Ex Parte KNOX et al

Patent Trials and Appeals Board

May 28, 2019

14661376 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/661,376 03/18/2015
125968 7590 05/30/2019
V orys, Sater, Seymour and Pease LLP
(ImgTec)
1909 K St., N.W.
Ninth Floor
Washington, DC 20006
FIRST NAMED INVENTOR
David William KNOX
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.
070852.000107 2164
EXAMINER
HUISMAN, DAVID J
ART UNIT PAPER NUMBER
2183
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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
vmdeluca@vorys.com
vorys _ docketing@cardinal_ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM KNOX, MICHAEL JOHN DA VIS,
and ADRIAN JOHN ANDERSON
Appeal2018-007499
Application 14/661,376
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection
of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2018-007499
Application 14/661,376
Illustrative Claim
Illustrative claim 1 under appeal reads as follows ( emphases,
formatting, and bracketed material added):
1. A method of executing on a processor a program
comprising a function call, wherein said function call invokes a
function, the method comprising:
[A.] executing a single instruction to cause the processor to load
a plurality of values stored in a data structure relating to
the function at an address in a memory into a plurality of
registers in the processor, prior to evaluating the
function; and
[B.] evaluating the function using the plurality of values in the
plurality of registers, wherein the data structure
comprises at least one argument value for the function
and at least one internal value used solely within the
function.
Moyer et al.
Ray et al.
Hanson et al.
References 1
us 5,923,893
us 6,035,394
US 2004/0015925 Al
Rejections on Appeal
July 13, 1999
Mar. 7, 2000
Jan. 22, 2004
1. The Examiner rejected claims 1-8 and 12 under 35 U.S.C. § 103 as
being unpatentable over the combination of Hanson, Ray, and Official
Notice. Final Act. 5.
1 All citations herein to these references are by reference to the first named
inventor only.
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The contentions discussed herein as to claim 1 are determinative as to
this rejection. Therefore, except for our ultimate decision, we do not discuss
claims 2-8 and 12 further herein.
2. The Examiner rejected claims 9-11 under 35 U.S.C. § 103 as being
unpatentable over the combination of Hanson, Ray, Official Notice, and
Moyer. Final Act. 10.
The contentions discussed herein as to claim 1 are determinative as to
this rejection. Therefore, except for our ultimate decision, we do not discuss
this rejection of claims 9-11 further herein.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. Appellants' contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellants'
other contentions are not discussed in detail herein.
A.
The Examiner takes "Official Notice" (Final Act. 9), and supports it
by stating:
Hanson has also not taught that the data structure also
comprises at least one internal value used solely within the
function. However, one of skill in the art of programming would
have recognized a number of ways how value 'b' could be such
an internal value. For instance, it is known to obtain an input
from a user and send it to a function for processing. This allows
for a user to flexibly perform a desired operation. The examiner
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Application 14/661,376
asserts that the function could perform anything ( e.g., some math
based on two numbers), where the numbers could be obtained
from a user ( or simply defined within the caller) but they would
not actually be used until within the function. The examiner
notes that there may be many scenarios where a value is simply
passed to a function without it actually being used in the caller.
Such a value would be an internal value used solely within the
function. As a result, it would have been obvious to one of
ordinary skill in the art before the effective filing date of the
claimed invention to modify Hanson such that the data structure
also comprises at least one internal value used solely within the
function.
Final Act. 6-7 ( emphasis added).
The Examiner further determines: 2
[F]or applicant's benefit, the examiner has cited a reference
("SFDV4001 OOP with C++") herewith. Please see the code
example in this reference, which shows a basic example of how
a value 'b' is an internal value used solely within the function.
In this code sequence, 'b' is input by the user but is never used
in the main function. Instead, it is passed to the "sum" function,
where it is used in an addition operation with 'a'. Thus, 'b' is an
internal value used solely within the function. This "sum"
function has similar form to the "prod" function shown in
FIG.9A of Hanson (which is speculated to calculate a product of
two numbers). However, there are practically infinite functions
that can be written to take an internal value such as this.
2 The Examiner also states: "On page 11 of the [May 9, 2017,] response,
applicant inadequately traverses the examiner's taking of Official Notice by
not explaining how the noticed feature(s) is/are not well known in the art.
See MPEP 2144.03(c). Thus, the examiner is not required to provide a
supporting reference at this time." Final Act. 13. The Examiner is mistaken.
We determine Appellants' May 9, 2017, traversal to be adequate. However,
this particular error by the Examiner is harmless as the Examiner goes on to
cite the "SFDV 4001 OOP with C++" reference as supporting the taking of
Official Notice. Id. We separately determine if this reference is adequate
for that purpose.
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Application 14/661,376
Final Act. 13-14 ( emphasis added).
B.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
[The Examiner's] taking of Official Notice is clearly in error to
the extent that the claimed features which the rejection asserts
are known or obvious are precisely those that the courts have
noted should not be subject to official notice. See, e.g., In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (noting that
"assertions of technical facts in the areas of esoteric technology
or specific knowledge of the prior art must always be supported
by citation to some reference work recognized as standard in the
pertinent art.").
It is not appropriate for the examiner to take official notice of
facts without citing a prior art reference where the facts asserted
to be well known are not capable of instant and unquestionable
demonstration as being well-known. For example, assertions of
technical facts in the areas of esoteric technology or specific
knowledge of the prior art must always be supported by citation
to some reference work recognized as standard in the pertinent
art. In re Ahlert, 424 F .2d at 1091 [].
App. Br. 5---6 ( emphasis added).
Appellants point out:
[N]either Hanson nor Ray teaches a data structure comprising at
least one internal value used solely within the function. This is
acknowledged by the Examiner (see final rejection at 6,
paragraph 13 ( e) ).
App. Br. 5.
Appellants further contend:
[T]he examiner makes reference to a document
