Ex Parte Kegel et al

Patent Trial and Appeal Board

May 24, 2016

12508890 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/508,890 0712412009 Andrew G. Kegel
53806 7590 05/26/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL (AMD)
P.O. BOX 398
AUSTIN, TX 78767-0398
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5800-33000 8882
EXAMINER
ELMORE, REBA I
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW G. KEGEL, MARK D. HUMMEL, and
STEPHEN D. GLASER
Appeal2014-002291
Application 12/508,890
Technology Center 2100
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002291
Application 12/508,890
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-23, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to an input/output memory management
unit (IOMMU) for controlling requests by an input/output (I/O) device to a
system memory of a computer system, including control logic and a cache
memory. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. An input/output (I/O) memory management unit
(IOMMU) for controlling requests by an I/O device to a memory of a
computer system, the IOMMU comprising:
control logic configured to translate an address received in a
request from the I/O device, wherein in response to receiving in the
request, a transaction layer protocol (TLP) packet including a process
address space identifier (PASID) prefix; the control logic is
configured to perform a two-level guest translation;
wherein the control logic is configured to access a set of guest
page tables and a set of nested page tables to translate the address
received in the request to obtain a system physical address (SP A) that
corresponds to a physical page in the memory.
Claims 1-23 stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-30 of
Kegel '745 (US 8,386,745 B2; Feb. 26, 2013). 1
1 Appellants have not presented any arguments challenging the propriety or
the substance of the rejection of claims 1-23 under the judicially created
doctrine of obviousness-type double patenting over claims 1-30 of Kegel
'745. Thus, any such arguments are deemed to be waived.
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Appeal2014-002291
Application 12/508,890
Claims 1-23 stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-19 of
Hummel '803 (US 7,653,803 B2; Jan. 26, 2010).
Claims 1-23 stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-26 of
Kegel '067 (US 7,793,067 B2; Sept. 7, 2010).
Claims 1-23 stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-17 of
Hummel '287 (US 7,849,287 B2; Dec. 7, 2010).2
ANALYSIS
Double Patenting Rejection-Hummel '803
We are persuaded by Appellants' arguments (Br. 7) that the Examiner
has not shown that claims 1-23 are unpatentable under the judicially created
doctrine of obviousness-type double patenting over claims 1-19 of Hummel
'803. Appellants' independent claim 1 recites the limitation "wherein in
response to receiving in the request, a transaction layer protocol (TLP)
packet including a process address space identifier (PASID) prefix."
Independent claims 9, 15, 16, and 21 recite similar limitations.
The Examiner found that
[a] lthough the conflicting claims are not identical, they are not
patentably distinct from each other because both sets of claims
are directed toward an input/output (I/O) memory management
unit which uses a plurality of page tables and translation data
2 Appellants have not presented any arguments challenging the propriety or
the substance of the rejection of claims 1-23 under the judicially created
doctrine of obviousness-type double patenting over claims 1-17 of Hummel
'287. Again, any such arguments are deemed to be waived.
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Appeal2014-002291
Application 12/508,890
along with a pointer to identify the device table entry for a
given I/O request
(Ans. 6-7) and "[c]ontrol logic is used in conjunction with the address
translations and table entries" (id. at 7). The Examiner further found that
"[t]he claims of the conflicting patent do not include a 'transaction layer
protocol (TLP) packet['] or a 'process address space identifier (P ASID)
Prefix"' however, "the TLP [is equated] with the storage of various
operations or transactions, thereby, creating a layer for such transactions as
multiple transactions are present at any given time" and "[t]he P ASID has
been equated to the address identified for a process or transaction with
indexes being used during the translation of the page tables." (Id. at 8.)
Even if the Examiner is correct that the claimed "TLP" is defined as a
"storage of various operations or transactions ... creating a layer for such
transactions as multiple transactions are present at any given time" and that
the claimed "P ASID" is defined as "the address identified for a process or
transaction with indexes being used during the translation of the page tables"
(id.), the Examiner's proffered definitions misses the mark because the
Examiner has not articulated why it would have been obvious to arrive at the
claimed subject matter from any of claims 1-19 of Hummel '803.
The key question in any obviousness double patenting analysis is: "Does
any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?"
General Foods v. Studiengesellschaft Kahle mbH, 972 F.2d 1272, 1278
(Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)).
Answering this question requires that the decision maker first construe the
claims in the patent and the claims under review and determine the
differences between them. Eli Lilly v. Barr Labs., 251 F.3d 955, 970 (Fed.
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Appeal2014-002291
Application 12/508,890
Cir. 2001 ). After determining the differences, the decision maker must
determine whether the differences in the subject matter render the claims
patentably distinct. Id. Where a pending claim under review is an obvious
variation of a patented claim, the pending claim is not patentably distinct.
Vogel, 422 F.2d at 441. Here, the Examiner merely focuses on interpreting
of terms in the pending application without articulating why it would have
been obvious to arrive at the claimed subject matter from any of claims 1-19
of Hummel '803. The focus is on the claims, not the disclosure of this
application or the disclosure of Hummel '803. Stated differently, the
disclosure of a patent cited in support of a double patenting rejection cannot
be used as though it were prior art, even where the disclosure is found in the
claims. In re Braat, 937 F.2d 589, 594 n.5 (Fed. Cir. 1991). "It is the
claims, not the specification, that define an invention. . .. And it is the claims
that are compared when assessing double patenting." Ortho Pharm. Corp. v.
Smith, 959 F.2d 936, 943 (Fed. Cir. 1992). Here, the Examiner
inappropriately references the disclosure of Hummel '803 in making the
double patenting rejection. (See Ans. 8.) Therefore, the Examiner has not
discharged the burden of explaining why claims 1-23 requiring a
transaction layer protocol (TLP) packet including a process address space
identifier (P ASID) prefix called for therein would have been an obvious
variation to one of ordinary skill in the art over any of the claims 1-19
claimed in Hummel '803.
Accordingly, we are persuaded by Appellants' arguments that "there
is no mention of ... a P ASID received in a TLP packet" in the patent claims
of Hummel '803. (Br. 7.)
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Appeal2014-002291
Application 12/508,890
Thus, we do not sustain the rejection of claims 1-23 under the
judicially created doctrine of obviousness-type double patenting over
claims 1-19 of Hummel '803.
Double Patenting Rejection-Kegel '067
We do not sustain the rejection of claims 1-23 under the judicially
created doctrine of obviousness-type double patenting over claims 1-26 of
Kegel '067 for the same reasons discussed supra with respect to the
obviousness-type double patenting rejection over claims 1-19 of Hummel
'803, given that the Examiner is using the same rationale for this rejection.
(See Ans. 8-9.)
Double Patenting Rejections-Kegel '745 and Hummel '287
As noted supra, we observe that Appellants present no arguments on
appeal regarding the Examiner's obviousness-type double patenting
rejections of claim 1-23 under Kegel '745 and Hummel '287. Therefore, we
proforma affirm the Examiner's obviousness-type double patenting
rejections of claim 1-23 under Kegel '745 and Hummel '287.
DECISION
The Examiner's decision rejecting claims 1-23 is affirmed.
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).
AFFIRMED
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