Ex Parte InoueDownload PDFBoard of Patent Appeals and InterferencesMay 16, 201110812177 (B.P.A.I. May. 16, 2011) Copy Citation 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. Appeal 2009-006550 Application 10/812,177 2 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]). Appeal 2009-006550 Application 10/812,177 3 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 Appeal 2009-006550 Application 10/812,177 4 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. Appeal 2009-006550 Application 10/812,177 5 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: Appeal 2009-006550 Application 10/812,177 6 [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. Appeal 2009-006550 Application 10/812,177 7 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. Appeal 2009-006550 Application 10/812,177 8 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). Appeal 2009-006550 Application 10/812,177 9 [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: Appeal 2009-006550 Application 10/812,177 10 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. Appeal 2009-006550 Application 10/812,177 11 “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. Appeal 2009-006550 Application 10/812,177 12 [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 Appeal 2009-006550 Application 10/812,177 13 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. Appeal 2009-006550 Application 10/812,177 14 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.” Appeal 2009-006550 Application 10/812,177 15 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 Appeal 2009-006550 Application 10/812,177 16 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. Appeal 2009-006550 Application 10/812,177 17 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 Appeal 2009-006550 Application 10/812,177 18 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). Appeal 2009-006550 Application 10/812,177 19 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. Appeal 2009-006550 Application 10/812,177 20 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. Appeal 2009-006550 Application 10/812,177 21 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 Appeal 2009-006550 Application 10/812,177 22 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 Appeal 2009-006550 Application 10/812,177 23 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 Appeal 2009-006550 Application 10/812,177 24 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 Copy with citationCopy as parenthetical citation