Ex Parte Steele

Board of Patent Appeals and Interferences

Sep 13, 2007

10035584 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GUY L. STEELE, JR.
____________________

Appeal 2007-2083
Application 10/035,584
Technology Center 2100
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Decided: September 13, 2007
____________________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
COURTENAY, ST. JOHN, III, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-2083
Application 10/035,584

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-37. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented systems and methods for performing a floating
point remainder operations with embedded status information associated
with the floating point operand. (Specification [02]).
Representative independent claim 1 under appeal reads as follows:
1. A system for providing a floating point remainder, comprising:
an analyzer circuit configured to determine a first status of a
first floating point operand and a second status of a second floating
point operand based upon data within the first floating point operand
and data within the second floating point operand respectively; and
a results circuit coupled to the analyzer circuit and configured
to assert a resulting floating point operand containing the remainder of
the first floating point operand and the second floating point operand
and a resulting status embedded with the resulting floating point
operand.

The Examiner rejected claims 1-37 under 35 U.S.C. § 103(a).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huang US 5,995,991 Nov. 30, 1999
Nakano US 5,065,352 Nov. 12, 1991
Claims 1-37 were also provisionally rejected in the Final Rejection
under the judicially created doctrine of double patenting. The Answer does
not expressly withdraw the rejection, but neither does it repeat it. See Ex
Appeal 2007-2083
Application 10/035,584

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parte Emm, 118 USPQ 180, 181 (Bd. App. 1957) (rejection not referred to in
the examiner’s answer is assumed to have been withdrawn). We conclude
that the double patenting rejection has been withdrawn.
Appellant contends that the claimed subject matter would not have
been obvious. More specifically, Appellant contends Huang fails to disclose
an embedded status because the tag of Huang is separate from the operand,
and Nakano is not relied on by the Examiner to cure this deficiency.
(Br. 8-12).
The Examiner contends that in Huang the “resulting status [is]
embedded . . . within the resulting floating point operand.” (Answer 5:4-5).
We reverse.

ISSUE(S)
Has Appellant shown that the Examiner has failed to establish Huang
and Nakano suggest “a resulting floating point operand containing the
remainder of the first floating point operand and the second floating point
operand and a resulting status embedded within the resulting floating point
operand” as required by claim 1?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. The prior art Huang patent describes that “If the generation of
the result produces one of a predetermined set of special operands, a tag
generator also generates a tag having a predetermined tag value
corresponding to the produced special operand.” (Col. 5, ll. 43-46).
Appeal 2007-2083
Application 10/035,584

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2. The prior art Huang patent describes that the “each of the
registers 116 and 118 has an operand value storage portion 116-1 and 118-1
and a tag value storage portion 116-2 and 118-2.” (Col. 6, l. 66 through
col. 7, l. 2).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR., 127 S. Ct. at 1741, 82 USPQ2d at 1396 (citing In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

Appeal 2007-2083
Application 10/035,584

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ANALYSIS
Appellant correctly points out the Examiner did not state a legally
sufficient basis for the rejection because Huang does not embed the status in
the operand. Contrary to the Examiner’s contention (Answer 12) Huang
does not teach that “the floating-point operand [is composed] of the
associated tag and the floating-point value.” Rather, Huang discloses that
the tag stands separate from the operand. (FF 1 and 2). The Examiner has
not provided an appropriate showing that the content of the prior art includes
an operand with both a remainder (data) and an embedded status as required
by claim 1.
On the record before us, it follows that the Examiner erred in rejecting
claim 1 under § 103(a). Since claims 2-37 are analogous or narrower than
claim 1, it also follows that those claims were not properly rejected under
§ 103(a) over Huang and Nakano.

CONCLUSION OF LAW
(1) Appellant has established that the Examiner erred in rejecting
claims 1-37 as being unpatentable under 35 U.S.C. § 103(a) over Huang and
Nakano.
(2) On this record, claims 1-37 have not been shown to be
unpatentable.

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DECISION
The Examiner's rejection of claims 1-37 is Reversed.

REVERSED

KIS

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