Ex Parte Watts

Board of Patent Appeals and Interferences

Aug 23, 2002

08572202 (B.P.A.I. Aug. 23, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LAVAUGHN F. WATTS JR,
____________
Appeal No. 1999-2052
Application No. 08/572,202
____________
ON BRIEF
____________
Before SMITH, LALL, and BLANKENSHIP, Administrative Patent Judges.
LALL, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant requests that we reconsider our decision of May 6,
2002, wherein we sustained, under 35 U.S.C. § 103, the rejection
of claims 1, 4-9, 16, 17, 39, 41-43, 45-47, 49-51, 53, 54, 63, 64
and 66 over Smith and Kikinis; the rejection of claims 21-27, 55,
56, 58-60, 62, 67 and 70-74 over Smith, Kikinis and Kenny; and of
claims 28 and 29 over Smith, Kikinis and Gephardt; however, we did
not sustain the rejection of claims 3, 10, 18 and 30-38 over Smith
and Kikinis.
Appeal No. 1999-2052
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Appellant argues that we have overlooked some points (19
as enumerated on pages 2-4 of the rehearing request) argued in
Appellant’s brief while rendering said decision.
We have reconsidered our decision of May 6, 2002 in light of
Appellant’s comments in the request for reconsideration and we find
an error with respect to claims 59, 60, 62, 63, 64 and 66, which
corresponds to item numbers 6, 15, 16 and 17 of the request for
rehearing. However, we find no error in our decision regarding the
remaining claims. We therefore modify our decision accordingly.
Our response to the various points raised in the request for
rehearing is as follows.
Regarding the items 1-4 of the request for rehearing, we refer
to our decision at pages 6-9 where we did consider the limitation
of “a decreasing level of activity within said CPU” (rehearing
request at page 5), and where we also gave our rationale for
holding that the Examiner had a justifiable reason to combine the
references and that the Examiner had indeed presented a prima facie
case. Appellant argues (rehearing request at page 7) that “the
Smith et al. reference teaches a device in which the clock signal
to the CPU is modified only after NO ACTIVITY has been detected for
a PREDETERMINED amount of time ....” In response, we first note
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that claim 1 requires only that the CPU clock pulse is controlled
in response to one of a decreasing level of activity within said
CPU and said temperature rising to a level above a selected
reference temperature level. That is, it requires only one of the
two criteria, namely, either in response to the decreasing level of
CPU activity or the temperature level rising in the CPU. In any
event, we discussed the limitation of the decreasing level of
activity within said CPU in our decision at the pages noted
above. We reiterate that the claim language does not preclude
the condition of no activity for a predetermined amount of time as
disclosed by Smith et al. The recited decreasing level of activity
in claim 1 is a continuing process of decreasing of the level of
activity and it does include a state where the level of activity
has decreased to a zero level. Appellant also argues that there is
a distinction between “dynamic activity” and “static activity”
(rehearing request at page 13). However, we do not find such a
recitation in claim 1 which only speaks in terms of an activity
level and thereby includes any type of activity, be it static or
dynamic.
Regarding item number 5 (claims 55, 58, 59, 60 and 62,
rehearing request at page 16), we still are of the view that
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Appellant has merely made conclusory statements regarding the
absence of teaching of the limitations of claim 55, see brief at
page 34, where Appellant merely states, “as far as Appellant can
determine, there is no actual temperature measurement or sensing at
all in Kenny. Accordingly, a combination of the Smith, Kikinis
and Kenny references fail (sic) to teach or suggest this further
limitation ‘wherein said temperature is sensed on a periodic basis’
in combination with the requirements of claim 1.” However, we
point out that Kenny does teach at column 1, lines 51-55 that the
temperature is indeed measured by a conventional temperature
monitor such as a thermostat or a diode, and further Kenny at
column 1 lines 65 - column 2 line 2, states that the temperature is
measured as a function of time which would imply to an artisan that
the temperature is measured on a periodic basis.
With respect to item 6 (claims 63, 64 and 66, rehearing
request at page 17), we are persuaded by the Appellant’s arguments
that the temperature sensing being user modifiable as recited in
each claims 63, 64 and 66 is not taught by the combination of Smith
and Kikinis. Therefore, we modify our decision in that rejection
of claims 63, 64 and 66 over Smith and Kikinis is now reversed.
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Regarding item 7 (claim 21, rehearing request at page 18),
we still are of the view that Appellant at page 27 of the brief
makes a mere conclusory statement regarding claim 21, which is
not in accordance with 37 CFR § 1.192 (c)(8)(iv)(1998). However,
for the rationale we gave regarding the combination of Smith and
Kikinis with respect to claim 1, and further considering the
teaching of Kenny the concept of having power on and off depending
upon the temperature condition of the integrated chip (for example,
column 1 lines 50-64), we hold the recited limitations to be taught
by their combination. Therefore, claim 21 is obvious in view of
Smith, Kikinis and Kenny.
Regarding item 8 (claims 21, 70-72, and through claim
dependency, claims 22-27, 55, 56, 58-60, 62, 67, 73 and 74,
rehearing request at page 19), Appellant raises the issue of
failure of a prima facie case of obviousness. In this regard, we
direct Appellant’s attention to our decision at pages 13-16. We
explained our position in holding that the combination of Smith,
Kikinis and Kenny did present a prima facie case of obviousness
with a justifiable reason for the combination. We reemphasize our
position that Kenny does teach the prediction of the temperature at
column 2, lines 37-47 where Kenny teaches that the temperature is
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increasing or decreasing resulting in heating or cooling. The
