Ex parte Lee
Appeal 2011008999; Appl. No. 10/453,226; Tech. Center. 2100
Decided March 21, 2012
The application was directed to microprocessor architecture. A representative claim on appeal read:
1. A cache system for a multithreaded processor having a single processing core and a plurality of active threads, the cache system comprising:
a first thread micro-cache directly coupled to the single processing core; and
a second thread micro-cache directly coupled to the single processing core,
wherein the first thread micro-cache is assigned a first active thread and the second thread micro-cache is assigned a second active thread.
The Examiner rejected the independent claims as anticipated by Joy. The Examiner relied on a processor in FIG. 3 of Joy as teaching the multithreaded processor having a single processing core. The Examiner relied on FIG. 7A of Joy as teaching the claimed micro-caches and the claimed thread assignments.
In an After Final Response, the Applicant that the Examiner had improperly used two different embodiments from Joy in making an anticipation rejection. In an Advisory Action, the Examiner took the position that "[Slince there is no clear mentioning in the Joy reference that Fig. 3 and Fig. 7 are separate non-combinable
embodiments, they are treated as the same embodiment."
The Applicant appealed, arguing once again that the anticipation rejection improperly relied on multiple embodiments:
It is improper to assume that Joy or any other reference teaches something merely because the reference does not state that such a feature is not included. In order for a reference to anticipate or render obvious the limitations of a claim the reference must explicitly or implicitly teach or suggest the feature. ... The processor configuration of Figure 3 and the cache 700 of Figure 7A are not directed to a single embodiment, as the Examiner states on page 16 of the final Office Action and in the Advisory Action.
The Applicant then referred to several sections of the Joy reference and explained how these sections related to different embodiments.
In the Answer, the Examiner repeated his earlier statement that "since there is no clear mentioning in the Joy reference that Fig. 3 and Fig. 7 are separate non-combinable embodiments, they are treated as the same
The Board reversed the anticipation rejection with little discussion, merely noting that "we find Joy’s silence as to how the processor operates with the multithreaded cache can only show what Joy fails to describe or teach, as opposed to an inference of what it does."
My two cents: A good reminder to take a close look at anticipation rejections to see if multiple embodiments are involved. Unlike a lot of cases that take several rounds for the real issue to develop, the flaw in the rejection was apparent early in prosecution. I suspect the Examiner's Answer conference let this one go to appeal only because this was not the only prior art rejection of the independent claims. Still, the Examiner looks bad by taking such an untenable position and refusing to let go.
I have another post here that summarizes a few cases about multiple embodiments in the context of anticipation. You can also view today's case Ex parte Lee as a "silence in a reference" case. I've blogged about this general topic several times-- you can find those posts by picking "silence in a reference" from the Labels list on the right side of the blog.