Ex Parte 7266786 et al

Patent Trial and Appeal Board

Sep 29, 2016

95000671 (P.T.A.B. Sep. 29, 2016)

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.
95/000,671 05/31/2012 7266786 ART-12-5016REX 4449
25226 7590 09/29/2016
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
SORRELL, ERON J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/29/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

ARTERIS, INC. and
QUALCOMM TECHNOLOGIES INCORPORATED,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2016-006229
Reexamination Control 95/000,671
Patent 7,266,786 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge, BAUMEISTER

Opinion Dissenting filed by Administrative Patent Judge, SIU.

BAUMEISTER, Administrative Patent Judge

DECISION UNDER 37 C.F.R. § 41.77(f)
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BACKGROUND
In our original Decision on Appeal, mailed October 8, 2014
(“Decision”), the Board affirmed the Examiner’s decision rejecting claims 1,
8, 12, 29–30, 33, 35, 36, and 40 under 35 U.S.C. 102(e) as anticipated by
U.S. Patent No. 6,775,750 (“Krueger”), as well as the Examiner’s decision not
to reject claim 421 under 35 U.S.C. 102(e) as anticipated by Krueger.
Decision 15. In response to the original Decision, Requester, Arteris, Inc.,
requested a rehearing under 37 C.F.R. § 41.79.2 Patent Owner, Sonics, Inc.,
filed comments under 37 C.F.R. § 41.79(c) responsive to Requester’s
Request for Rehearing.3
Upon Rehearing, the scope of claim 42 was re-evaluated, and a
majority of the Panel determined that the claim reasonably could be
interpreted more broadly than it had been during the original appeal.
Decision on Request for Rehearing, mailed May 19, 2015 (“Reh’g
Decision”), Majority Opinion. More specifically, the Majority concluded
that claim 42 “is broad enough to simply read on inputting two sets of numbers
into a general-purpose computer.” Id. at 20. The Majority found that Krueger
at least discloses inputting two numbers into a computer, so the Majority

1 Claim 42 is not an originally issued claim of the ’786 Patent. Claim 42,
instead, was added by claim amendment during the reexamination
proceeding. See Response to Decision to Grant Request for Inter Partes
Reexamination under 37 CFR 1.937 & 1.942 & 1.943 & 1.945, filed
October 5, 2012.
2 Requester’s Request for Rehearing Following a Decision on Appeal in an
Inter Partes Reexamination, dated November 10, 2014 (“Req. Reh’g” or
“Request for Rehearing”).
3 Patent Owner’s Comments Under [§] 41.79(c) to Requester’s Request for
Rehearing, filed December 10, 2014 (“PO Comments”).
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modified the Panel’s initial Decision to the extent that the Majority newly
reversed the Examiner’s non-adoption of the anticipation rejection over
Krueger. Id.
The Majority also newly rejected claim 42 under 35 U.S.C. § 314
because claim 42, as then presented, constituted a proposed new claim in an
inter partes reexamination proceeding that impermissibly enlarges the scope of
the claims of the ’786 Patent. Id. The Majority designated these two rejections
as new grounds of rejection pursuant to 37 C.F.R. § 41.77(a). Id. 20–21.
Following the Panel’s Decision on Rehearing, Owner filed an
Amendment and Request to Reopen Prosecution, which included a proposed
claim amendment and arguments on the merits as to why the proposed claims
are patentable.4 The proposed claim amendment entailed an amendment to
claim 42 and the addition of new claims 43–46. Owner’s Request to Reopen
Prosecution at 8–10.
In response to Owner’s Request to Reopen Prosecution, Requester
filed its own Comments to Owner’s Request to Reopen pursuant to
37 C.F.R. § 41.77(b)(1).5 Therein, Requester argued that “the proposed
amendments proffered in the PO Request go beyond amending or
substituting claim 42, and include adding new claims 43–56, which are not
limited to the subject matter to which the rejection was applied.” Id. at 2–4.
Requester also argued the amendment to claim 42 does not render it
patentable for the following three general reasons: the proposed amendment

4 Patent Owner’s Amendment and Request to Reopen Prosecution Pursuant
to 37 C.F.R. § 41.77(b)(l), filed June 19, 2015.
5 Requester’s Comments to Patent Owner’s Amendment and Request to
Reopen [Prosecution], filed July 20, 2015 (“3PR Comments to Owner’s
Request to Reopen”).
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to claim 42 lacks written description support in the originally filed
Specification of the ’786 Patent, proposed claim 42 is indefinite, and
proposed claim 42 does not overcome the anticipation rejection based upon
Krueger. Id. 4–9.
Upon receipt of these filings, the Examiner issued a Determination
under 37 CFR 41.77(d), mailed September 10, 2015 (“Examiner’s Rule
41.77(d) Determination”). Therein, the Examiner found the proposed
amendment to be improper for various formal and substantive reasons.
Specifically, the Examiner found amended claim 42 to be formatted
improperly because it included underlines and strikethroughs that indicate
changes relative to the earlier version of claim 42, but the format instead
should have reflected that all of claim 42 is new relative to the issued patent.
Examiner’s Rule 41.77(d) Determination 5–6 (citing 37 C.F.R. §§ 1.530(e)
and (i); MPEP 2250(IV)). Regarding the merits, the Examiner found that
amended claim 42 overcomes the broadening rejection under 35 U.S.C.
§ 314, but is unpatentable as “conflict[ing] with the written description”
requirement (i.e., under 35 U.S.C. § 112, first paragraph) and, therefore,
does not overcome the anticipation rejection based upon Krueger.
Examiner’s Rule 41.77(d) Determination 5, 7, 10.
With respect to the newly proposed claims 43–56, the Examiner found
that the amendment was improper because these new claims are “not
directed toward subject matter to which the new rejection was applied.”
Examiner’s rule 41.77(d) Determination 11–12 (citing Manual of Patent
Examining Procedure (MPEP) 2682(II)(B)).
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Owner then replied to the Examiner’s Rule 41.77(d) Determination
with a second amendment.6 In this amendment, the Examiner re-presented
claim 42 in a rule-compliant format. Owner’s Rule 41.77(e) Amendment 8–
9. Owner also expressed an intent to cancel proposed claims 43–56. Id. 11
(stating that “Patent owner no longer submits these claims”).
Requester filed a response captioned Reply to the Examiner’s Rule
41.77(d) Determination and Owner’s Rule 41.77(e) Amendment,7 which
repeats some previous arguments and presents some new arguments
regarding claim 42. First, Requester argued that Owner’s submission of a
second amendment is procedurally improper. 3PR Reply to Rule 41.77
Amendment 2–3. Requester also addresses the merits of amended claim 42,
reasserting several reasons for why amended claim 42 should be rejected
under 35 U.S.C. §§ 101, 102, and 112, ¶¶ 1, 2. Id. 3–10. Requester does not
challenge the Examiner’s finding that amended claim 42 overcomes the
improper broadening rejection under 35 U.S.C. § 314. See generally Id.
Upon receipt of Owner’s corrected amendment and Requester’s
Reply, both pursuant to Rule 41.77(e), the Examiner acknowledged the
comments of Owner’s Rule 41.77(e) Amendment, but refused entry of the
corrected amendment. Miscellaneous Communication at 2, mailed April 21,
2016. The Examiner entered Requester’s comments in the 3PR Reply to
Owner’s rule 41.77(d) Amendment. Id. The Examiner then forwarded the

