Ex Parte Link

Board of Patent Appeals and Interferences

May 18, 2011

10690818 (B.P.A.I. May. 18, 2011)

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.
10/690,818 10/23/2003 Patrick J. Link 723-1443 5437
27562 7590 05/18/2011
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
05/18/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PATRICK J. LINK
____________
Appeal 2009-009533
Application 10/690,8181
Technology Center 3700
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and MICHAEL
R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on October 23, 2003. This application is a divisional of application
09/723,322, filed on November 28, 2000. The real party in interest is
Nintendo Co., Ltd. (App. Br. 3.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 6, 14, and 17 through 58. (App. Br. 5.)2
Claims 1-5, 7-13, 15, and 16 have been cancelled. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.
Appellant’s Invention
Appellant invented a method, apparatus, and storage device for
running software applications, such as video games, on platforms other than
the platforms the software was intended or designed to run on. (Spec. 1, ¶
[0002].)
Illustrative Claim
Independent claim 6 further illustrates the invention as follows:
6. A method of emulating a handheld video game
device of the type that includes a handheld housing having an
electronic display thereon, said handheld housing having
therein a processor that runs a video game software image out
of a page-based read only memory (ROM) to present interactive
displays on said electronic display of animated video game play
in response to user inputs, the method comprising:

executing a video game device emulator program on a
target computing device different from said handheld video
game device including said handheld housing having said
electronic display thereon, said target computing device being
capable of displaying graphical information on a target
computing device display, said target computing device having
read/write memory and receiving user inputs, said executing
video game device emulator program controlling said target

2 All references to the Appeal Brief are to the Appeal Brief filed October 16,
2008, which replaced the Appeal Brief filed September 2, 2008.
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computing device to at least in part emulate said handheld
video game device so as to at least in part enable said target
computing device to run said video game software and present
interactive displays of said animated video game play on said
target computing device display in response to user inputs to
said target computing platform;

modeling at least some display timing activities of said
handheld video game device electronic display on said target
computing device;

processing, with said emulator program executing on said
target computing device, said video game software image
capable of being executed on said handheld video game device
processor within said handheld housing that runs video game
software to present interactive displays on said electronic
display of animated video game play in response to user inputs;
and

generating a real time interactive video game
presentation on said target computing device display at least in
part in response to said processed video game software image
and said modeled display timing activities,

wherein said video game software image comprises
multiple ROM pages and said method further includes said
emulator program providing a pointer table system that
allocates emulated ROM pages in said target computing device
read/write memory and duplicates at least a portion of said
allocated emulated ROM pages across said ROM pages to
facilitate page selection and reduce page swapping.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Hannah US 4,771,279 Sep. 13, 1988
Mackey US 5,153,577 Oct. 6, 1992
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Morley US 5,781,758 July 14, 1998
Traut US 5,790,825 Aug. 4, 1998
Farber US 5,903,760 May 11, 1999
Dahl US 5,949,985 Sep. 7, 1999
Nishiumi US 6,007,428 Dec. 28, 1999
Reed US 6,058,288 May 2, 2000
Munshi US 6,084,600 Jul. 4, 2000
Mullarkey US 6,192,446 B1 Feb. 20, 2001
(filed Sep. 3, 1998)
Sterchi US 2003/0207712 A1 Nov. 6, 2003
(filed Dec. 14, 2000)
Duruöz US 6,658,056 B1 Dec. 2, 2003
(filed Mar. 30, 1999)

“Snes9x: The Portable Super Nintendo Entertainment System
Emulator,” (June 1999), available at http://www.snes9x.com (hereinafter
“Snes9x”).

Adam Planski, “GameBoy 98 Hompage,” (Dec. 1999),
http://gb98.pocketheaven.com/ (hereinafter “GameBoy 98”).

