concerning non-statutory subject matter with
respect to the rejected claims. The issue for rejection R2 is whether the
rejected claims (all) are unduly multiplied as described in the currently
effective legal guidance. The issue for rejection R3 is whether Chauvel
anticipates the claims as presented.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a system and method for maintaining a
component in an electrical circuit under its thermal threshold for
operation. (Spec. 3, ¶ [0009]). The invention provides for the
component certain operations that do not heat the component (e.g. a
processor integrated circuit) when the threshold is being approached.
(Id.).
2. The Chauvel reference teaches “scheduling events to avoid critical
temperature effects in a specific area of a die.” [of a component in an
electrical circuit]. (¶ [0052]).
3. Further findings of fact are recited in the Analysis section below.

PRINCIPLES OF LAW

UNDUE MULTIPLICTY
(EXCERPTS FROM THE TWO CHANDLER CASES)
We are confronted with the issue of undue
multiplicity of claims raised by the board's
affirmance of the examiner's rejection of all the
claims on this ground. As apposite precedent for
this action, the board cited In re Chandler , 254
F.2d 396 (CCPA 1958).
The examiner held that, in view of the state
of the art, thirty-eight claims are not justified and
serve to confuse rather than to define the
invention, since many of the claims differ from
each other in no material aspect, pointing out that:
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[C]laims 3, 7, 9, 10, 15 and 20 differ from
each other only in the recitation of such
conventional elements as manual means and
constant pressure regulating valves. . . .
. . . .
In support of their contention that In re
Chandler, supra, is not apposite here, appellants
seek to distinguish that case from the case at bar on
a factual basis. It is asserted that this distinction
resides mainly in the fact that Chandler embraced
fifty claims divided about evenly between method
and apparatus claims, each divided into ten
categories comprising broad and narrow claims,
while in the instant case thirty-eight claims are
presented, all for apparatus, defining a different
combination of elements involving a far more
complex invention.
In Chandler the patent sought was for an
automatic control for jet engines predicated on
fifty claims. We agree with appellants that the
instant matter presents a more complex situation.
Certainly the invention claimed and those
disclosed by the references are not simple. The
gravamen of complexity resides, however, not in
the subject matter of the invention but in the
volume of claims and the repetitious pyramiding of
“means” and “elements” which tend more “to
confuse rather than define” the invention. While
many of the claims are couched in different
language involving varying phrases, they are not
different in material substance. Groups of them
employ repetitious recitation of conventional
elements. With a difference in phraseology, some
of them call for the same combination of elements.
We are constrained to agree with the
examiner and the board as to the examples pointed
out in reference to claims which do not materially
differ from each other.
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Appellants’ contention here is very similar
to that made by appellant in the Chandler case in
which the court held that the alleged complexity of
the specific apparatus afforded no basis for an
excessive number of claims. The court stated:
As was pointed out in In re Barnett, 155
F.2d 540 (CCPA 1946), it is proper to allow
applicants a reasonable latitude in setting
forth their inventive concepts in different
phraseology, but it is the purpose of claims
to point out and define what an applicant
regards as his invention, and that purpose is
not served if, as the result of frequent
repetitions, they present to the mind a blur
rather than a definition.
We are in accord with the view that
applicants should be allowed reasonable latitude in
stating their claims in regard to number and
phraseology employed. The right of applicants to
freedom of choice in selecting phraseology which
truly points out and defines their inventions should
not be abridged. Such latitude, however, should
not be extended to sanction that degree of
repetition and multiplicity which beclouds
definition in a maze of confusion. The rule of
reason should be practiced and applied on the basis
of the relevant facts and circumstances in each
individual case.
It is our opinion that the record in the instant
case clearly supports the decision of the board on
the issue of undue multiplicity. In re Chandler is,
in our opinion, apposite and controlling.
It appears that claims 24, 37 and 38, which
were rejected only on the ground of undue
multiplicity, are patentable in the absence of the
other thirty-five claims which were rejected on
prior art.
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In re Chandler and Wright, 319 F.2d 211, 224-225 (CCPA
1963).
BURDEN AND REVIEW STANDARDS
Appellants have 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) (“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.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
ANTICIPATION OVER ONE REFERENCE
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 (Fed. Cir. 2005) (citation omitted).
Anticipation of a patent claim requires a finding
that the claim at issue ‘reads on’ a prior art
reference. In other words, if granting patent
protection on the disputed claim would allow the
patentee to exclude the public from practicing the
prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the
prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).
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[U]nless a reference discloses within the four
corners of the document not only all of the
limitations claimed but also all of the limitations
arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior
invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
STATUTORY SUBJECT MATTER
BILSKI
“[The Supreme] Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under §101.
The machine-or-transformation test is not the sole test for deciding whether
an invention is a patent-eligible ‘process.’” Bilski v. Kappos, 130 S.Ct.
3218, 3227 (2010).
The Court of Appeals for the Federal Circuit (CAFC) stated the
machine-or-transformation test for process claims. In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc). The involvement of the machine or
transformation in the claimed process must not merely be insignificant extra-
solution activity. See Parker v. Flook, 437 U.S. 437 U.S. 584, 590 (1978).
The Supreme Court, in Bilski v. Kappos, 130 S.Ct. at 3229, held that
there are other tools for establishing subject matter eligibility under
35 U.S.C. § 101. Those tools involve an inquiry into whether a process is
merely an abstract idea. “In searching for a limiting principle, this Court’s
precedents on the unpatentability of abstract ideas provide useful tools.”
(Id.). The Court outlined one such precedent:
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In [Gottschalk v.] Benson, 409 U.S. [63], 70
[(CCPA 1972)], the Court considered whether a
patent application for an algorithm to convert
binary-coded decimal numerals into pure binary
code was a “process” under §101. Id. at 64–67.
The Court first explained that “‘[a] principle, in the
abstract, is a fundamental truth; an original cause;
a motive; these cannot be patented, as no one can
claim in either of them an exclusive right.’” Id. at
67 (quoting Le Roy, [55 U.S.156, 175 (1852)]).
The Court then held the application at issue was
not a “process,” but an unpatentable abstract idea.
“It is conceded that one may not patent an idea.
But in practical effect that would be the result if
the formula for converting . . . numerals to pure
binary numerals were patented in this case.” 409
U. S. [63], at 71. A contrary holding “would
wholly pre-empt the mathematical formula and in
practical effect would be a patent on the algorithm
itself.” Id. at 72.

