Ex Parte Weiberle et al

Patent Trial and Appeal Board

Oct 27, 2017

11974349 (P.T.A.B. Oct. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/974,349 10/12/2007 Reinhard Weiberle BOSC.P5337US/11602880 5473
24972 7590 10/31/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
LINDLOF, JOHN M
ART UNIT PAPER NUMBER
2183
NOTIFICATION DATE DELIVERY MODE
10/31/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHARD WEIBERLE, BERND MUELLER,
YORCK VONCOLLANI, and RAINER GMEHLICH
Appeal 2017-003721
Application 11/974,3491
Technology Center 2100
Before DENISE M. POTHIER, MATTHEW J. McNEILL, and
ALEX S. YAP, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-22, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
App. Br. 2.
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Application 11/974,349
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to generating a valid signal for a user
program, which runs on a signal processing system having a plurality of
execution units that operate in parallel in a performance mode. Spec. 1:2-5.
Claim 1 illustrates the appealed subject matter and reads as follows:
1. A method for generating a valid signal for an application
program in a signal processing system, the method comprising:
operating a plurality of execution units in parallel in a
performance mode, wherein the application program, which is
not a diagnostic program, is executed;
comparing, while the application program is running and
after a user switches the signal processing system to a
comparison mode, signals delivered by the execution units with
one another, wherein the user is a person who performs the
switching; and
generating a valid signal based on the comparison.
The Examiner’s Rejections
Claims 1-22 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. Final Act. 2-3.
Claims 1, 12, 14, 20-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Weiberle et al. (US 2008/0052494 Al; Feb. 28, 2008),
Parthasarathy Ranganathan et al., Performance of Image and Video
Processign with General-Purpose Processors and Media ISA Extensions
(“Ranganathan”), and Ponte (US 5,915,083; June 22, 1999). Final Act. 3-5.
Claims 3-7, 9-11, and 15-19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Weiberle, Ranganathan, Ponte, and Jensen (US
3,348,034; Oct. 17, 1967). Final Act. 6-11.
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Claims 2, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Weiberle, Ranganathan, Ponte, and Jones et al. (US
7,577,874 B2; Aug. 18, 2009). Final Act. 11-12.
ANALYSIS
We have reviewed the Examiner’s obviousness rejection in light of
Appellants’ contentions that the Examiner has erred. We disagree with
Appellants’ contentions. Except as noted below, we adopt as our own: (1)
the findings and reasons set forth by the Examiner in the Final Action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the Examiner’s conclusions. We highlight the following additional
points.
Written Description
The Examiner rejected claim 1 under 35 U.S.C. § 112 as failing to
satisfy the written description requirement because the Specification does
not show that Appellants possessed an “application program, which is not a
diagnostic program,” as claimed. Final Act. 2.
Appellants argue the Examiner erred in rejecting claim 1 for failure to
satisfy the written description requirement because “a person having
ordinary skill in the art would understand based on the context of the
application in its entirety that the application programs as provided for in the
context of the presently claimed subject matter would exclude diagnostic
programs of the type in the applied references.” App. Br. 5 (emphasis
omitted). In particular, Appellants argue “an application program is a
program that performs a specific service for the user and the user might want
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this specific service to be performed with very high security.” Id. (citing
Spec. 12:19-24 (emphasis omitted)).
Appellants have not persuaded us of Examiner error. The portion of
the Specification cited by Appellants does not mention “diagnostic”
programs or in any way limit the scope of an “application program.”
Instead, the cited portion of the Specification merely states that a “user may
for certain reasons place a value on a certain portion of the application, i.e.,
application program, running with the highest possible reliability,
availability, safety, and/or access security.” Spec. 12:19-23. Nor does the
specification provide a reason to exclude diagnostic programs from the
described application programs. See, e.g., Santarus v. Par Pharm, Inc., 694
F.3d 1344, 1351 (Fed. Cir. 2012); Inphi Corp. v. Netlist, Inc., 805 F.3d 1350,
1354 (Fed. Cir. 2015).
Accordingly, we agree with the Examiner that the Specification does
not describe the negative limitation of excluding diagnostic programs recited
in “operating a plurality of execution units in parallel in a performance
mode, wherein the application program, which is not a diagnostic program,