terms heating and cooling imply that a prediction of the future
temperature conditions is being contemplated.
With respect to item 9 (claim 22, (rehearing request at page
23), Appellant objects to our statement in the decision at page 15,
namely, “the clock rate ‘HAS TO BE’ regulated in such a way that
the temperature does not exceed the selected reference level and in
doing so they would have to control the length of the OFF state for
the power to the CPU”. For clarification, we add here that Kenny
as pointed out, supra, teaches the concept of having the power off
in case of a heat build up in an integrated circuit (column 1,
lines 51-64). Therefore, an artisan would have found it obvious to
control the off state condition of the clock pulses going to the
CPU in order to avoid the build up of heat in the chip (CPU), and
hence prevent the rising of the temperature of CPU beyond a
selected reference temperature level.
Concerning item 10 (claim 23, rehearing request at page 24),
we find that Appellant has recited no particular structure or
specific method for the accomplishment of the recited optimized
efficiency level of the CPU in claim 23. We are of the view that
an artisan, knowing from the teachings of the combination of Smith,
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Kikinis and Kenny that the heat build up affects the operation of a
CPU, would have found an obvious matter to operate the CPU at its
optimum condition by controlling the result effective variables
including the activity level and the temperature build up in the
CPU. This accords with the rule that discovery of an optimum value
of a result effective variable in a known process is ordinarily
within the skill of the art. In re Antonie, 559 F.2d 618, 195 USPQ
6 (CCPA 1977); In re Aller, 42 CCPA 824, 220 F.2d 454, 105 USPQ 233
(CCPA 1955).
Regarding item 11 (claims 24, 25, 26 and 27, rehearing request
at page 25), we give Appellant the benefit of the conclusory
statements as being the substantive arguments. We find that
because the combination of Smith, Kikinas and Kenny teaches the
build up of heat and hence the rising of the temperature as the
clock pulse or the power is modulated in a integrated circuit
(CPU), it would have been obvious to an artisan that when the off
state (absence of power or clock pulses to the CPU) is at zero, the
power build up or the heat build up in the CPU would be maximum
(claim 24), and that power consumption in the CPU would decrease as
the duration of the off state increases (claim 25). Regarding
claim 26, Smith teaches or discloses the concept of minimum clock
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rate at which the CPU can operate, as in the sleep mode. Regarding
claim 27, an artisan would have obviously recognized that if the
clocks for the CPUs are completely stopped, the clock rate would be
at zero.
With respect to items 12, 13 and 14 (claims 55, 56 and 58
respectively, rehearing request at pages 27-32), we again give
Appellant the benefit of the conclusory statements as a substitute
for substantive arguments. We find, in addition to our prior
pointing out that Kenny does measure the temperature by
a thermostat or a diode, that Kenny also teaches the periodic
measurement of the temperature in the integrated circuit, (see
column 1, line 65 - column 2 line 2, where the temperature
measurement is disclosed to be made as a function of time, clearly
implying that the temperature measurement is done on a periodic
basis).
Regarding items 15, 16 and 17 (claims 59, 60 and 62, request
rehearing request at pages 32-38), each claim has the limitation,
“the frequency of said temperatures sensing changes as said
temperature reaches pre selected threshold values”. We agree with
Appellant’s argument (id.) that the combination of Smith, Kikinis
and Kenny does not teach this limitation. Therefore, we modify our
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decision in that we reverse the rejection of claims 59, 60 and 62
over Smith, Kikinis and Kenny.
Regarding item 18 (claim 67, rehearing request at page 38-40),
we clarify the paragraph from page 16 of our decision which
Appellant has quoted at page 39 of the request for rehearing,
in that the quoted disclosure of Kenny at column 2 lines 37-47
states that the sampling indicates that the integrated circuits
temperature is either cool or cooling, such that temperature count
is thereby decreased, or the sampling indicates the integrated
circuit is generating too much heat and its temperature is
increasing. This process of cooling and heating (temperature
increasing) indicates that the temperature measurement is of
predictive type, which is not static but dynamic and contemplates
the future happenings to the heating and cooling state of the
circuit. Therefore, we find that Kenny discloses the teaching of
predicting future temperature levels as recited in these claims.
Regarding item 19 (claims 28 and 29, rehearing request at
pages 40-43), we have already discussed the propriety of the
combination of Smith, Kikinis and Gephardt at pages 16 and 17 of
our decision. The arguments regarding the lack of a prima facie
case in this combination and that Smith only shows that the
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CPU is modified only after no activity has been deducted for a
predetermined amount of time have been already addressed above.
In conclusion, we have carefully considered the arguments
raised by Appellant in his request for reconsideration.
Consequently, we have modified our decision in that we reverse the
rejection of claims 59, 60 and 62 over Smith, Kikinis and Kenny,
and the rejection of claims 63, 64 and 66 over Smith and Kikinis.
In all other respects, the prior decision is not changed.
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We have granted Appellant’s request to the extent that we have
modified our decision of May 6, 2002, regarding claims of 59, 60,
62, 63, 64 and 66, however, in all other respects the decision
remains unchanged.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
DENIED-IN-PART and GRANTED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
PSL/jrg
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Application No. 08/572,202
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