Ex Parte Steely et al

Patent Trial and Appeal BoardDec 13, 2012

10760659 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIMON C. STEELY JR, STEPHEN R. VAN DOREN, and GREGORY EDWARD TIERNEY ____________ Appeal 2010-009845 Application 10/760,659 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JEAN R. HOMERE, and ST. JOHN COURTENAY III, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge ST. JOHN COURTENAY III. Opinion Dissenting-in-part filed by Administrative Patent Judge JEAN R. HOMERE. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009845 Application 10/760,659 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1, 8-12, and 18-32. Claims 2-7 and 13-17 have been identified by the Examiner as reciting allowable subject matter, but stand objected to as being dependent upon a rejected base claim. (Fin. Rej. 10). Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. INVENTION This invention relates to computer cache coherency protocols to ensure that whenever a processor reads a memory location, the processor receives the correct or true data. (Spec. 2). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: a first node including data having an associated state, the associated state of the data at the first node being a modified state; and a second node operative to provide a non-migratory source broadcast request for the data, the first node being operative in response to the non-migratory source broadcast request to provide the data to the second node and to transition the associated state of the data at the first node from the modified state to an owner state without updating memory, the second node being operative to receive the data from the first node and assign a shared state to an associated state of the data at the second node. Appeal 2010-009845 Application 10/760,659 3 REJECTIONS R1. Claims 1, 8-10, 12, 18, 19, and 24-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Arimilli (U.S. Pat. Appl. Pub. 2002/0129211 A1) and Chen (U.S. Pat. 6,931,496 B2). R2. Claims 11 and 20-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Arimilli, Chen, and Cypher (U.S. Pat. 6,484,240 B1). GROUPING OF CLAIMS Based on the dependencies of the claims, we decide the appeal of the obviousness rejections of claims 1, 8-11; 12, 18-20; 24-27; and 28-31 on the basis of independent claims 1, 12, 24, and 28 respectively. We decide the appeal of claims 21-23 and 32 individually. ANALYSIS A. Claims 1, 8-10, 11, 12, 18, 19, 20, and 24-31 Issue 1: Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested "the second node being operative to receive the data from the first node and assign a shared state to an associated state of the data at the second node," within the meaning of independent claim 1, and the commensurate language of independent claims 12, 24, and 28 (emphasis added). The Examiner finds: Arimilli clearly discloses "master 26 of a first agent, for example, processor complex 10a (i.e., first node), issues modifying transaction 150a on system bus 12 that targets a Appeal 2010-009845 Application 10/760,659 4 cache line that is indicated as shared in the cache directory 22 of at least one agent 10 (i.e. second node); a result of a store request by the processor 16 in the second agent 10 that targets a cache line marked as shared in the second agent's cache processor 22; par. [0029]." (Ans. 12-13). Appellants respond: According to the Examiner, the "processor complex 10a" reads on the first node recited in claim 1 and the "agent 10" reads on the second node recited in claim 1. (Answer, pp. 12- 13, 14-15). Appellant respectfully disagrees. In the above scenario of Arimilli, the only data received by the "processor complex 10a" from the agent 10 are conflicting requests to modify the target cache line. Thus, for the processor complex 10a to be "operative to assign a shared state to an associated state of the data" received from the agent 10, Arimilli must teach or suggest that the processor complex 10a assigns a shared state to a request to modify the target cache line received from the agent 10. Arimilli does not teach or suggest this subject matter anywhere. By contrast, Arimilli merely teaches that data intended to be modified by more than one agent is marked as shared in response to a received request to modify the data. (Reply Br. 10-11). Appellants' argument is persuasive. As a matter of claim construction, the limitation at issue requires that the same data is "received" and "assigned a shared state to an associated state" by the "second node." This is because the claim positively recites "data" and the limitation at issue makes reference back to the first use of "data" by using "the data." While we accord the particular content of the "data" no patentable weight (as non-functional Appeal 2010-009845 Application 10/760,659 5 descriptive material), 1 