Ex Parte Morris et al

Patent Trial and Appeal BoardNov 28, 2012

10903155 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DALE MORRIS and JAMES E. MCCORMICK ____________________ Appeal 2010-000010 Application 10/903,155 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and MICHAEL J. STRAUSS, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000010 Application 10/903,155 2 STATEMENT OF CASE1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-57, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Appellants invented a system and method for runtime updating of hints of program instructions. Spec. ¶ 07. An understanding of the invention can be derived from a reading of exemplary claim 28, which is reproduced below (bracketed lettering added): 28. Computer-readable storage media comprising a computer- executable program having a hint instruction including both [a] a hint for predicting the occurrence of a speculative event or the value of a speculative value, and [b] hint-performance data for determining at least in part when said hint is changed. REFERENCES The Examiner relies on the following prior art: Yeh Burrows US 5,742,804 US 5,887,159 Apr. 21, 1998 Mar. 23, 1999 Tremblay Sharangpani Krishnan US 2001/0016903 A1 US 2002/0095566 A1 US 6,477,639 B1 Aug. 23, 2001 Jul. 18, 2002 Nov. 5, 2002 Philip Koopman, Cache Data Organization 1-24 (Sept. 14, 1998). 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Mar. 30, 2009) and Reply Brief (“Reply Br.,” filed Aug. 23, 2009) and the Examiner’s Answer (“Ans.,” mailed Jun. 24, 2009) and Final Rejection (“Final Rej.,” mailed Oct. 29, 2008). Appeal 2010-000010 Application 10/903,155 3 REJECTIONS Claims 28-32, 34, and 35 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Burrows. Claims 1-27 and 42-50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Yeh. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Krishnan. Claims 36-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Koopman. Claims 51-57 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Tremblay. ISSUE The issue of whether the Examiner erred in rejecting claims 1-57 turns on whether the cited prior art teaches or suggests various limitations required by the claims. ANALYSIS Claims 28-32, 34, and 35 rejected under 35 U.S.C. § 102(b) as being anticipated by Burrows The Appellants contend that the Examiner has unreasonably interpreted the term “hint-performance data” such that it encompasses “low order bits of a likely target address.” App. Br. 15; Reply Br. 6. We disagree with the Appellants. The Examiner found that “hint-performance data” is limited for determining at least in part when the hint is changed. As found by the Examiner, Burrows describes a current hint value is compared to a stored best hint value and the best hint value is changed based on the results Appeal 2010-000010 Application 10/903,155 4 of this comparison. Ans. 4, 23 (citing Burrows col. 2, ll. 6-28). Therefore, Burrows’s current hint value is equivalent to the disputed hint-performance data as it is used in modifying the best hint value. As such, the Appellants’ argument is not found to be persuasive. The Appellants further contend that Burrows fails to describe that “hint-performance data for determining at least in part when said hint is changed,” as required by claim 28. App. Br. 16; Reply Br. 6. The Appellants specifically argue that “Burrows does not disclose that one can tell from a hint itself when it is wrong. Instead, one must refer to a count value, which is stored in a hint prediction table, not in the instruction.” App. Br. 16. We disagree with the Appellants. Burrows describes monitor procedures that analyze execution data to determine hint information. Burrows col. 1, ll. 55-60. As found by the Examiner, a current hint value is compared to a stored best hint value and the best hint value is changed based on the results of this comparison. Ans. 4, 23 (citing Burrows col. 2, ll. 6- 28). That is, the collected current hint values are used to determine when the best hint value is changed. As such, the Appellants’ argument is not found to be persuasive. Claims 1-15 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Yeh The Appellants contend that the combination of Burrows and Yeh fails to teach or suggest “having an opcode that specifies a branch as likely to be taken or not taken” and specifically that the Examiner ignored the limitation “likely to be taken or not taken,” as per claims 1-15. App. Br. 17; Reply Br. 7. We disagree with the Appellants. We agree with the Examiner that whether a branch is likely to be taken or not will lead to a hint change Appeal 2010-000010 Application 10/903,155 5 and the term “performance data” encompasses any information that determines whether a hint is changed. Ans. 22. Furthermore, as discussed supra, Burrows describes a best hint value that is updated based on a current hint value (Burrows col. 2, ll. 6-28) and, therefore, these stored values are performance data. As such, both Yeh and Burrows teach or suggest performance data under the broadest reasonable interpretation. The Appellants further contend that the combination of Yeh and Burrows fails to teach or suggest that the “performance data [is] to be stored in the instructions themselves,” as per claim 1 and 16. App. Br. 18. We disagree with the Appellants. Claim 1 requires that the performance data is stored in memory that stores a program of instructions. However, claim 1 does not limit the scope of the invention such that the performance data must be stored in the program instructions. As such, the Appellants’ argument is not commensurate with the scope of the claims and therefore not found to be persuasive. Claims 16-27 and 42-50 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Yeh The Appellants further contend that the combination of Yeh and Burrows fails to teach or suggest that the performance data is to be stored in the instructions themselves, as per claims 16 and 42. App. Br. 18, 20. We agree with the Appellants. Claim 16 explicitly requires that the performance data is stored in the program instructions. The Examiner found that Yeh describes that hints and branch predict instructions are stored in instructions. Ans. 9-10 (citing