6 Patent Owner’s Amendment in Response to Determination Under 37 CFR
§ 41.77(d), filed October 9, 2015 (“Owner’s Rule 41.77(e) Amendment”).
7 Requestor’s Reply to Patent Owner’s Amendment in Response to
Determination, filed November 9, 2015 (“3PR Reply to Owner’s Rule
41.77(e) Amendment”).
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proceeding back to the Board for a new decision under 37 C.F.R. § 41.77(f).
Id.
We address each of the formal and substantive challenges
individually, as follows.

THE RELEVANT CLAIMS
Independent claim 1 of the ’786 Patent reads as follows, with
emphasis added:
1. A method comprising:
inputting configuration parameters that identify a first
address location to a service module;
inputting protection parameters, wherein the protection
parameters are selected from the group consisting of a number
of different protection keys that can exist for modules in a
device and a number of different protection IDs that can exist
for modules in the device; and
determining whether a request from a first module in the
device should be passed on to the service module and executed
based upon the inputted protection parameters and the first
address location of the service module.

The initial version of new claim 42 reads as follows:
42. A method comprising:
inputting configuration parameters that identify a first
address location to a service module at design time; and
inputting protection parameters at design time, wherein
the protection parameters include a number of different
protection keys that can exist for one or more service modules
in a device and a number of different protection IDs that can
exist for modules in the device to determine during the device’s
operation whether a request coming from a first module in the
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device should be passed on to a first service module based upon
the inputted protection parameters and the first address location
of the first service module.

The amended version of new claim 42 is reproduced below with
underlining and strikethroughs to more clearly show the respective text
additions and deletions relative to the initial version of claim 42:
42. A method comprising:
inputting, at a design time of a device, configuration
parameters that identify a first address location to a service
module at design time; and
inputting, at the design time, protection parameters at
design time, wherein the protection parameters include a
number of different protection keys that can exist for one or
more service modules in [[a]] the device and a number of
different protection IDs that can exist for modules in the
device to determine during the device’s operation, wherein
the design time is prior to creating a hardware netlist that
implements the configuration parameters and protection
parameters; and
determining whether a request coming from a first
module in the device should be passed on to a first service
module based upon the inputted protection parameters and the
first address location of the first service module.

CONTENTIONS AND ANALYSIS
I
We first address the procedural question of which claim or claims are
before us on appeal. As noted above, Owner initially responded to the
Board’s May 19, 2015, Decision on Rehearing by amending claim 42 and
adding new claims 43–56. Owner’s Request to Reopen Prosecution 8–10.
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In response to the Examiner’s findings regarding this amendment, Owner
refiled the amendment, presumably intending to cancel newly added claims
43–56 (Owner’s Rule 41.77(e) Amendment 11) and representing amended
claim 42 in a format that complied with Rule 37 C.F.R. § 1.530(i) (id. 8–9).
Requester argues that this refiled amendment is procedurally improper
and should not be entered because Rule 41.77(e) “does not contain any
permission for the Patent Owner to file additional amendments to the
claims.” 3PR Reply to Owner’s Rule 41.77(e) Amendment. 3. For the
following reasons, this argument is moot.
Regarding newly proposed claims 43–56, Owner states “[the
Examiner’s Rule 41.77(d)] Determination also rejects previously added new
claims 43–56. Patent owner no longer submits these claims.” Owner’s
Rule 41.77(e) Amendment 11; see also id. 10 (“Pursuant to 37 C.F.R.
§§ 1.530(e) and 1.941, and with entry of this Amendment, claims 1–42 [as
opposed to claims 1–56] are pending”). Furthermore, these claims are
omitted from the claims listed in Owner’s Rule 41.77(e) Amendment. Id. 9.
As such, and regardless of whether Owner followed all proper procedures
for cancelling claims, we understand Owner to be abandoning its pursuit of
patent protection for claims 43–56.
Regarding amended claim 42, the Examiner had already considered
the claim on the record when conducting the Rule 41.77(d) Determination:
The Examiner has reviewed the Patent Owner’s Request
to Reopen Prosecution and the Requester[’]s Comments to the
Request and finds the proposed amendments overcome the
rejections based on 35 USC § 314, but do not overcome the
anticipation rejections based on Krueger under 35 USC 102(e)
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and therefore those rejections are maintained for the reasons set
forth below.
Examiner’s Rule 41.77(d) Determination 3–4.
The proposed amendment to claim 42 in Owner’s Rule 41.77(e)
Amendment merely was formal, changing the formatting of the already-
considered claim—not the claim’s substance. As such, our reconsideration
under Rule 41.77(f)—a reconsideration and decision regarding only claim
42—will be unaffected by whether Owner’s Rule 41.77(e) Amendment is
entered.
Furthermore, for reasons set forth in Section II of this Opinion, infra,
the Board is rejecting claim 42 under 35 U.S.C. § 314 for improperly
enlarging the scope of the originally filed patent claims. Moreover, this
rejection is being designated as a new ground of rejection pursuant to
37 C.F.R. § 41.77(a). This action will entitle Owner to once again amend
claim 42 pursuant to Rule 41.77(b). Such future amendment presumably
will resolve any formal matters that Owner’s Rule 41.77(e) Amendment
attempted to address.