(Id. at 3230).
CLAIM INTERPRETATION
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” “[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.

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“To be his own lexicographer, a patentee must use a ‘special
definition of the term [that] is clearly stated in the patent specification or file
history.’” The Laryngeal Mask Company Ltd. v. Ambu A/S, 618 F.3d 1367,
1372 (Fed. Cir. 2010)(internal citations omitted). “The specification does
not clearly convey the patentee’s intent to appoint a special meaning to the
term . . . . Having concluded that the patentee did not act as his own
lexicographer in this case by clearly defining a claim term, we must
determine the ordinary meaning of [the term] as used in these claims to one
of skill in the art in light of the specification and prosecution history.” Id.
“Although there was no dictionary or treatise definition introduced for [the
term], there are . . . prior art patents also related to [the subject matter] which
use the term. . . . This prior art use of the term would further inform one of
skill in the art as to the common meaning of the term.” Id. at 1373.
ANALYSIS
Arguments with respect to the rejection
of claims 1 to 11, 24, 26 to 31, 33, 34, 53 to 60 and 63
under 35 U.S.C. § 101 [R1]

The first argument addresses the issue of statutory subject matter
under 35 U.S.C. § 101. Since the time of the Brief and Answer the law has
developed from the State Street & Trust Co. v. Signature Fin. Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998), and Gottschalk v. Benson (cited above)
relied up on by the Examiner and Appellant in the Brief.
The current ruling guidance is Bilski v. Kappos 130 S.Ct. 3218, 3227
(2010), which adopted the machine-or-transformation test of the CAFC (See
In re Comiskey, 554 F.3d 967, 978 (Fed. Cir. 2009) supplemented by
relevant other Supreme Court authorities.
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[The Supreme] Court’s precedents establish that
the machine-or-transformation test is a useful and
important clue, an investigative tool, for
determining whether some claimed inventions are
processes under §101. The machine-or-
transformation test is not the sole test for deciding
whether an invention is a patent-eligible “process.”
Bilski v. Kappos 130 S.Ct. 3218, 3227 (2010).
The Court of Appeals for the Federal Circuit (CAFC) stated the
machine-or-transformation test for process claims. In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc). The involvement of the machine or
transformation in the claimed process must not merely be insignificant extra-
solution activity. See Parker v. Flook, 437 U.S. 437 U.S. 584, 590 (1978).
The Supreme Court, in Bilski v. Kappos, 130 S.Ct. at 3229, held that
there are other tools for establishing subject matter eligibility under
35 U.S.C. § 101. Those tools involve an inquiry into whether a process is
merely an abstract idea. “In searching for a limiting principle, this Court’s
precedents on the unpatentability of abstract ideas provide useful tools.”
(Id.).”

