Ex Parte LE

Board of Patent Appeals and Interferences

Apr 28, 2003

09003572 (B.P.A.I. Apr. 28, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BICH-CAU LE
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Appeal No. 2001-0682
Application No. 09/003,572
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ON BRIEF
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Before THOMAS, JERRY SMITH, and RUGGIERO, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of claims 1-52, which are all of the
claims pending in the present application.
The claimed invention relates to an emulator which dynamically translates instructions in
original code written for a first architecture into native code for a second architecture. Various
checkpoints in the original code are designated and the placement of the translated code instructions
are speculatively reordered according to optimization procedures. If a trap occurs during execution
of the reordered code, the emulator resets the original code to the most recent checkpoint and
Appeal No. 2001-0682
Application No. 09/003,572
1 Although a total of 9 references are listed in the “Prior Art of Record” section of the Examiner’s Answer,
only the Robinson (5,432,795) and Sites (5,507,030) patents are applied as references in the rejections of the claims
on appeal.
2
executes the original code section in a line-by-line manner until the section is branched out of or
completed.
Claim 1 is illustrative of the invention and reads as follows:
1. A method for dynamically translating instructions in original code written for a first architecture
into native code for a second architecture, the method comprising the steps of:
analyzing a section of the original code;
designating at least one checkpoint in the section;
translating the instructions into native code instructions; and
reordering, speculatively, placement of at least one native code instruction.
The Examiner relies on the following prior art:1
Robinson 5,432,795 Jul. 11, 1995
Sites 5,507,030 Apr. 09, 1996
Claims 1-3, 6, 9-19, 21, 24-29, 32, 35-45, 47, and 50-52 stand finally rejected under
35 U.S.C. § 102(b) as being anticipated by Sites. Claims 4, 5, 7, 8, 20, 22, 23, 30, 31, 33, 34, 46,
48, and 49 stand finally rejected under 35 U.S.C. § 103(a) as being unpatentable over Sites in view
of Robinson.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
Brief (Paper No. 8) and Answer (Paper No. 9) for the respective details.
Appeal No. 2001-0682
Application No. 09/003,572
3
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced by the
Examiner, and the evidence of anticipation and obviousness relied upon by the Examiner as support
for the rejections. We have, likewise, reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Brief along with the Examiner’s rationale in support
of the rejections and arguments in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us, that the Sites reference does not
fully meet the invention as set forth in claims 1-3, 6, 9-19, 21, 24-29, 32, 35-45, 47, and 50-52.
With respect to the Examiner’s obviousness rejection, we are also of the view that the evidence
relied upon and the level of skill in the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as recited in claims 4, 5, 7, 8, 20, 22, 23, 30, 31, 33,
34, 46, 48, and 49. Accordingly, we reverse.
We consider first the rejection of claims 1-3, 6, 9-19, 21, 24-29, 32, 35-45, 47, and 50-52
under 35 U.S.C. § 102(b) as being anticipated by Sites. Anticipation is established only when a
single prior art reference discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W. L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
Appeal No. 2001-0682
Application No. 09/003,572
4
With respect to independent claims 1, 19, 27, and 45, the Examiner attempts to read the
various limitations on the disclosure of Sites. In particular, the Examiner directs attention to the
illustration in Figure 8 of Sites along with the accompanying description at column 13, lines 3-67.
Appellant’s arguments in response assert a failure of Sites to disclose every limitation in
independent claims 1, 19, 27, and 45 as is required to support a rejection based on anticipation. At
pages 6 and 7 of the Brief, Appellant’s arguments focus on the contention that, contrary to the
Examiner’s interpretation of Sites, there is no disclosure of the speculative reordering of the
placement of at least one native code instruction as claimed. In Appellant’s view, Sites discloses
only the address conversion of CISC and RISC instructions and, specifically, merely the correlation
of the addresses of CISC instructions in an original program with the addresses of RISC instructions
in a translated program.
After reviewing the Sites reference in light of the arguments of record, we are in general
agreement with Appellant’s position as expressed in the Brief. We find no support for the
Examiner’s conclusion (Answer, page 12) that Sites’ re-addressing of original instructions related to
conditional branches such as “Jump,” or “Call,” which the Examiner has interpreted as being
“speculative” conditions, satisfies the speculative reordering feature of the independent claims 1, 19,
27, and 45. While the Examiner is correct that claims are to be given their broadest possible
interpretation, any such interpretation must be consistent with the specification.
In the present factual situation, we simply find no basis for the Examiner interpreting the
“speculative reordering” language of the appealed claims in the manner articulated in the Answer.
Appeal No. 2001-0682
Application No. 09/003,572
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In reaching this conclusion, we construe the claimed “speculative reordering” feature to be very
narrowly defined, as argued by Appellant and disclosed in the specification, as meaning “...to
schedule an operation before its control dependencies are resolved.” (Brief, pages 6 and 7;
specification, page 8, lines 24-25). In our view, the re-addressing of conditional “Jump” or “Call”
instructions, as asserted by the Examiner, would not satisfy the control dependency resolution
requirements of the “speculative reordering” feature as defined by Appellant. An inventor’s
definition and explanation of the meaning of a term, as evidenced by the specification, controls the
interpretation of that claim term, as opposed, for example, to dictionary definitions. Serrano v.
Telular Corp., 111 F.3d 1578, 1581, 42 USPQ2d 1538, 1541 (Fed. Cir. 1997).
In view of the above discussion, since all of the claim limitations are not present in the
disclosure of Sites, we do not sustain the Examiner’s 35 U.S.C. § 102(b) rejection of independent
claims 1, 19, 27, and 45, nor of claims 2, 3, 6, 9-18, 21, 24-26, 28, 29, 32, 35-44, 47, and 50-52
dependent thereon.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a) rejection of dependent
claims 4, 5, 7, 8, 20, 22, 23, 30, 31, 33, 34, 46, 48, and 49 based on the combination of Sites and
Robinson, we do not sustain this rejection as well. In addressing the limitations in these dependent
claims, which are directed to the details of “trapping” and “checkpoint resetting” operations, the
Examiner looks to Robinson to remedy these deficiencies in Sites (Answer, pages 9-11). For all of
the reasons discussed supra, however, the Examiner has failed to establish a prima facie case of
obviousness since we find no teaching or suggestion in Robinson that would overcome the innate
Appeal No. 2001-0682
Application No. 09/003,572
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deficiencies of Sites in disclosing the speculative reordering of the placement of a native code
instruction, a feature present in each of independent claims 1, 19, 27, and 45.
In summary, we have not sustained either of the Examiner’s rejections of the claims on
appeal. Therefore, the decision of the Examiner rejecting claims 1-52 is reversed.
REVERSED
Appeal No. 2001-0682
Application No. 09/003,572
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JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/lp
HEWLETT PACKARD COMPANY
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Appeal No. 2001-0682
Application No. 09/003,572
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FORT COLLINS, CO 80527-2400