Ex Parte Moyer

Board of Patent Appeals and Interferences

Jan 20, 2010

10944310 (B.P.A.I. Jan. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM C. MOYER
____________

Appeal 2009-002154
Application 10/944,310
Technology Center 2100
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Decided: January 20, 2010
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The Appellant invented a method and system for forming an
immediate value/operand by a processor that uses one field to determine the
positional location of the portion of the immediate value within the
immediate value and one field of fill bit to fill the remainder of the
immediate value (Spec. 8-9).
The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. In a data processing system, a method of
forming an immediate value comprising:

receiving a data processing instruction at an input of a
processor;

the processor using a first field of the same data
processing instruction as a portion of the immediate
value;

the processor using a second field of the same data
processing instruction to determine a positional location
of the portion of the immediate value within the
immediate value; and

the processor using a bit value in a third field of the same
data processing instruction to determine a remainder of
the immediate value.

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The References
The Examiner relied upon the following prior art as evidence in
support of rejections:
Kubota US 6,308,258 B1 Oct. 23, 2001
Kyker US 2003/0101209 A1 May. 29, 2003

The Rejections
The following rejections are before us for review:
Claims 1-5 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kubota and Kyker.

II. ISSUES
Has the Appellant shown that the Examiner erred in determining the
method recited in claim 1 is not patent-eligible subject matter under 35
U.S.C § 101?
Has the Appellant shown that the Examiner erred in finding that the
combination of Kubota and Kyker discloses “the processor using a second
field of the same data processing instruction to determine a positional
location of the portion of the immediate value within the immediate value,”
as recited in the independent claim 1?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
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application under 35 U.S.C. §§ 102 and 103. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)). Appellant has the opportunity on appeal to the Board of
Patent Appeals and Interferences to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
35 U.S.C. § 101
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

35 U.S.C. § 101.
The Court in [Diamond v. Diehr, 450 U.S. 175 (1981)] thus
drew a distinction between those claims that “seek to pre-empt
the use of” a fundamental principle, on the one hand, and
claims that seek only to foreclose others from using a particular
“application ” of that fundamental principle, on the other.
Patents, by definition, grant the power to exclude others from
practicing that which the patent claims. Diehr can be
understood to suggest that whether a claim is drawn only to a
fundamental principle is essentially an inquiry into the scope of
that exclusion; i.e., whether the effect of allowing the claim
would be to allow the patentee to pre-empt substantially all uses
of that fundamental principle. If so, the claim is not drawn to
patent-eligible subject matter.

In re Bilski, 545 F.3d 943, 953 (Fed. Cir. 2008) (internal citation omitted).
The Supreme Court . . . has enunciated a definitive test to
determine whether a process claim is tailored narrowly enough
to encompass only a particular application of a fundamental
principle rather than to pre-empt the principle itself. A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a
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particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing.

Id. at 954 (citation omitted).
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. Certain
considerations are applicable to analysis under either branch . . .
. First, . . . the use of a specific machine or transformation of an
article must impose meaningful limits on the claim’s scope to
impart patent-eligibility. Second, the involvement of the
machine or transformation in the claimed process must not
merely be insignificant extra-solution activity.

Id. at 961-62 (internal citations omitted).
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

IV. FINDINGS OF FACT
1. Claim 1, illustrated supra, recites a process or method having a
plurality of steps by utilizing a processor to form an immediate
value/operand with 32 bit (Abstract; Spec. 8; Figs. 6-7). When the processor
receives a data processing instruction, the processor (inherently under
program control) determines a field of the instruction being a portion of the
immediate value, a file of the instruction being a positional location of the
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portion of the immediate value, and a field of the instruction being a fill bit
of a remainder of the immediate value (Spec. 8-9).
2. Kubota discloses that a class field (212, 222, 262, or 292),
which is used for specifying a group to which this instruction belongs, and
usually an extension instruction (Kubota, col. 13, ll. 23-67; col. 15, ll. 34-56;
col. 18, l. 20-col. 19, l. 49; Figs. 7A-13C).
3. Kubota also discloses a “d”-bit region 296 in a type-3
instruction. The d-bit calls a PC-relative subroutine for shifting the 8-bit
immediate data (imm8) stored in the immediate data region 298 to one bit
left to form a 9-bit immediate data (Kubota, col. 18, ll. 20-43; Figs. 12).
4. Kyker discloses the opcode used in the instruction for sign
extension, sharing, back-scavenging, or forward-scavenging (Fig. 3, [0031]).
5. Kyker also discloses that the sign extension/compression field
in the instruction can be used for compressing the immediate value/operand
to certain bits while executing the instruction ([0034]-[0037], Figs. 4a-4b).

