Ex Parte Jacobs et al

Patent Trial and Appeal BoardMay 14, 2013

10762863 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte EINO JACOBS and MICHAEL ANG _____________ Appeal 2010-011796 Application 10/762,863 Technology Center 2100 ______________ Before, ROBERT E. NAPPI, TREVOR M. JEFFERSON, and STACY G. WHITE, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-11796 Application 10/762,863 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 30 through 32. We reverse. INVENTION The invention is directed to a method of compressing instructions in a Very Long Instruction Word (“VLIW”) processor. Pages 1 and 8 of Appellants’ Specification. Claim 30 is representative of the invention and reproduced below: 30. A computer storage medium having stored therein a sequence of instructions, the sequence of instructions including: a first instruction including a format field that specifies an instruction compression format; and a second instruction, following the first instruction, that is compressed according to the format field in the first instruction. REJECTION AT ISSUE The Examiner has rejected claims 30 through 32 under 35 U.S.C. § 102(b) as anticipated by Murayama (US 4,251,862, Feb. 17, 1981). Answer 4-6. 1 ISSUE Appellants argue on pages 4 through 7 of the Appeal Brief that each of the Examiner’s anticipation rejection of independent claim 30 is in error. These arguments present us with the issue: did the Examiner err in finding 1 Throughout this opinion we refer to the Appeal Brief dated March 25 2010, Reply Brief dated July 6, 2010, and the Examiner’s Answer mailed on May 5, 2010. Appeal 2010-11796 Application 10/762,863 3 Murayama teaches a second instruction that is compressed according to the format field in the first instruction? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion the Examiner erred in finding Murayama teaches a second instruction that is compressed according to the format field in the first instruction as claimed. The Examiner interprets the claim term “compression” as meaning reducing the number of digits required to represent data. Answer 10. Further, the Examiner finds that Murayama’s teaching that a bit in a first instruction indicating whether the next instruction comes from a main control or sub-control memory (which contains instructions of a different size) meets the claim. Answer 7- 9. It appears that the Examiner is considering the instructions to be shorter than in the prior art and thereby compressed. Answer 7-8. We disagree that this meets the claim of a second instruction that is compressed according to a compression format specified in a field of a first instruction. Accordingly, we will not sustain the Examiner’s rejection of claims 30 through 32 under 35 U.S.C. § 102(b). NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claim 30 under 35 U.S.C. § 101. Claim 30 recites “[a] computer storage medium having instructions stored therein . . .” The broadest reasonable interpretation of a claim drawn to a storage typically covers Appeal 2010-11796 Application 10/762,863 4 forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See e.g. Director’s Memo Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). A signal is not within one of the four categories of patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Accordingly, we now reject independent claim 30 and dependent claims 31 and 32 as being drawn to subject matter that is not eligible for patent protection under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 30 through 32 are reversed. We enter a new rejection of claims 30 through 32 under 35 U.S.C. § 101. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection… shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which Appeal 2010-11796 Application 10/762,863 5 event the proceeding will be remanded to the examiner. . . . (2) Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. 41.50(b) ELD