Ex Parte Steele

Board of Patent Appeals and Interferences

Sep 13, 2007

10035587 (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for publication and is not binding precedent of the Board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 2007-2219
Application 10/035,587
Technology Center 2100
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Decided: September 13, 2007
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Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD,
and COURTENAY, ST. JOHN, III, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/035,587

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3 and 5-47. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented systems and methods for accumulating floating
point status information associated with a plurality of floating point values.
(Specification [002]).
Representative independent claim 1 under appeal reads as follows:
1. A flag combining circuit, comprising:
an analysis circuit that receives a plurality of operands each of
which having encoded status flag information, the analysis circuit
being operative to analyze the plurality of operands and to provide an
indication of one or more predetermined formats in which the
plurality of operands are represented; and
a result assembler that receives the indication from the analysis
circuit and assembles an accumulated result that represents a value
and combines the encoded status flag information from each of the
plurality of operands.

The Examiner rejected claims 1-3 and 5-47 under 35 U.S.C. § 102(b).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huang US 5,995,991 Nov. 30, 1999
The Examiner also rejected claims 1-3 and 5-47 under 35 U.S.C.
§ 103(a).
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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 is not disclosed in
the prior art. More specifically, Appellant contends Huang fails to disclose
an embedded status because the tag of Huang is separate from the operand.
(Reply Br. 5-9).
The Examiner contends that in Huang the “resulting status ‘tag value’
[is] embedded within the ‘resulting floating point operand.’” (Answer 14).
Further, Appellant contends that the claimed subject matter would not
have been obvious. Appellant contends Lynch fails to disclose an embedded
status because the tag of Lynch is separate from the operand, and Appellant
contends there is no motivation to modify Lynch to yield the claimed
invention. (Br. 14-20).
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 7).
We reverse.

ISSUE(S)
Has Appellant shown that the Examiner has failed to establish Huang
describes “a plurality of operands each of which having encoded status flag
information” and a result assembler that “assembles an accumulated result
that represents a value and combines the encoded status flag information
from each of the plurality of operands” as required by claim 1?
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Has Appellant shown that the Examiner has failed to establish Lynch
suggests “a plurality of operands each of which having encoded status flag
information” and a result assembler that “assembles an accumulated result
that represents a value and combines the encoded status flag information
from each of the plurality of operands” 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).
2. The prior art Huang patent describes that “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).
3. The prior art Lynch patent describes that the “FPU [floating
point unit] core uses the tag value associated with an operand to determine
whether the operand is a special floating point number.” (Col. 16, ll. 62-65).
4. “Assembles” is defined as “fits or joins together the parts of.”1
5. “Having” is defined as “containing as a constituent part.”2

1 The American Heritage Dictionary, Second College Edition, 1982, p. 134.
2 Id. at p. 597.
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PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for anticipation based on the
Huang patent.
Appellant may sustain this burden by showing that the prior art
reference relied upon by the Examiner fails to disclose an element of the
claim. 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. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
“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.”)
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“[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)).

ANALYSIS
Claim Interpretation
Claim 1 recites “a plurality of operands each of which having encoded
status flag information” and a result assembler that “assembles an
accumulated result that represents a value and combines the encoded status
flag information from each of the plurality of operands.” We interpret
claim 1 as requiring: 1) a plurality of operands each of which “containing”
encoded status flag information, and 2) a result assembler that “joins
together the parts” of an accumulated result that represents a value and
combines the encoded status flag information. We construe claim 1 as
requiring a single result that contains distinct parts that are joined together to
form the result and which parts represent a value and encoded status
information.
35 U.S.C. § 102
Appellant correctly points out the Examiner did not state a legally
sufficient basis for the rejection because Huang does not assemble an
accumulated result that represents a value and combines the encoded status
flag information from each of the plurality of operands. Contrary to the
Examiner’s contention (Answer 14), Huang’s “tag value” does not
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Application 10/035,587

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“constitute a teaching [of] data within the floating point operand as
claimed.” Rather, Huang discloses that the tag (status info) stands separate
from the operand (result). (FF 1 and 2). The Examiner has not provided an
appropriate showing that the prior art Huang patent discloses assembling an
accumulated result that represents a value (data) and combines an encoded
status flag as required by claim 1.
On the record before us, it follows that the Examiner erred in rejecting
claim 1 under § 102(b). Since claims 2-3 and 5-47 are analogous or
narrower than claim 1, it also follows that those claims were not properly
rejected under § 102(b) over Huang.
35 U.S.C. § 103
Also, Appellant correctly points out the Examiner did not state a
legally sufficient basis for the rejection based on Lynch, 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.
On the record before us, it follows that the Examiner erred in rejecting
claim 1 under § 103(a). Since claims 2-3 and 5-47 are analogous or
narrower than claim 1, it also follows that those claims were not properly
rejected under § 103(a) over Lynch.

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CONCLUSION OF LAW
(1) Appellant has established that the Examiner erred in rejecting
claims 1-3 and 5-47 as being unpatentable under 35 U.S.C. § 102(b) over
Huang.
(2) Appellant has established that the Examiner erred in rejecting
claims 1-3 and 5-47 as being unpatentable under 35 U.S.C. § 103(a) over
Lynch.
(3) On this record, claims 1-3 and 5-47 have not been shown to be
unpatentable.

DECISION
The Examiner's rejection of claims 1-3 and 5-47 is Reversed.

REVERSED

KIS

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