Ex Parte Deshpande et al

Patent Trial and Appeal Board

Sep 18, 2014

11962331 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SANJAY R. DESHPANDE,
KLAS M. BRUCE, and
MICHAEL D. SNYDER
____________________

Appeal 2011-013110
Application 11/962,331
Technology Center 2100
____________________

Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-013110
Application 11/962,331

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I. STATEMENT OF THE CASE
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) and 41.52(a)(4) (hereinafter “Request”) on July 22, 2014, for
reconsideration of our Decision mailed May 22, 2014 (hereinafter
“Decision”).
The Decision affirmed the Examiner’s rejections of claims 1, 2, 6–12,
14, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Glasco (US
2004/0236912 A1, Nov. 25, 2004) and Mizutani (US 2004/0076154 A1,
Apr. 22, 2004).
We have reconsidered our Decision in light of Appellants’ arguments
in the Request (Request 1–4). However, we decline to change our Decision
for the reasons discussed infra.

II. ISSUE
The issue we address on this Request is whether Appellants have
shown that the Board has misapplied the relevant law and misapprehended
the Appellants’ arguments by finding that the combined teachings of Glasco
and Mizutani teach or suggest “the first indicator identifying the first
coherency state value as representing a cumulative coherency state and the
second indicator identifying the first coherency state value as representing a
potentially non-cumulative coherency state,” as recited in claim 1, and
similarly argued for independent claims 8 and 14 (emphases added,
hereinafter “first indicator” and “second indicator,” respectively).

Appeal 2011-013110
Application 11/962,331

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III. ANALYSIS
As for claims 1, 8, and 14, Appellants contend that the Decision held
that the claims contain “non-functional descriptive material that does not
patentably distinguish over prior art” but “the Examiner never asserted that
the claims included non-functional descriptive material as a basis for any
rejection during prosecution,” and thus, the Decision “invokes an
undesignated new ground of rejection” (Request 1–2). Nevertheless,
Appellants argue that “the first and second indications are not processed by
the mind, but by a machine,” and “the recited first and second indications are
provided in response to a functional limitation of the claim, viz., determining
whether a coherency state value represents a cumulative coherency state or a
potentially non-cumulative coherency state for a plurality of caches of a
processor” (Request 3).
Although Appellants argue that the Decision “invokes an
undesignated new ground of rejection” by interpreting the claim as
containing non-functional descriptive material (Request 1–2), Appellants are
reminded that the Board construes the claim de novo. See In re Donaldson
Co., Inc., 16 F.3d 1189, 1192 (Fed. Cir. 1994).
Further, it is well established that there is no new ground of rejection
when the basic thrust of the rejection remains the same. In re Kronig, 539
F.2d 1300, 1302–1303 (CCPA 1976); In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011); and In re Adler, 723 F.3d 1322, 1327 (Fed. Cir. 2013). Where
the statutory basis for the rejection remains the same and the evidence relied
upon in support of the rejection remains the same, a change in the discussion
of, or rationale in support of, the rejection does not necessarily constitute a
new ground of rejection. Id.
Appeal 2011-013110
Application 11/962,331

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In our Decision, we relied upon the same finding of facts and affirmed
the Examiner’s rejection under 35 U.S.C. § 103(a) instead of entering a new
ground of rejection (Decision 4). That is, in our Decision, the basic thrust of
the rejection remained the same, and the evidence relied upon in support of
the rejection remained the same. Accordingly, we find that Appellants’
contention that the Decision “invokes an undesignated new ground of
rejection” (Request 1–2) is without merit.
Although Appellants argue that “the first and second indications are
not processed by the mind, but by a machine” (Request 3), as set forth in our
Decision, it is the “different types of data” in “a first indicator or a second
indicator” that is entitled to no weight in the patentability analysis (Decision
3). That is, the question is not whether or not the information is associated
with a machine, but whether or not the type or content of the
information/data to be provided is entitled to weight in the patentability
analysis. In particular, “a first indicator or a second indicator” is the
type/content of the information/data that is provided, but the type of data
does not change the functionality of or provide an additional function to how
the information is to be provided. That is, regardless of the type/content of
information, the providing of the information/data still operates the same.
Accordingly, contrary to Appellants’ contention, in our patentability
analysis we did not ignore information associated with a machine, but rather
did not give weight to the type/content of the data that the processor
provides (Decision 3–4). Thus, we broadly but reasonably interpreted claim
1 and found no error in the Examiner’s conclusion of unpatentability of
claims 1, 2, 6–12, 14, and 17 over Glasco and Mizutani (Decision 4).
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Application 11/962,331

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Thus, we do not agree that we misapplied the relevant law and
misapprehended the Appellants’ arguments by finding that the Examiner did
not err in rejecting claims 1, 8, and 14 over the combined teachings of
Glasco and Mizutani. Accordingly, Appellants’ Request does not persuade
us to modify our Decision. Therefore, we find Appellants’ argument
unavailing.

IV. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, but the arguments are not persuasive that our
original Decision was in error. We are still of the view that the invention set
forth in the claims is unpatentable over the applied prior art based on the
record before us in the original appeal. This Decision on Appellants’
Request for Rehearing is deemed to incorporate our earlier Decision (mailed
May 22, 2014) by reference. See 37 C.F.R. § 41.52(a)(1).

V. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of May 22, 2014, but we deny the request with
respect to making any changes therein.

REHEARING DENIED

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