Ex Parte 7266786 et al

Patent Trial and Appeal Board

Oct 8, 2014

95000671 (P.T.A.B. Oct. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 05/19/2015
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
05/19/2015 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 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.

Opinion for the Board filed by Administrative Patent Judge
BRADLEY W. BAUMEISTER.

Opinion Dissenting filed by Administrative Patent Judge STEPHEN C. SIU.

BAUMEISTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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BACKGROUND
In an earlier Decision, mailed October 8, 2014 (“Decision”), the
Board affirmed the Examiner’s decision not to reject claim 42 under
35 U.S.C. 102(e) as anticipated by U.S. Patent No. 6,775,750 (“Krueger”).
Decision 15. Requester, Arteris, Inc., now requests a rehearing under
37 C.F.R. § 41.79.1 Patent Owner, Sonics, Inc., filed comments under
37 C.F.R. § 41.79(c) responsive to Requester’s Request for Rehearing.2
Claim 42 recites:
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
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.

1 Requestor’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”).
2 Patent Owner’s Comments Under [§] 41.79(c) to Requester’s Request for
Rehearing, dated December 10, 2014 (“PO Comments”).
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During the initial appeal Patent Owner relied on testimony of
Dr. Kees Goossens3 and argued that one of ordinary skill in the art would
understand “that actions performed at design time ‘occur prior to the
fabrication of the device.’” Decision 14 (citing PO Resp. Br. 11). Hence,
Patent Owner argued that one of ordinary skill in the art would have
understood the term “at design time” to be “prior to the fabrication of the
device,” which would exclude periods of time after the fabrication of the
device, even if such periods are still prior to the actual operation of the
device. That is, Patent Owner argued “at design time” excludes the time
period of device initialization, which occurs prior to operation, but
subsequent to device fabrication.
Requester argued that Krueger “discloses configuration of [a] system
protection map (SPM) prior to the actual operation of the device” and that
“one of ordinary skill in the art would understand that static partitioning . . .
is partitioning that is done at design time.” Decision 13 (quoting 3PR App.
Br. 12). Requester also relied on testimony of Dr. Robert W. Horst4 to
construe the term “at design time” as merely being “prior to the actual
operation of the device.” That is, Requester argued “at design time”
includes the time period of post-fabrication device initialization.

3 Supplemental Affidavit Pursuant to 37 C.F.R. § 1.132 and MPEP 2616,
dated March 26, 2013 (“Goossens Supp. Decl.”).
4 Supplemental Affidavit of Robert W. Horst, dated April 23, 2013 (“Supp.
Horst Decl.” at ¶¶ 13–14).
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The Panel concluded that, with respect to claims 1, 8, 29, 30, 33, 35,
36, and 40, we need not decide what meaning should be attributed to the
term “at design time” because that term did not actually appear in any of
these claims. See, e.g., Decision 6, 10. The term “at design time” only
appears in independent claim 42.
With respect to claim 42, the Panel held that Requester and
Requester’s Declarant did not provide sufficient evidence supporting the
contention that “at design time” would include any time period after the
fabrication of the device (even if still prior to actual operation of the device).
See, e.g., Decision 13–14. For reasons previously stated in the Decision,
“we credit[ed] Patent Owner’s expert testimony regarding how one of
ordinary skill in the art would have construed the term ‘at design time’ (i.e.,
[solely] prior to the fabrication of the device).” Decision 14.
Upon Request for Reconsideration, Requester does not challenge the
Board’s adoption of this narrower interpretation—that “at design time” is
limited to the time period prior to device fabrication. Requester instead
contends that the Board nonetheless erred because “even under the adopted
claim construction, Krueger [still] anticipates claim 42.” Req. Reh’g 2.

