Ex Parte 4922432 et al

Board of Patent Appeals and Interferences

Mar 14, 2011

90009094 (B.P.A.I. Mar. 14, 2011)

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.
90/007,879 01/17/2006 4922432 8089.002 1132
24998 7590 03/15/2011
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/009,094 03/28/2008 4922432 06816.0070.RXUS00 3207
24998 7590 03/15/2011
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/007,945 02/22/2006 4922432 4490
24998 7590 03/15/2011
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Ricoh Company, Ltd.1,
Appellant and Patent Owner
____________

Appeal 2010-005511
Reexamination Control Nos. 90/007,879, 90/007,945 & 90/009,094
Patent US 4,922,4322
Technology Center 3900
____________

Before SCOTT R. BOALICK, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
Ricoh Company, Ltd. appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of 1-20. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We REVERSE.

1 Ricoh Company, Ltd. is the Patent Owner and the real party in interest
(App. Br. 1).
2 Issued May 1, 1990 to Hideaki Kobauashi et al.
Appeal 2010-005511
Reexamination Control Nos. 90/007,879, 90/007,945 & 90/009,094
United States Patent 4,922,432

2
RELATED APPEALS AND PRIORITY
This proceeding arose from three requests for ex parte reexamination,
where those proceeding were later merged3, namely:
Control No. Filing Date
90/007,879 Jan. 17, 2006
90/007,945 Feb. 22, 2006
90/009,094 Mar. 28, 2008
All three requests sought the reexamination of United States Patent
4,922,432 (the '432 Patent) issued to Hideaki Kobauashi et al. on May 1,
1990. The '432 Patent was asserted in litigation, namely In re Ricoh
Company, Ltd. Patent Litigation, No. C 03-2289 (N.D. Cal. 2003), where
that litigation was formerly known as the consolidated cases of: Synopsys,
Inc. v. Ricoh Co., Ltd., No. C 03-2289 (N.D. Cal. 2003) and Ricoh Co., Ltd.
V. Aeroflex Inc., et al., No. C 03-4669 (N.D. Cal. 2003), (App. Br. 2), and
where that litigation is ongoing. The term of '432 Patent expired on January
13, 2008 (Ans. 4).
We heard oral arguments from Appellant on September 29, 2010, a
transcript4 of which is part of the record. 5

3 See Decision, Sua Sponte, Merging Reexamination Proceedings Pursuant
to 37 C.F.R. § 1.565(c), mailed July 21, 2008.
4 Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
5 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 24, 2009), Reply Brief (“Reply Br.,” filed August 19,
2009), and Supplemental Reply Brief (“Supp. Reply Br.,” filed February 12,
2010), and the Examiner’s Answer (“Ans.,” mailed June 19, 2009) and the
Supplemental Examiner’s Answer (“Supp. Ans.,” mailed December 10,
2009).
Appeal 2010-005511
Reexamination Control Nos. 90/007,879, 90/007,945 & 90/009,094
United States Patent 4,922,432

CLAIMED INVENTION
Patentee’s invention relates to computer-aided methods and apparatus
for designing integrated circuits (Spec. Col. 1, ll. 9-12). In particular, the
invention allows a designer to describe an application specific integrated
circuit (ASIC) through an input specification, which is used to select
architecture dependent hardware cells, using a storehouse of expert know-
how or knowledge (id. at col. 2, ll. 6-49; Figs. 2 and 3).
Claim 13, which we deem to be representative, reads as follows:
13. A computer-aided design process for designing an
application specific integrated circuit which will perform a
desired function comprising:
storing a set of definitions of architecture independent
actions and conditions;
storing data describing a set of available integrated
circuit hardware cells for performing the actions and conditions
defined in the stored set;
storing in an expert system knowledge base a set of rules
for selecting hardware cells to perform the actions and
conditions;
describing for a proposed application specific integrated
circuit a series of architecture independent actions and
conditions;
specifying for each described action and condition of the
series one of said stored definitions which corresponds to the
desired action or condition to be performed; and
selecting from said stored data for each of the specified
definitions a corresponding integrated circuit hardware cell for
performing the desired function of the application specific
integrated circuit, said step of selecting a hardware cell
comprising applying to the specified definition of the action or
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United States Patent 4,922,432

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condition to be performed, a set of cell selection rules stored in
said expert system knowledge base and generating for the
selected integrated circuit hardware cells, a netlist defining the
hardware cells which are needed to perform the desired
function of the integrated circuit and the interconnection
requirements therefor.

