Ex Parte Steely et al

Patent Trial and Appeal Board

Dec 13, 2012

10760659 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SIMON C. STEELY JR, STEPHEN R. VAN DOREN, and
GREGORY EDWARD TIERNEY
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Appeal 2010-009845
Application 10/760,659
Technology Center 2100
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
ST. JOHN COURTENAY III.

Opinion Dissenting-in-part filed by Administrative Patent Judge
JEAN R. HOMERE.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1, 8-12, and 18-32.
Claims 2-7 and 13-17 have been identified by the Examiner as reciting
allowable subject matter, but stand objected to as being dependent upon a
rejected base claim. (Fin. Rej. 10). Appellants appeal therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
This invention relates to computer cache coherency protocols to
ensure that whenever a processor reads a memory location, the processor
receives the correct or true data. (Spec. 2). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system comprising:
a first node including data having an associated state, the
associated state of the data at the first node being a modified
state; and
a second node operative to provide a non-migratory
source broadcast request for the data, the first node being
operative in response to the non-migratory source broadcast
request to provide the data to the second node and to transition
the associated state of the data at the first node from the
modified state to an owner state without updating memory, the
second node being operative to receive the data from the first
node and assign a shared state to an associated state of the data
at the second node.

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REJECTIONS
R1. Claims 1, 8-10, 12, 18, 19, and 24-32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Arimilli
(U.S. Pat. Appl. Pub. 2002/0129211 A1) and Chen (U.S. Pat. 6,931,496 B2).
R2. Claims 11 and 20-23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Arimilli, Chen, and Cypher
(U.S. Pat. 6,484,240 B1).

GROUPING OF CLAIMS
Based on the dependencies of the claims, we decide the appeal of the
obviousness rejections of claims 1, 8-11; 12, 18-20; 24-27; and 28-31 on the
basis of independent claims 1, 12, 24, and 28 respectively.
We decide the appeal of claims 21-23 and 32 individually.

ANALYSIS
A. Claims 1, 8-10, 11, 12, 18, 19, 20, and 24-31
Issue 1: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"the second node being operative to receive the data from the first node and
assign a shared state to an associated state of the data at the second node,"
within the meaning of independent claim 1, and the commensurate language
of independent claims 12, 24, and 28 (emphasis added).

The Examiner finds:
Arimilli clearly discloses "master 26 of a first agent, for
example, processor complex 10a (i.e., first node), issues
modifying transaction 150a on system bus 12 that targets a
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cache line that is indicated as shared in the cache directory 22
of at least one agent 10 (i.e. second node); a result of a store
request by the processor 16 in the second agent 10 that targets a
cache line marked as shared in the second agent's cache
processor 22; par. [0029]."
(Ans. 12-13).
Appellants respond:
According to the Examiner, the "processor complex 10a"
reads on the first node recited in claim 1 and the "agent 10"
reads on the second node recited in claim 1. (Answer, pp. 12-
13, 14-15). Appellant respectfully disagrees. In the above
scenario of Arimilli, the only data received by the "processor
complex 10a" from the agent 10 are conflicting requests to
modify the target cache line. Thus, for the processor complex
10a to be "operative to assign a shared state to an associated
state of the data" received from the agent 10, Arimilli must
teach or suggest that the processor complex 10a assigns a
shared state to a request to modify the target cache line received
from the agent 10. Arimilli does not teach or suggest this
subject matter anywhere. By contrast, Arimilli merely teaches
that data intended to be modified by more than one agent is
marked as shared in response to a received request to modify
the data.
(Reply Br. 10-11).