Appellant addressed this controlling authority in the Reply Brief
(Reply Br. 3) and we are persuaded that we are constrained to find the
claims statutory. The CAFC summarized the test as being satisfied “when
the process ‘either [1] was tied to a particular apparatus or [2] operated to
change materials to a ‘different state or thing.’’” In re Comiskey, 554 F.3d
967, 978 (Fed. Cir. 2009).
Each of the claims on appeal recites a “component”, either in the
preamble (e.g. claim 1) or the limitations (e.g. claim 13) or both (e.g. claim
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1). From numerous citations in the Specification, it is clear that the
component is a physical entity, for example a processor integrated circuit.
(See Spec. ¶¶ [0013], [0014], and [0021] for example.) We find the
component to be a machine, in the context of the machine or transformation
test. It is a physical device that generates heat, and as such is not an abstract
idea or a mathematical algorithm.
As such, we conclude that the Examiner has erred under the current
law, and the claims are properly classified as statutory.

Arguments with respect to the rejection
of claims 1 to 11, 13 to 24, 26 to 31, 33 to 60 and 63 to 89
under 35 U.S.C. § 112 para. 2 [R2]

The Examiner has rejected the noted claims for being unduly
multiplied, indicating that the claims contain “limitations from multiple
embodiments that are assorted into multiple different independent claims in
an unclear manner and result in a ‘maze of confusion.’” (Ans. 4, top).
Following the USPTO procedures (MPEP 2173.05(n)) the Examiner
required Appellant to choose a minimum set of claims to be examined on the
merits (i.e. art), to present this Board with a complete examination. The
Examiner rejected these selected claims, rejecting them under 35 U.S.C. §
102(b) in rejection R3, to be discussed below. Appellant appealed the
rejection of all claims under 35 U.S.C. § 112 for multiplicity.
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Rejections of claims under the “undue multiplicity” aspect of 35
U.S.C. § 112 para. 2 are relatively rare2, and we take our guidance from a
review of the two landmark Chandler cases of the CCPA: Application of
Chandler, 254 F.2d 396 (CCPA 1958) and Application of Chandler and
Wright, 319 F.2d 211 (CCPA 1963).
From the latter:
We are confronted with the issue of undue
multiplicity of claims raised by the board's
affirmance of the examiner's rejection of all the
claims on this ground. As apposite precedent for

2 We are cognizant of the unpopularity of the “undue multiplicity”
rejection, for reasons probably best expressed by Judge Neese in the
concurring opinion of Application of Flint, 411 F.2d 1353, 1357 (CCPA
1969), which we find of interest, though not controlling:
I concur with the result separately for the sole purpose of
respectfully disassociating my views from those of the majority
to the extent that there is reliance on In re Chandler, 319 F.2d
211, 225, 50 CCPA 1422(3) (1963). That decision, giving
sanction sub silento to a patent examining procedure, Manual of
Patent Examining Procedure, § 706.03(1), which is
inharmonious with 35 U.S.C.A. § 112, ought not to be
followed, but reversed.
. . . .
The Commissioner of Patents further eroded an
inventor's statutory right by adopting an interpretative
procedure to guide patent examiners in the consideration of
applications of an inventor, which undertook to arrogate unto
the examiners carte blanche authority to reject all claims of an
inventor, particularly pointing out and distinctly claiming the
subject matter which he regarded as his invention, if the
examiner was of the opinion that a larger number of claims
were made than were necessary to cover the invention.”

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this action, the board cited In re Chandler, 254
F.2d 396 (CCPA 1958).
. . . .
We are constrained to agree with the examiner
and the board as to the examples pointed out in
reference to claims which do not materially differ
from each other.
Appellant's contention here is very similar to
that made by appellant in the Chandler case in
which the court held that the alleged complexity of
the specific apparatus afforded no basis for an
excessive number of claims. The court stated:

As was pointed out in In re Barnett, 155 F.2d
540, (CCPA 1946), it is proper to allow
applicants a reasonable latitude in setting forth
their inventive concepts in different
phraseology, but it is the purpose of claims to
point out and define what an applicant regards
as his invention, and that purpose is not served
if, as the result of frequent repetitions, they
present to the mind a blur rather than a
definition.

