Appeal No. 2001-2477
Application No. 09/099,384
Though prior art may be used to show what matters would lie within the
knowledge of one skilled in the art to explain ambiguities in an application, it cannot
be used to supply specific limitations not found therein. The question is not what
modification of appellants’ disclosure might occur to one skilled in the art, it is rather
whether the invention they are claiming is described in their specification.
Appellants pose the question (reply brief, page 3) “[a]re the Applicants’ required to mention
duplicate cache tags if one of ordinary skill in the art is already well aware of those concepts?” If
that is their invention, then the answer is yes. Notwithstanding the awareness of the skilled artisan,
appellants must describe in the disclosure their contribution to the art pertaining to “duplicate cache
tags” or the lack of such cache tags in the memory management system. Thus, we agree with the
examiner’s position (answer, page 3) that “the specification does NOT disclose that the memory
management system does not internally duplicate the coherence state of the cache,” and the rejection
of claims 1, 2 and 4 through 11 is sustained because “the negative limitations recited in the present
claims, which did not appear in the specification as filed, introduce new concepts and violate the
description requirement of the first paragraph of 35 U.S.C. 112.” Ex parte Grasselli, 231 USPQ
393, 394 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).
Turning to claim 12, the examiner is of the opinion (answer, pages 6 and 7) that the claim
lacks written description support for “directly probing” the caches because the microprocessor is
probed directly, and then the microprocessor in turn “indirectly” determines the contents of the
caches. Claim 12 on appeal is drafted in a method format, as opposed to a system format, and does
not specify what portion of the system is responsible for “directly probing” the caches. In other
words, nothing in claim 12 precludes the memory management unit from directly probing the
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