Ex Parte Rogers

Board of Patent Appeals and Interferences

Dec 16, 2010

10261460 (B.P.A.I. Dec. 16, 2010)

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.
10/261,460 09/23/2002 Paul L. Rogers 100203525-1 1447
7590 12/17/2010
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
RUTZ, JARED IAN
ART UNIT PAPER NUMBER
2187
MAIL DATE DELIVERY MODE
12/17/2010 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 PAUL L. ROGERS
____________

Appeal 2009-009797
Application 10/261,460
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
non final decision rejecting claims 10 and 15-17. Claims 1-9 and 11-14
have been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.
Invention
Appellant describes the invention on appeal as follows:
A computer system has multiple agents sharing a
resource. When a request for access to the shared
resource is denied, a counter is initialized. Each
subsequent transaction for the shared resource is counted.
When the counter reaches a threshold, the priority of the
access request is increased. The threshold may be
programmable. Requests may be sorted into queues, with
each queue having a separately programmable threshold.
Multiple requests from one queue may then be granted
without interruption. In an example embodiment, a cache
memory has multiple queues, and each queue has an
associated counter with a programmable threshold.
(Spec. 11).
Claims on Appeal
For convenience, each claim on appeal is reproduced below:

10. A computer system, comprising:
a shared resource, where access to the shared resource is
granted to a particular type of transaction having an access
priority, and then the access priority is increased to facilitate
additional accesses for transactions of the particular type.

15. A computer system, comprising:
a shared resource;

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means for increasing an access priority, for a first type of
transaction, for access to a shared resource, when transactions
by the shared resource reach a predetermined number; and

means for maintaining an increased access priority for
the first type of transaction until a second type of transaction is
granted access to the shared resource.

16. A method, comprising:

requesting, by a first type of transaction, access to a
shared resource; and
increasing, for the first type of transaction, an access
priority, when access the shared resource is granted to the first
type of transaction.

17. The method of claim 16, further comprising:
maintaining the increased access priority for the first type of
transaction until access to the shared resource is granted to a
type of transaction other than the first type.
(emphasis added).

PRIOR ART

Turner US 6,505,229 B1 Jan. 7, 2003
Ennis US 6,728,790 B2 Apr. 27, 2004

Appellant appeals the following rejections:
Claims 10, 16, and 17 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Turner.
Claim 15 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Ennis.

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

1. Under § 102, did the Examiner err in finding that Turner
discloses:
a shared resource, where access to the shared resource is
granted to a particular type of transaction having an access
priority, and then the access priority is increased to facilitate
additional accesses for transactions of the particular type?
(Claim 10)(emphasis added).

requesting, by a first type of transaction, access to a
shared resource; and
increasing, for the first type of transaction, an access
priority, when access the shared resource is granted to the first
type of transaction.
(Claim 16)(emphasis added).

maintaining the increased access priority for the first
type of transaction until access to the shared resource is
granted to a type of transaction other than the first type.
(Claim 17)(emphasis added).

2. Under § 102, did the Examiner err in finding that Ennis
discloses:
means for maintaining an increased access priority for
the first type of transaction until a second type of transaction is
granted access to the shared resource.
(Claim 15)(emphasis added).

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PRINCIPLES OF LAW
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and non final Office
Action, with respect to the limitations at issue, as our own. (Ans. 3 et seq.).

ANALYSIS
Based upon our review of the record, we find Appellant’s arguments
unconvincing that the Examiner has erred, for the reasons discussed infra.
Independent claim 10
Regarding claim 10, Appellant presents the following contentions:
Regarding claim 10 and Turner el al., the examiner
states that the increase in priority of Thread A at time t11
is an increase in priority after gaining access. The
examiner is ignoring what happens between time t9 and
t11. Claim 10 specifies a chain of events - when access is
granted then priority is increased. The examiner is citing
a different chain of events - when access is granted, then
priority is decreased, and then at some later time priority
is returned to the level at which access was granted.
(App. Br. 4, ¶ 3).
The Examiner disagrees. The Examiner responds as follows:
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The claim states "access ... is granted ..., and then the
access priority is increased". This simply requires that a
priority elevation occur after the grant of access. There is
no language in the claim requiring the two steps not be
separated by other elements or steps. Neither is the
value of the access priority required to be fixed between
the granting and increasing steps.
Further, the purpose of the priority elevation in the
claim and in the prior art is identical. In the claim at
issue, the priority elevation "facilitate[s] additional
accesses for transactions of the particular type".
Similarly, in Turner, the priority increases at t11 and t12
allow further accesses by Thread A.
(Ans. 6, ¶¶ 4-5).

Based upon our review of the record, we find the Examiner presents
the stronger argument. We conclude that a broad but reasonable
interpretation of claim 10 does not preclude the Examiner’s reading of the
claim on Turner. (Id.). In particular, we conclude that the broad language of
claim 10 merely requires two events to occur with the second event
occurring at any subsequent time after the first event, as follows: (1) where
access to the shared resource is granted to a particular type of transaction
having an access priority, and (2) then the access priority is increased to
facilitate additional accesses for transactions of the particular type.
Thus, we agree with the Examiner that claim 10 merely “requires that
a priority elevation occur after the grant of access. There is no language in
the claim requiring the two steps not be separated by other elements or steps.
Neither is the value of the access priority required to be fixed between the
granting and increasing steps.” (Ans. 6, ¶ 4).
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Moreover, we find Appellant’s argument that “[c]laim 10 specifies a
chain of events - when access is granted then priority is increased” is not
commensurate with the language of claim 10 which is silent regarding the
argued limitation of “when.” (App. Br. 4, ¶ 3) (emphasis added). We also
find that the disputed limitations of claim 10 are met by Turner’s depiction
of granting access to Thread A at time t8 (as pointed out by the Examiner,
Ans. 3) and then increasing the access priority of Thread A to the highest
(execution ) priority at time t9, where Thread A has full access to the shared
resource (processor) until time t10. (See Turner Fig. 3b). For these reasons,
we find no reversible error regarding the Examiner § 102 rejection of claim
10 over Turner.