We are in accord with the view that applicants
should be allowed reasonable latitude in stating
their claims in regard to number and phraseology
employed. The right of applicants to freedom of
choice in selecting phraseology which truly points
out and defines their inventions should not be
abridged. Such latitude, however, should not be
extended to sanction that degree of repetition and
multiplicity which beclouds definition in a maze of
confusion. The rule of reason should be practiced
and applied on the basis of the relevant facts and
circumstances in each individual case. [Emphasis
added.]
It is our opinion that the record in the instant
case clearly supports the decision of the board on
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the issue of undue multiplicity. In re Chandler is,
in our opinion, apposite and controlling.

Examiner’s rejection is based upon the 89 claims of this case, which
“intersperse limitations regarding thermal attributes, thermal thresholds,
scheduling, priority, and tasks.” (Ans. 11, top). The Examiner has analyzed
the independent claims and found all of them to contain some combination
of those elements. (Id.). The Examiner finds “The issue is not merely the
large number of independent claims but also the lack of any coherent
connection between them or even an explanation by Appellant as to how the
claims are related and how they represent different potential embodiments.”
(Ans. 11, bottom).
Appellant counters by contending that “the Examiner fails to explain
why he is confused, providing no specific examples or other facts to support
his position.” (Reply Br. 7, middle). Concerning the size of the 89 claim
claim-set, Appellant points out that “[o]f the 11 independent claims, five are
method claims, three are system claims, and three are apparatus claims.”
(Id.). The Appellant argues that the scope of these claims vary, addressing
certain embodiments associated with operations or processing components,
and other with hot and cool queues. (Id.). Thus Appellant submits that the
number and types of such claims is reasonable. (Reply Br. 9, top).
We agree with the Examiner that the number of claims presented in
this case is large, far exceeding the 50 and 38 claims respectively presented
in the Chandler and Chandler and Wright cases cited above. The issue
before us is whether the claims present “a degree of repetition and
multiplicity which beclouds definition in a maze of confusion.” Chandler
and Wright, cited above.
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We will consider as representative for the analysis under this rejection
the set of five independent method claims, 1, 13, 44, 50 and 66. The text of
these claims is appended as an endnote, and summarized as follows:
 We find the method of claim 1 to comprise: associating a
component with a thermal attribute and a determining a cooling
attribute, and scheduling operations to avoid exceeding a
thermal threshold.
 The method of claim 13 comprises determining thermal
attributes associated with operations in program code and
scheduling operations to not exceed a thermal threshold.
 The method of claim 44 comprises storing a first operation and
a second operation based on their thermal attributes and
retrieving the operations depending on a thermal threshold of a
processor.
 The method of claim 50 comprises determining if the
temperature of a processor exceeds a thermal threshold and, if it
does not, executing one operation and, if it does, executing a
second operation.
 The method of claim 66comprises selecting a task for execution
by a component based on an attribute of the task related to the
temperature of the component after execution of the task.
The claims vary widely in breadth, and a little in components, but that
alone is not a sign that undue multiplicity cannot apply. “Whether a claim
[is] broad or narrow is a matter of degree and opinion, and it does not follow
that two claims are patentably, or even materially, different from each other
merely because one may be termed ‘broad’ and the other ‘narrow.’” In re
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Chandler, 245 F.2d 396, 399 (CCPA 1958). Key to our opinion is our
observation that all of the methods choose an operation or task for a
component to perform that reduces the temperature of that component to
keep it from overheating. We find that thirty eight method claims (including
the dependent claims) addressing variants of the same theme fit within the
guidelines of the Chandler and Chandler and Wright cases, which constrain
our conclusion of multiplicity. As the claims are drafted in parallel
constructions, we extend this finding and conclusion to the 51 remaining
system and apparatus claims
Thus, consistent with the applicable cited authorities, we do not find
error in the rejection R2 of the Examiner.

Arguments with respect to the rejection
of claims 1 to 11, 24, 26 to 31, 33 to 44, 53 to 60 and 63
under 35 U.S.C. § 102(b) [R3]