II
The Examiner finds that amended claim 42 overcomes the Board’s
rejection under 35 U.S.C. § 314 for improperly enlarging the scope of the
claims of the ’786 patent. Examiner’s Determination 5. Requester does not
challenge this conclusion. See generally 3PR Reply to Owner’s Rule
41.77(e) Amendment.
We agree that the amendment addresses the bases upon which the
Board issued the broadening rejection. See Dec. on Reh’g 18–20. However,
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an additional, not-previously-addressed basis exists for concluding that
claim 42 still impermissibly enlarges the scope of the claims of the
’786 Patent. For the reasons that follow, then, we disagree with the
Examiner’s ultimate determination that the amendments to claim 42
overcome the Section 314 rejection.
Issued patent claim 1 recites, inter alia, “determining whether a
request from a first module in the device should be passed on to the service
module and executed based upon the inputted protection parameters and the
first address location of the service module” (emphasis added). In contrast,
amended claim 42 more broadly recites “determining whether a request
coming from a first module in the device should be passed on to a first
service module based upon the inputted protection parameters and the first
address location of the first service module.” That is, amended claim 42
does not require that the request be executed, as well as passed. As such,
amended claim 42 is broader than issued claim 1 in that amended claim 42
additionally reads on a method wherein a determination is made to pass a
request without a subsequent execution, or a method wherein a
determination is made to pass a request and then some modification or
alternative to the request is executed—not the request itself.
The other independent claims of the ’786 Patent are claims 33, 35, 36,
and 40. Each of these claims are apparatus claims, and each of these claims
recite components or means for determining whether a request should be
executed, as well as passed. As such, claim 42 is impermissibly broader
than each of the ’786 Patent’s independent claims. See In re Freeman, 30
F.3d 1459, 1464 (Fed. Cir. 1994) (holding that “[a] claim that is broader in any
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respect is considered to be broader than the original claims even though it may
be narrower in other respects”).
For these reasons, we maintain the rejection of claim 42 under
35 U.S.C. § 314 for impermissibly enlarging the scope of the claims of the
’786 Patent. Because this issue was not previously addressed, we designate
this rejection as constituting a new ground under 35 U.S.C. § 41.77(a).

III
Contentions regarding non-patentable subject matter
Requester argues that amended claim 42 should be rejected under
35 U.S.C. § 101 for being directed to non-patentable subject matter.
3PR Reply to Owner’s Rule 41.77(e) Amendment 4–5. More specifically,
Requester argues that amended claim 42 “recites nothing more than abstract
ideas.” Id. 4. According to Requester, amended claim 42 does not provide
any limits as to where the two parameters are input, and amended claim 42
does not require that a device performing the determining step be the same
device into which the parameters are input. Id. 4–5. We understand
Requester’s position to be, then, that amended claim 42 is so broad that it
reads on the following two acts: first typing two numbers into any device,
such as a calculator or an Excel spreadsheet. Then, based upon these two
numbers, making a mental determination as to whether a request from the to-
be-designed device should be passed from a first module to a second module
based upon one’s knowledge of the two inputted numbers.
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Controlling Authority
Rule 37 C.F.R. § 1.906 reads as follows:
Scope of reexamination in inter partes reexamination
proceeding.
(a) Claims in an inter partes reexamination proceeding
will be examined on the basis of patents or printed publications
and, with respect to subject matter added or deleted in the
reexamination proceeding, on the basis of the requirements of
35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding
will not be permitted to enlarge the scope of the claims of the
patent.
(c) Issues other than those indicated in paragraphs
(a) and (b) of this section will not be resolved in an inter partes
reexamination proceeding. If such issues are raised by the
patent owner or the third party requester during a reexamination
proceeding, the existence of such issues will be noted by the
examiner in the next Office action, in which case the patent
owner may desire to consider the advisability of filing a reissue
application to have such issues considered and resolved.
Analysis
Rule 1.906 makes clear that the question of whether any claim—even
a newly presented claim—is directed to non-patentable subject matter, is a
question that will not be resolved in an inter partes reexamination.
Accordingly, the Board will not address this issue.

IV
Requester initially argues that “[t]he limitation defining ‘design time’
as being ‘prior to creating a hardware netlist that implements the
configuration parameters and protection parameters’ contradicts the express
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teachings of the ’786 patent.” 3PR Comments to Owner’s Request to
Reopen 6. According to Requester, the ’786 Patent only discloses the term
“design time” in relation to configuring the address mapping and protection
module, expressly including the creation of the netlist. Id. As such,
Requester concludes, Owner previously proffered and admitted that these
“design steps” occur prior to the fabrication of the device. Requester argues
that the amended claim language setting forth “[a] time prior to creation of a
hardware netlist newly excludes actions that were included at every other
stage of these reexamination proceedings.” Id.
We understand Requester to be arguing that Owner initially used the
term “design time” broadly to mean any time prior to device fabrication, but
that the claim amendment narrows this general pre-fabrication timeframe to
the more specific timeframe of that time prior to device fabrication that is
also before the creation of the netlist. That is, we understand Requester to
be arguing that adding additional claim language to further narrow a claim
somehow renders the claim indefinite. Requester offers no legal authority
for this assertion. And we will not adopt this legal theory, which is contrary
to well established principles of patent claim drafting.
Requester subsequently argues (3PR Reply to Owner’s Rule 41.77(e)
Amendment 5) that amended claim 42 should be rejected as indefinite under
35 U.S.C. § 112(b) (Pre-AIA paragraph 2) because the amended claim does
not particularly point out and distinctly claim the subject matter the inventor
regards as the invention. More specifically, Requester asserts that “each of
the three steps of new claim 42 are wholly undefined with respect to who or
what is performing the steps, and the inputting steps are also wholly
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undefined with respect to where the parameters are being input.” Id.
Requester further alleges that “the preamble does not shed any light,” and
“anyone or anything could be inputting configuration and protection
parameters into anything, as long as it happens to coincide with the design
time of a device, and then anyone or anything could perform the step of
determining.” Id.
Even accepting for the sake of argument that Requester’s contentions
are true, Requester’s contentions are still unpersuasive that the claim is
indefinite. Requester’s contentions are solely directed to the breadth of
claim 42, but it is well settled that breadth is not to be equated with
indefiniteness. See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Accordingly, Requester has not established that amended claim 42 is
indefinite.