V. ANALYSIS
“[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. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner set forth a detailed explanation of a prima facie case of
unpatentability in the Examiner’s Answer. Therefore, we look to
Appellant’s Briefs to show error in the proffered prima facie case.

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35 U.S.C. § 101 rejection
With respect to claims 1-5, the Appellant contends that the claimed
subject matter in the claims 1-5 is patentable subject matter under 35 U.S.C.
§ 101 because the rejected method claims 1-5 produce useful, concrete, and
tangible results. (App. Br. 14.)
The Examiner maintains that claims 1-5 are “so broad as to cover any
and all practical applications of any instruction with an immediate operand.
The mere determining of a designated format of a value in an instruction . . .
using bits form the instruction does not provide any specific application”
(Ans. 9); and that the claims 1-5 show “a conversion of data such as
immediate data to another form without any substantial practical application
except in connection with a digital computer would preempt the algorithm
and also for that reason is not statutory.” (Ans. 12.)
We note that both the Appeal Brief and the Answer were filed before
In re Bilski was decided by the Court of Appeals for the Federal Circuit
(“CAFC”). The CAFC held that “the machine-or-transformation test
outlined by the Supreme Court is the proper test to apply.” Bilski, 545 F.3d
at 960. “[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. Id. at 961
(citation omitted); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972).
We start our analysis with the threshold question whether the claim 1
recites a process claim before applying the machine-or-transformation (M/T)
test. We find that claim 1 recites a method for forming an immediate value
through several steps conducted by a processor (FF 1), thus, it is self-evident
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that claim 1 is directed to a process as set forth in 35 U.S.C. § 101, which
can be properly analyzed by applying the M/T test.
We then apply the machine prong of the M/T test. We find that claim
1 recites a processor in each of the steps of the claimed process which
imposed a meaningful limitation to the scope of claim 1 to process the
received data processing instruction. Thus, we conclude that claim 1 is “tied
to” a machine, i.e., a processor. We next decide whether the processor
processes the data processing instruction claimed in claim 1 is a “particular
machine” within the meaning of the M/T test.
Our reviewing court provided guidelines that can be appropriately
applied to this case that “[w]e have held that such programming creates a
new machine, because a general purpose computer in effect becomes a
special purpose computer once it is programmed to perform particular
functions pursuant to instructions from program software.” In re Alappat,
33 F.3d 1526, 1549 (Fed. Cir. 1994) (citation omitted), abrogated by Bilski,
545 F.3d 943 (regarding the “useful, concrete, and tangible result” test
originally set forth in Alappat at 1544).
Here, the processor recited in claim 1 is programmed to process data
processing instructions in a particular way, i.e., forming an immediate
value/operand of 32 bits with only one instruction (FF 1). Therefore, we
conclude that the processor claimed in claim 1 is a “particular machine”
within the meaning of the M/T test. Accordingly, we conclude that claim 1
satisfies the machine prong of the M/T test. 1

