Ex Parte Panesar et al

Patent Trial and Appeal Board

Jul 8, 2013

11025126 (P.T.A.B. Jul. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/025,126 12/29/2004 Kiran S. Panesar P18934 3903
94221 7590 07/09/2013
Buckley, Maschoff & Talwalkar LLC/
Intel Corporation
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
RICHER, JONI
ART UNIT PAPER NUMBER
2677
MAIL DATE DELIVERY MODE
07/09/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIRAN S. PANESAR and MICHAEL A. GOLDSMITH
____________

Appeal 2011-002962
Application 11/025,126
Technology Center 2600
____________

Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention generally relates to a single-step translation of a
graphics memory address of a virtual machine to a physical memory address
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Application 11/025,126

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of the host machine. See generally Spec. ¶¶ 0003, 0004, 0038, 0049, 0050.
Claim 1 is illustrative (with disputed limitation in italics):
1. A method comprising:
receiving a request for a virtual guest graphics memory address
(Pa) of a virtual guest machine for an input/output (I/O) device
assigned to the virtual machine in a system that supports
virtualization; and
installing in a graphics memory translation table, in response to
the request for the virtual guest graphics memory address (Pa), a
virtual guest graphics memory address (Pa) to host physical memory
address (Ph) translation entry to provide a single step virtual guest
graphics memory address to host physical memory address
translation.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bullions US 4,456,954 June 26, 1984
Santos US 5,933,158 Aug. 3, 1999
Sethi US 6,370,633 B2 Apr. 9, 2002
Kjos US 6,895,491 B2 May 17, 2005
(filed Sept. 26,
2002)
Ito US 7,243,208 B2 July 10, 2007
(filed Aug. 13,
2003)

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THE REJECTIONS
1. Claims 1-5, 9, 11, 12, 14, 16-22, and 26-28 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sethi and Kjos. Ans. 4-10.1
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sethi, Kjos, and Bullions. Ans. 10.
3. Claims 7 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sethi, Kjos, and Ito. Ans. 11.
4. Claims 8, 10, 15, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sethi, Kjos, and Santos. Ans. 11-12.
5. Claims 13 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sethi, Kjos, Bullions, and Santos. Ans. 13.

THE OBVIOUSNESS REJECTION OVER SETHI AND KJOS
The Examiner finds that Sethi discloses every recited element of
representative claim 1 except for a virtual guest memory address of a virtual
guest machine for an input/output (“I/O”) device assigned to the virtual
machine, but cites Kjos as teaching this feature in concluding that the claim
would have been obvious. Ans. 4-6.
Appellants argue that (1) Sethi does not teach or suggest
virtualization; and (2) Kjos does not teach or suggest a “virtual guest
graphics memory address (Pa).” App. Br. 8-11. Appellants add that the
combination of Sethi and Kjos would result in a two-step, not a single-step,
translation. Reply Br. 2.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed July 12,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed Sept. 30, 2010
(“Ans.”); and (3) the Reply Brief filed Nov. 29, 2010 (“Reply Br.”).
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ISSUE
Under § 103, has the Examiner erred by finding that Sethi and Kjos
collectively would have taught or suggested “a virtual guest graphics
memory address (Pa) of a virtual guest machine for an input/output (I/O)
device assigned to the virtual machine in a system that supports
virtualization”?

ANALYSIS
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1.
We are not persuaded by Appellants’ argument that Sethi does not
teach or suggest virtualization. App. Br. 8-9. The Examiner relies upon
Kjos, not Sethi, for virtualization. Ans. 5. As the Examiner correctly points
out, one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. Ans. 14
(citing In re Keller, 642 F.2d 413, 426 (CCPA 1981)).
We also are not persuaded by Appellants’ argument that Kjos does not
teach or suggest a “virtual guest graphics memory address (Pa).” App. Br.
9-10. The Examiner does not rely solely on Kjos for the “virtual guest
graphics memory address (Pa).” The Examiner relies upon Sethi, not Kjos,
for the “guest graphics memory address.” Ans. 5. The Examiner relies upon
Kjos only for the “virtual” aspect of the virtual guest graphics memory
address. Ans. 5. (“So, guest graphics memory address of Sethi … can be
modified so it is virtual guest graphics memory address (Pa) of a virtual
guest machine, as suggested by Kjos.”). Id. As the Examiner correctly
points out, one cannot show nonobviousness by attacking references
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individually where the rejections are based on combinations of references.
Ans. 15-16 (citing In re Keller, 642 F.2d at 426). Moreover, we disagree
with Appellants’ arguments that Kjos fails not only to disclose the recited
virtual guest graphics memory address, but also to disclose any input/output
(I/O) device having a local memory assigned to the virtual machine. App.
Br. 10. Figure 16 of Kjos explicitly discloses a “Simulated Mem-mapped
I/O Space” in the Guest Physical Address Space of a guest operating system.
Kjos Fig. 16, 13:44-59. As a result, we are not persuaded of error in the
Examiner’s finding that Sethi and Kjos collectively teach or suggest the
recited “virtual guest graphics memory address (Pa).”
Finally, Appellants argue in their Reply Brief that the combination of
Sethi and Kjos would result in a two-step, not a “single step,” translation
from virtual guest graphics memory address to host physical memory
address, and argue that the Examiner has failed to explain why a two-step
translation would not result. Reply Br. 2. However, Appellants did not
argue in their Appeal Brief that the combination of Sethi and Kjos would
result in a two-step combination, and the argument in their Reply Brief is not
in response to a new issue raised by the Examiner in the Answer. We,
therefore, find this new argument unavailing.2 “[I]t is inappropriate for
appellants to discuss in their reply brief matters not raised in . . . the
principal brief[ ]. Reply briefs are to be used to reply to matter[s] raised in
the brief of the appellee.” Kaufman Company, Inc. v. Lantech, Inc., 807
F.2d 970, 973 n.* (Fed. Cir. 1986). “Considering an argument advanced for

2 In the event of further prosecution, we leave it to the Examiner to evaluate
whether the recited “single step” in claim 1 modifies “virtual guest graphics
memory address” or, as Appellants maintain, “translation.”
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the first time in a reply brief . . . is not only unfair to an appellee . . . but also
entails the risk of an improvident or ill-advised opinion on the legal issues
tendered.” McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211
(D.C. Cir. 1986) (internal citations omitted).
There are cogent reasons for not permitting an appellant
to raise issues or arguments in a reply brief. Among them are
the unfairness to the appellee who does not have an opportunity
to respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant’s late-blooming
argument, would run the risk ‘of an improvident or ill-advised
opinion, given [the court’s] dependence . . . on the adversarial
process for sharpening the issues for decision.’” Headrick [v.
Rockwell Int’l Corp.], 24 F.3d [1272,] 1278 [(10th Cir. 1994)],
(quoting Herbert v. Nat’l Academy of Sciences, 974 F.2d 192,
196 (D.C. Cir. 1992)).

Carbino v. West, 168 F.3d 32, 34-35 (Fed. Cir. 1999).
We, therefore, sustain the Examiner’s rejection of (1) independent
claim 1; (2) independent claims 16 and 26 which recite commensurate
limitations; and (3) dependent claims 2-5, 9, 11, 12, 14, 17-22, 27, and 28
not separately argued with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 6-8,
10, 13, 15, and 23-25. Ans. 10-13. In response to those rejections,
Appellants refer to the arguments made in connection with claim 1, and
allege that the additional cited references fail to cure those purported
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deficiencies. App. Br. 11. We are not persuaded by these arguments,
however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-28 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-28 is affirmed.
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

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