we also conclude the recited positive antecedent basis requires that claim term "the data" must refer back to the same data as the “data” element that is first introduced into the claim. The Examiner does not show that, in Arimilli, the same data is (1) "received" and "assigned a shared state to an associated state." (Ans. 12-13). Specifically, the Examiner finds that, in Arimilli, the data received (modifying transaction 150a) is not "assigned an associated state." (Id.). Instead, different data (data in a cache line intended to be modified by one or more modifying requests) is assigned an associated state." (Arimilli ¶ [0029]; Ans. 12-13). Therefore, the Examiner has not established that Arimilli would have taught or suggested the limitation at issue. Nor has the Examiner established that the Chen secondary reference overcomes the aforementioned deficiency in Arimilli. For these reasons, we are persuaded of Examiner error. Accordingly, we reverse the Examiner's rejection of claim 1, and of independent claims 12, 24, and 28, which recite the disputed limitation in commensurate form. We also reverse the Examiner's rejections of claims 8-11, 18-20, 25-27, and 29-31, which depend from independent claims 1, 12, 24, and 28, respectively. 1 We broadly but reasonably construe the recited "data" as non-functional descriptive material because the "data" is not positively recited as altering or changing any machine or computer function. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Appeal 2010-009845 Application 10/760,659 6 B. CLAIMS 21-23 Appellants argue that "[C]laim 21 recites elements similar to claim 2, which depends from claim 1" and "submits that claim 21 is patentable for reasons similar to claim 2." (App. Br. 34). Appellant's arguments are not persuasive because claim 21 does not recite commensurate limitations with claim 2. Appellants fail to present arguments specifically addressing claim 21's limitations. Because Appellants have not rebutted the Examiner's specific findings (Ans. 10, 4-5, 8-9), we sustain the Examiner's rejection of claim 21, and of associated dependent claims 22-23, for which no separate arguments of patentability were made. C. CLAIM 32 Appellants contend that independent claim 32 is patentable for the reasons advanced regarding claim 1. (App. Br. 32). However, we find Appellants' argument unavailing because claim 32 does not recite commensurate limitations with claim 1. Therefore, Appellants' arguments for claim 1 are not commensurate in scope with the broader limitations of claim 32. Accordingly, we sustain the Examiner's rejection of claim 32. (Ans. 7). Appeal 2010-009845 Application 10/760,659 7 DECISION We affirm the Examiner's rejections of claims 21-23 and 32 under § 103. We reverse the Examiner's rejections of claims 1, 8-12, 18-20, and 24- 31 under §103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2010-009845 Application 10/760,659 1 Homere, J, dissenting in part, I agree with the majority in all aspects save one. Notably, I write separately to voice my disagreement with the majority’s reversal of claim 1. In particular, the majority concludes that because Arimilli does not teach that “the data received (modifying transaction 150a) is ‘assigned an associated state,’” it does not teach the disputed limitations (Op. 5.) The majority erroneously concludes that the “limitation at issue requires that the same data is ‘received’ and ‘assigned a shared state to an associated state’ by the ‘second node.’” (Id. at 4.) Instead, the claim recites, inter alia, “the second node being operative to receive the data from the first node and assign a shared state to an associated state of the data at the second node.” (Claim 1, Emphasis added.) In my view, because the second node is not actually receiving the data, but it is merely capable of receiving such data, it is a statement of intended use, which is not entitled to patentable weight.2 Further, I note that limitation at issue is directed to a functional limitation recited as part of an apparatus. It has been held that functional limitations are distinguishable over the prior art of record only after Appellants have made a showing that the prior art of record does not teach such capability.3 The record before us is devoid of 2 See, e.g. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement of intended use “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates”). 3 Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of Appeal 2010-009845 Application 10/760,659 2 such showing or lack thereof. Therefore, the majority’s decision to reverse the claim is not supported by the record before us. Consequently, I would affirm the Examiner’s rejection. pgc performing the claimed function. Id. at 1478. The prior art structure must be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id.