1 We do not need to go through the transformation prong of the M/T test
after the machine prong of M/T test is passed.
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Furthermore, in Benson, the Court held that claims of a
process/method involving a mathematical formula for converting binary-
coded-decimal (BCD) numbers into pure binary numbers by utilizing a
general computer were not patent-eligible under 35 U.S.C. § 101. The court
stated:
What we come down to in a nutshell is the following.
It is conceded that one may not patent an idea. But in practical
effect that would be the result if the formula for converting
[binary code] to pure binary numerals were patented in this case.
The mathematical formula involved here has no substantial
practical application except in connection with a digital
computer, which means that if the judgment below is affirmed,
the patent would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm itself.
Benson, 409 U.S. at 71-72.
In contrast to Benson, the present claimed process of the instant
invention for processing a data processing instruction by a processor is not
an abstract idea because the claimed process has real world use (to form a 32
bit immediate value/operand with only one instruction) and is practical in the
computer field. In addition, the claimed process is neither a mathematical
formula nor a mathematical algorithm. The claimed process, if allowed,
would not patent an abstract idea or pre-empt any other uses of the
mathematical formula, but rather give a limited monopoly of the claimed
process to the Appellant. Indeed, claim 1 as written is not “so abstract and
sweeping” that it would “wholly pre-empt” the use of any apparatus
employing the claimed process recited therein. Benson, 409 U.S. at 71-72.
Rather, claim 1 is limited to the use of a particular claimed combination of
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elements performing particular claimed data processing to form an
immediate value/operand through a portion of the immediate value in
processing a data processing instruction by a processor in a computer (FF 1).
For the foregoing reasons, we cannot sustain the rejection of claim 1
under 35 U.S.C. § 101.
35 U.S.C. § 103(a) Rejections
With respect to claims 1, 6, and 11, the Appellant contends that
“[c]learly, the field 212, and other class fields, cited and relied by the
Examiner as equivalent to the recited ‘second field’ does not ‘determine a
positional location of the portion of the immediate value within the
immediate value’” (App. Br. 15), and that “[t]he Kyker patent instruction
formats also do not have the recited second field ‘of the same data
processing instruction to determine a positional location of the portion of the
immediate value within the immediate value.’” (App. Br. 16).
The Examiner maintains that the claim language would have been
obvious over the combination of Kubota and Kyker because “the scope of
the limitation concerning the second field merely provide that the second
field is used to determine the positional location of the portion of the
immediate value in the immediate value.” (Ans. 18). Additionally, the
Examiner states:
Note that that without the ext instruction the data portion of an
immediate data only comprises bits zero to five, but with the
use of an ext instruction the expanded instruction comprises
immediate data from bits zero to eighteen (e.g., see col. 15,
lines 1-15). Therefore, the class field with or without another
operation field is used to determine the positional location of
data portion of an immediate value. As further showing that the
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class field is used to determine a positional location of the
immediate data is shown in figs. 13B where the immediate
value is at a position not justified to right or left of the
immediate value but determined by the operation of the ext
instruction and the class or type of ext instruction. As
understood the ext instructions are of various types for
performing a specific extension needed for a subsequent target
instruction.
(Ans. 17, emphasis added.)
As shown in the discussion of the Kubota and Kyker teaching
above the portion of the immediate value is stored in different
positions in the immediate value depending on the value of the
class field in the ext instruction of Kubota and the Control field
of Kyker. The inclusion of the control field of Kyker allows an
instruction to be compressed into fewer bit by compressing the
immediate data field with the format indicated by the control
field so that when the instruction indicated by the opcode is
executed the control field is used to expand the immediate data
to perform the operation on expanded data. For immediate
values that can be expressed in fewer than the number of bits of
the immediate field, the control field indicates for an instruction,
and is used to determine, which positions in the expanded
version of the immediate value contain the portion of the
immediate value and which are fill bits of the immediate value
taught by Kyker (e.g., see paragraphs 0036-0037].
(Id. at 22, emphasis added.)
We disagree with the Examiner’s reading of the references. We find
Kubota teaches that the class field is used to specify what type of the
instruction is, e.g., the class field 212 identifies that the instruction being
executed is an extension instruction (FF 1). Thus, the class field used in
Kubota is not used “to determine a positional location of the portion
of the immediate value within the immediate value” as required in
independent claims. We also find Kubota teaches that a d-bit region in the
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instruction is used to shift a portion of the immediate value one bit left
regardless of where the portion of the immediate value is (FF 2). We thus
find that the d-bit is also not used “to determine a positional location of the
portion of the immediate value within the immediate value” as required in
independent claims.
We further find that Kyker is relied upon by the Examiner only for the
extension of the immediate value (Ans. 5-6, FF 4). We also further find that
the sign extension field in the instruction of Kyker is only used for either
extending the portion of the immediate value/operand or compressing the
portion of the immediate value/operand to certain bits, e.g. 16 bits (FF 5).
Neither the extension nor the compression of the portion of the immediate
value/operand is required to determine the positional location of the portion
of the immediate value/operand (FF 5). The Examiner has not shown, and
we do not readily find that the combination of Kubota and Kyker teaches or
would have reasonably suggested the argued limitations. We, therefore,
conclude the positions of the Examiner are untenable.
Because we agree with at least one of the Appellant’s contentions, we
cannot sustain the obviousness rejection of claims 1, 6, and 11.
The rejection of dependent claims 2-5, 7-9, and 12-15 contains the
same deficiencies. Accordingly, we cannot sustain the obviousness rejection
of claims 1-15.
VI. CONCLUSION
We conclude that the Appellant has shown that the Examiner erred in
determining the method recited in claim 1 is not patent-eligible subject
matter under 35 U.S.C § 101.
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We also conclude that the Appellant has shown that the Examiner
erred in finding that the combination of Kubota and Kyker discloses “the
processor using a second field of the same data processing instruction to
determine a positional location of the portion of the immediate value within
the immediate value,” as recited in the independent claim 1.

VII. DECISION

We reverse the Examiner’s § 101 rejection of claims 1-5 and we
reverse the Examiner’s obviousness rejection of claims 1-15.

REVERSED

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