Appellants' argument is persuasive. As a matter of claim construction,
the limitation at issue requires that the same data is "received" and "assigned
a shared state to an associated state" by the "second node." This is because
the claim positively recites "data" and the limitation at issue makes reference
back to the first use of "data" by using "the data." While we accord the
particular content of the "data" no patentable weight (as non-functional
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descriptive material), 1 we also conclude the recited positive antecedent basis
requires that claim term "the data" must refer back to the same data as the
“data” element that is first introduced into the claim.
The Examiner does not show that, in Arimilli, the same data is (1)
"received" and "assigned a shared state to an associated state." (Ans. 12-13).
Specifically, the Examiner finds that, in Arimilli, the data received
(modifying transaction 150a) is not "assigned an associated state." (Id.).
Instead, different data (data in a cache line intended to be modified by one or
more modifying requests) is assigned an associated state." (Arimilli ¶
[0029]; Ans. 12-13). Therefore, the Examiner has not established that
Arimilli would have taught or suggested the limitation at issue. Nor has the
Examiner established that the Chen secondary reference overcomes the
aforementioned deficiency in Arimilli.
For these reasons, we are persuaded of Examiner error. Accordingly,
we reverse the Examiner's rejection of claim 1, and of independent claims
12, 24, and 28, which recite the disputed limitation in commensurate form.
We also reverse the Examiner's rejections of claims 8-11, 18-20, 25-27, and
29-31, which depend from independent claims 1, 12, 24, and 28,
respectively.

1 We broadly but reasonably construe the recited "data" as non-functional
descriptive material because the "data" is not positively recited as altering or
changing any machine or computer function. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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B. CLAIMS 21-23
Appellants argue that "[C]laim 21 recites elements similar to claim 2,
which depends from claim 1" and "submits that claim 21 is patentable for
reasons similar to claim 2." (App. Br. 34).
Appellant's arguments are not persuasive because claim 21 does not
recite commensurate limitations with claim 2. Appellants fail to present
arguments specifically addressing claim 21's limitations. Because
Appellants have not rebutted the Examiner's specific findings (Ans. 10, 4-5,
8-9), we sustain the Examiner's rejection of claim 21, and of associated
dependent claims 22-23, for which no separate arguments of patentability
were made.

C. CLAIM 32
Appellants contend that independent claim 32 is patentable for the
reasons advanced regarding claim 1. (App. Br. 32). However, we find
Appellants' argument unavailing because claim 32 does not recite
commensurate limitations with claim 1. Therefore, Appellants' arguments
for claim 1 are not commensurate in scope with the broader limitations of
claim 32. Accordingly, we sustain the Examiner's rejection of claim 32.
(Ans. 7).

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DECISION
We affirm the Examiner's rejections of claims 21-23 and 32 under
§ 103.
We reverse the Examiner's rejections of claims 1, 8-12, 18-20, and 24-
31 under §103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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Homere, J, dissenting in part,
I agree with the majority in all aspects save one. Notably, I write
separately to voice my disagreement with the majority’s reversal of claim 1.
In particular, the majority concludes that because Arimilli does not teach
that “the data received (modifying transaction 150a) is ‘assigned an
associated state,’” it does not teach the disputed limitations (Op. 5.)
The majority erroneously concludes that the “limitation at issue
requires that the same data is ‘received’ and ‘assigned a shared state to an
associated state’ by the ‘second node.’” (Id. at 4.) Instead, the claim recites,
inter alia, “the second node being operative to receive the data from the first
node and assign a shared state to an associated state of the data at the second
node.” (Claim 1, Emphasis added.)
In my view, because the second node is not actually receiving the data, but
it is merely capable of receiving such data, it is a statement of intended use,
which is not entitled to patentable weight.2 Further, I note that limitation at
issue is directed to a functional limitation recited as part of an apparatus. It
has been held that functional limitations are distinguishable over the prior art
of record only after Appellants have made a showing that the prior art of
record does not teach such capability.3 The record before us is devoid of

2 See, e.g. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement of intended use “usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates”).

3 Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations
in an apparatus claim, however, the prior art apparatus must be capable of
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such showing or lack thereof. Therefore, the majority’s decision to reverse
the claim is not supported by the record before us. Consequently, I would
affirm the Examiner’s rejection.

pgc

performing the claimed function. Id. at 1478. The prior art structure must be
capable of performing the function without further programming. Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011)
(discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,
520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated
with programming or some other structure required to perform the function,
that programming or structure must be present in order to meet the claim
limitation. Id.