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Kowalski, T.J. et al., The VLSI Design Automation Assistant: from
Algorithms to Silicon, IEEE Design and Test, 33-43 (Aug. 1985) (“Kowalski
'85”).
Kowalski, T.J., The VLSI Design Automation Assistant: A Knowledge-
Based Expert System, PhD. thesis, Dept. Electrical and Computer Eng.,
(Carnegie-Mellon University Apr. 1984) (“Kowalski '84”).
Dirkes, E., A Module Binder for the CMU-DA System, masters thesis, Dept.
Electrical and Computer Eng., (Carnegie-Mellon University Apr. 1985)
(“Dirkes Thesis”).6
Baitinger, U.G. et al., The MEGA System for Semi-Custom Design, Design
Systems for VLSI circuits, 527-537 (1987) (“Baitinger”).

The Examiner rejected claims on the following bases:
claims 1-3, 6-8, and 13-20 under 35 U.S.C. § 103(a) as unpatentable

6 We note that Dirkes, E., A Module Binder for the CMU-DA System,
Research Report No. CMUCAD-85-43 (Carnegie-Mellon University May
15, 1985) (“Dirkes Report”) has been made of record, and there is a dispute
whether Dirkes Thesis and Dirkes Report are the same document and/or
contain the same disclosure.
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over Kowalski '85, Kowalski '84, and Dirkes Thesis (Ans. 6-17); and
claims 4, 5, and 9-12 under 35 U.S.C. § 103(a) as unpatentable over
Kowalski '85, Kowalski '84, Dirkes Thesis, and Baitinger (Ans. 18-20).

Appellant relies upon the following items in rebuttal to the
Examiner’s rejections:
Declaration of Roxann Martin, executed March 11, 2008 (App. Br.,
Evidence Appendix, Exhibit 2, “Martin Decl.”).
Publications, SRC Newsletter (Semiconductor Research Corp., Research
Triangle Park, NC), Sept. 1985, at 4-6 (App. Br., Evidence Appendix,
Exhibit 5, “SRC Newsletter”).
Declaration of Steven T. Dickey, dated January 22, 2008 (App. Br.,
Evidence Appendix, Exhibit 9, “1st Dickey Decl.”).
Declaration of James S. DiNatale, dated January 22, 2008 (App. Br.,
Evidence Appendix, Exhibit 10, “DiNatale Decl.”).

ISSUES
Appellant argues that claim 13 would not have been obvious over the
combination of Kowalski '85, Kowalski '84, and Dirkes because the
combination does not design ASICs, because the ISPS Processor
Instructions Set Descriptions of Kowalski '85 cannot be both “actions and
conditions” and “definitions” of actions and conditions, and because the
combination does not have expert rules for cell selection (App. Br. 20-46).
Appellant also argues that Dirkes has not been shown to be prior art, since
Dirkes Thesis and Dirkes Report have not been shown to be the same
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document, and there is no evidence that Dirkes was publicly available
through any of the organizations that had procession (App. Br. 46-66).
The Examiner finds that all of the elements of claim 13 have been
taught or suggested by the combination of Kowalski '85, Kowalski '84, and
Dirkes (Ans. 22-43). The Examiner also finds that Dirkes has been shown to
be prior art, that Dirkes Report and Dirkes Thesis are the same and that both
were publicly assessable through the cited organizations (Ans. 43-57).
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner, which we consider herein, are:
(i) Have Dirkes Thesis and Dirkes Report been shown to be the same
document or disclose the same subject matter?
(ii) Has Dirkes Report been shown to be a printed publication as
applicable under 35 U.S.C. §§ 102 and 103?

