Ex Parte Schoinas et al

Board of Patent Appeals and Interferences

Dec 29, 2011

10957306 (B.P.A.I. Dec. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOANNIS SCHOINAS, GILBERT NEIGER, RAJESH
MADUKKARUMUKUMANA, KU-JEI KING, RICHARD UHLIG,
ACHMED RUMI ZAHIR, and KOICHI YAMADA
____________________

Appeal 2009-008300
Application 10/957,306
Technology Center 2100
____________________

Before: JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-13, 15-23, and 25-30. Claims 4, 14, and 24 were cancelled
during prosecution and claims 31-40 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to the field of microprocessors. More
particularly, the invention on appeal is directed to input/output (I/O)
virtualization. (Spec. 1).
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
An apparatus comprising:

a register to store capability indicators to indicate capability
supported by a circuit in a chipset for address translation of a guest
physical address to a host physical address; and

a plurality of multi-level page tables for page walking in the
address translation, each of the page tables having page table entries,
each of the page table entries having at least an entry specifier
corresponding to the capability indicated by the capability indicators.

Prior Art
Barham et al. "Xen and the Art of Virtualization" In Proceedings of
the ACM Symposium on Operating Systems Principles, 2003. pp 164-177

Kessler, US Pat. 6,715,057 B1

Intel. "IA-32 Intel Architecture Software Developer's Manual".
Volume 1: Basic Architecture. Intel Corporation. 2002. sections 1.1, 3.1, 3.2

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Rejections
1. Claims 1-3, 10-13, 20-23, and 30 stand rejected under 35 U.S.C.
§102(a) as being anticipated by Barham.

2. Claims 5-9, 15-19, and 25-29 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over the combination of Barham and Kessler
(U.S. Pat. 6,715,057).
ANALYSIS
Anticipation rejection
Appellants argue claims 1-3, 10-13, and 20-23 as a group. (App. Br.
7-8). We select representative claim 1 to decide the appeal for this group.
See 37 C.F.R. § 41.37(c)(1)(vii). Appellants present no arguments regarding
dependent claim 30, also rejected under §102. We address claim 30 infra.
Appellants contend that the cited combination of references fails to
teach or suggest “a register to store capability indicators as recited in claims
1, 11, and 21.” (App. Br. 8). In particular, Appellants contend that “[s]ince
the cited passages of Barham merely teach or suggest features of the
hypervisor software[,] it cannot teach or suggest a register to store capability
indicators as recited in claims 1, 11, and 21.” (Id.).
The Examiner disagrees. The Examiner finds that Appellants’
Specification provides no strict definition regarding what a register is. (Ans.
7). The Examiner also finds the disputed register is inherently part of the
Intel Xeon processor disclosed by Barham:
Barham discloses that the Xen virtual machine monitor
was tested on an Intel Xeon processor (section 4, paragraph 6).
When the Xeon architecture executes a program, that
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program's assembly code, program variables and program state
are written, read and stored in various memories. Accordingly,
Barham is interpreted as implying that whatever values are
stored in the running Xen virtual machine monitor as variables,
such as page frame properties, are also inherently stored in a
memory of some sort.
(Ans. 7, emphasis added).