The Examiner has rejected the noted claims for being anticipated by
the reference Chauvel.
With regard to claim 1, Appellant argues that the reference fails to
teach “determining a cooling attribute” as required by the claim. (App. Br.
37, middle). The Examiner has referred to paragraph 8 of the reference,
which states in part, “An integrated circuit will be designed to dissipate a
certain amount of heat.” (Ans. 14, top). Paragraphs 11, 12 and 52 are also
cited for temperature associated information. (Ans. 13, bottom). Appellant
refers to certain paragraphs of the specification to establish that Chauvel is
inconsistent with the Appellant’s Specification. (App. Br. 38, top).
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We find the term “cooling attribute”, when broadly and fairly
interpreted, to be taught by the discussion in Chauvel of the heat dissipation
abilities and characteristics of the integrated circuits and other components.
We decline to read further limitations of the term into the claims from the
specification. The Appellant has made no special definition of the term in
the Specification, and we use its plain meaning. (See Phillips, cited above.)
With regard to claims 24, 26 to 31, 33 and 34, the Appellant argues
that the reference Chauvel “does not teach or otherwise suggest the dual
priority queue structure of claim 24.” (App. Br. 40, bottom). The Examiner
considers the teaching of Chauvel of “multiple tasks of different priorities”
in paragraphs 30, 31 and 49 and equates them to the plurality of priority
queues of the claim. (Ans. 14, bottom).
We do not agree with the Examiner, and find error in applying the
general teachings of prioritized tasks to the stacked priority queues of claim
24 and those claims dependent thereon.
Further with regard to claim 31, Appellant argues that the Chauvel
reference does not teach the task thermal attribute to be based on one of the
operating frequency, component thermal attribute and cooling attribute.
(App. Br. 41, bottom). As claim 31 is dependent on claim 24, we need not
reach this issue, although the last sentence of paragraph 49 of the reference
supplies a relevant teaching.
With regard to claims 53 to 60, Appellant argues that the claim
refers to a dual queue configuration for managing different operations.
(App. Br. 43, top). The Examiner disagrees, indicating the claims do not
require such queues. (Ans. 14, bottom). The Examiner is factually correct,
and we do not find error in the rejection with respect to these claims.
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With regard to claim 63, Appellant states that the reference fails to
teach the claimed time sharing arrangement. (App. Br. 44). We agree with
the Examiner’s arguments stated on page 15 concerning paragraph 30 of the
reference, which we adopt.

CONCLUSIONS OF LAW AND
DECISION
Based on the findings of facts and analysis above, we conclude as
follows:
The Examiner erred making rejection R1 under 35 U.S.C. § 101.
- The rejection R1of claims under 35 U.S.C. § 101 is REVERSED.

The Examiner did not err making rejection R2 under 35 U.S.C. § 112,
paragraph 2.
- The rejection R2 of all claims under 35 U.S.C. § 112 is
AFFIRMED.

The Examiner erred making rejection R3 under 35 U.S.C. § 35 U.S.C. § 102
(b) of claims 24, 26 to 31, 33 and 34
- The rejection R3 of claims 24, 26 to 31, 33 and 34 under 35
U.S.C. § 102 is REVERSED.

The Examiner did not err making rejection R3 under 35 U.S.C. § 102(b) of
claims 1 to 11, 53 to 60 and 63.
- The rejection R3 of claims 1 to 11, 53 to 60 and 63 under 35
U.S.C. § 102(b) is AFFIRMED.
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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

peb

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APPENDIX:

Additional Representative Claims

Claim 1:
1. A method of scheduling operations to be
performed by a component having a thermal
threshold comprising:

providing a plurality of operations to be
performed by the component;

associating the operations with a thermal
attribute, the thermal attribute representing a value
related to a heat amount expected to be generated
or incurred by the component during performance
of the operations;

determining a cooling attribute;

scheduling the operations in an order of
performance based on the thermal attribute and the
cooling attribute so that the thermal threshold is
not exceeded; and

generating the order of performance for use
in execution of the operations.

Claim 13:
13. A thermal scheduling method, comprising:

obtaining program code including a series of
operations; determining thermal attributes
associated with one or more of the operations;

determining a thermal threshold for a
component; and

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scheduling the operations for execution by
the component in accordance with the thermal
attributes so that the thermal threshold is not
exceeded.
Claim 44:
44. A method of performing operations in a
computing environment, comprising:

storing a first operation based upon a
attribute of the first operation;

storing a second operation based upon a
thermal attribute of the second operation; and

retrieving at least one of the first and the
second operations depending upon a thermal
threshold of a processor.

Claim 50:
50. A method of performing operations in a
computing environment, comprising:

determining if a temperature of a processor
exceeds a thermal threshold; and

(i) if the thermal threshold is not exceeded:

determining if a first operation is
available, the first operation being likely to
maintain or increase the temperature of the
processor upon execution; and

if the first operation is available,
executing the first operation;

(ii) if the thermal threshold is exceeded:

determining if a second operation is
available, the second operation being likely
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to decrease the temperature of the processor
upon execution; and

if the second operation is available,
executing the second operation.
Claim 66:
66. A method of processing tasks comprising:

selecting one of a plurality of tasks for
execution by a component based on an attribute,
wherein the attribute for each task is related to the
temperature of the component after execution of
the associated task; and

executing the selected task