V
Requester argues that the Examiner should have rejected amended
claim 42 under 35 U.S.C. § 112(a) (pre-AIA paragraph 1) for lacking
adequate written description. 3PR Comments to Owner’s Request to
Reopen 5. More specifically, Requester argues that “[t]he ’786 Patent does
not explicitly teach any step of inputting the configuration parameters and
protection parameters during configuration of the address mapping and
protection module.” Id. According to Requester, the ’786 Patent instead
“merely states that the designer ‘must understand the configuration
architecture (403),’ which included the ‘definition of the protection scheme’
and the ‘definition of the configuration parameters.’” Id. (citing ’786 Patent,
col. 3, ll. 6–12; FIG. 4, blocks 405 and 423).
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This argument is unpersuasive because it is not commensurate in
scope with the language of claim 42. As a threshold matter, Requester does
not contend in relation to this argument that the ’786 Patent fails to disclose
inputting the configuration protection parameters generally, at least at some
point in time. Id. at 5. In fact, Requester seems to acknowledge that these
parameters are input at some point in time. Id. (stating that “[t]he
’786 patent thus leaves open when, where, and how the configuration
parameters and protection parameters are input”).
As such, we understand Requester to be arguing more narrowly that
the ’786 Patent fails to teach inputting the parameters specifically “during
configuration of the address mapping and protection module.” However,
amended claim 42 does not limit the inputting steps to the specific time of
when the address mapping and protection module is configured. The claim
only requires that “the design time is prior to creating a hardware netlist that
implements the configuration parameters and protection parameters.”
Requester next argues that “the ‘786 Patent also does not provide
written description support for a ‘hardware netlist that implements the
configuration parameters and protection parameters.’” Id. Again, though,
Requester does not dispute that the ’786 Patent discloses inputting the
claimed configuration and protection parameters at some point during the
device-design stage. Furthermore, Requester has not provided any evidence
the ’786 Patent teaches inputting the parameters at any time other than
before the netlist is generated.
To the contrary, the original claims of the 10/288,973 application,
which matured into the ’786 Patent, includes additional teachings
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complementing those teachings of FIG. 4 that Requester discusses. Reading
the disclosure relating to FIG. 4 in combination with these additional
teaching indicates that Owner did, in fact, have possession of the idea of
inputting the configuration and protection parameters into the hardware
netlist. See, e.g., original claims 19 and 30 of the ’973 application, which
are reproduced below:
19. A method comprising:
receiving a map definition;
receiving a set of configuration parameters;
receiving a product specification; and
generating a netlist.
30. A method comprising:
inputting an address map;
inputting protection parameters;
inputting configuration parameters; and
generating a database for configuring circuitry.
These originally-filed application claims further demonstrate that the
configuration and protection parameters are received—and therefore input—
prior to the netlist being generated. For these reasons, Requester has not
established that amended claim 42 lacks adequate written description.

VI
Finally, the Examiner provides two reasons for why Owner’s claim
amendments do not overcome the anticipation rejection based upon Krueger.
Examiner’s Rule 41.77(d) Determination 7–11. First, the Examiner finds
that amending claim 42 to affirmatively recite the determining step “would
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be the same as the corresponding limitation is [sic: in] claim 1[,] which
stands rejected as anticipated by Krueger.” Id. 10.
This finding is inaccurate because amended claim 42 recites that the
configuration and protection parameters are input at design time and that
design time occurs prior to creating a hardware netlist that implements the
parameters, whereas issued method claim 1 does not recite that the
parameters are input at design time. In fact, the Board’s primary basis for
affirming the Examiner’s rejection of claim 1 was that Owner’s argument—
that Krueger did not teach inputting parameters at design time—is not
commensurate in scope with the language of claim 1. Decision 6 (“Patent
Owner fails to demonstrate persuasively that the Specification discloses (and
that claim 1 requires) that inputting protection parameters must be
performed ‘at design time.’”).
The Examiner’s second reason for maintaining the anticipation
rejection is as follows:
In summary, the proposed amendment to claim 42 . . .
does not overcome the anticipation rejection based on Krueger
under 35 USC 102(e) because the proposed amendment would
create inconsistency between how the term “design time” is to
be construed versus how it has been construed at every point in
prosecution prior to the proposed amendment, and the proposed
amendment would create conflict between the claim language
and the written description, rendering the claims indefinite.
Examiner’s Rule 41.77(d) Determination 10–11.
As best we can understand from this statement, the Examiner’s
decision to maintain the anticipation rejection appears to be based on the
Examiner’s determination that the amendment violates the written-
description and indefiniteness requirements of 35 U.S.C. § 112. Regardless
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of whether the Examiner’s conclusions regarding the claim’s written
description support and definiteness are true, the Examiner has not
established how these conclusions, which relate to separate patentability
questions, would serve as a reasonable basis to maintain the anticipation
rejection.
Turning from the Examiner’s reasoning, Requester also presents
additional arguments for why amended claim 42 does not overcome the
anticipation rejection over Krueger.
For example, Requester argues that “Krueger both inherently and
expressly discloses inputting protection parameters at design time.”
3PR Comments to Owner’s Request to Reopen 8. According to Requester,
inputting protection parameters reads on Krueger’s disclosure of configuring
the system protection map (SPM) by the ‘system developer.’” Id. (citing
Supplemental Affidavit of Robert W. Horst signed Apr. 23, 2013 (“Supp.
Horst Affidavit”) ¶ 14; Krueger Abstract; col. 1, l.55–col. 2, l. 25; col. 3, ll.
7–20 and 38–43). Requester further explains that “[the] static configuration
of the SPM would necessarily be input ‘at design time’ because it already
exists prior to the device undergoing initialization.” Id. at 8. Requester
further asserts that even in Krueger’s dynamic embodiments, the disclosure
of “updating” the system indicates that the system inherently has initial
configuration prior to operation of the device that would be input at design
time. Id. Requester makes similar arguments in regard to the protection
parameters (id. at 8–9), arguing that “hardwired values would necessarily be
input at design time, prior to the fabrication of the device” (id. at 9).
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These arguments are unpersuasive. Inputting parameters at the time
of a manufactured chip’s initialization does not constitute inputting
parameters at a time that is prior to creating the hardware netlist that is used
to manufacture the chip. Furthermore, updating a system’s parameters does
not indicate that the system inherently was fabricated by inputting the
claimed parameters into a system prior to creating a netlist. As evidenced by
the BACKGROUND section of the ’786 Patent, itself (see Chou, col. 1,
ll. 36–47), a designer could alternatively design a chip with sufficiently
excessive transistors and circuitry to obviate the need for inputting the
claimed parameters into the netlist at design time.
Requester also argues that “these amended elements relating to
‘design time’ are not sufficient to ‘limit claim 42’s affirmatively recited
method steps’ as would be required in view of the Rehearing Decision.”
3PR Comments to Owner’s Request to Reopen 7. According to Requester,
claim 42 does not require inputting the configuration and protection
parameters into anything, much less inputting them into a computer. Id.
Requester urges that amended claim 42 does “not resolve the issue, other
than to indicate that [the parameters] are input somewhere somehow at a
time prior to creating a hardware netlist. Id.
This argument is unpersuasive in that it conflates the section 101
inquiry with the section 102 inquiry. Requester does not explain why
Krueger discloses all of the limitations of claim 42, as amended, even under
a broad interpretation of that claim. That is, even if the inputting steps of
claim 42 may be interpreted so broadly as not requiring inputting the
parameters into a computer, Requester does not explain how Krueger
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teaches the determining step of amended claim 42 is based upon the inputted
protection parameter.
In contrast, we find it noteworthy that Requester’s expert merely
alleges rationales for why Krueger renders the claimed “inputting” steps
obvious, but does not allege any facts for alternatively concluding that
Krueger anticipates the claims. Specifically, Requester’s Expert, Dr. Horst,
initially asserts without support that “[i]f the claims are narrowly interpreted
in a way that requires the ‘inputting’ to be done at design time, that
limitation is still disclosed or obvious in light of the prior art.” Supp. Horst
Affidavit ¶ 14 (emphasis added). However, Dr. Horst then only sets forth
reasons for why Krueger renders “inputting” at design time obvious—not
reasons for concluding that Krueger actually discloses the inputting steps:
Krueger at Col 3:13–16 states: “To partition statically, a
system developer allocates resources (memory and devices) to
each processor and this partitioning doesn't change during
system operation. This works well in many embedded
systems.” Other prior art references may not explicitly discuss
the tradeoffs of static (design time) and dynamic (run time)
access limits, but system designers often make similar tradeoffs
of what to make static (for instance as implemented in read-
only-memory) and what to make dynamic (in random access
memory). In my opinion, it would have been obvious to one
skilled in the art how to restrict accesses based only on design-
time information by implementing the associated tables in read-
only memory.
Id. (emphasis added).
For these reasons, Requester’s arguments are unpersuasive that
Krueger anticipates claim 42 under 35 U.S.C. § 102(e).

