Ex Parte Tremblay et al

Board of Patent Appeals and Interferences

Feb 23, 2006

09204585 (B.P.A.I. Feb. 23, 2006)

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for publication and is not binding precedent of the Board.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 MARC TREMBLAY and WILLIAM JOY
____________

Appeal No. 2005-2557
Application No. 09/204,585
____________

ON BRIEF
____________

Before KRASS, JERRY SMITH, and LEVY, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claims 1-28, which constitute all the claims pending in this application.
The disclosed invention pertains to the field of processors storing information in
register files, and more particularly to processors employing register files divided into
multiple register file segments each coupled to and associated with a respective
functional unit, wherein each register file segment is partitioned (or partitionable) into
local and global registers.

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Representative claim 1 is reproduced as follows:
1. A processor comprising:
a plurality of functional units; and
a register file that is divided into a plurality of register file segments, each
coupled to and associated with respective ones of the plurality of functional units,
the register file segments each implemented as an addressable array and
partitionable into global registers and local registers, the global registers being
accessible by the plurality of functional units, the local registers being accessible
by the functional unit associated with the register file segment containing the
local registers, wherein the number of global registers and the number of local
registers are programmably configurable.
The examiner relies on the following references:
Yung 5,592,679 Jan. 07, 1997

Luan et al. (Luan) 5,911,149 Jun. 08, 1999
(filed Nov. 01, 1996)

Nishimoto et al. (Nishimoto) 6,023,757 Feb. 08, 2000
(filed Jan. 30, 1997)

Claims 1-28 stand rejected under 35 U.S.C. § 103(a). As evidence of obviousness
the examiner offers Yung in view of Luan with respect to claims 1, 3-14 and 23-28, and
Nishimoto is added to this combination with respect to claims 2 and 15-221.
Rather than repeat the arguments of appellants or the examiner, we make
reference to the briefs and the answer for the respective details thereof

1 The rejections of the claims based on Luan taken alone and Luan in
view of Nishimoto have been withdrawn by the examiner [answer, page 6].
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OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’ arguments set forth in the briefs
along with the examiner’s rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in the claims on
appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed invention. Such reason must
stem from some teaching, suggestion or implication in the prior art as a whole or
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knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been considered and are
deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
We consider first the examiner’s rejection of the claims based on Yung and
Luan. The examiner finds that Yung teaches the invention of independent claim 1
except that Yung does not teach that the number of global registers and the number of
local registers within a segment are programmably configurable as claimed. The
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examiner cites Luan as teaching that the programmable configuration of memory was
well known in the art. The examiner finds that it would have been obvious to the artisan
to incorporate a programmably configurable memory as taught by Luan into the device
of Yung [answer, pages 6-7]. With respect to dependent claims 8, 21 and 28, the
examiner finds that Yung teaches the claimed invention except that the global register
file of Yung is shown as a single piece whereas the claimed global register file is divided
into M pieces. The examiner finds that it would have been an obvious design choice to
use a single piece or M pieces for the global register file [answer, pages 8-10].
With respect to claims 1, 3-7, 9-14 and 23-27, which are argued together as a
single group, appellants argue that neither Yung nor Luan discloses or suggests register
file segments each coupled to, and associated with, a respective functional unit and
each implemented as an addressable array and partitionable into global and local
registers. Specifically, appellants argue that the global register file of Yung and a
separate local buffer do not together constitute a register file segment as claimed, nor
would such a segment be programmably configurable as claimed. Appellants also
argue that Luan’s programmable shared memory is not the same or interchangeable
with a register file segment that is implemented as an addressable array and that is
partitionable. Appellants assert that no interpretation of Luan supports an association
between any group of Luan’s memory banks and any particular functional unit of Yung’s
processor [brief, pages 8-11].
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The examiner responds that the “thrust of the instant invention” is the same as the
teaching of Yung and that Luan teaches programmable partitioning [answer, pages 11-
13]. Appellants respond that similarity in “thrust” of the claimed invention and the prior
art plays no role in the proper legal analysis of obviousness. Appellants also respond
that the examiner’s analysis is incorrect and that the memory banks of Luan cannot
correspond to the structures recited in the claimed invention [reply brief, pages 7-8].
We will not sustain the examiner’s rejection of claims 1-7, 9-14 and 23-27 for
essentially the reasons argued by appellants in the briefs. We agree with appellants
that there is no motivation to apply the general programmable memory configurations of
Luan to the local and global buffers of Yung. There is no suggestion that programmable
memory partitioning, as generally taught by Luan, can be applied to
register file segments related to global and local registers in a device as taught by Yung.
We also agree with appellants that the examiner cannot rely on the fact that the applied
prior art may be the same as or similar to the “thrust” of the claimed invention. Since
separately argued claims 8 and 28 depend from claims 7 and 27, respectively, we also
do not sustain the examiner’s rejection of these claims.
We now consider the examiner’s rejection of the claims based on Yung, Luan
and Nishimoto. These claims all have recitations similar to the claims considered
above. Since Nishimoto does not overcome the deficiencies of Yung and Luan
discussed above, we also do not sustain the examiner’s rejection of claims 2 and 15-22
for the reasons discussed above.
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In summary, we have not sustained the examiner’s rejections with respect to any
of the claims on appeal. Therefore, the decision of the examiner rejecting claims 1-28 is
reversed.

REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

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JS/ce
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