FINDINGS OF FACT
1. The Specification of the '432 Patent details computer-aided
methods and apparatus for designing integrated circuits (Spec. Col.
1, ll. 9-12), which allow a designer to describe an ASIC through an
input specification, which is used to select architecture dependent
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hardware cells, using a storehouse of expert know-how or
knowledge (id. at col. 2, ll. 6-49; Figs. 2 and 3).
2. Kowalski '85 discloses a system for designing a general purpose
computer on an integrated circuit, whereby tools are used to
transform an algorithmic description of its functions into a layout
format (Kowalski '85, pp. 33-35; Fig. 1).
3. Kowalski '85 cites as references both Kowalski '84 and Dirkes
Thesis (Kowalski '85, p. 42, refs. 8 & 10).
4. Kowalski '84 is a PhD. thesis from the principle author of
Kowalski '85 and it discloses a similar VLSI design synthesis
(Kowalski '84, Abs. Of Dissertation). The rejections (Ans. 8) rely
on Kowalski '84 for its explicit disclosure that the algorithmic
description of the chip includes “conditional constructs” (Kowalski
'84, p. 47; Fig. 18).
5. Dirkes Report discloses a method of transforming a functional
block description of a digital system to a “hardware-bound level of
description” (Dirkes Report, p. 1). A module binder is disclosed
which allows a designer to chose criteria for the bindings and
specify their relative importance, such as area of the cell, power,
timing, etc. (Dirkes Report, pp. 14-19).
6. Dirkes Report encompasses 59 pages, is dated May 15, 1985, is
listed as “Research Report No. CMUCAD-85-43,” and indicates
that “This research was supported in part by the Semiconductor
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Research Corporation grant number 82-11-007” (Dirkes Report,
cover page).
7. Dirkes Thesis has not been entered into the record. The abstract of
Dirkes Thesis was presented in the SRC Newsletter, and the same
listing provides that it was dated April 1985 and encompasses 51
pages (SRC Newsletter, p. 6).

PRINCIPLES OF LAW
Printed Publications
“[T]he public is not to be charged with knowledge of a subject until
such time as it is available to it. For this reason, it is required that the
description not only be printed but be published as well.” In re Tenney, 254
F.2d 619,626 (CCPA 1958). “Because there are many ways in which a
reference may be disseminated to the interested public, ‘public accessibility’
has been called the touchstone in determining whether a reference
constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall,
781 F.2d 897, 898-99 (Fed. Cir. 1986).
[A] reference is a “printed publication” and a bar to patentability
upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject matter or
art, exercising reasonable diligence, can locate it and recognize
and comprehend therefrom the essentials of the claimed
invention without need of further research or experimentation.
In re Wyler, 655 F.2d 221, 226 (CCPA 1981) (citations omitted).
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A thesis may not constitute a printed publication if a customary search
would not have rendered the work reasonably accessible even to a person
informed of its existence. In re Bayer, 568 F.2d 1357, 1361-62 (CCPA
1978). However, irrespective of whether a thesis had been meaningfully
catalogued in the library, a citation to the thesis in a prominent journal
article can act as a “roadmap” to the thesis, providing public accessibility.
Cornell Univ. v. Hewlett-Packard Co., No. 01-cv-1974, slip op at, 2008 U.S.
Dist LEXIS 39343, *23 (N.D.N.Y. May 8, 2008) (Rader, J.). See also
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006).
Once accessibility is shown, it is unnecessary to show that anyone actually
inspected the reference. SRI Int’l, Inc. v. Internet Security Sys., Inc., 511
F.3d 1186, 1197 (Fed. Cir. 2008).
In Northern Telecom, Inc. v. Datapoint Corp., 908 F. 2d 931, 936-37
(Fed. Cir. 1990), documents relating to a military system for distributed
computer processing of logistical data were not printed publications because
they were not generally available to the interested public, being as they were
housed within a library at Mitre Corporation and access to the library was
restricted to persons authorized by Mitre. Of the four documents distributed,
one of them contained the legend “Reproduction or further dissemination is
not authorized . . . not for public release,” and the district court found that all
of the documents were of a class that would have been distributed with such
a notice. Id at 936.
In contrast, a group of internal reports qualified as printed publications
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as they had been released to participants in a joint venture, where those
participants stated that the reports had not been considered confidential
documents and had been distributed to other parties. Cooper Cameron
Corp. v. Kvaerner Oil-Field Products, Inc., 291 F.3d 1317, 1323-24 (Fed.
Cir. 2002). While the documents contained a “confidential” label, it related
only to the financial information and did not render the entire document
inaccessible in the light of the totality of the evidence. Id. at 1324.
With respect to reports generated and distributed within an
organization, we have found previously that where there was evidence that
all members of the organization understood a policy of confidentiality
regarding research reports, where such reports were distributed according to
that policy, and where there was no evidence of actual dissemination beyond
the membership prior to the critical date, such reports are not considered to
be printed publications as specified under 35 U.S.C. § 102(b). In re George,
1987 WL 123831 at *2 (BPAI 1987).