Issue: Claim Construction
We note that “[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although “[s]uch statements often . . . appear in the claim’s preamble,” In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
Here, Appellants’ arguments are premised upon an intended use or
purpose of the recited register (to store capability indicators). As an initial
matter of claim construction, we conclude that Appellants’ claim 1 does not
positively recite that the register actually stores capability indicators.
Thus, Appellants’ claim recites an intended use or purpose of the
register that may never actually occur. We also observe that the disputed
register is a structural element that is part of the apparatus recited in the
preamble of claim 1.
A claim containing a “recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus” if the prior art apparatus
teaches all the structural limitations of the claim. Ex parte Masham, 2
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USPQ2d 1647, 1648 (BPAI 1987). Similarly, while features of an apparatus
may be recited either structurally or functionally, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997). “[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Put simply, how an apparatus invention is used is not germane
to whether it is anticipated by the prior art. Accordingly, if the prior art
structure is capable of performing the intended use, it meets the claim
limitation.
Here, the Examiner found a corresponding register structure is
inherently disclosed in Barham. (Ans. 4). Thus, Appellants’ arguments
which attempt to distinguish the apparatus in terms of function are
ineffective to show Examiner error in the context of anticipation. See
Schreiber, 128 F.3d at 1477-78.
Moreover, regarding the Examiner’s finding of inherent anticipation,
once a prima facie case of anticipation has been established, the burden
shifts to the Appellants 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 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).
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Here, Appellants aver that “the cited passages are merely directed to
virtual machine monitor software.” (App. Br. 8). However, we find
Appellants ignore the Xeon processor1 upon which the virtual machine
monitor software executes, which the Examiner finds inherently stores the
software’s internal variables in a memory [register] of some sort. (Ans. 4, 7-
8). Therefore, on this record, we find Appellants have not met the requisite
burden of proving that the prior art product does not necessarily or
inherently possess the characteristics of the claimed product. See Best, 562
F.2d at 1255.
Even assuming arguendo (without deciding) that the claimed function
of storing capability indicators could actually be performed within the
meaning of representative claim 1, we conclude that the function of storing
is not changed or performed differently according to the particular type of
data that is to be stored in the register. (Claim 1). Nor are the capability
indicators to be stored in the register positively recited as actually being
used to change the operation of the apparatus. We conclude that the content
of such nonfunctional descriptive material is not entitled to weight in the
patentability analysis. 2
We also observe that Appellants have not filed a Reply Brief in
response to the Examiner’s reliance on a dictionary definition to inform the
broadest reasonable interpretation consistent with Appellants’

1 See Barham, Section 4, i.e., the paragraph preceding Section 4.1 (“Xeon
processors.”
2 In a precedential decision, a BPAI expanded panel held that elements that
do not affect the claimed process are non-functional material and are merely
descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008).
(precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.
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Specification. 3 See “Response to Arguments” Ans. 7: The Examiner
interprets a “register” to be defined broadly as “a device (as in a computer)
for storing small amounts of data; especially: one in which data can be both
stored and operated on,” according to Merriam-Webster’s dictionary. Our
reviewing court permits the PTO to use dictionary definitions to enlighten
the broadest reasonable interpretation of a claim term. The Federal Circuit
has held that “dictionary definitions are [] pertinent.” In re Trans Tex.
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Phillips v.
AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc).
For these reasons, we find Appellants’ arguments unpersuasive of
Examiner error. Therefore, we sustain the Examiner’s finding of
anticipation of representative claim 1, and claims 2-3, 10-13, and 20-23
which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Dependent Claim 30
Appellants do not provide any arguments traversing the Examiner’s
rejection of dependent claim 30. Therefore, we consider these arguments
waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When
the appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
On this record, we summarily sustain the Examiner’s anticipation
rejection of claim 30.

3 “Silence implies assent.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 572 (1985).

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Obviousness rejection of claims 5-9, 15-19, and 25-29
Appellants argue claims 5-9, 15-19, and 25-29 as a group. (App. Br.
8). We select representative claim 5 to decide the appeal for this group. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that “[w]hether or not Kessler discloses the
limitations cited by the Office action, it does not teach or suggest a register
to store capability indicators as recited in claims 1, 11, and 21.” (App. Br. 8).
Thus, we observe that Appellants’ argument urging the patentability
of claims 5-9, 15-19, and 25-29 is premised on the secondary Kessler
reference being ineffective to remedy the deficiencies of Barham. However,
we agree with the Examiner’s finding that Barham discloses the claimed
register, for the reasons discussed above regarding claim 1. Because
Appellants’ argument does not persuade us of Examiner error, we sustain the
§103 rejection of representative claim 5, and claims 6-9, 15-19, and 25-29
(not argued separately) which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s § 102 rejection of claims 1-3, 10-13, 20-23,
and 30.
We affirm the Examiner’s § 103 rejection of claims 5-9, 15-19, and
25-29.
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) (2011).

ORDER
AFFIRMED

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