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CONCLUSIONS
The Examiner erred in concluding that Owner’s amendment to
claim 42 overcomes the rejection under 35 U.S.C. § 314 for improperly
enlarging the scope of the claims of the ’786 Patent. Because our reasons
for reaching this conclusion were not raised or addressed previously, we
designate this rejection as constituting a new ground under 35 U.S.C.
§ 41.77(a).
The Examiner erred in rejecting claim 42 under 35 U.S.C. § 102(e) as
being anticipated by Krueger.
The Examiner did not err in refusing to adopt Requester’s proposed
rejection of claim 42 under 35 U.S.C. § 101 for being directed to
unpatentable subject matter.
The Examiner did not err in refusing to adopt Requester’s proposed
rejection of claim 42 under 35 U.S.C. § 112(a) (pre-AIA 112, ¶ 1) for
lacking adequate written description.
The Examiner did not err in refusing to adopt Requester’s proposed
rejection of claim 42 under 35 U.S.C. § 112(b) (pre-AIA 112, ¶ 2) for
indefiniteness.

DECISION
We have considered the submissions by Patent Owner and Requester
in response to the new grounds of rejection set forth in the Decision on
Rehearing, and modify the Decision to the extent discussed above, as
follows:
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We reverse the Examiner’s rejection of claim 42 under 35 U.S.C.
§ 102(e) as anticipated by Krueger.
We reject claim 42 under 35 U.S.C. § 314.
We decline to otherwise modify the Decision on Rehearing.

Pursuant to 37 C.F.R. § 41.77(a), the above-noted rejection under
35 U.S.C. § 314 constitutes a new ground of rejection. Section 41.77(b)
provides that “[a] new ground of rejection . . . shall not be considered final
for judicial review.” That section also provides that Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the
claims so rejected or new evidence relating to the claims
so rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon
the same record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
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request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph
(a) of this section, for requesting further rehearing under paragraph (c) of
this section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties’ rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

37 C.F.R. 41.77(a) & (f)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ARTERIS, INC. and
QUALCOMM TECHNOLOGIES INCORPORATED,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2014-006504
Reexamination Control 95/000,671
Patent 7,266,786 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

SIU, Administrative Patent Judge, dissenting.

