In re Watts, 03-1121.

Citation354 F.3d 1362
Decision Date15 January 2004
Docket NumberNo. 08-904.,No. 03-1121.,No. 08/568.,03-1121.,08/568.,08-904.
PartiesIn re Lavaughn F. WATTS, Jr.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Ronald O. Neerings, Texas Instruments Incorporated, of Dallas, TX, argued for appellant LaVaughn F. Watts, Jr. Of counsel on the brief was Jay M. Cantor, Baker Botts L.L.P., of Washington, DC.

Joseph G. Piccolo, Associate Solicitor, Office of the Solicitor, of Arlington, VA, argued for appellee Jon Dudas, Acting Director, Patent and Trademark Office. With him on the brief were John M. Whealan and Thomas W. Krause, Associate Solicitors.

Before MICHEL, RADER and DYK, Circuit Judges.

DYK, Circuit Judge.

Appellant LaVaughn F. Watts, Jr. ("Watts") appeals from the decision of the United States Board of Patent Appeals and Interferences ("the Board") affirming the rejection of claims 2, 3, 5, 6, 9, 17-21, 23, 30, 31, 34-39, 41-43, 45-47, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 of United States Patent Application No. 08/568,904 (the "'904 application") under 35 U.S.C. § 103. Ex Parte Watts, No.2000-0434 (Bd. Pat.App. & Int. Aug. 30, 2002). Because the appellant failed to raise the argument he now asserts regarding the teachings of United States Patent No. 5,493,684 ("Gephardt") before the Board, we decline to address this argument on appeal.

Addressing the merits of the appellant's remaining arguments, we conclude that the Board properly sustained the examiner's rejection of claims 2, 3, 5, 6, 9, 17-20, 30, 31, 34-39, 41-43, 45-47, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73. We further hold that the appellant has not shown harmful error in the Board's failure to explicitly rely on Gephardt in connection with the rejection of claims 21 and 23. Consequently, we affirm.

BACKGROUND

The major issues in this appeal are the scope of the Gephardt patent and the Board's determination that claims 2, 3, 5, 6, 9, 30, 31, 34-39, 41-43, 45-47, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 are obvious based upon the combination of United States Patent No. 5,590,061 ("Hollowell"), United States Patent No. 5,502,838 ("Kikinis") and Gephardt. We summarize the portion of the factual background that is pertinent to this issue, as well as that pertinent to the Board's rejection of claims 21 and 23.

The '904 application is directed to a real-time thermal management system for computers. This system monitors central processing unit ("CPU") temperature and activity levels to determine whether it is appropriate for the computer to rest by blocking some or all clock signals to portions of the CPU. Stopping clock signals to a portion of the CPU slows down the operation of that portion of the CPU, resulting in lower energy consumption and less heat production. Thus, the claimed system operates by selectively slowing down portions of the CPU when the computer reaches a certain reference temperature level. Claims 2, 3, 5, 6, 9, 21, 23, 30, 31, 34-39, 41-43, 45-47, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 contain the additional limitation of not stopping clock signals when the system is performing critical operations. Claim 5 is representative:

5. An apparatus, comprising:

a provision for user input;

a provision for output;

a central processing unit (CPU) coupled to said user input and output;

a monitor for monitoring temperature within said apparatus; and a clock manager adapted to receive a control signal from said monitor, said clock manager selectively stopping clock signals from being sent to said central processing unit (CPU) when said monitored temperature rises to a level at and above a selected reference temperature level and said CPU is not processing critical I/O.

(App. at 328 (emphasis added).) Like claim 5, independent claims 6 and 9 are also directed to a thermal-management apparatus that does not slow clock speed when certain "critical I/O" is being processed. Claims 2, 3, 30, 31, 34-39, 41-43, 45-47, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 depend from claims 5, 6 and 9. Claim 21 is similar and contains means plus function language:

21. An apparatus, comprising:

a central processing unit (CPU);

means for sampling a temperature level within said apparatus; and

means for automatically adjusting the processing speed of said central processing unit (CPU) by modifying the clock signal utilized by the central processing unit (CPU) to maintain said temperature level within said apparatus below a selected reference temperature level when said CPU is not processing critical I/O.

(App. at 330 (emphasis added).) Claim 23 depends from claim 21.

