Ex Parte Whaley

Board of Patent Appeals and Interferences

Jun 29, 2011

11127049 (B.P.A.I. Jun. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEREMY P. WHALEY
____________

Appeal 2009-009761
Application 11/127,049
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and DEBRA
K. STEPHENS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12 and 14-19, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Invention
Appellant’s invention relates to an interrupt handling system for
processor generated interrupts that may be used in a consumer electronic
device such as a set top box. See Abstract; Spec ¶ [0001].

Representative Claim
1. An interrupt handling system, comprising:

at least one input arranged to provide an active level;

a detection circuit associated with the at least one input and
selectively configurable to detect either the active level or an inactive level;

control circuitry coupled to the detection circuit responsive to an
interrupt request message to configure the detection circuit to detect the
active level; and

enable logic coupled to the detection circuit responsive to detection of
the active level by the detection circuit to generate an interrupt.

Examiner’s Rejections
Claims 1-9, 12, and 14-19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Applicant’s Admitted Prior Art (APA).
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA.

PRINCIPLES OF LAW
“Prior Art”
Judge Giles S. Rich observed that § 103 of Title 35 U.S.C., which
makes nonobviousness of the invention a prerequisite to patentability,
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requires a determination of the differences between the subject matter sought
to be patented and “the prior art.” However, Title 35 nowhere defines the
term “prior art.”
Its exact meaning is a somewhat complex question of law
which has been the subject of legal papers and whole chapters
of books. . . . Basically, the concept of prior art is that which is
publicly known, or at least known to someone who has taken
steps which do make it known to the public, . . . or known to the
inventor against whose application it is being applied.

In re Bergy, 596 F.2d 952, 965 n.7 (CCPA 1979), aff’d sub nom. Diamond v.
Chakrabarty, 447 U.S. 303 (1980) (citations omitted).
“The term ‘prior art’ as used in section 103 refers at least to the
statutory material named in 35 U.S.C. § 102. . . . However, section 102 is not
the only source of section 103 prior art. Valid prior art may be created by
the admissions of the parties.” Riverwood Int’l Corp. v. R.A. Jones & Co.,
324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations omitted). However, while a
reference can become prior art by admission, that doctrine is inapplicable
when the subject matter at issue is the inventor’s own work. Id.
Further, our reviewing court has held that subject matter derived from
another (35 U.S.C. § 102(f)), when combined with other prior art, may make
a resulting invention unpatentable under 35 U.S.C. §§ 102(f) and 103.
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04 (Fed. Cir.
1997).

Claim Interpretation
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
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be given broader scope than is justified.’” In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “An essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). “Construing claims broadly
during prosecution is not unfair to the applicant . . . because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.” Am. Acad., 367 F.3d at 1364.

ANALYSIS
I. Applicant’s Admitted Prior Art
The principal issue in this appeal is whether the subject matter of
Figure 1 of the instant disclosure is information that can be used against
Appellant.
The Specification (¶ [0016]) refers to Figure 1 as a schematic diagram
of a “known” interrupt handling system. Figure 1 includes mailbox 2, which
is not depicted in the other figures. According to the Background of the
Invention, interprocessor interrupts are “[c]urrently” managed by a mailbox
that receives a message from one processor that wishes to interrupt another
on-chip processor. Spec. ¶ [0002]. Interprocessor interrupts may include
extra information that may be stored in the mailbox to allow the information
to be held and accessed by the processor being interrupted. Spec. ¶ [0003].
The Specification also indicates (¶ [0004]) that an on-chip system “generally
includes” an interrupt level controller which handles other interrupts of the
system (external and internal), but notes that the controllers do not include
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any way of handling additional information that might be required with
interprocessor interrupts. “To address the above-discussed deficiencies of
the prior art, it is a primary object of the present invention to remove the
need for a mailbox yet still allow flexible interprocessor interrupts to be
implemented.” Spec. ¶ [0006] (in Summary of the Invention) (emphasis
added).
We therefore disagree that “[n]othing in the specification as filed
identifies Figure 1 or any other portion of the specification as ‘prior art’.”
App. Br. 16 (emphasis deleted). The Specification clearly refers (¶ [0006])
to the mailboxes and interrupt level controllers described in the Background
of the Invention as “prior art.”
Further, the combination comprising the mailbox, CPUs, and Interrupt
Level Controller depicted in Figure 1 appears to be consistent with, and
appears to contain nothing novel over, the description of such structures in
the Background section of the Specification. Still further, although
Appellant’s briefs remind us that an applicant must have knowledge of his
own work, the briefs do not provide any reasoning as to why the subject
matter of Figure 1 is denoted as “known,” but the subject matter of Figures 2
and 3 is not.
Appellant’s arguments in the briefs generally allege there is no
admission of “prior art” in the instant disclosure. The remarks do not,
however, clearly set forth any denial, or a basis therefor, that the subject
matter of Figure 1 constitutes “prior art” with respect to the Applicant.
The Reply Brief appears to contain allegations that may be more
germane to the issue in controversy.
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Figure 1itself is the Applicant’s own work, and if the Examiner
has any factual basis at all for stating the contrary, he has not
produced it. Whether or not there is any actual prior art system
corresponding to the Appellant’s drawing, unknown to the
Appellant, is a different question, but Appellant is not aware of
any such system and the Examiner has not cited any such prior
art.

