Ex Parte Knowles

Patent Trial and Appeal Board

Sep 15, 2014

11122385 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SIMON KNOWLES
____________________

Appeal 2011-002810
Application 11/122,385
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
CARLA M. KRIVAK, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 2, 3, 5-11, 13-21, 23-28, 30, and 31.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Contrary to statements in the Brief (e.g., page 1, third from last line) and
Answer (e.g., page 4, statement of the rejection), these are the appealed
claims.
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Exemplary Claims
Exemplary claims 28 and 31 read as follows (emphasis added):
28. A memory containing a computer program
comprising program code for performing the method of
claim 31.
31. A computer processor method for use comprising:
storing instructions in an instruction memory that make
up an instruction set for the processor, wherein the instruction
set includes data processing instructions, each data processing
instruction comprising an opcode portion carrying dynamic
configuration information and operand data portion;
receiving and decoding in a decode unit having control
circuitry a sequence of instructions supplied from the
instruction memory, including said data processing
instructions[;]
controlling the components of the processor in
accordance with each of the decoded instructions;
dynamically configuring a configurable execution unit
with operators configured at the level of processing multi-bit
operand values, on an instruction by instruction basis,
responsive to the configuration information carried in the
opcode portion of each data-processing instruction, wherein
said operators are provided in one or more dynamically
configurable operator modules, said operators being configured
to separately receive (i) at least one input operand responsive to
the operand data in said data processing instruction and (ii)
operator configuration settings defining aspects of the function
and/or behaviour of said configurable operator module at the
level of processing multi-bit operands, wherein said operator
configuration settings are derived from the dynamic
configuration information carried in the opcode portion of said
data processing instruction and wherein said execution unit
connects through configurable switching fabric defined at
least in part by pseudo static control information provided
independently of the instruction carrying the dynamic
configuration information;
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receiving in a programmable look up the table said
dynamic configuration information from the opcode portion of
respective data processing instructions;
translating in the programmable look up table said
dynamic configuration information into operator configuration
settings applying to said configurable operators, wherein the
programmable look up table comprises the pseudo static control
information.
Rejections on Appeal
The Examiner rejected claims 2, 3, 5-11, 13-15, 17-21, 23-28, 30, and
31 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Nickolls (US 6,959,378 B2, Oct. 25, 2005) and Trimberger (US 6,023,564,
Feb. 8, 2000).2
The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nickolls, Trimberger, and DeHon (US
6,052,773, Apr. 18, 2000).3
Appellant’s Contention
Appellant contends the Examiner erred in rejecting claim 31 because:
[I]n the invention as claimed, there are two types of
configurability: one type of configurability can be carried out
using data processing instructions which contain, as noted
above, dynamic configuration information (DCI) and; another
type of configurability can be carried out using PSCI
instructions which independently allow the connectivity to be

2 Separate patentability is not argued for claims 2, 3, 5-11, 13-15, 17-21,
23-28, and 30. We treat claim 31 as representative. Except for our ultimate
decision, the § 103 rejection of claims 2, 3, 5-11, 13-15, 17-21, 23-28, and
30 is not discussed further herein.
3 Separate patentability is not argued for claim 16. Rather, this rejection
turns on our decision as to the underlying § 103 rejection of claim 30, and is
not further addressed herein.
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defined. Neither Nickolls nor Trimberger disclose two different
types of instructions which are both capable of setting
configuration.
(App. Br. 7 (unnumbered)). Appellant also contends that:
The data processing instruction of the present invention
is distinct from the PSCI setting instruction. The Examiner
reads Nickolls instructions onto claimed data processing
instructions. PSCI 249 (which can be set by information 304 in
PSCI setting instruction 300) and DCI provided in instruction
format 400 (operator configuration information 420) are
distinct. Paragraph [0040] of the original specification states:
The programmable look-up table 210 in the
interconnects 240, 250 are configurable in the
sense they rely on pseudo static control
information ... which is not itself dynamically
configurable on a cycle-by-cycle basis by data
processing instructions.
Thus, the invention as presently claimed clearly discloses PSCI
information for controlling look-up table 210, crossbar 240, and
crossbar 250 and independent and distinct dynamic control
information DCI contained in data processing instructions for
configuring the configurable operators on a cycle-by-cycle
basis. Pending independent Claims 30-31 expressly recite this
limitation.
(App. Br. 8 (unnumbered)).

Issues on Appeal
Did the Examiner err in rejecting claims 2, 3, 5-11, 13-21, 23-28, 30,
and 31 as being obvious because the cited references fail to suggest the
argued limitations?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
As to Appellant’s above contention, we agree.