In the Final Office Action dated October 8, 1998, the examiner rejected claims 2, 3, 5, 6, 9, 30, 31, 34-39, 41-43, 45-57, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 as obvious over Hollowell in view of Kikinis and Gephardt. The examiner explained that Hollowell is directed to a thermal management system for a computer that turns off a portion of the system in response to temperature. While Hollowell is not directed to reducing clock speed by stopping clock signals, Kikinis discloses a system for controlling temperature buildup in an integrated circuit ("IC") that selectively stops clock signals to control temperature. According to the examiner, it would have been obvious to manage temperature levels in a computer as taught by Hollowell using the method of selectively stopping clock signals disclosed in Kikinis. The examiner, therefore, found that the only limitation missing from the combination of Hollowell and Kikinis was stopping clock signals "to the CPU only when the CPU is not processing critical I/O." (App. at 205.)

The examiner found that Gephardt discloses the critical I/O limitation of the claimed invention. The final office action stated that "Gephardt teaches [that] the clock signals [are to] be raised if certain system activities are detected and ... lowered if certain other activities are detected." (App. at 206.) Consequently, "[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to stop the clock only when the CPU is processing non-critical I/O as taught by Gephardt, to prevent losing any vital information or processing that may occur during an I/O operation." Id.

The examiner further rejected claims 17-21 and 23 as obvious over Hollowell in view of Kikinis and United States Patent No. 5,422,806 ("Chen"). Claims 17-20 require a means for predicting temperature and controlling clock signals based on predicted temperature, and the examiner found this limitation disclosed in Chen. The examiner did not expressly address whether this combination disclosed the critical I/O limitation of claims 21 and 23 nor did he rely on Gephardt as teaching the critical I/O limitation of these claims.

Watts appealed these rejections to the Board. While Watts agreed with the examiner's analysis of Hollowell and Kikinis, he urged that Gephardt does not teach the critical I/O limitation because it failed to disclose a means for detecting critical I/O activities. (App. at 223.) Watts also urged that the primary activities referenced in Gephardt were not the same as the claimed critical I/O activities, and that Gephardt "fails to mention `critical activity' at all in any context." Id. Finally, the appellant argued that while "Gephardt teaches that clock speed is decreased in response to reduced levels of activity — thus lower clock speed for lower level of activity — and higher levels of speed for higher levels of activity," Gephardt did not teach slowing clock speed as a function of both CPU activity and temperature. Id. at 223-34. Thus, according to the appellant,

"[i]t would not have been obvious ... to combine Gephardt with Kikinis and Hollowell and modify the resulting device so that the resulting temperature reduction mechanism will selectively stop (or reduce) the clock signal to the CPU only when the monitored temperature is at or above a selected reference and said CPU is not processing critical I/O."

Id. at 224. Watts also contested the examiner's rejection of claims 21 and 23 as obvious over Hollowell in view of Kikinis and Chen, arguing that the cited combination failed to teach or suggest the critical I/O limitation.

The Board sustained the examiner's rejection of claims 2, 3, 5, 6, 9, 17-20, 21, 23, 30, 31, 34-39, 41-43, 45-57, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73 under section 103. Watts, slip op. at 11. The Board found that both Hollowell and Kikinis relate to temperature control in a computer and "it would have been obvious ... to replace the power control of Hollowell with the frequency control of Kikinis to maintain the temperature ... within the desirable operating range." Id. at 7-8. The Board also found the "[t]he primary activities of Gephardt clearly correspond to the critical activity of the claimed invention." Id. at 8. Further, the Board determined that "Gephardt teaches that a computer should not be shut down while these primary (critical) I/O activities are taking place." Id. Thus, the Board concluded that Gephardt disclosed the critical I/O limitation of claims 2, 3, 5, 6, 9, 30, 31, 34-39, 41-43, 45-57, 49-51, 53-55, 57-59, 61-63, 65-67 and 71-73, and that it would have been obvious to modify the Hollowell-Kikinis combination to take into account, in addition to temperature, whether critical I/O is being processed when stopping clock signals to slow CPU speed. Id. The Board also sustained the examiner's rejection of claims 17-21 and 23 as obvious over Hollowell in view of Kikinis and Chen, but it did not explicitly address the appellant's argument that the cited combination failed to teach the critical I/O limitation of claims 21 and 23.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Obviousness "is a legal conclusion based on underlying findings of fact." In re Thrift, 298 F.3d 1357, 1363 (Fed.Cir.2002) (quoting In re Kotzab, 217 F.3d 1365, 1369 (Fed.Cir.2000)). We review these...

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