Ex Parte Nystad

Patent Trial and Appeal BoardJan 26, 2017

13137657 (P.T.A.B. Jan. 26, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/137,657 09/01/2011 Jorn Nystad SCS-550-1416 2146 73459 7590 01/30/2017 NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER LI, AIMEE J ART UNIT PAPER NUMBER 2183 NOTIFICATION DATE DELIVERY MODE 01/30/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOMAIL@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORN NYSTAD Appeal 2015-002811 Application 13/137,657 Technology Center 2100 Before: ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and BETH Z. SHAW, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-002811 Application 13/137,657 STATEMENT OF CASE Appellant appeals under 35U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b). THE INVENTION The claimed invention is directed to a program instruction of a thread of program instructions being executed by a processing pipeline including a next-instruction-type field indicating an instruction type of a next program instruction following the current program instruction within the processing thread. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Apparatus for processing data in response to one or more threads of program instructions, said apparatus comprising: data processing circuitry configured to be responsive to a current program instruction within a thread of program instructions to perform a current data processing operation specified by said current program instruction, wherein said current program instruction includes a next- instruction-type field specifying a type of a next program instruction to be executed within said thread, and said next-instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next-instruction-type field and said current data processing operation is independent of said next- instructions-type field. 2 Appeal 2015-002811 Application 13/137,657 THE REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sato US 6,904,514 B1 June 7,2005 REJECTIONS The Examiner made the following rejections: 1. Claims 1—27 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 1—9, 16, 17, 19, 23—25, and 27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sato. ISSUE The pivotal issue is whether the Examiner erred in finding that the limitation of “said next-instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next-instruction-type field and said current data processing operation is independent of said next-instructions-type field” is 1. indefinite; and 2. anticipated by Sato. ANALYSIS Claims 1—27 rejected under 35 U.S.C. § 112, second paragraph The Examiner finds that claim 1 is unclear regarding the purpose of the redundant information and the lack of processing of the next instruction type field or what results from the processing of the next instruction type field (Final Act. 2). 3 Appeal 2015-002811 Application 13/137,657 Appellant asserts that claiming broadly, does not constitute indefiniteness as there is no requirement in section 112 that all additional and related structures and interrelationships between structures be recited in a claim (App. Br. 13). We agree with Appellant that one skilled in the art, after reading the disclosure, would understand the claim terms, including “said next- instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next-instruction-type field and said current data processing operation is independent of said next- instructions-type field” as being broad, but not indefinite. In other words, there is redundant information but additional and related structures and interrelationships between structures do not need to be claimed. “Breadth of a claim is not to be equated with indefmiteness.” MPEP § 2173.04, citing In re Miller, 441 F.2d 689, 693 (CCPA 1971). Accordingly, we reverse the Examiner’s rejections of claims 1—27 under 35U.S.C. § 112, second paragraph. Claims 1—9, 16, 17, 19, 23—25, and 27 rejected under 35 U.S.C. § 102(b) as being anticipated Appellant argues that Sato does not teach the next-instruction-type information in both the current instruction field and in the next instruction field (App. Br. 14). The Examiner finds that the next-instruction-type information that exists in the next instruction is provided while processing the current instruction to aid in the preparation of processing of the next instruction (Final Act. 4). Thus, the same information, namely the next-instruction- type, is provided twice, first in the current instruction field, and again in the next instruction field (Final Act. 4—5). The Examiner states that it is a 4 Appeal 2015-002811 Application 13/137,657 design choice whether to leave the information twice or eliminate the second appearance (Final Act. 4—5). Appellant recognizes that this design choice argument is an obviousness argument (see App. Br. 15—16). The Examiner further states that unless the redundant information was utilized for some purpose like checking for mismatch, it would be more beneficial to remove it to save memory storage space (Ans. 5). We are persuaded that Sato does not disclose the limitation of “said next-instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next-instruction-type field and said current data processing operation is independent of said next- instructions-type field” as recited in claim 1. The Examiner’s rationale of design choice is an obviousness based rationale and thus, inappropriate for an anticipation analysis. Accordingly, we are constrained from the record before us, to reverse the Examiner’s rejection of claim 1 and for the same reason the rejections of claims 2—9, 16, 17, 19, 23—25, and 27. NEW GROUND OF REJECTION 37 C.F.R. § 41.50(b) We make the following new ground of rejection using our authority under 37 C.F.R. § 41.50(b). Claim 1—9, 16, 17, 19, 23—25, and 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over Sato. We adopt the Examiner’s findings as stated in the Final Action except as noted herein. We add that Sato does not explicitly disclose the limitation of “said next-instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next- 5 Appeal 2015-002811 Application 13/137,657 instruction-type field and said current data processing operation is independent of said next-instructions-type field” as recited in claim 1. However, it would have been obvious to one skilled in the art at the time of the invention to include the redundant next-instruction-type field for checking for mismatch to detect data corruption. This is a technique well known to those skilled in the art, and we note that Appellant has not disputed that redundancy of instruction to detect data corruption as being well known to skilled artisans. Furthermore, one skilled in the art would either eliminate the second next-instruction-type field to save memory or include it twice redundantly to detect error corruption. An artisan is presumed to possess both skill and common sense. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The two alternative choices are among a finite number of identified, predictable solutions and the “person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” Id. CONCLUSION The Examiner erred in finding that the limitation of “said next- instruction-type field is redundant information as said next program instruction also specifies said type as specified by said next-instruction-type field and said current data processing operation is independent of said next- instructions-type field” is 1. indefinite; and 2. anticipated by Sato. 6 Appeal 2015-002811 Application 13/137,657 DECISION For the above reasons, the Examiner’s rejection of claims 1—27 is reversed. We enter a new ground of rejection of claim 1 pursuant to 37 C.F.R. § 41.50(b) (2010). This section provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” TIME PERIOD 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) Reopen prosecution. 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 event the prosecution will be remanded to the examiner .... (2) Request rehearing. 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)(l)(iv). REVERSED 37 C.F.R. § 41.50(b) 7