11152993 (B.P.A.I. May. 16, 2011)

Ex Parte Spitzer

Board of Patent Appeals and InterferencesMay 16, 2011

11152993 (B.P.A.I. May. 16, 2011)

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. 11/152,993 06/14/2005 Marc Spitzer ADAPP288 7693 25920 7590 05/16/2011 MARTINE PENILLA & GENCARELLA, LLP 710 LAKEWAY DRIVE SUITE 200 SUNNYVALE, CA 94085 EXAMINER MISIURA, BRIAN THOMAS ART UNIT PAPER NUMBER 2111 MAIL DATE DELIVERY MODE 05/16/2011 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 MARC SPITZER ____________ Appeal 2009-008264 Application 11/152,9931 Technology Center 2100 ____________ Before JAY P. LUCAS, ST. JOHN COURTENAY, III, and CAROLYN D. THOMAS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed June 14, 2005. The real party in interest is Adaptec, Inc. Appeal 2009-008264 Application 11/152,993 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-12 and 18-20, claims 13-17 being indicated as containing allowable subject matter. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. The present invention relates to an apparatus for handling multiple requestors desiring access to a resource. (see Abstract.) Claim 1 is illustrative: 1. A circuit for handling multiple requestors desiring access to a resource, comprising: a plurality of masters; and a plurality of arbitrators, wherein each arbitrator is assigned to different one of the plurality of masters, wherein each arbitrator is defined to consider a different portion of the multiple requestors when selecting a requestor to be serviced by the master to which the arbitrator is assigned, and wherein each arbitrator is further defined to select a requestor from the different portion of the multiple requestors in a same clock cycle such that selection of a particular requestor is not duplicated among the plurality of arbitrators. Appellant appeals the following rejections: 1. Claims 1-9 and 18-20 under 35 U.S.C. § 103(a) as unpatentable over O’Connor (US 7,120,714 B2, Oct. 10, 2006) and Jahnke (US 6,859,852 B2, Feb. 22, 2005); and 2. Claims 10-12 under 35 U.S.C. § 103(a) as unpatentable over O’Connor, Jahnke, and Takata (US 7,051,133 B2, May 23, 2006). Appeal 2009-008264 Application 11/152,993 3 FACTUAL FINDINGS 1. A clock cycle is one oscillation of a computer’s CPU clock, i.e., the time between two adjacent pulses of the oscillator that sets the tempo of the computer processor. Dictionary of Computer and Internet Terms, ninth Edition, page 125 (2006). O’Connor 2. O’Connor discloses that “[a] second-stage arbiter 206 may operate in a second-pipeline stage which follows the first-pipeline stage. First-stage arbiter 202 may operate during a first clock cycle of the pipeline and second- stage arbiter 206 may operate during a second or subsequent clock cycle of the pipeline.” (Col. 4, ll. 7-11.) 3. O’Connor discloses that the “second stage arbiter 206 may arbitrate among the requests that were not granted by first-stage arbiter 202.” (Col. 3, ll. 50-52.) ANALYSIS Our representative claim, claim 1, recites, inter alia, “wherein each arbitrator is further defined to select a requestor . . . in a same clock cycle.” Independent claims 10 and 18 recite commensurate limitations. Thus, the scope of each of the independent claims includes each arbitrator selecting a requestor in the same clock cycle. Issue: Did the Examiner err in finding that O’Connor discloses that each arbitrator . . . select a requestor . . . in a same clock cycle, as set forth in claim 1? Appeal 2009-008264 Application 11/152,993 4 Appellant contends that “the Examiner’s construing of the feature ‘same clock cycle’ to mean ‘same arbitration cycle’ is not appropriate.” (App. Br. 5.) The Examiner concluded that “[t]he limitation ‘in a same clock cycle’ as broadly claimed is interpreted as being that of an arbitration cycle. Therefore, both/all the arbitrators select a different requestor for servicing during an arbitration cycle.” (Ans. 4.) Based upon our review of the record, we find that the weight of the evidence supports the Appellant’s position as articulated in the Brief. We further note that this case is related to Appeal 2009-008263, which has a similar final decision from us. Specifically, this issue turns on whether the claimed “same clock cycle” reads on the Examiner’s interpretation of O’Connor describing an “arbitration cycle.” In other words, the Examiner found that the claimed “same clock cycle” would “include both a single 360 degree transition of any clock within a computer system as well as a repetitive series set of 360 degree clock transitions.” (Ans. 15.) Stated differently, the Examiner appears to asserts that the claimed “same clock cycle” is not necessarily limited to a single 360 degree transition (i.e., time between two adjacent pulses of the oscillator FF 1) but can include a series of clock cycles, e.g., an arbitration cycle. We disagree. Claim 1 literally states each arbitrator uses “a same clock cycle” to select a requestor. We conclude that the clear language of claim 1 requires a single clock cycle which is represented by the time between two adjacent pulses of any oscillator that sets the tempo of the computer processor (FF 1). Appeal 2009-008264 Application 11/152,993 5 Claim 1 does not recite a “clock speed” (i.e., a series of clock cycles per second, or frequency) as suggested by the Examiner. Thus, we conclude the Examiner’s interpretation of the claimed “same clock cycle” as including a series of clock transitions is overly broad and unreasonable, given the express language of claim 1. Based upon our review of the record, the Examiner’s broad construction is inconsistent with the usage of the claim term “same clock cycle” as that term is recited throughout the claim. We note that claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered....”). Here, the claimed “same clock cycle” is used so as to ensure that the selection of a particular requestor is not duplicated. While O’Connor also suggests not duplicating the selection of requestors (see FF 3), O’Connor expressly discloses that the first-stage arbiter operates during a first clock cycle and the second-stage arbiter operates during a second or subsequent clock cycle (FF 2). In other words, O’Connor uses multiple clock cycles, as opposed to the same clock cycle, to initiate selection by each arbitrator. Thus, the Examiner has not shown, and we do not readily find, that O’Connor shows that each arbiter selects a requestor in the same clock cycle. Appeal 2009-008264 Application 11/152,993 6 Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. In re Kahn, 441 F.3d. 977, 985-986 (Fed. Cir. 2006). Here, we find that Appellant has indeed demonstrated error in the Examiner’s position. For reasons noted supra, O’Connor fails to teach or reasonably suggest that each arbitrator selects a requestor in “a same clock cycle.” Furthermore, the Examiner has not alleged or shown that the secondary references Jahnke or Takata make up for this deficiency. Since we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. It follows that Appellant has shown that the Examiner erred in finding that the combination of O’Connor and Jahnke renders representative claim 1 unpatentable. Based on the record before us, we find that the Examiner erred in rejecting representative claim 1. Accordingly, we reverse the rejection of claim 1, as well as claims 2-12, and 18-20 which include commensurate limitations. DECISION We reverse the Examiner’s § 103 rejections. REVERSED ke