Ex Parte Jackson

Patent Trial and Appeal Board

Jun 21, 2017

13751145 (P.T.A.B. Jun. 21, 2017)

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.
13/751,145 01/28/2013 Hugh Jackson 070852.000007 1099
125968 7590 06/23/2017
Vorys, Sater, Seymour and Pease LLP
(ImgTec)
1909 K St., N.W.
Ninth Floor
Washington, DC 20006
EXAMINER
LINDLOF, JOHN M
ART UNIT PAPER NUMBER
2183
NOTIFICATION DATE DELIVERY MODE
06/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patlaw @ vorys. com
vmdeluc a @ vorys. com
rntisdale@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGH JACKSON
Appeal 2017-005011
Application 13/751,145
Technology Center 2100
Before JUSTIN BUSCH, JOHN D. HAMANN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 on
May 19, 2017 (hereinafter “Request”), requesting that we reconsider our
Decision on Appeal of March 21, 2017 (hereinafter “Decision”), in which
we affirmed the rejection of (1) claims 1—14, 16—19, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Seki (US 7,171,541
Bl; issued Jan. 30, 2007) and Espie et al. (US 6,076,183; issued June 13,
2000) (hereinafter “Espie”) and (2) claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Seki, Espie, and Wang et al. (US
2002/0144098 Al; published Oct. 3, 2002) (hereinafter “Wang”). We
reconsider our Decision in light of Appellant’s Request for Rehearing, but
we decline to change the Decision.
Appeal 2017-005011
Application 13/751,145
ISSUES AND ANALYSIS
Appellant argues our Decision fails to resolve a necessary, factual
dispute regarding Espie, a cited reference that forms, in part, the obviousness
combinations on appeal. Request 1—3. More specifically, Appellant argues
we needed, but failed, to resolve Espie’s purpose for dividing a processing
stage or step into multiple sub-stages or sub-steps (i.e., dividing (i) if
specific instruction types are not provided in the standard instruction set of
the microprocessor being used, as Appellant alleges, or (ii) due to instruction
processing complexity, as the Examiner allegedly finds). Id.
We disagree with Appellant that the purpose for which Espie teaches
or suggests dividing a processing stage or step into multiple sub-stages or
sub-steps is a factual dispute needing resolution. Rather, “[a] reference may
be read for all that it teaches, including uses beyond its primary purpose.”
See In reMouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012); EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to
protect.”); see also Decision 4 (finding same).
Furthermore, the purpose for dividing into sub-stages or sub-steps is
not a claim limitation in dispute. Instead, the Examiner cites to Espie’s
teaching of dividing a processing stage or step into multiple sub-stages or
sub-steps, which when properly combined with Seki’s teachings of renaming
registers, provides the basis for the rejection. Final Act. 2—3. Appellant’s
argument that ‘“Espie teaching] dividing a processing stage into multiple
sub-stages due to increased instruction processing complexity,’ . . . was
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Appeal 2017-005011
Application 13/751,145
the basis for the obviousness rejection” is incorrect. Request 3^4 (bold
emphasis added) (quoting Final Act. 3).
Appellant also incorrectly conflates (i) the Examiner’s articulated
reasoning for combining Seki and Espie with (ii) the Examiner’s findings of
what Espie teaches or suggests. See Request 2—3. For example, and
contrary to Appellant’s argument, our Decision does not “implicitly agree
that Espie suggests ‘improv[ing] the capability and flexibility of the system
by dividing processing up into multiple steps/stages’” (Request 2 (alteration
in original) (quoting Decision 4)), but instead finds that the Examiner
provided articulated reasoning with some rational underpinning (i.e., “a person
of ordinary skill in the art would have been motivated to combine Seki and
Espie to improve the capability and flexibility of the system by dividing
processing up into multiple steps/stages”) (see Decision 4 (citing Ans. 2—3;
Final Act. 3)).
Although some of the Examiner’s discussion regarding the rationale
to combine Seki and Espie is intertwined with the Examiner’s findings as to
Espie’s teachings, the Examiner clearly provides articulated reasoning
sufficient for making the combination. See Final Act. 3 (reasoning “it would
have been obvious to one of ordinary skill in the art to combine the
teachings of Seki and Espie . . . [which] would have allowed for processing
larger sets of instructions to improve the capability and flexibility of the
system”). As we noted in our Decision, “the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Appeal 2017-005011
Application 13/751,145
Although the above rationale provided by the Examiner is sufficient
for combining Seki and Espie, the Examiner also provided additional
rationale: (i) “[o]ne of ordinary skill in the art would certainly recognize
that any processing step can be divided into multiple sub-steps” (Ans. 2—3)
and (ii) “the concept of performing additional steps/stages due to an increase
in instruction number or complexity is common in the art” (Final Act. 3). In
other words, the Examiner cites to one of ordinary skill’s logic and common
sense to divide up a complex problem into smaller parts (i.e., the
colloquialism of eating the elephant one bite at a time). Referencing one of
ordinary skill in the art’s logic and common sense is not “improper as a
matter of law,” as Appellant alleges (Request 4). Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[A]n analysis of
obviousness . . . may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”); see also Arendi S.A.R.L. v.
Apple, Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (“[W]e do consider
common sense, common wisdom, and common knowledge in analyzing
obviousness.”).
CONCLUSION
For the above reasons, Appellant’s contentions have not persuaded us
of error in our Decision.
Accordingly, while we have granted Appellant’s Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
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Appeal 2017-005011
Application 13/751,145
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
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