Ex parte Watts

Board of Patent Appeals and Interferences

May 11, 2000

08395335 (B.P.A.I. May. 11, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LAVAUGHN F. WATTS, JR.
________________
Appeal No. 1998-0526
Application 08/395,335
________________
ON BRIEF
________________
Before URYNOWICZ, JERRY SMITH and HECKER, 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 24-69, which
constitute all the claims remaining in the application. An
amendment after final rejection was filed on June 23, 1997 and
was entered by the examiner.
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Application 08/395,335
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The disclosed invention pertains to a clock manager
for a central processing unit (CPU). More particularly, the
invention adjusts the clock signal being sent to the CPU based
on the activity of the CPU and the temperature of the CPU.
Representative claim 24 is reproduced as follows:
24. An apparatus, comprising:
a central processing unit (CPU);
a monitor for measuring the relative amount of idle time
within and temperature associated with said CPU; and
a clock manager coupled to said monitor, said clock
manager selectively modifying a clock signal being sent to
said CPU to optimize the utilization percentage of said CPU.
The examiner relies on the following reference:
Georgiou et al. (Georgiou) 5,189,314 Feb. 23, 1993

Claims 24-45 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by the disclosure of Georgiou. Claims
46-69 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Georgiou and the common
knowledge in the art. The rejection of some of the claims
under the second paragraph of 35 U.S.C. § 112 has been
withdrawn in view of the amendment after final rejection noted
above [answer, page 2].
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Application 08/395,335
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellant’s 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 disclosure of Georgiou does not fully meet
the invention as recited in claims 24-45. We are also of the
view 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
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Application 08/395,335
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in claims 46-69. Accordingly, we reverse.
We consider first the rejection of claims 24-45 as
being
anticipated by the disclosure of Georgiou. Anticipation is
established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to each of these claims, the examiner
indicates how he reads these claims on the disclosure of
Georgiou on pages 3-4 of the answer. Appellant argues that
each of the independent claims recites a monitor for measuring
some activity level of the CPU and “temperature associated
with said CPU” [brief, pages 7-12]. According to appellant,
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Application 08/395,335
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the activity monitor of Georgiou does not measure anything
whether it is idle time, activity time, temperature or
utilization percentage [id., page 12]. The examiner points to
several portions of Georgiou to support his position that CPU
activity is measured, and the
examiner points to the monitoring of heat buildup in
Georgiou’s chip as meeting the temperature measurement of the
claims [answer, pages 5-6]. Appellant responds that the
estimate of heat buildup in Georgiou is not the same as a
measurement of temperature of the CPU as claimed [reply
brief].
Although we agree with the examiner that Georgiou does
disclose the broad function of measuring the relative idle
time of its CPU, we agree with appellant that there is no
disclosure in Georgiou of measuring the temperature associated
with the CPU. The system of Georgiou operates on the
assumption that only the commodity of heat dissipation is
relevant. In other words, one could change the temperature of
the environment in Georgiou, and it would have no effect on
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Application 08/395,335
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the activity monitor because the heat dissipation calculations
are unrelated to the temperature. In the claimed invention,
however, the actual temperature of the CPU is measured and
used to determine the modification to be made to the clock
signal. Although it appears tempting to relate the heat
measurements of Georgiou to temperature measurements, the fact
remains that the estimate of heat buildup in Georgiou requires
no measurement of the actual temperature of the CPU and no
such temperature measurement is disclosed by Georgiou.
Since we agree with appellant that every limitation of
claims 24-45 is not fully disclosed by Georgiou, we do not
sustain the examiner’s rejection of claims 24-45 under 35
U.S.C. § 102.
We now consider the rejection of claims 46-69 under 35
U.S.C. § 103 as unpatentable over the teachings of Georgiou in
view of the common knowledge in the art. 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
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Application 08/395,335
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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
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
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Application 08/395,335
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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 appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
Claims 46-69 depend from one or more of the
independent claims discussed above. The examiner relies on
Georgiou for teaching all the limitations of these independent
claims as noted above. The examiner’s explanation of this
rejection does not
overcome the deficiencies of Georgiou noted above. Thus,
there
are differences between the claimed invention and the
disclosure of Georgiou which have not been properly addressed
by the examiner. The failure to address the obviousness of
these differences between the claimed invention and the
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Application 08/395,335
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applied prior art results in a failure to properly establish a
prima facie case
of obviousness. As noted above, the failure to make the prima
facie case of obviousness by the examiner must result in a
reversal of the rejection made under 35 U.S.C. § 103.
We also note that the examiner’s reliance on “common
knowledge in the art” is not a sufficient basis to support the
obviousness rejection of each of the dependent claims. We
agree with appellant that where the level of such common
knowledge is being contested, the examiner has the burden to
provide evidence in the record to support the examiner’s
conclusion of obviousness. Such evidence is lacking in this
record.
In conclusion we have not sustained either of the
examiner’s rejections of the claims. Therefore, the decision
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Application 08/395,335
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of the examiner rejecting claims 24-69 is reversed.
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART N. HECKER )
Administrative Patent Judge )
js/ki
Appeal No. 1998-0526
Application 08/395,335
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Ronald O. Neering
Texas Instruments Incorporated
P.O. Box 65574 MS 219
Dallas, TX 75265