Independent claim 16

We also find unpersuasive Appellant’s arguments regarding claim 16:

Claims 10 and 16 specify a specific sequence of
events. Claims 10 and 16 specify that when access is
granted to a particular type of transaction, then the access
priority for that particular type is increased. In the
example of figure 4, the priority of a write request is 8,
which is raised to 4 as an urgent write request, and when
access is gained, then the priority is raised to 2. That is,
when access is granted, priority is 4, and then the priority
is raised even higher than what it was at the time priority
was granted.
. . .
Claims 10 and 16 also specify an increase in
priority above the priority at which access was granted.
(App. Br. 4, ¶¶ 1, 4).

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We find Appellant references Turner’s Figure 4 (App. Br. 4, ¶ 1)
without traversing the Examiner’s specific findings regarding claim 16 and
Turner’s thread B as shown in Fig. 3 (Ans. 3). Based upon our review of the
evidence, we agree with and adopt the Examiner’s findings, as follows:
Turner teaches:
requesting, by a first type of transaction (i.e., thread B,
Fig. 3), access to a shared resource (thread request access
to processor 80, Fig. 3); and when access to the shared
resource is granted to the first type of transaction,
increasing an access priority for the first type of
transaction (see Fig. 3; when thread B is granted access
to the processor at time t10, it must have the highest
priority of any job in the queue).
(Ans. 3).
Therefore, we find no reversible error regarding the Examiner § 102
rejection of claim 16 over Turner.

Dependent claim 17
Regarding claim 17, Appellant presents the following contentions:

Claim 17, dependent on claim 16, further specifies
maintaining the increased access priority for the first type
of transaction until access to the shared resource is
granted to a type of transaction other than the first type.
The combination of claims 16 and 17 specifies a first
access priority at which access is granted, then when
access is granted the access priority is increased above
the level at which access was granted, and then that
increased priority is maintained until access is granted to
a different transaction type. In Turner et al.,
when access is granted, then the access priority is
decreased. It is not increased and then maintained at the
increased level.
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(App. Br. 5).

On this record, we disagree with Appellant. Based upon our review of
Turner, we find the disputed limitations of claim 17 are fully met as
described by the Examiner in the Answer, where the shared resource (thread
B request access to processor 80, Fig. 3) is maintained until access to the
processor (shared resource) is granted to thread C at time t11 (Turner, Fig.
3b):
Maintaining the increased access priority for the first
type of transaction until access to the shared resource is
granted to a type of transaction other than the
first type (while thread B is executing, it has the highest
priority. When, at time t11, the access to the processor is
granted to thread C, the priority of thread B is
decreased to the lowest priority as it is suspended).
(Ans. 4).

Therefore, we find no reversible error regarding the Examiner § 102
rejection of claim 17 over Turner.

Independent claim 15
Regarding claim 15 (rejected under §102 over Ennis), Appellant
presents the following contentions:

Claim 15 specifies means for maintaining an
increased access priority for the first type of transaction
until a second type of transaction is granted access to the
shared resource. In Ennis, when a starvation counter
reaches a threshold, then priority is increased, but Ennis
is silent regarding priority after access is granted.
Regarding Ennis and maintaining an increased access
priority, the examiner argues: " ... the granted transaction
queue has the highest priority until the next arbitration
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cycle, when the round robin arbitration policy will raise
the priority of a different type of transaction in order to
maintain a fair arbitration policy". If after every access
by a first type of transaction, then some other type of
transaction is granted access, then by definition the
increased access priority for the first type of transaction
is not maintained. However, it is not clear in Ennis
whether that is true or not true. Ennis says nothing
regarding the relative priority of a transaction once it has
been granted access. Ennis describes a system to avoid
starvation, but is silent about maintaining any ongoing
priority once a starved channel has been granted access.
(App. Br. 5).

The Examiner disagrees. (Ans. 7). The Examiner contends that the
limitation in dispute is inherently disclosed by Ennis:
Each grant of access is inherently an increase in priority;
further, an external priority may be set (Col. 12, lines 59-
62) which allows a type of transaction to be granted
access. This grant of access is inherently maintained until
a different type of transaction is granted access and the
first type is disallowed access.
Multiple types of transaction may not be simultaneously
granted access; that is the reason for the arbitration
scheme and the system of 450, Fig. 6.
(Ans. 7) (emphasis added).

We note that “a prima facie case of anticipation [may be] based on
inherency.” In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a
prima facie case of anticipation has been established, the burden shifts to the
Appellant to prove that the prior art product does not necessarily or
inherently possess the characteristics of the claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
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or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”). See also In re Spada, 911 F.2d
705, 708-09 (Fed. Cir. 1990).
Here, Appellant has not responded to the Examiner’s findings
regarding inherent anticipation in the Reply Brief to prove that the prior art
product does not necessarily or inherently possess the characteristics of the
claimed invention. Arguments which Appellant could have made but chose
not to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we find no reversible
error regarding the Examiner § 102 rejection of independent claim 15 over
Ennis.

CONCLUSION
On this record, we find no reversible error in the Examiner’s finding
of anticipation. Therefore, we sustain the Examiner’s anticipation rejections
of claims 10, 15, 16, and 17.
DECISION
We affirm the Examiner’s § 102 rejections of claims 10, 15, 16, and
17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED
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pgc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400