Ex Parte Steele

Board of Patent Appeals and Interferences

Sep 13, 2007

10035579 (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for publication and is not binding precedent of the Board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 2007-1469
Application 10/035,579
Technology Center 2100
____________________

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 2007-1469
Application 10/035,579

2
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 square root with embedded status information associated with the
floating point operand. (Specification [002]).
Representative independent claim 1 under appeal reads as follows:
1. A system for providing a floating point square root, comprising:
an analyzer circuit configured to determine a first status of a
first floating point operand based upon data within the first floating
point operand; and
a results circuit coupled to the analyzer circuit and configured
to assert a resulting floating point operand containing the square root
of the first floating point operand and a resulting status embedded
within 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:
Lynch US 6,009,511 Dec. 28, 1999

Appellant contends that the claimed subject matter would not have
been obvious. More specifically, Appellant contends Lynch fails to disclose
an embedded status because the tag of Lynch is separate from the operand
(Br. 8-11). Further, Appellant contends there is no motivation to modify
Lynch to yield the claimed invention. (Br. 11-16).
Appeal 2007-1469
Application 10/035,579

3
The Examiner contends that it would have been obvious to store the
“result with its tag as a resulting operand” to quickly determine its status.
(Answer 4). The Examiner apparently alternatively contends that the “tag
value is clearly stored within the operand.” (Answer 6).
We reverse.

ISSUE(S)
Has Appellant shown that the Examiner has failed to establish Lynch
suggests “a resulting floating point operand containing the square root of the
first 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 Lynch patent describes that the “FPU [floating
point unit] core 94 uses the tag value associated with an operand to
determine whether the operand is a special floating point number.” (Col. 16,
ll. 62-65).

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,
Appeal 2007-1469
Application 10/035,579

4
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, 1339 (Fed. Cir. 2006)).

ANALYSIS
Appellant correctly points out the Examiner did not state a legally
sufficient basis for the rejection as no evidence had been provided to show
that it was known to a person skilled in the art that storing the result with its
tag as a resulting operand results in quickly determining its status. The
Examiner has not provided an appropriate articulated reasoning for
modifying Lynch.
Further, we find no basis in Lynch for the Examiner’s alternative
premise that the tag is stored within the operand. Rather, Lynch only
teaches that the tag is associated with the operand (FF 1).
Appeal 2007-1469
Application 10/035,579

5
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 Lynch.

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 Lynch.
(2) On this record, claims 1-37 have not been shown to be
unpatentable.

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

REVERSED

KIS

SUN MICROSYSTEMS/FINNEGAN, HENDERSON, L.L.P.
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413