I respectfully dissent from my colleagues’ opinion and would affirm
the Examiner’s rejection of claim 42 under 35 U.S.C. § 102 as anticipated by
Krueger and under 35 U.S.C. § 112, first paragraph as failing the written
description requirement. See, e.g., Examiner’s Determination, dated
September 9, 2015, 5–11.
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Written Description – Claim 42
Patent Owner proposes amendments to claim 42 including “inputting,
at design time of a device, configuration parameters that identify a first
address location to a service module” and “inputting, at the design time,
protection parameters, . . . wherein the design time is prior to creating a
hardware netlist that implements the configuration parameters and protection
parameters.” Patent Owner’s Amendment and Request to Reopen
Prosecution Pursuant to 37 C.F.R. § 41.77(b)(1), filed June 19, 2015
(“PO Request”) 12. As written description support for these proposed claim
amendments, Patent Owner states that “the specification describes that ‘the
invention allows a product designer to configure the address mapping and
protection module at design time, such that, only the minimum specified
mapping and protection is implemented into the hardware.’” PO Request 13
(citing Spec 2:44–57, 3:6–27, Fig. 4).
After careful review of the Specification, I have identified Patent
Owner’s cited phrase in the Specification (in describing the embodiment of
Fig. 4 of the Specification) that discloses “the ability for a designer to
configure the address mapping and protection hardware module at design
time using a specification language and achieve the goal of producing a
minimized hardware implementation.” Spec. 3:1–5. Even assuming,
however, that the Specification provides sufficient written description
support for providing a designer with the ability to configure an address
mapping and protection hardware module at design time, Patent Owner does
not propose such an amendment to claim 42. Instead, Patent Owner
proposes an amendment to claim 42 to require inputting protection
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parameters “at the design time” and not providing an ability to configure an
address mapping and protection hardware module “at the design time.” Nor
does Patent Owner indicate where the Specification discloses inputting
protection parameters “at the design time.” Therefore, the only logical
conclusion is that the Specification fails to disclose and, therefore, provides
insufficient written description support for inputting protection parameters
“at the design time.”
Patent Owner argues that “FIG. 4 . . . illustrate[s] a process and
system that allows a product designer to input information from a design
specification for protection parameters . . . for a device.” PO Request 13–14
(citing Spec. Fig. 4 – steps 401, 403, 405, 407, 409, 423, and 425). Based
on this alleged disclosure of the Specification, Patent Owner asserts “claim
42 makes clear that ‘design time’ refers to the design of a device and occurs
at a time ‘prior to creating a hardware netlist that implements the
configuration parameters and protection parameters’ of the device, which is
prior to fabricating . . . the design in hardware.” PO Request 14. In view of
the explicit recitation of amended claim 42 of inputting protection
parameters “at the design time,” I would agree with Patent Owner that claim
42, as amended, “makes clear” that inputting protection parameters must be
performed “at the design time.” However, the issue is not whether claim 42
is made “clear.” The issue here is whether the Specification provides
sufficient written description support for Patent Owner’s proposed
amendment(s). While the Specification discloses an embodiment in Fig. 4,
on which Patent Owner relies for written description support of inputting
protection parameters “at the design time,” I do not identify any portion of
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the embodiment of Fig. 4 involving inputting protection parameters (“at the
design time”).
Instead, the Specification discloses an embodiment in Fig. 4 in which
the “Product Designer” “Understand[s] the address mapping and protection
architecture options” and an “architecture” and that the “architecture”
includes various “definitions” (i.e., definition of an “address map,”
“protection key map,” “set of configuration parameters,” and “specification
language”). Spec. 3:9–13, Fig. 4, 403, 423. The Specification (in the
embodiment of Fig. 4) does not disclose that the “designer” (or anyone else)
performs a step of inputting protection parameters or using the inputted
protection parameters (“at the design time”) to then (subsequently)
determine whether a request should be passed on to a module, as required by
amended claim 42. Nor does Patent Owner explain sufficiently how
providing an “architecture” that contains the four disclosed “definitions” or a
“designer” who “understands” “architecture options” would involve
inputting protection parameters (and using these inputted protection
parameters to subsequently determine whether a request should be passed on
to a module), as recited in amended claim 42.
The Specification, in the embodiment of Fig. 4, also discloses that the
“designer” “decide[s] the configuration of the . . . module with minimum
[hardware]” and that this “decision” is “based on product requirements” that
include “number of service modules,” “address width and data width of each
. . . module,” “number of different address regions,” and “type of an address
region.” Spec. 3:13–15, Fig. 4, 405, 443. The Specification (in the
embodiment of Fig. 4) does not disclose that the “designer” (or anyone else)
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performs a step of inputting protection parameters as required by amended
claim 42. Nor does Patent Owner explain sufficiently how a “designer”
making a “decision” on the configuration of a module based on any of the
number of modules, address or data width, number of different address
regions, or type of address region would involve inputting protection
parameters (to be used subsequently to determine whether a request should
be passed on to a module), as recited in amended claim 42.
Fig. 4 of the Specification also discloses that “the designer needs to
specify the address mapping and protection hardware module using the
provided specification language” and that the designer “create[s] the design
specification [or minimum specification of the address mapping and
protection module] using the language provided by the architecture.” Spec.
3:21–23, Fig. 4, 407, 425. The Specification (in the embodiment of Fig. 4)
does not disclose that the “designer” performs a step of inputting protection
parameters, as required by amended claim 42. Nor does Patent Owner
explain sufficiently how the need for the designer to specify a module (or
creating a design specification) using a language that is provided, for
example, would involve inputting protection parameters, as recited in
amended claim 42.
Fig. 4 of the Specification discloses an “architecture” that “includes
the definition . . . of the set of configuration parameters” and that the
“product designer must understand” the “architecture.” Spec. 3:9–12.
Amended claim 42 recites inputting configuration parameters “at design
time,” which Patent Owner argues is during the Fig. 4 embodiment of the
Specification. However, as noted above, Fig. 4 of the Specification
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discloses a designer who “understands” an “architecture” that contains the
“definition of the set of configuration parameters,” and does not disclose that
the “designer” (or anyone else) inputs configuration (or protection)
parameters. Rather the Fig. 4 embodiment of the Specification merely
discloses understanding an architecture that contains a definition of
configuration parameters. Indeed, the “architecture” of the Fig. 4
embodiment discloses only a “definition” of configuration parameters and is
not disclosed as even containing “configuration parameters” at all, much less
inputting configuration (or protection) parameters.
Thus, the only logical conclusion to be drawn from these observations
is that the Specification (in Fig. 4) fails to disclose inputting protection
parameters (or configuration parameters) “at the design time,” as amended
claim 42 now recites.
Upon further analysis, it is noted that the Specification discloses a
different embodiment in Fig. 3 in which “an on-chip system” contains “N
processing units” and “M service modules.” Spec. 3:29–31. In this Fig. 3
embodiment, “[a] request is sent . . . to the . . . module” and “the . . . ‘source
protection ID’ [is] extracted out of the request” and is used “to determine
whether the request should be delivered to the service module because the
protection allows it.” Spec. 3:39–50. In other words, in the Fig. 3
embodiment, the Specification discloses inputting protection parameters (via
a “request”) and these inputted protection parameters are then used to
determine whether a request should be passed on to the service module.
This corresponds to unamended claim 42 (i.e., claim 1) in which none of the
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claimed steps are required to be performed “at design time” (or during the
Fig. 4 embodiment, according to Patent Owner).
I note that the Fig. 3 embodiment, while disclosing inputting
protection parameters (as recited in unamended claim 42 – or original claim
1), does not disclose inputting the protection parameters “at design time” (or
“prior to creating a hardware netlist”) as recited in amended claim 42.
Assuming Patent Owner to be correct that one of skill in the art would have
broadly but reasonably construed the new claim term “at design time” to be
“prior to fabrication” (and prior to creating a hardware netlist), Patent Owner
does not assert or demonstrate sufficiently that the embodiment of Fig. 3 is
performed “prior to fabrication” or prior to creating a hardware netlist.
Indeed, the Specification explicitly discloses that Fig. 3 is “an on-chip
system” that contains “N processing units” and “M service modules.” Given
the fact the “on-chip system” already exists in the embodiment of Fig. 3, one
of skill in the art would have understood that the embodiment of Fig. 3 is
after the system is fabricated and not “prior to fabrication.” Also, the
Specification does not disclose creating a hardware netlist in the Fig. 3
embodiment at all.
In view of these conflicts, the only logical conclusion would be that
the Fig. 3 embodiment in the Specification might provide sufficient written
description support for unamended claim 42 (i.e., claim 1), but fails to
provide sufficient written description support for, at least, inputting
protection/configuration parameters “at the design time” or prior to creating
a hardware netlist, as recited in amended claim 42. Likewise, the Fig. 4
embodiment in the Specification might provide sufficient written description
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support for “configuring” a module “at design time using a specification
language,” “understand[ing] the configuration architecture [that includes
various “definitions” such as a definition of a set of configuration
parameters],” or “specify[ing]” the “module using the provided specification
language.” See, e.g., Spec. 3:1–3, 8–12, 21–23. However, none of these
features are recited in claim 42 (amended or unamended). Instead, amended
claim 42 recites inputting protection parameters and inputting configuration
parameters “at the design time,” for which the Fig. 4 embodiment of the
Specification fails to disclose. Thus, the only logical conclusion is that both
the Fig. 4 and Fig. 3 embodiments of the Specification fail to provide
sufficient written description support for amended claim 42.
Patent Owner does not point out other portions of the Specification
that disclose (or provide sufficient written description support for) the
amended claim feature of inputting protection (or configuration) parameters
at the design time, as recited in claim 42. Nor do I independently identify
any such other portion of the Specification.
The Majority raises several points in concluding that the Specification
(and the Fig. 4 embodiment of the Specification in particular), in fact,
discloses or provides sufficient written description support for the newly
amended claim features of inputting configuration and protection parameters
“at the design time.” However, I cannot agree with the Majority’s
conclusion.
First, the Majority states that the Requester “seems to acknowledge
that [the configuration and protection] parameters are input at some point in
time.” Maj. Op. 16. As previously discussed, I would agree with the
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Majority that the Specification discloses, at least, inputting protection
parameters “at some point in time.”8 However, disclosure of inputting, for
example, protection parameters, “at some point in time” is insufficient for
adequate written description support for newly amended claim 42. This is
because amended claim 42 does not recite inputting any parameters “at some
point in time.” Rather, claim 42, as amended, specifically recites inputting
the configuration and protection parameters “at design time” (equated to the
Fig. 4 embodiment by Patent Owner). As previously discussed, the
Specification fails to disclose this feature. For at least this reason, I cannot
concur with the Majority.
The Majority also notes that “claim 42 does not limit the inputting
steps to the specific time of when the address mapping and protection
module is configured.” Maj. Op. 17. I would agree with the Majority’s
statement, however, I would also note that this statement does not address
how the Specification provides sufficient written description support for
inputting either configuration parameters or protection parameters “at design
time,” as recited by amended claim 42. Hence, I cannot agree with the
Majority’s conclusion that the Specification somehow provides adequate
written description support for inputting the claimed parameters “at the
design time.”
The Majority states that “Requester does not dispute that the ’786
Patent discloses inputting the claimed configuration and protection
parameters . . . during the device-design stage” (Maj. Op. 17), then appears