ANALYSIS
(i) Dirkes Thesis and Dirkes Report
Appellant argues Dirkes Thesis and Dirkes Report have not been
shown to be the same document (App. Br. 50-51). Appellant also argues
that while Examiner asserts that Appellant has not presented any evidence
that the two documents are not the same, it is the Patent Office’s burden to
show non-patentability by a preponderance of the evidence (id.). The
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Examiner finds that Appellant has failed to provide evidence, nor has
argued, that the applied reference, Dirkes Report, differs in content from the
Dirkes Thesis cited in Kowalski '85 (Ans. 44). As discussed infra, we agree
with Appellant.
While the Examiner indicates that Dirkes Thesis and Dirkes Report
are the same, we do not find the evidence to be as persuasive. As argued by
Appellant, “[t]he mere fact, however, that the title, author and some of the
identifying information is the same does not prove that the references are in
fact the same” (Reply Br. 31). The documents share a title and author, but
have different page lengths and publication dates (FF 6, 7). A simple
remedy for removing doubt would be to conduct a side-by-side comparison
of Dirkes Thesis and Dirkes Report, but the former has apparently never
been produced (FF 7). As such, we cannot conclude that Dirkes Thesis and
Dirkes Report are the same document.
The Examiner also argues that Dirkes Report includes a research grant
number from the SRC, and that SRC Newsletter also lists the masters thesis
of Elizabeth Dirkes by that same grant number (Ans. 44-45). However, a
cursory glance at the Publications section of SRC Newsletter (SRC
Newsletter 6) reveals that the doctoral thesis of Costas J. Spanos is also
listed under that grant number, such that the theses and the grant numbers do
not appear to have a one-to-one correspondence. The Examiner also posits
that Dirkes Report is just Dirkes Thesis issued as a technical report by SRC
(Ans. 44). However, review of Kowalski '84, also issued as a technical
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report by the SRC, shows that the report is Kowalski’s doctoral thesis as it
contains specific dissertation and degree information, as well as a
dedication, along a research report number (Kowalski '84, pp. 1, 2, 5).
Dirkes Report lacks such information that would likely be retained if Dirkes
Thesis was simply republished as a research report. As such, we find this to
be further evidence of the potential differences between Dirkes Thesis and
Dirkes Report.
The Examiner also cites the Declaration of Roxann Martin, where she
declares that “the Dirkes thesis was issued as technical report No.
CMUCAD-85-43” (Martin Decl. ¶7). However, we do not find her
declaration to be made on the basis of a comparison of the Dirkes Thesis and
Dirkes Report, and it appears that Ms. Martin was referring to her
understanding that the thesis was published as that technical report. Without
more, we do not find this to be compelling evidence that Dirkes Thesis and
Dirkes Report are the same or that they have similar disclosures.
We acknowledge that finding of an equivalence between Dirkes
Thesis and Dirkes Report is important to the instant prior art rejections since
Kowalski '85 would likely act as a “roadmap” to Dirkes Thesis, per Cornell
Univ. and Bruckelmyer, discussed supra. Given that we do not find that they
have been shown to be equivalent or to disclose the same subject matter, the
question of whether Dirkes Report, which is actually applied in the
rejections, is a printed publication, is addressed next.

