Ex Parte Lutz et al

Board of Patent Appeals and Interferences

Mar 29, 2011

10999154 (B.P.A.I. Mar. 29, 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.
10/999,154 11/30/2004 David Raymond Lutz 550-611 2552
23117 7590 03/30/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
YAARY, MICHAEL D
ART UNIT PAPER NUMBER
2193
MAIL DATE DELIVERY MODE
03/30/2011 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 DAVID RAYMOND LUTZ and CHRISTOPHER NEAL HINDS
____________________

Appeal 2010-001570
Application 10/999,154
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001570
Application 10/999,154
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to data processing apparatus and method for
performing floating point multiplication. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A data processing apparatus for multiplying first and
second n-bit significands of first and second floating point
operands to produce an n-bit result, the data processing
apparatus comprising:
multiplier logic circuitry for multiplying the first and
second n-bit significands to produce a pair of 2n-bit vectors;
half adder logic circuitry for receiving a plurality of most
significant bits of the pair of 2n-bit vectors and to produce a
corresponding plurality of carry and sum bits representing said
plurality of most significant bits;
first adder logic circuitry for performing a first sum
operation in order to generate a first rounded result equivalent
to the addition of the pair of 2n-bit vectors with a rounding
increment injected at a first predetermined rounding position
appropriate for a non-overflow condition, the first adder logic
circuitry being arranged to use as the m most significant bits of
the pair of 2n-bit vectors the corresponding m carry and sum
bits, and to take the remaining 2n-m least significant bits of the
pair of 2n-bit vectors directly from the 2n-bit vectors, with the
least significant of the m carry bits replaced with a rounding
increment value prior to the first adder logic performing the
first sum operation, wherein n and m are integers and 2n is
greater than m;
second adder logic circuitry for performing a second sum
operation in order to generate a second rounded result
equivalent to the addition of the pair of 2n-bit vectors with a
rounding increment injected at a second predetermined
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rounding position appropriate for an overflow condition, the
second adder logic circuitry being arranged to use as the m-l
most significant bits of the pair of 2n-bit vectors the
corresponding m-1 carry and sum bits, and to take the
remaining 2n-m+ 1 least significant bits of the pair of 2n-bit
vectors directly from the 2n-bit vectors, with the least
significant of the m-1 carry bits replaced with the rounding
increment value prior to the second adder logic performing the
second sum operation; and
selector logic circuitry for deriving the n-bit result from
either the first rounded result or the second rounded result.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wolrich
Badeau
US 5,729,485
US 6,366,942 B1
Mar. 17, 1998
Apr. 2, 2002

REJECTIONS
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolrich and Badeau. Ans. 4.
Claims 1 and 10 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 12, and 13 of co-pending Application No. 11/081,833 (hereafter
'833). Although the conflicting claims are not identical, they are not
patentably distinct from each other because claims 1 and 13 of the '833
application contain every element of claims 1 and 10 of the instant
application. (Final Rej. 3).
This was a provisional obviousness-type double patenting rejection,
but once the conflicting claims were in fact patented, the provisional status
of the rejection no longer applied.
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The Examiner withdrew the rejection under 35 U.S.C. § 101. (Ans.
3).
ISSUES
Has the Examiner set forth a prima facie case of obviousness of
independent claims 1 and 10?
Have the Appellants set forth any substantive argument with respect
to the obvious-type double patenting rejection?

PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
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The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).
ANALYSIS
At the oral hearing, Appellants' representative was asked to comment
on figures numeral 4A-4D and the corresponding disclosure at column 9-10
Detailed Description of the Invention section of the Badeau reference
concerning the use of half adders. We find these disclosures to correspond
to the two cited and relied upon portions in column 5 of the Summary of the
Invention. Appellants’ representative stated that he was not prepared to
respond to such inquiry and that the Examiner had not cited to those portions
of the reference in the Answer. Contrary to Appellants' indication of a lack
of preparedness/willingness to discuss these teachings, Appellants cited to
figures 4A and 4B at page 16 of the Appeal Brief. We leave it to the
Examiner to further consider the specifics of these teachings.
At the oral hearing, Appellants' representative further argued that the
portions of Appellants' Specification, which discussed the Badeau reference
at pages 2 and 3, must be accepted as "fact" and used to distinguish the
teachings of Badeau from the claimed invention since the Examiner did not
specifically address or dispute those statements. Appellants cited no specific
authority for such a contention. One rationale for dispelling Appellants’
contention is that since Appellants' Specification can be amended during
prosecution, it is unclear to us how the Board or the Examiner must accept a
portion of the Specification as a "fact" and then that "fact" may be amended
and then arguably the amended statement could also be another
contradictory "fact."
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Because the Examiner paints with a broad brush in making the
obviousness rejection, we are left to speculate as to the precise details of
how each argued claim limitation is taught or suggested by the limited
citations to the teachings of Badeau. Therefore, we would be required to
resort to speculation, unfounded assumptions or hindsight reconstruction.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to
such speculation or assumptions to cure the deficiencies in the factual basis
in order to support the Examiner’s rejection.
While Appellants' arguments are directed primarily to the Summary of
the Invention of Badeau, which was cited by the Examiner and does not
specifically identify how the combination of teachings is lacking in light of
the detailed description (column 9 and 10) of the Badeau reference,
Appellants' argument does evidence that the Examiner has not identified
with particularity the interrelationship of elements of independent claims 1
and 10 during the instant prosecution history. Therefore, we find that the
Examiner has not met the required initial burden in stating in the written
record a prima facie case of obviousness. Therefore, we cannot sustain the
rejection due to the lack of detail set forth therein.
Thus, we conclude that the rejection of claims 1 and 10 lack the
requisite specificity needed for the establishment of a prima facie case of
obviousness. The Examiner bears the initial burden of presenting a prima
facie case of unpatentability (In re Oetiker, 977 F.2d at 1445), and that
burden has not been met in a manner enabling proper review.
In an ex parte appeal, the Board "is basically a board of review — we
review . . . rejections made by patent examiners." Ex parte Gambogi,
62 USPQ2d 1209, 1211 (BPAI 2001). "The review authorized by 35 U.S.C.
Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard
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to examine the application and resolve patentability in the first instance."
Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Here, the Examiner does not identify a teaching or suggestion of the
individual elements taught by Wolrich and Badeau. Because the Examiner
paints with a broad brush in making the obviousness rejection, we are left to
speculate as to the precise details of how each argued claim limitation of
independent claims 1 and 10 are described by the portions of the prior art
references relied on by the Examiner. We note that the Board is a reviewing
body and not a place of initial examination. Moreover, it is our view that the
more rigorous requirements of § 103 essentially require a one-for-one
mapping of each argued limitation to the corresponding portion of the
reference, which the Examiner must identify with particularity. Therefore,
we cannot sustain rejection of independent claims 1 and 10 along with their
respective dependent claims.

Obviousness Type Double Patenting

The Examiner clarified the status of the nonstatutory obviousness-type
double patenting in the paper mailed October 8, 2009 that "Claims 1 and 10
of this application conflict with claims 1, 12, and 13 of Application No.
11/081,833 as indicated in the final rejection."
The final rejection, mailed October 28, 2008, at page 3 states:

Claims 1 and 10 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 12, and 13 of copending
Application No. 11/081,833 (hereafter '833). Although the
conflicting claims are not identical, they are not patentably
distinct from each other because claims 1 and 13 of the '833
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application contain every element of claims 1 and 10 of the
instant application.
This is a provisional obviousness-type double patenting
rejection because the conflicting claims have not in fact been
patented.

Since the patent application upon this rejection has now issued as the US
patent, the rejection is no longer a “provisional” rejection due to express
action by Appellants paying the allowance fee and allowing the application
to pass issue as a US patent.

Since the claims in application serial number 11/081,833 were not
modified subsequent to the rejection and issued as US patent 7,668,896 and
Appellants provided no substantive arguments (Appeal Br. 9-10) in the
Appeal Brief or Reply Brief and Appellants did not file a Terminal
Disclaimer, we pro forma affirm the rejection of claims 1 and 10 on the
grounds of nonstatutory obviousness-type double patenting.

CONCLUSIONS OF LAW
The Examiner erred and did not set forth a prima facie case of
obviousness of claims 1-18.
The Examiner did not err in rejecting claims 1 and 10 under
obviousness type double patenting.

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DECISION
For the above reasons, the Examiner’s rejection of claims 1-18 based
on obviousness is reversed and the Examiner's rejection of claims 1 and 10
based upon obviousness type double patenting is sustained.

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) (2010).

AFFIRMED-IN-PART

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