8 As previously described, see, for example, the Fig. 3 embodiment of the
Specification in which a “source protection ID” (i.e., a “protection
parameter”) is input into a module via a “request.” Spec. 3:39–44.
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to conclude, based on this alleged absence of arguments by Requester, that
the Specification somehow discloses inputting configuration and protection
parameters “at the design time,” as recited in amended claim 42. First, the
Requester argues that Patent Owner relies on “disclosures of ‘design time’ in
the Specification of the ’786 patent” (i.e., the Fig. 4 embodiment of the
Specification)9 but that the Fig. 4 embodiment of the Specification “does not
explicitly teach any step of inputting the configuration parameters and
protection parameters during” the Fig. 4 embodiment of the Specification.
3PR Comments 5. In other words, contrary to the Majority’s observation,
Requester argues that the Fig. 4 embodiment of the Specification (relied
upon by Patent Owner as “design time,” as claimed) fails to disclose
inputting configuration or protection parameters, as required by amended
claim 42. The Majority does not sufficiently explain how or where the Fig.
4 embodiment of the Specification discloses inputting configuration or
protection parameters but, rather, bases its conclusion that the Fig. 4
embodiment of the Specification supposedly discloses this feature under the
erroneous assumption that Requester “does not dispute” that it does disclose
this feature. I cannot agree with the Majority on this point.
The Majority states that there is insufficient evidence to show that
“the ’786 Patent teaches inputting the parameters at any time other than
before the netlist is generated.” Maj. Op. 17. Hence, the Majority concludes
that, based on the evidence of record, the Specification fails to disclose

9 Requester argues that “[t]he only disclosures of ‘design time’ [as proposed
by Patent Owner] in the Specification . . . associate ‘design time’ with
configuring the address mapping and protection module.” 3PR Comments 5
(citing spec 2:44–48, 3:1–5 – the Fig. 4 embodiment).
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inputting configuration and protection parameters at any other time than
before the netlist is generated. Stated another way, the Majority concludes
that the Specification discloses inputting configuration and protection
parameters only before a netlist is generated. However, the Majority does
not indicate where in the Specification such a disclosure is provided. The
Specification discloses in the embodiment of Fig. 4 that “an optimized
hardware gate-level netlist . . . for the address mapping and protection
hardware” is generated. Spec. 3:25–27. Hence, the Specification discloses
creating a netlist during the Fig. 4 embodiment (i.e., “at design time,”
according to Patent Owner).
As previously discussed, while the Specification might disclose
inputting protection parameters in the Fig. 3 embodiment of the
Specification (which, according to Patent Owner’s interpretation, occurs
after “the design time” is completed), the Specification fails to disclose
inputting either configuration parameters or protection parameters in the
embodiment of Fig. 4, much less prior to generating a netlist (also
performed in the embodiment of Fig. 4), which Patent Owner alleges to be
“the design time.” Again, I cannot agree with the Majority that the
Specification provides sufficient written disclosure support for inputting the
claimed parameters “at the design time,” as recited in claim 42.
Finally, the Majority reproduces two independent claims (claims 19
and 30) alleged to be original claims (neither of which was cited to, referred
to, or relied upon by any of the parties or the Examiner previously). One of
these newly cited claims (claim 19) recites a method comprising, among
other things, receiving parameters and generating a netlist. Maj. Op. 17–18.
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Even assuming that “receiving” a parameter (as recited in newly cited claim
19) is the same as “inputting” a parameter (as recited in proposed amended
claim 42), this claim (claim 19) does not recite that inputting (or
“receiving”) the parameters occurs prior to generating a netlist or that either
generating the netlist or inputting (or “receiving”) the parameters occurs “at
design time.” In fact, newly cited claim 19 does not recite “at design time”
at all. Nor does newly cited claim 19 recite any specific relationship
between inputting (or “receiving”) parameters and generating the netlist with
respect to relative order of occurrence or performance of either step with
respect to “design time.” I cannot agree with the Majority that newly cited
claim 19 somehow provides adequate written description support for
inputting configuration parameters and protection parameters “at design
time” when, in fact, newly cited claim 19 does not recite “at design time”
and does not recite any time relationship of inputting any parameters (or
generating a netlist) at all.
Regarding the Majority’s newly cited claim 30, which allegedly
recites inputting protection parameters and inputting configuration
parameters, I note that this claim also fails to recite “at design time.” I
cannot agree with the Majority that newly cited claim 30 somehow provides
adequate written description support for inputting any parameters “at design
time” when, in fact, newly cited claim 30 does not recite “at design time” at
all. Indeed, newly cited claim 30 does not differ from claim 1 (previously
held unpatentable) with respect to inputting protection and configuration
parameters (i.e., no restriction on when such parameters are input).
Therefore, I would affirm the Examiner’s rejection of amended claim 42
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under 35 U.S.C. § 112, first paragraph as failing the written description
requirement.

