Ex Parte Seal et al

Board of Patent Appeals and Interferences

Mar 11, 2010

10781883 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID JAMES SEAL and EDWARD COLLES NEVILL
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Appeal 2009-005737
Application 10/781,883
Technology Center 2100
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Decided: March 11, 2010
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
STEPHEN C. SIU, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-33. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on February 4, 2010.

Appeal 2009-005737
Application 10/781,883

2
INVENTION
The Appellants describe the invention at issue on appeal as follows.
A data processing system supporting multiple instruction sets
allows considerable flexibility in the way in which program
operations may be represented, and that flexibility can yield
improved code density. But the typical trade-off is increased
hardware to support the multiple instruction sets. The
[Appellants] overcame this problem by arranging the encoding
of the instruction sets such that a common subset of instructions
has the same encoding, after variations due to storage order, e.g.
endianness, have been compensated for. As a result, the data
processing system implementation can be advantageously
simplified by using a common decoding logic which reduces
the hardware needed.
(Appeal Br. 2.)

ILLUSTRATIVE CLAIM
23. A computer program product embodied in a storage
medium for storing a computer program operable to control a
data processing apparatus containing data processing logic
operable to perform data processing operations, said computer
program comprising:
program instructions of a first instruction set and
program instructions of a second instruction set, that control
said data processing logic to perform said data processing
operations; wherein
a subset of program instructions of said first instruction
set have a common storage order compensated encoding with a
subset of program instructions of said second instruction set and
form a common subset of instructions representing at least one
class of instructions, said common subset of instructions
controlling data processing logic to perform the same data
processing operations independent of whether instructions of
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said first instruction set or of said second instruction set are
being decoded.
PRIOR ART
McFarland US 5,781,753 Jul. 14, 1998
Qureshi US 2004/0030856 A1 Feb. 12, 2004

REJECTIONS
Claims 1-6, 8-17, 19-28, and 30-33 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Qureshi.

Claims 7, 18, and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Qureshi and McFarland.

ISSUE
The Examiner concludes that "the broadest reasonable interpretation
is that the first and second instruction sets could . . . be the same" (Answer
15) and "that the claims must not only encompass the possibility of the
subsets being different, but that it also encompasses the possibility that they
are the same." (Id. at 16.) The Appellants argue that "Qureshi does not
disclose the claimed common subset of instructions formed by a subset of
program instructions from the first instruction set and the subset of program
instructions from the second instruction set." (App. Br. 14.) Therefore, the
issue before us is whether the Appellants have shown error in the Examiner's
finding that Quershi discloses a common subset of instructions formed by a
subset of program instructions from a first set of instructions and a subset of
program instructions from a second set of instructions.
Appeal 2009-005737
Application 10/781,883

4
LAW
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Furthermore, "[t]o
establish inherency, the extrinsic evidence 'must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.'"
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
"Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (citing
Hansgirg v. Kemmer, 102 F.2d 212, 214 (1939)).

FINDINGS OF FACT
Qureshi "allows for [a] system event register present in a processor, or
other location of memory, to be accessed as either big or little endian
registers depending on an operating system (OS) accessible bit for endian
selection." (¶ [0004].) More specifically, an "endian selection register
contains a flag to indicate in which mode (big or little endian) to operate."
(¶ [0005].)

Appeal 2009-005737
Application 10/781,883

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ANALYSIS
It is uncontested that Qureshi mentions neither instructions nor
instruction decoding. We agree with the Examiner, however, that "because
Qureshi functions, and functions in both [endian] modes, the conclusion
must be that Qureshi [inherently] teaches an instruction decoder, to decode
program instructions, and operable in both the disclosed modes in Qureshi."
(Answer 14.) Such reasoning, however, only necessitates a single set of
instructions. It does not necessitate a second set of instructions as claimed.
Furthermore, we agree with the Appellants that Qureshi's "storing data in
one format or another format has nothing to do with decoder modes in which
program instructions from a first instruction set and a second instruction set
are decoded by the same decoder." (Appeal Br. 10.) "[T]he big endian and
little endian modes are simply different ways of storing data in a register."
(Id.)

We further agree with them that "Qureshi does not describe any subset
of program instructions—let alone the claimed first and second subsets."
(Id. at 13.) Regarding the Examiner's aforementioned interpretation that the
subset of subset of instructions from a first set of instructions, the subset of
program instructions from a second set of instructions, and the common
subset formed from these two subsets are all the same, we agree with the
Appellants that "if every instruction in the first and second instruction sets
was part of the common subset of program instructions, then the first and
second instruction sets would be the same instruction set" (Appeal Br. 13),
thus emphasizing that only a single set of instructions is necessarily present
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in Qureshi. The Examiner does not allege, let alone show, that the addition
of McFarland cures the aforementioned deficiency of Qureshi.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that Quershi
discloses a common subset of instructions formed by a subset of program
instructions from a first set of instructions and a subset of program
instructions from a second set of instructions.

DECISION
We reverse the rejection of claims 1-33.

REVERSED

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