Gunter Woigk, “z80-68k-v150 Z80 Engine written in 68020 assembler
for inclusion in C/C++ projects,” (Dec. 1999), http://little-
bat.de/prog/download/z80_68k/z80_68k.html (hereinafter “Woigk”).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 6, 14, 18, 23, 27, 29, 32, and 35-58 stand rejected under 35
U.S.C. 103(a) as being unpatentable over the combination of Snes9x, Dahl,
and GameBoy 98.
Claim 17 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Nishiumi.
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Claim 19 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Munshi.
Claim 20 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Mackey.
Claim 21 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Sterchi.
Claim 22 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Morley.
Claim 24 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Woigk.
Claims 25 and 26 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Hannah.
Claim 28 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Mullarkey.
Claim 30 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Farber.
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Claim 31 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and
Traut.
Claim 33 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, Munshi,
and Duruöz.
Claim 34 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Snes9x, Dahl, GameBoy 98, and Reed.
Appellant’s Contentions
Appellant contends that Dahl’s disclosure of L1 caching of
instructions is a conventional cache memory technique and, therefore, Dahl
does not teach or fairly suggest “duplicat[ing] at least a portion of [the]
allocated emulated ROM pages across [the] ROM pages,” as recited in
independent claim 6. (App. Br. 21-23.) Further, Appellant argues that since
Dahl discloses directly reading program instructions from the emulated
direct access storage device (hereinafter “DASD”), there is no need to copy
pages of the program instructions in the emulated main store. (Reply Br. 2-
4.) Therefore, Appellant alleges that since Dahl discloses avoiding
duplication by directly accessing a single copy of information stored in the
DASD, Dahl teaches away from the claimed invention. (Id.)
Examiner’s Findings and Conclusions
The Examiner finds that Dahl discloses reducing both page swapping
and address translation overhead during emulation by copying and storing
all portions of a system’s memory, including both fixed and paged sections
of memory space, into the active memory of an emulated system. (Ans. 22-
23.) Further, the Examiner finds that it would have been obvious to an
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ordinarily skilled artisan to copy both the fixed and page sections of read-
only memory (hereinafter “ROM”) in order to preserve the expected layout
of the memory space within the emulated system. (Id.) Thus, the Examiner
finds that Dahl teaches the disputed limitation. (Id.)

II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Snes9x, Dahl, and GameBoy 98 renders independent claim 6
unpatentable? In particular, the issue turns on whether:
(a) the proffered combination teaches or fairly suggests
“duplicat[ing] at least a portion of [the] allocated emulated ROM pages
across [the] ROM pages,” as recited in independent claim 6; and
(b) Dahl teaches away from the claimed invention.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Dahl
FF 1. Dahl’s figure 2 depicts a block diagram of server (12), which
comprises a computer. (Col. 3, ll. 60-62.) In particular, Dahl discloses that
in order to emulate a program (46), emulator (38) accesses instructions
within the program (46) directly out of the simulated DASD (39) and does
not page the program instructions into simulated main store (37). (Col. 4, ll.
45-50.)
FF 2. Dahl’s figure 3 depicts a block diagram of the processor
complex (50). (Col. 5, ll. 1-2.) In particular, Dahl discloses an address
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translation table that indicates the pages numbers and associated physical
addresses of each storage object. (Id. at ll. 26-29.)
FF 3. In order to minimize both address translation and paging
overhead during emulation, Dahl discloses simulating both the main store
(58) and DASD (60) as segments within the address space of system (12).
(Id. at ll. 47-50.) Dahl discloses identically accessing both the main store
(58) and DASD (60), thereby enabling the emulator (38) to avoid paging
portions of the program (46) between the simulated DASD (39) and the
simulated main store (37) when fetching emulated instructions. (Id. at ll. 50-
54.) Moreover, since Dahl discloses storing all program objects within the
simulated DASD (39), the address translation overhead is eliminated when
fetching emulated instructions with program (46). (Id. at ll. 54-58.)
Mullarkey
FF 4. Mullarkey’s figure 2 depicts a block diagram of a memory
device (30) in a computer system. (Col. 2, ll. 13-14.) In particular,
Mullarkey discloses utilizing a look-ahead circuit (205) to proactively
control the memory device (30). (Col. 7, ll. 8-10.) Mullarkey discloses that
the look-ahead circuit evaluates three subsequent instructions in order to
determine where power and speed can be gained. (Id. at ll. 10-12.)

IV. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Snes9x,
Dahl, and GameBoy 98