Anticipation - Krueger
As described above, Patent Owner relies upon the Fig. 4 embodiment
of the Specification as support for inputting protection parameters “at the
design time,” as recited in amended claim 42. In particular, Patent Owner
cites to various portions of the Fig. 4 embodiment of the Specification such
as allowing a “designer” to “configure the address mapping and protection
module at design time,” PO Request 13 (citing Spec. 2:44–57, 3:6–27, Fig.
4). Presumably, it is Patent Owner’s position that the Fig. 4 embodiment is
performed “prior to fabrication” and to “configure” a module must include
“inputting protection parameters” (and inputting “configuration parameters”)
as recited in amended claim 42. However, even assuming that the Fig. 4
embodiment is performed “prior to fabrication” and “configuring” a
component must include “inputting protection/configuration parameters,” as
Patent Owner implies, I would agree with the Examiner that amended claim
42 is anticipated by Krueger.
Krueger discloses “partitioning the system, either statically or
dynamically,” that “[t]o partition statically, a system developer allocates
resources . . . to each processor,” and that “a static assignment of resources .
. . through partitioning of hardware may be done.” Krueger 3:9–10, 13–14,
39–41. In other words, Krueger discloses “allocating resources” (that must
also include “inputting” protection/configuration parameters, according to
Patent Owner’s presumed proposed interpretation) for “partitioning the
system” and “partitioning of hardware.” One of skill in the art would have
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understood that if the system developer (or “designer”) of Krueger partitions
the hardware of the system by “allocating” resources (or, according to Patent
Owner, “inputting” protection/configuration parameters), then the
“allocation” of resources (and inputting of protection/configuration
parameters) would have been performed prior to fabrication of the
“hardware,” since the “allocation” of resources by the system developer is
used to create the partitioning of the hardware of the system in Krueger. As
such, I am unable to identify a difference between a “system developer”
“allocating” resources in “hardware” (presumed to include “inputting”
protection/configuration parameters) of Krueger and a “designer”
“configuring” (also presumed to include “inputting” protection/configuration
parameters) a module “at design time” (presumably being in hardware or
“prior to fabrication”) as disclosed in the Specification.
The Majority states that “updating a system’s parameters does not
indicate that the system inherently was fabricated by inputting the claimed
parameters into a system prior to creating a netlist” and appears to conclude,
based on this observation, the Krueger fails to disclose inputting parameters
“at design time.” Maj. Op. 21 (citing Spec. 1:36–47). The Majority’s
observation appears to pertain to the written description issue rather than the
anticipation issue over Krueger. For at least the reasons previously set forth
in the discussion on written description issues of claim 42 (see above), I
would agree with the Majority’s statement that inputting parameters (e.g.,
protection parameters) after “the design time” (i.e., after “fabrication” and
after creating a netlist, according to Patent Owner) “does not indicate . . .
inputting the claimed parameters . . . prior to creating a netlist [or at design
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time].” For example, as previously stated, the Specification discloses
“design time,” creating a netlist (both during Fig. 4 of the Specification), and
subsequently inputting protection parameters during the Fig. 3 embodiment
of the Specification, which, contrary to the requirements of claim 42, is after
“design time” is completed and after creating a netlist. While the Majority
appears to recognize that inputting protection parameters after “design time”
(or after creating a netlist) “does not indicate” that the parameters are also
input “prior to creating a netlist,” the Majority does not explain how the
Specification provides sufficient written description support for this feature
or how the lack of disclosure in the Specification of inputting parameters
prior to creating a netlist (or “at design time”) demonstrates that Krueger
also fails to disclose inputting parameters “at design time,” as recited by
claim 42.
While not entirely clear, to the extent that the Majority might be
suggesting that Krueger merely discloses “allocating” resources rather than
“inputting parameters” and, therefore, fails to disclose the claimed
“inputting” configuration and protection parameters at the design time. As
previously discussed, the Specification also fails to disclose inputting
configuration and protection parameters at the time Patent Owner argues to
be “at design time,” as claimed (i.e., during the Fig. 4 embodiment of the
Specification). Instead, the Fig. 4 embodiment of the Specification merely
discloses “configuring” a module. In an attempt to rescue amended claim 42
from written description issues, one would need to construe “configuring” a
module as necessarily including “inputting” configuration and protection
parameters. Without deciding whether this assumption would be valid or
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not, even if one would assume “configuring” a module must include
inputting configuration and protection parameters, then one of skill in the art
would also understand that “allocating” resources (as disclosed by Krueger)
would also include inputting configuration and protection parameters given
the similarity of terms. The Majority does not explain how or why one of
skill in the art would have assumed that “configuring” must include
inputting parameters but that “allocating” would somehow not include
inputting parameters.
The Majority also provides various observations regarding the
proposed anticipation rejection of amended claim 42 over Krueger including
alleged “conflat[ing of] the section 101 inquiry with the section 102 inquiry”
(Maj. Op. 21), alleged overbroad construction of “the inputting steps” as
“not requiring inputting the parameters into a computer” (Maj. Op. 21–22),
and Requester’s expert’s alleged use of the phrase “it would have been
obvious to one skilled in the art” in a Supplemental Declaration. Maj. Op.
22. None of these observations by the Majority (even if assumed to be
correct), however, addresses the issue of how the “allocating” of Krueger
differs from the “configuring” as disclosed by the Specification (and,
presumably, equated to “inputting” parameters by Patent Owner), much less
provide some cogent explanation as to what the Majority is identifying as a
patentable difference between the seemingly identical concepts. Therefore, I
cannot agree with my colleagues on this point.
At least the above reasons lead me to dissent from my colleagues’
decision and I would affirm the Examiner’s rejection of claim 42 under 35
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U.S.C. § 102 as anticipated by Krueger and under 35 U.S.C. § 112, first
paragraph as failing the written description requirement.

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Patent 7,266,786 B2

18
PATENT OWNER:

Morrison & Foerster, LLP
755 Page Mill Road
Palo Alto, CA 94304-1018

THIRD PARTY REQUESTER:

Jennifer Lacroix
Patent Group c/o DLA Piper (US) LLP
203 Lasalle Street
Suite 1900
Chicago, IL 60601