is executed.” We, therefore, sustain the written description rejection of
independent claim 1. We also sustain the written description rejection of
claims 2-22, which Appellants did not argue separately (App. Br. 5-7).
Obviousness
Appellants argue the Examiner erred in rejecting claim 1 as obvious
over Weiberle, Ranganathan, and Ponte because Weiberle and Ponte do not
teach or suggest “operating a plurality of execution units in parallel in a
performance mode, wherein the application program, which is not a
diagnostic program, is executed.” App. Br. 8-11 (emphasis omitted). In
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particular, Appellants argue an “application program is a program that
performs a specific service for the user and the user may want this service to
be performed with very high security.” App. Br. 8-9 (citing Spec. 12:19-24
(emphasis omitted). Appellants argue that in Weiberle, “a program ... is
always executed in a fixed mode that has been assigned to the program
during the generation of the program, and there is no possibility to switch a
specific application program from one mode to another.” Id. at 9 (emphasis
omitted).
Appellants further argue Ponte does not disclose running an
application program that is not a diagnostic program that is processed by
different modes of the computer. Id. at 9. According to Appellants, “Ponte
does not give the user any hint which direction of voluntarily changing the
mode of operation between a performance mode and a comparison mode.”
Id. at 10.
Appellants have not persuaded us of Examiner error. Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ arguments focus on
the individual disclosures of Weiberle and Ponte. However, the Examiner
explained that the combination of Weiberle, Ponte, and Ranganathan, not
any reference alone, discloses this limitation. Final Act. 3-5; Ans. 3—4.
In particular, the Examiner does not rely on Ponte for teaching
switching between a performance mode and a comparison mode. Ans. 4.
Instead, the Examiner relies on Ponte for teaching a person switching a
system into a particular mode. Id. (citing Ponte 1:15-25, 5:5-14). The
Examiner finds, and we agree, an ordinarily skilled artisan would understand
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that allowing a person to switch a system into a specific mode as taught by
Ponte would have provided a diagnostic trouble shooting and debugging
solution to fix errors in the system and improve performance. Id. The
Examiner further finds, and we agree, Weiberle teaches operating execution
units in a performance mode, where the executed programs are not
diagnostic programs. Final Act. 4 (citing Weiberle Tflf 6-8). Weiberle
further teaches switching modes from performance mode to safety mode (the
claimed “comparison mode”). Id. (citing Weiberle ^fl[6, 12,14). The
Examiner’s proposed combination would apply Ponte’s diagnostic mode to
Weiberle’s teachings. Appellants’ arguments focusing on the individual
disclosures of Weiberle and Ponte are unpersuasive because they do not
address this proposed combination.
Appellants further argue the Examiner has failed to offer sufficient
rationale that an ordinarily skilled artisan would have combined the cited
references, instead “simply stating, without any supporting evidence, that it
would have been obvious to try” the asserted combination. App. Br. 12
(emphasis removed). Appellants further argue the Examiner provided “only
conclusory hindsight, reconstruction and speculation . . . .” Id. at 13.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, an ordinarily skilled artisan would have been motivated
to apply Ponte’s manual switch into debug mode because this “would have
provided a diagnostic trouble shooting and debugging solution to a person in
order to fix errors in the system and improve performance.” Final Act. 5.
Contrary to Appellants’ arguments, the Examiner does not rely on an
“obvious to try” rationale. We are not persuaded by Appellants’ argument
that the Examiner’s rationale is conclusory because Appellants fail to
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identify an error in the Examiner’s reasoning. Instead, we find the
Examiner’s expressed motivation to combine the references is based on
rational underpinnings—namely fixing errors in the system and improving
performance by allowing a user to switch into debug mode. Id.
For these reasons, Appellants have not persuaded us the Examiner
erred in rejecting claim 1 as unpatentable over Weiberle, Ranganathan, and
Ponte such that we sustain that rejection. We also sustain the rejection of
independent claims 12 and 22, for which Appellants offer the same
arguments (App. Br. 8-14). We also sustain the obviousness rejections of
dependent claims 2-11 and 13-21, for which Appellants offer no separate
argument (App. Br. 11-12).
DECISION
We affirm the decision of the Examiner to reject claims 1-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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