Ex Parte Deshpande et alDownload PDFPatent Trial and Appeal BoardSep 18, 201411962331 (P.T.A.B. Sep. 18, 2014) Copy Citation 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 2 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 3 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 4 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). Appeal 2011-013110 Application 11/962,331 5 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 msc Copy with citationCopy as parenthetical citation