Yeh col. 2, ll. 38-43). While we agree with the Examiner that Yeh describes that a prediction is a hint and a hint is stored in program instructions, we find no evidence in Yeh that teaches or suggests that the Appeal 2010-000010 Application 10/903,155 6 performance data is stored in the program instructions. The Examiner has not provided any additional rationale or evidence to illustrate how the combination of Yeh and Burrows describes this limitation. As such, we do not sustain the Examiner’s rejection of claims 16-27 and 42-50. Since this issue is dispositive as to the rejections against the claims, we need not reach the remaining arguments presented by the Appellants. Claim 33 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Krishnan The Appellants contend that Burrows’s description of “low priority address bits” does not serve as performance data, as per claim 33. App. Br. 23. We disagree with the Appellants. The Appellants presented this argument in support of claim 28 as discussed supra and this argument is not found to be persuasive here for the same reasons discussed supra. The Appellants further contend that the combination of Burrows and Krishnan fails to teach or suggest “said hint instruction is a hint-type no-op instruction,” as per claim 33. App. Br. 24. We disagree with the Appellants. The Examiner found that Krishnan describes a hint instruction that is a no- op instruction because the state of the Krishnan system is not changed. Ans. 15-16 (citing Krishnan col. 5, ll. 17-37). The Appellants further argue that “assuming arguendo that Krishnan’s branch-control instruction qualifies as a no-op instruction, it is not a hint instruction.” App. Br. 24. However, the Appellants do not provide any additional evidence or rationale to illustrate that a branch-type hint instruction cannot be a no-op type hint instruction. Absent any evidence to rebut the Examiner’s finding that Krishnan describes a no-op type hint instruction, we do not find the Appellants’ argument to be persuasive. Appeal 2010-000010 Application 10/903,155 7 Claims 36-41 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Koopman The Appellants first contend that Burrows’s description of “low priority address bits” does not serve as performance data, as per claim 36. App. Br. 23. We disagree with the Appellants. The Appellants presented this argument in support of claim 28 as discussed supra and this argument is not found to be persuasive here for the same reasons discussed supra. The Appellants additionally contend that the Examiner has failed to establish a motivation for modifying Burrows with Koopman. App. Br. 25- 26. We disagree with the Appellants. The Examiner found that a person with ordinary skill in the art would have been motivated to combine Koopman with Burrows in order to gain the advantages of efficiencies associated with writing to a cache and the unique advantages of unified cache to modify instructions. Ans. 16-17. The Appellants argue that neither Burrows nor Koopman teaches this advantage. App. Br. 25-26. However, as discussed in the KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), [o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the Appeal 2010-000010 Application 10/903,155 8 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Here, the Examiner has set forth the creative steps that a person with ordinary skill in the art would take in combining Burrows and Koopman. As such, we agree with the Examiner that a person with ordinary skill in the art would have been motivated to combine Burrows and Koopman. The Appellants also contend that Burrows teaches away from the combination. App. Br. 26. We disagree with the Appellants. “‘A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). While the Appellants have provided a scenario where it is possible that low priority instructions will be processed prior to high priority instructions, the Appellants have not provided any evidence that this scenario precludes any other scenario. Furthermore, the Appellants have not provided any evidence that Burrows discredits or discourages the combination with Koopman. As such, we do not find this argument to be persuasive. Appeal 2010-000010 Application 10/903,155 9 Claims 51-57 rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Tremblay The Appellants first contend that the combination of Burrows and Tremblay teaches storing hints in instructions and hint-performance data in a branch prediction table and not storing the result data in the instructions, as per claim 51. App. Br. 27. We agree with the Appellants. Tremblay describes that if a branch is easy to predict, software branch prediction is used. Tremblay ¶ 0016. Tremblay further describes that software branch prediction is loaded in a bit and includes an opcode. Tremblay ¶ 0035. That is, the branch prediction hint is loaded in instructions. However, we do not find any evidence on the record that the combination of Burrows and Tremblay teaches or suggests that the result data is stored in the instructions. As such, we do not sustain the Examiner’s rejection of claims 51-57. Since this issue is dispositive as to the rejection against these claims, we need not reach the remaining arguments presented by the Appellants. CONCLUSIONS The Examiner did not err in rejecting claims 28-32, 34, and 35 under 35 U.S.C. § 102(b) as being anticipated by Burrows . The Examiner did not err in rejecting claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Yeh. The Examiner erred in rejecting claims 16-27 and 42-50 under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Yeh. The Examiner did not err in rejecting claim 33 under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Krishnan. The Examiner did not err in rejecting claims 36-41 under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Koopman. Appeal 2010-000010 Application 10/903,155 10 The Examiner erred in rejecting claims 51-57 under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Tremblay. DECISION To summarize, our decision is as follows.  The rejection of claims 1-15 and 28-41 is sustained.  The rejection of claims 16-27 and 42-57 is not sustained. 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) (2010). AFFIRMED-IN-PART babc