"SFDV4001 OOP with C++," which the examiner states to show
"a basic example of how a value 'b' is an internal value used
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Application 14/661,376
solely within the function," and that 'b' is input by the user but
is never used in the main function - instead, it is passed to the
"sum" function where it is used in an addition operation with 'a'.
This is incorrect - "SFDV4001 OOP with C++" also does
not disclose an internal value used solely within the function as
required by the pending claims. In the referenced example, 'a'
and 'b' are explicitly shown as both being passed as arguments
in a/unction. Therefore, 'b' cannot be an internal value. Both
'a' and 'b' are simply function arguments provided by the user.
Thus, there is no disclosure in any of the references of record of
loading into respective registers argument values and internal
values in the claimed manner.
App. Br. 7 (emphasis added).
C.
The Examiner responds:
[T]he examiner notes that lines 5-29 on page 5 of the
specification are not limiting in any way and include no explicit
definition for what the claimed internal value is. While this
portion of the specification may be interpreted as a
differentiation between arguments and internal values, the
differentiation is not part of any explicit definition that would
limit the claims. On page 5, lines 16-17 leave an internal value
open to being an argument. In the following sentence (page 5,
lines 17-20), appellant gives an example where one or more
constants are not arguments. In the following sentence (page 5,
lines 20-22), appellant states that one or more variables are solely
internal, but again, this does not exclude the internal value from
also being an argument. Absent an explicit definition, the
examiner is to take the broadest reasonable interpretation of
"internal value used solely within the function". Claim 1
requires at least one argument value for the function and an
internal value used solely within the function. In FIG.9A of
Hanson, 'a' is an argument passed to the function 'prod'. Based
on the "SFDV 400I OOP with C++" reference, the 'b' value in
FIG.9A may have been input by a user prior to execution of the
prod function, but is not actually used in an operation until the
prod/unction is executed. For instance, if the prod (likely short
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Application 14/661,376
for "product") performs multiplication on values 'a' and 'b', 'b'
may not be used until the prod function actually and solely uses
it as part of a multiplication operation with 'a'. That 'b' is also
an argument does not mean it is not also an internal value used
solely by the function. An argument and an internal value used
solely within the function are not mutually exclusive as claimed,
nor are they defined as being mutually exclusive in the
specification, which sets forth exemplary language. In the end,
the data structure in Hanson will include an argument ('a') and
an internal value used solely within the function ('b'). The claim
is not narrow enough to preclude such an interpretation.
Ans. 6-7 ( emphasis added).
D.
In response, Appellants contend:
[T]he Answer merely asserts, without providing any rational
underpinning, that one of skill in the art would have "recognized"
that value 'b' of Hanson could be such an internal value.
Reply Br. 2 ( emphasis added).
Appellants further contend:
[I]t is maintained that [SFDV 4001 OOP with C++] does not
disclose an internal value used solely within the function. As
described in the present application, internal values are entirely
internal to the function, are not relevant outside of the function,
and are not exposed as an argument. Similarly, one or more
variables may be used within the function ( e.g. scratch space,
intermediate values, etc.) which are solely internal to the
function's operation. Since they are used solely within the
function, a calling program has no knowledge of these internal
values. See specification at page 5, 11. 16 - 29.
Reply Br. 2-3 ( emphasis omitted).
E.
As articulated by the Federal Circuit, the Examiner's burden of
proving non-patentability is by a preponderance of the evidence. See In re
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Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("[P]reponderance of the
evidence is the standard that must be met by the PTO in making
rejections."). "A rejection based on section 103 clearly must rest on a
factual basis[.]" In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis." Id. We
conclude the Examiner's analysis fails to meet this standard because the
rejections do not adequately explain the Examiner's findings of fact.
We disagree with the Examiner's ultimate determination that the
broadest reasonable interpretation of "internal value used solely within the
function" ( claim 1) does not preclude either the "b" value of the SFDV 4001
reference or the "b" value of Hanson. Ans. 6-7. The Examiner focuses
mainly on the "solely within the function" portion of the limitation, and for
example, states, "the 'b' value in FIG.9A [of Hanson] may have been input
by a user prior to execution of the prod function, but is not actually used in
an operation until the prod function is executed." Ans. 6-7. Even if the
Examiner is correct as to the "used solely within the function" portion of the
limitation, this does not account for the limiting effect of the "internal value"
portion. The Examiner determines that "lines 5-29 on page 5 of the
specification are not limiting in any way and include no explicit definition
for what the claimed internal value is." Ans. 6 (emphasis added). The
Examiner dismisses the "constants" and "variables" examples at lines 17-22
of page 5 of the Specification as individually not precluding "arguments."
Ans. 6. However, we look collectively at these lines and the subsequent
sentence stating "the calling program has no knowledge of these internal
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values without looking into the function code." Spec. 5 :22-23. We
determine this portion of the Specification is definitional ( and limiting on the
claim) at least to the extent that the "internal value" is not exposed in the
way an argument is. Contrary to the Examiner's determination, we conclude
that an objective observer would view lines 5-29 on page 5 of the
Specification as limiting the claim term "internal value" to preclude an
"argument."
We conclude, consistent with Appellants' contentions that there is
insufficient articulated reasoning to support the Examiner's findings that any
of the applied references teaches "at least one internal value used solely
within the function," as required by claim 1. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner's final
conclusion that claim 1 would have been obvious to one of ordinary skill in
the art at the time of Appellants' invention.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-12 as being unpatentable under 35 U.S.C. § 103.
(2) On this record, the Examiner has not shown claims 1-12 to be
unpatentable.
DECISION
We reverse the Examiner's rejections of claims 1-12.
REVERSED
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