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(ii) Printed Publication Status of Dirkes Report
Appellant argues that there is no evidence that Dirkes Report was
publicly available through any of the organizations that had possession
(App. Br. 56-66; Reply Br. 34-42). The Examiner finds that evidence shows
that Dirkes was available from the Carnegie-Mellon University (CMU)
library, from the SRC, or the Center for Silicon System Implementation
(CSSI) (Ans. 48-57). We agree with Appellant, and we address the potential
points of publication in turn below.
With respect to obtaining a copy of Dirkes Report through the CMU
library, the Examiner argues that the citation to the Dirkes Thesis in
Kowalski '85 would have motivated one to contact parties responsible for
the thesis at CMU to obtain a copy (Ans. 48-49). However, even if these
actions were followed, they would have lead to Dirkes Thesis, which is not
applied in the instant rejection, as discussed supra. Following the
Examiner's proscribed actions would not have lead to one receiving a copy
of Dirkes Report. The Examiner also finds that any difficulty Appellant and
others had in obtaining a copy of Dirkes Report did not rise above a level of
reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50).
We find, however, the difficulties encountered in 2008 to obtain the copy to
be immaterial since the relevant time period would be at or before the filing
date of the '432 Patent. Thus, we have no convincing evidence provided that
shows that Dirkes Report was accessible or disseminated by CMU.
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The Examiner also alleges that Dirkes Report was publicly accessible
from the SRC in the relevant time period (Ans. 50-53). The Examiner
alleges that SRC Newsletter shows it was available as of September 1985
and that the newsletter was distributed to SRC members and participants
comprised 40-70 organizations, of which there was actually distribution of
the subject document to four entities thereof (Ans. 51-52). The Examiner
finds this to be a subsection of the public, consistent with Bruckelmyer and
SRI Int’l, and “consistent with any common-sense standard” (Ans. 52).
However, as argued by Appellant (Reply Br. 36-37), we find this
distribution was made to SRC participants only, subject to confidentiality
restrictions.
From the evidence provided, it is clear that in response to requests for
technical reports, during the pre-January 1988 timeframe, the requested
report would be sent to “any requestor that identifies itself as an SRC
member or an industrial affiliate” (Martin Decl. ¶4). The Publications
section of SRC Newsletter clearly provides: “Distribution of all contract
documents, including those in the Technical Report Series, is limited to the
staff of the SRC Member Companies and participants in the SRC research
program” (SRC Newsletter 4). Based on these findings, we agree with
Appellant that SRC distributed its technical reports subject to confidentiality
restrictions.
Although the Examiner cites to evidence that the Dirkes Thesis (or
Dirkes Report) was disseminated to the University of Southern California
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(USC) in the 1985/1986 timeframe (Ans. 54), which was alleged to not be an
SRC member, Appellant correctly points out that USC was a member in that
timeframe (Reply Br. 39). The Examiner also points out that other parties,
which are not SRC members, namely the U.S. Patent and Trademark Office.
and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54).
However, as discussed supra, dissemination of an article twenty years after
the filing date of the '432 Patent tells us little of the likelihood of
accessibility of that article in the timeframe of that filing date. Thus, given
that we find that the SRC distributed, in the relevant timeframe, its technical
reports subject to confidentiality restrictions to specific member entities, we
do not find convincing evidence that the SRC made Dirkes Report publicly
accessible.
The Examiner suggests as well that public accessibility of Dirkes
Report was possible through the CSSI (Ans. 55-56). However, we agree
with Appellant that there has been no convincing evidence presented that
shows the cataloging or indexing of Dirkes Report such that it would have
had accessibility by the public (Reply Br. 40-41).
The Examiner also suggests that one of ordinary skill in the art, in
view of the citation by Kowalski '85 of Dirkes Thesis, “would have been
provided with an explicit suggestion/motivation to consult all publications
by the same author related to the same subject matter” (Ans. 44). Even
assuming that to be true, motivating one to search for related references does
not speak to accessibility of such related references. Thus, if the citation of
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the Dirkes Thesis would have motivated one of ordinary skill in the art to
seek other Dirkes documents, as discussed supra, it would provide no
assurance that any other documents could be located, if they were circulated
under conditions of confidentiality.
As such, we do not find sufficient evidence that Dirkes Report was
publicly accessible in the relevant timeframe such that it would have been a
printed publication applicable under 35 U.S.C. §§ 102 and 103. Since both
prior art rejections rely on Dirkes Report (although stated as Dirkes Thesis),
we find that the rejections applied to claims 1-20 are improper.

CONCLUSIONS
We find that: (i) Dirkes Thesis and Dirkes Report have not been
shown to be the same document nor have they been shown to disclose the
same subject matter; and (ii) Dirkes Report has not been shown to be a
printed publication applicable under 35 U.S.C. §§ 102 and 103. As such, the
prior art rejections of claims 1-20 are improper and are reversed.

DECISION
We reverse the Examiner’s decision to reject claims 1-20.

REVERSED

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17

ack

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