NEW GROUND OF REJECTION
35 U.S.C. § 112, First Paragraph,
Enablement and Written Description
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement and written description requirements.
The disclosure of Appellant’s Specification is not commensurate in
scope with claim 28.
Claim 28
To avoid confusion, we begin by discussing what Appellant’s claim
28 is not. Although claim 28 is written in one of the numerous claim
formats that are collectively referred to as Beauregard claims, claim 28 is
not written in the format of the original Beauregard-type, computer-
program-product claim.4 The claims set forth in Beauregard’s patent were

4 [T]he Board rejected Beauregard’s computer program product
claims on the basis of the printed matter doctrine. Beauregard
appealed. The Commissioner now states “that computer
programs embodied in a tangible medium, such as floppy
diskettes, are patentable subject matter under 35 U.S.C. § 101
and must be examined under 35 U.S.C. §§ 102 and 103.” The
Commissioner states that he agrees with Beauregard’s position
on appeal that the printed matter doctrine is not applicable.
Thus, the parties are in agreement that no case or controversy
presently exists.
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structured as a combination of plural so-called means-plus-function
elements.5 In contrast, Appellant’s claim 28 recites (rewritten to incorporate
the method of claim 31 and emphasis added):
A memory containing a computer program comprising
program code for performing the method [comprising:
storing instructions in an instruction memory . . . ;
receiving and decoding in a decode unit . . . ;
controlling the components of the processor in
accordance with each of the decoded instructions;
dynamically configuring a configurable execution unit
with operators . . . ;

In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995).

5 Beauregard (US 5,710,578), claim 1 recites (emphasis added):
An article of manufacture comprising:
a computer usable medium having computer readable
program code means embodied therein for causing a polygon
having a boundary definable by a plurality of selectable pels on
a graphics display to be filled, the computer readable program
code means in said article of manufacture comprising:
computer readable program code means for causing a
computer to effect, with respect to one boundary line at a time,
a sequential traverse of said plurality of selectable pels of each
respective said boundary line;
computer readable program code means for causing the
computer to store in an array during said traverse a value of an
outer pel of said boundary of said plurality of selectable pels for
each one of a plurality of scan lines of said polygon; and
computer readable program code means for causing the
computer to draw a fill line, after said traverse, between said
outer pels having said stored values, for each said one of said
scan lines.
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receiving in a programmable look up the table . . . ;
translating in the programmable look up table . . . control
information.]
The scope of claim 28 encompasses any and all (present and future)
computer code instructions for directing a computer to perform the claimed
steps. Yet, Appellant’s Specification discloses at most only the code known
to the inventor. Our reviewing court has concluded that such all-
encompassing claims do not comply with the enablement and written
description requirements of 35 U.S.C. § 112, first paragraph.6 See also,
Abbvie Deutchland GmbH &Co., KG v Janssen Biotech, Inc. --- F.3d .---,

6 We limit our Wands factors analysis to the “breadth of the claims” factor.
The all-encompassing claims before us render this Wands factor sufficient to
find the disclosure would require undue experimentation. Specifically, our
controlling court has stated:
In In re Wands, we set forth a number of factors which a court
may consider in determining whether a disclosure would
require undue experimentation. These factors were set forth as
follows:
(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the
claims.
Id. at 737, 858 F.2d 731, 8 USPQ2d at 1404. We have also
noted that all of the factors need not be reviewed when
determining whether a disclosure is enabling. See Amgen, Inc.
v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d
1016, 1027 (Fed.Cir.1991) (noting that the Wands factors “are
illustrative, not mandatory. What is relevant depends on the
facts.”).
Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371
(Fed. Cir.1999).
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2013-1338, 2014 WL 2938477, at 11, (Fed. Cir. July 1, 2014) stating
“When a patent claims a genus using functional language to define a desired
result, ‘the specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by showing that
the applicant has invented species sufficient to support a claim to the
functionally-defined genus.’” (internal citations omitted)).
Because the count at issue purports to cover all DNAs
that code for <>–IF, it is also analogous to a single
means claim, which has been held not to comply with the first
paragraph of section 112. See In re Hyatt, 708 F. 2d 712, [714]
(Fed. Cir. 1983) (“the enabling disclosure of the specification
[must] be commensurate in scope with the claim under
consideration.”). Claiming all DNA’s that achieve a result
without defining what means will do so is not in compliance
with the description requirement; it is an attempt to preempt the
future before it has arrived.
Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993) (emphasis added).
The proper statutory basis for the rejection of a single means
claim is the requirement of the first paragraph of § 112 that the
enabling disclosure of the specification be commensurate in
scope with the claim under consideration.
The long-recognized problem with a single means claim
is that it covers every conceivable means for achieving the
stated result, while the specification discloses at most only
those means known to the inventor. See O’Reilly v. Morse, 56
U.S. (15 How.) 62, 112, 14 L.Ed. 601 (1853).
In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (footnotes omitted).
We note claims written in the original Beauregard-type, computer-
program product means-plus-function format avoid these enablement and
written description problems.
The final paragraph of § 112 saves combination claims
drafted using means-plus-function format from this problem by
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providing a construction of that format narrow enough to avoid
the problem of undue breadth as forbidden by the first
paragraph. But no provision saves a claim drafted in means-
plus-function format which is not drawn to a combination, i.e.,
a single means claim.
Hyatt, 708 F.2d at 715.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
(1) Appellant has established the Examiner erred in rejecting claims
2, 3, 5-11, 13-21, 23-28, 30, and 31 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) We reject claim 28 under 35 U.S.C. § 112, first paragraph.
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(3) On this record, claims 2, 3, 5-11, 13-21, 23-27, 30, and 31 have
not been shown to be unpatentable.
(4) Claim 28 is not patentable.

DECISION
The Examiner’s rejections of claims 2, 3, 5-11, 13-21, 23-28, 30, and
31 are reversed.
A new ground of rejection is entered for claim 28.
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).

REVERSED
37 C.F.R. § 41.50(b)

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