Reply Br. 13 (emphasis added).
However, the only “work” described in the briefs with respect to the
Figure is its drafting; i.e., “Figure 1 was drafted by the Appellant himself.”
Reply Br. 12. The statement that Figure 1 is the “Applicant’s own work”
thus may, and appears to, mean no more than that Appellant drafted Figure
1, which does not speak to whether the subject matter of claim 1 represents
prior art with respect to Appellant. The statement that Appellant “is not
aware” of an “actual prior art system” corresponding to Figure 1 may be, at
best, taken as a contention that the interrupt handling system depicted in the
drawing was not available to the public and does not constitute prior art
under 35 U.S.C. § 102(a), (b), (d), or (e).
However, § 102 is not the only source of prior art, as valid prior art
may be created by the admissions of the parties. Riverwood Int’l Corp., 324
F.3d at 1354. Further, the statement that Appellant is “not aware” of any
“actual prior art system” corresponding to the drawing is not the same as an
unequivocal statement that Appellant is the inventor of the subject matter of
Figure 1.
Along with, or in lieu of, the instant rejection the Examiner could
have required the submission of information pursuant to 37 C.F.R. § 1.105,
under the guidelines set forth in the Manual of Patent Examining Procedure
(MPEP) § 704 (8th ed., Rev. 8, July 2010). The MPEP notes that, although
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optimally made prior to the first action on the merits, factors to be
considered in a requirement include:
(F) Whether the specification’s background of the
invention describes information as being known or
conventional, which may be considered as an admission of
prior art, but such information is unfamiliar to [the] examiner
and cannot be found within the application file or from the
examiner’s search, and further details of the information would
be relevant to the question of patentability.

MPEP § 704.11(b) at 700-10.
Under 37 C.F.R. § 1.105 the USPTO can require information beyond
that which may be material to patentability, including “information that does
not directly support a rejection.” Star Fruits S.N.C. v. U.S, 393 F.3d 1277,
1281-82 (Fed. Cir. 2005). We would have preferred that the Examiner had
required factual information from Appellant under § 1.105. We would also
have preferred that Appellant had provided factual information with respect
to Figure 1, rather than alleging the legal conclusion that the subject matter
of the drawing is not “prior art,” without a clear statement as to why the
belief is held.
In view of Appellant’s disclosure, the Examiner had a reasonable
basis for questioning whether Figure 1 represents prior art. In view of the
lack of a convincing explanation as to why Figure 1 cannot be considered
prior art, and the absence of a 37 C.F.R. § 1.132 affidavit or declaration from
Appellant asserting that the subject matter was invented by Appellant and
does not constitute prior art with respect to Appellant’s claims, we conclude
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that it is appropriate to treat the subject matter of Figure 1 as admitted prior
art and/or as prior art under 35 U.S.C. § 102(f).1

II. Appellant’s Additional Arguments
Appellant also advances arguments in the form of “even if” Figure 1
represents prior art, the instant claims would still distinguish over the subject
matter depicted.
The controversy with respect to claim 1 is based on whether certain
language of the claim is broad enough to read on the interrupt handling
system of Figure 1.2 We agree with the Examiner (Ans. 17) that the
“interrupt request message” of claim 1 fails to distinguish over configuration
of the detection circuits by a CPU, as described at paragraph [0021] of the
Specification. We are not persuaded by references to exemplary
embodiments in the Specification (App. Br. 18-19; Reply Br. 21-23) without
a limiting definition for “interrupt request message,” or by arguments that
are not commensurate with the scope of the claim (App. Br. 19; Reply Br.
23).

1 Although the rejection of claims 1-9, 12, and 14-19 is denominated as
§ 102“(b)”, we do not conclude there is sufficient evidence to hold that
Figure 1 represents a statutory bar for any of the reasons specified in
§ 102(b). However, Appellant’s response to the rejections demonstrates that
Appellant did not understand the basis of the §§ 102 and 103(a) rejections to
be limited to § 102(b).
2 Figure 1 includes a “mailbox,” while Figure 2 does not. We observe that
Appellant canceled claim 13 prior to appeal, which added a “mailbox” to the
combination of claim 1.
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With respect to dependent claim 4, we agree with the Examiner (Ans.
19) that the Specification describes a status register in maibox 2 (Fig. 1) that
meets the requirements of the claim. See Spec. ¶ [0022] (p. 9, ll. 14-16).
We have considered all of Appellant’s arguments in support of
representative claim 1, and those for claim 4 separately argued. See 37
C.F.R. 41.37(c)(1)(vii).3 As Appellant has not shown that any claim has
been rejected in error, we sustain the Examiner’s rejections.

DECISION
We affirm the Examiner’s determination that claims 1-12 and 14-19
are not patentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

pgc

3 To the extent that the remarks under the claim 7 heading might be
considered arguments for separate patentability (App. Br. 20-21), Appellant
filed a reply brief but did not provide a substantive response to the
Examiner’s further findings in support of the rejection (Ans. 20). Appellant
has not demonstrated error in the rejection.