Claim 6
Independent claim 6 recites, inter alia, “duplicat[ing] at least a portion
of [the] allocated emulated ROM pages across [the] ROM pages.”
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As detailed in the Findings of Fact section above, Dahl discloses an
emulator that emulates a software program by accessing or fetching
instructions within the software program directly out of a simulated DASD.
(FFs 1 & 2). Dahl discloses that the emulator accesses or fetches these
instructions without paging such instructions into a simulated main store.
(Id.) According to Dahl, the disclosed method of emulating a software
program reduces both address translation and paging overhead. (FF 2.)
We find that Dahl’s disclosure teaches allocating emulated pages of a
software program into a simulated DASD. Further, “if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In this case, since
only routine skill in the art would be required to duplicate the emulated
pages of a software program, we find that an ordinarily skilled artisan would
have readily appreciated allocating Dahl’s emulated pages of a software
program into the simulated DASD, and duplicating such pages across the
memory (i.e., ROM pages) of the simulated DASD. Thus, we find that Dahl
teaches or fairly suggests the disputed limitation.
Teaching Away
We are not persuaded by Appellant’s argument that Dahl teaches
away from the claimed invention because Dahl discloses avoiding
duplication by directly accessing a single copy of information stored in the
simulated DASD. (Reply Br. 2-4.) “What the prior art teaches and whether
it teaches toward or away from the claimed invention … is a determination
of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d
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1085, 1088 (Fed. Cir. 1995). “A reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or
equivalent method, however, does not teach away from the use of a claimed
method. In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Appellant’s reference to Dahl’s disclosure of avoiding duplication by
directly accessing a single copy of information stored in the simulated
DASD does not indicate that Dahl’s simulated DASD is incapable of
duplicating the information (i.e., emulated pages of a software program)
stored therein. While Appellant points out that Dahl discloses that the
emulated pages are not paged or duplicated into the simulated main store
(Reply Br. 3-4), this disclosure in no way discourages or precludes
duplicating the information (i.e., emulated pages of the software program)
stored in the simulated DASD. Further, Appellant has not pointed to an
explicit disclosure within Dahl that acts to “criticize, discredit, or otherwise
discourage” duplicating at least a portion of the allocated ROM pages across
the ROM pages of a target computing device’s read/write memory. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Instead, we find that Dahl’s
disclosure of duplicating the emulated pages of a software program across
the memory (i.e., ROM pages) of the simulated DASD is an alternative or
equivalent teaching to “duplicat[ing] at least a portion of [the] allocated
emulated ROM pages across [the] ROM pages,” as claimed. Therefore,
Appellant has not shown that the Dahl’s disclosure teaches away from the
claimed invention. It follows that Appellant has not shown that the
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Examiner erred in concluding that the combination of Snes9x, Dahl, and
GameBoy 98 renders independent claim 6 unpatentable.
Claims 14, 17, 18, 20-22, 24-27, 30-37, 40, 47, and 54
Appellant does not provide separate and distinct arguments for
patentability with respect to independent claims 14 and 37, and dependent
claims 17, 18, 20-22, 24-27, 30-36, 40, 47, and 54. Therefore, we select
independent claim 6 as representative of the cited claims. Consequently,
Appellant has not shown error in the Examiner's rejection of independent
claims 14 and 37, and dependent claims 17, 18, 20-22, 24-27, 30-36, 40, 47,
and 54, for the reasons set forth in our discussion of independent claim 6.
See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 38, 39, 41-46, 48-53, and 55-58
Appellant merely reiterates what the disputed claim limitations recite
and makes general allegations as to the teachings of the prior art references.
(App. Br. 25-28.) Such reiterations and general allegations do not amount to
separate patentability arguments. See Ex parte Belinne, No. 2009-004693,
2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see also 37
C.F.R. § 41.37(c)(1)(vii). Appellant’s arguments “do not … explain why the
Examiner's explicit fact finding is in error.” Belinne, 2009 WL 2477843 at
*4. Therefore, Appellant’s arguments are not persuasive. It follows that
Appellant has not shown that the Examiner erred in concluding that the
combination of Snes9x, Dahl, and GameBoy 98 renders dependent claims
38, 39, 41-46, 48-53, and 55-58 unpatentable.
Claim 23
Appellant contends that Dahl’s disclosure of an address translation
table that exists in typical paging architectures does not teach or fairly
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suggest “using said pointer table system to control memory access by
remapping memory access instructions into function calls,” (emphasis
added) as recited in dependent claim 23. (App. Br. 24; Reply Br. 6-7.) We
agree.
As detailed in the Findings of Fact section above, Dahl discloses
utilizing an address translation table that indicates the pages numbers and
associated physical addresses of each storage object. (FF 2.) At best, we
find that Dahl’s disclosure teaches utilizing an address translation table that
translates memory addresses when emulating a software program. However,
we agree with Appellant that Dahl does not teach or fairly suggest utilizing a
pointer table system to control memory access by remapping memory access
instructions into function calls. (Reply Br. 7.) While Dahl’s address
translation table is capable of translating memory addresses when emulating
a software program, Dahl fails to teach or fairly suggest that the address
translation table remaps memory access instructions into function calls.
Therefore, we find that the Examiner improperly relied upon Dahl to teach
or fairly suggest the disputed limitation. Further, we find that neither
Snes9x nor GameBoy 98 remedy the deficiencies in the Examiner’s
rejection. It follows that Appellant has shown that the Examiner erred in
concluding that the combination of Snes9x, Dahl, and GameBoy 98 renders
dependent claim 23 unpatentable.
Claim 29
Appellant contends that the Examiner fails to cite to any factual
evidence that teaches or fairly suggests “modeling each handheld video
game device native instruction register as a union of byte, word and long
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register formats,” as recited in dependent claim 29. (App. Br. 25.) We do
not agree.
We begin our analysis by noting that the Examiner establishes a prima
facie case that the combination of Snes9x, Dahl, and Gameboy 98 renders
dependent claim 29 unpatentable. (Ans. 8) In particular, the Examiner
states that a union is an old and well known computing data structure that
allows for the storage of a value that could take on several different, but
fixed types of data. (Id. at 24-25.) Additionally, the Examiner states that it
would have been obvious to an ordinarily skilled artisan to incorporate a
union into any type of system, including Dahl’s emulator system, in order to
access data without requiring costly duplication of code to accommodate all
types of systems, or additional overhead through increased translation of
data types. (Id.) In response, Appellant makes a blanket statement that the
Examiner has cited no factual evidence in support of a hindsight conclusion
that dependent claim 29 would have been obvious. (App. Br. 25.)
Moreover, Appellant cites to where the present Specification supports the
claimed subject matter and generally alleges that the Examiner ignores or
overlooks the claimed term “union.” (Id.)
Since Appellant has not made a bona fide effort to explain why the
Examiner’s explicit fact finding is in error, we find that the weight of the
evidence favors the Examiner's position. Therefore, we find that Appellant
has not shown reversible error in the Examiner's obviousness rejection of
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dependent claim 29.3 It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Snes9x, Dahl, and
GameBoy 98 renders dependent claim 29 unpatentable.
Claims 40, 47, and 54
Appellant contends that Dahl’s disclosure of only one System 36
instruction set does not teach or fairly suggest “emulat[ing] each of said
ROM banks with a different RAM page,” as recited in dependent claims 40,
47, and 54. (App. Br. 26-27.) We do not agree.
As set forth above, we find Dahl’s disclosure teaches allocating
emulated pages of a software program into a simulated DASD. In particular,
we find that an ordinarily skilled artisan would have appreciated that Dahl’s
pages of a software program are capable of being stored in various types of
memory, including both ROM banks and random access memory
(hereinafter “RAM”) pages. Accordingly, during emulation, we find that an
ordinarily skilled artisan would have appreciated allocating the data from the
ROM banks (i.e., Dahl’s pages of a software program) into different RAM
pages. Thus, we find that Dahl teaches or fairly suggests the disputed
limitation. It follows that Appellant has not shown that the Examiner erred
in concluding that the combination of Snes9x, Dahl, and GameBoy 98
renders dependent claims 40, 47, and 54 unpatentable.

