Ex Parte Wolff et al

Board of Patent Appeals and Interferences

Aug 29, 2008

10282919 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD A. WOLFF, PETER R. MOLNAR,
AYMAN ELEZABI, and GERALD GEORGE PECHANEK
____________

Appeal 2008-0241
Application 10/282,919
Technology Center 2100
____________

Decided: August 29, 2008
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-18, and 20-32, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2008-0241
Application 10/282,919

Appellants’ invention relates to techniques for performing a bit rake
instruction in a programmable processor. (Abstract.) Claim 17 is
illustrative.

17. A method for executing a bit rake instruction comprising:

receiving the bit rake instruction;
decoding the bit rake instruction defining a source register, a mask
register and a target register;
extracting a pattern from the source register based on a mask provided
from the mask register by a processor apparatus; and
packing and justifying the pattern into the target register by a
processor apparatus, the processor apparatus including a hierarchical data
path and a hierarchical mask path, the hierarchical mask path comprising
two or more stages, the output of each stage controlling whether to justify
the pattern at a corresponding stage of the hierarchical data path.
The Examiner relies on the following references as evidence of
unpatentability.
Cohen US 5,781,457 Jul. 14, 1998
Steele US 6,715,066 B1 Mar. 30, 2004
(filed Apr. 7, 2000)

Claims 1, 2, 4-13, 16-18, 20-29, and 32 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Steele.1

1 The rejection indicates, without explanation, that Steele is a reference
under § 102(b). Steele issued March 30, 2004 after its filing in the USPTO
on April 7, 2000. The instant application filing date is October 29, 2002,
with priority claimed to a provisional application filed November 1, 2001.
On this record, Steele is a reference under § 102(e), which we assume to be
the proper basis for the rejection.
2
Appeal 2008-0241
Application 10/282,919

Claims 14, 15, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steele and Cohen.
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of the § 102 rejection over Steele on the basis of claim 17 alone.
See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner reads claim 17 on Steele as set forth at pages 5 and 6 of
the Answer. Appellants argue, however, that Steele does not disclose the
hierarchical mask path comprising two or more stages, the output of each
stage controlling whether to justify the pattern at a corresponding stage of
the hierarchical data path. (App. Br. 6-7.)
The Examiner, in response, reiterates that the claimed “two or more
stages” are deemed to read on the three-stage adder tree depicted in Figure
1A of Steele. (Ans. 12.) The Examiner, in addition, explains why the
apparatus of Steele is found to “justify the pattern” within the meaning of the
claims. (Id.)
The Examiner further finds that the first stage adder in Steele provides
control signals to the first and second stage shifters, the second stage adder
provides control signals to the first through third stage shifters, and the third
stage adder provides control signals to the first through fourth stage shifters
of the hierarchical data path, referring to specific passages in columns 10
and 11 of the reference. (Ans. 12-13.)
While each of the three adder stages send control signals
to multiple corresponding shifter stages within the hierarchical
data path, each of the three adder stages still provides a control
signal to it’s [sic] corresponding shifting stage within the
hierarchical data path. Thus, Steele correctly reads upon “the
3
Appeal 2008-0241
Application 10/282,919

output of each stage controlling whether to justify the pattern at
a corresponding stage of the hierarchical data path.”

(Ans. 13.)
Appellants respond, in turn, by reproducing the referenced material at
columns 10 and 11 of the reference, and submit the following analysis.
[E]ach of Steele’s binary signals controls a shift column in one
of multiple stages of the shift element 12. Each adder stage of
Steele’s control element 11 generates multiple signals which are
distributed among multiple stages of the shift element 12 to
control the shift columns of the shift element 12.

Consequently, there is no adder stage in Steele that
controls whether to justify the pattern at a corresponding stage
of the hierarchical data path. It is only through the use of the
combination of Steele’s adder signals from multiple different
adder stages of the control element 11 that all the columns of a
stage of the shift element 12 are controlled.

(Reply Br. 3.)
In our estimation, the Examiner and Appellants are in substantial
agreement with respect to how the Steele apparatus operates. With respect
to what the claims require, however, we find the Examiner’s position to be
eminently reasonable and not shown to be wrong by Appellants’ arguments.
Appellants have not demonstrated how the argued language of instant claim
17 might serve to distinguish over the prior art.
We understand, as does the Examiner, differences exist between the
instant invention as disclosed and the Steele disclosure. However, the
briefs’ pointing out differences between the instant disclosure (e.g., Figs. 3A
and 3B) and Steele does not persuade us of error in the rejection. The claims
measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d
4
Appeal 2008-0241
Application 10/282,919

1107, 1121 (Fed. Cir. 1985) (en banc). Our reviewing court has repeatedly
warned against confining the claims to specific embodiments described in
the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc). During prosecution before the USPTO, claims are to be
given their broadest reasonable interpretation, and the scope of a claim
cannot be narrowed by reading disclosed limitations into the claim. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“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 at 322.
Not persuaded of error in the Examiner’s finding of anticipation, we
sustain the rejection of claims 1, 2, 4-13, 16-18, 20-29, and 32 under
35 U.S.C. § 102(e) as being anticipated by Steele.
We will decide the § 103(a) rejection over Steele and Cohen on the
basis of claim 30 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner sets forth specific findings, in the Final Rejection and
the Answer, in support of why the combination of teachings is considered to
demonstrate the obviousness of the subject matter of claim 30. Rather than
providing any basis to question any of the Examiner’s findings, Appellants
make general allegations and submit that the Examiner’s “approach” is “not
the claimed approach” and that “[n]othing in the cited references indicates a
recognition of the problems addressed by the present invention.” (App. Br.
8.)
5
Appeal 2008-0241
Application 10/282,919

In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
In addition to ignoring the Examiner’s rationale for the proposed
combination, Appellants’ arguments do not demonstrate anything
6
Appeal 2008-0241
Application 10/282,919

unpredictable or surprising to the artisan in the step of claim 30. Moreover,
the motivation for combining reference teachings is not limited to the
problems addressed by Appellants. “[A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” In re
ICON Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(quoting KSR, 127 S. Ct. at 1742).
We are therefore not persuaded of error in the Examiner’s case for
prima facie obviousness of the claimed subject matter. We sustain the
rejection of claims 14, 15, 30, and 31 under 35 U.S.C. § 103(a) as being
unpatentable over Steele and Cohen.

CONCLUSION
The rejection of claims 1, 2, 4-18, and 20-32 under 35 U.S.C. § 102(e)
or 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rwk

Peter H. Priest
5015 Southpark Drive, Suite 230
Durham NC 27713

7