3 See In re Jung, 98 USPQ2d 1174, 1180 (Fed. Cir. 2011)(“Jung argues that
the Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).
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35 U.S.C. § 103(a) Rejection—Combination of Snes9x,
Dahl, GameBoy 98, and Munshi

Claim 19
Appellant merely reiterates what the disputed claim limitation recites
and makes a general allegation as to the teachings of Munshi. (App. Br. 28.)
This reiteration and general allegation does not amount to a separate
patentability argument. See Ex parte Belinne, No. 2009-004693, 2009 WL
2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see also 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant’s argument “do[es] not … explain why the
Examiner's explicit fact finding is in error.” Belinne, 2009 WL 2477843 at
*4. Therefore, Appellant’s argument is not persuasive. It follows that
Appellant has not shown that the Examiner erred in concluding that the
combination of Snes9x, Dahl, GameBoy 98, and Munshi renders dependent
claim 19 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Snes9x,
Dahl, GameBoy 98, and Mullarkey

Claim 28
Appellant contends that Mullarkey’s disclosure of an instruction look-
ahead circuit does not teach or fairly suggest “performing no-operation look-
ahead to avoid wasting processing time in no-operation loops,” as recited in
dependent claim 28. (App. Br. 29.) We do not agree.
As detailed in the Findings of Fact section above, Mullarkey discloses
a look-ahead circuit that proactively controls a memory device. (FF 4.)
Mullarkey discloses that the look-ahead circuit evaluates instructions in
order to determine where power and speed can be gained. (Id.) By looking
ahead to determine where processing can be gained, we find that an
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ordinarily skilled artisan would have understood that Mullarky’s look-ahead
circuit performs the same function regardless of the type of instruction it
evaluates. Accordingly, we find that an ordinarily skilled would have
appreciated that Mullarkey’s look-ahead circuit is capable of evaluating no-
operation loops in order to avoid wasting processing time. Thus, we find
that Mullarkey teaches or fairly suggests the disputed limitation. It follows
that Appellant has not shown that the Examiner erred in concluding that the
combination of Snes9x, Dahl, GameBoy 98, and Mullarkey renders
dependent claim 28 unpatentable.

V. CONCLUSION OF LAW
1. Appellant has not shown that the Examiner erred in rejecting
claims 6, 14, 17-22, and 24-58 as being unpatentable under 35 U.S.C.
§ 103(a).
2. Appellant has shown that the Examiner erred in rejecting claim
23 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
1. We affirm the Examiner’s decision to reject claims 6, 14, 17-
22, and 24-58 as being unpatentable under 35 U.S.C. § 103(a).
2. We reverse the Examiner’s decision to reject claim 23 as being
unpatentable under 35 U.S.C. § 103(a).
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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).

AFFIRMED-IN-PART

ELD