ANALYSIS
I.
Upon further consideration, a majority of the Panel now concludes
that we need not decide whether the claim term “at design time” is limited to
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the time period prior to device fabrication or, alternatively, whether the term
should be interpreted more broadly as reading on any time period prior to
operation. That is, the majority withdraws the earlier finding that “design
time” is limited to pre-fabrication periods, and we do not decide whether the
post-fabrication initialization of a system could reasonably be considered as
being part of the system design.
The Majority reaches this Decision for multiple reasons. Primarily,
for the reasons set forth in Section II of the Analysis, we find that “at design
time” does not limit claim 42’s affirmatively recited method steps. As such,
we need not determine whether Krueger discloses that configuration
parameters are input merely prior to operation (e.g., at the time of
initialization) or more specifically at a time prior to device fabrication.
Furthermore, in order to be considered for further examination, claim 42
would have to be substantively narrowed regardless of how “at design time”
is interpreted. See Analysis, Section III, infra (analyzing whether new claim
42 is impermissibly broader than the patented claims). As such, it would be
premature to construe “at design time” because the term is not dispositive of
the current appeal.
To summarize, we find it preferable to delay further analysis of
Krueger until a time at which a construction of “at design time” or an
analysis of Krueger would be dispositive of the claim’s patentability.
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II.
a.
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262
(CCPA 1974). In order to aid in determining the scope of claim 42
(reproduced supra), we first reproduce claim 1—the only other independent
method claim. A comparison of the two claims’ language aids our analysis
of claim 42. We then proceed with the analysis of claim 42.
Independent claim 1, originally issued in 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.
Unlike claim 1, independent claim 42 did not originally issue in the
’786 Patent. Claim 42 was instead added during the reexamination
proceeding. See Patent Owner’s claim amendment submitted in conjunction
with the submission, Response to Decision to Grant Request For Inter Partes
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Reexamination, filed Oct. 5, 2012. As noted, supra, claim 42 reads as
follows (with emphasis added):
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
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 preamble of claim 42 solely states “[a] method comprising.” As
such, no questions exist as to whether the preamble further limits the claim’s
subsequently recited method steps beyond the language of the recited
method steps themselves. We initially consider, then, the scope and breadth
of claim 42’s first limitation—“inputting configuration parameters that
identify a first address location to a service module at design time.”
Claim 42 does not recite any language that would limit what
constitutes a “configuration parameter.” Claim 42 does not set forth any
language that would define how these configuration parameters identify the
first address location to a service module. Claim 42 does not set forth any
restrictions as to the type of device into which the configuration parameters
are input. Moreover, the remainder of claim 42 likewise does not (1) recite
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any language that would limit what data could constitute “configuration
parameters,” (2) define how the parameters are used to identify the first
address location, or (3) restrict the type of device into which the
configuration parameters are input.
Nor does the written Specification provide any express definitions that
necessarily would restrict further the language of this first limitation. See
generally the ’786 Patent. In fact, the examples of configuration parameters
set forth in the ’786 Patent provide evidence that the claimed configuration
parameters may be composed of at least various one-digit or two-digit
numbers. See col. 5, l. 23–col. 6, 50 (reciting configuration parameters
including “DataWidth,” “AddrWidth,” “NumSegments,” NumRegions,” and
“NumProtectionKeys”). Figures 6 and 7 of the ’786 Patent, in turn, set forth
examples of values that can be assigned to these five aforementioned
configuration parameters: {16, 20, 2, 5, 2} (Fig. 6); {16, 20, 2, 4, 2}
(Fig. 7).
The second limitation of claim 42 recites “inputting protection
parameters at design time.” The limitation goes on to further describe what
type of data constitutes protection parameters: “wherein the protection
parameters include a number of different protection keys that can exist for
one or more service modules in a device and number of different protection
IDs that can exist for modules in the device.”
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The ’786 Patent, in turn, discusses protection keys and protection IDs:
There may be up to K different protection keys in the
system; each protection key is kept in one protection key
register, which resides in the protection key map hardware.
Each address region is associated with at least one protection
key, and each processing unit is assigned with one or more
protection ID. When a request is sent from a processing unit,
the request is tagged with a protection ID (such as 515 shown in
FIG. 5) of the processing unit. After the request’s destination
address is decoded and a service module’s address region is
identified, the protection ID is checked against those protection
keys associated with that address region to see whether it is safe
to forward the request to the service module.
’786 Patent, col. 4, ll. 8–20. The ’786 Patent provides evidence, then,
that the claimed protection parameters may be composed of data
keys—mere numbers.
Claim 42 also states that the step of “inputting protection parameters
at design time” is performed “to determine during the device’s operation
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.” The wording “to
determine” is significant because it differs from the wording employed in
claim 1. As indicated above, claim 1 alternatively recites three distinct
method steps: (1) inputting configuration parameters; (2) inputting
protection parameters; and (3) determining whether a request should be
passed and executed.
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Claim 1 demonstrates that Patent Owner was aware of how to set forth
the act of “determining” as an affirmative step. We must presume, then, that
by choosing the infinitive form “to determine” in claim 42 in favor of
claim 1’s gerund form “determining,” Patent Owner intended for claim 42
not to recite the third affirmative step of determining whether a request
should be passed and executed. Instead, the difference in selected language
renders it reasonably clear that claim 42 affirmatively recites only two
steps—the step of inputting configuration parameters at design time and the
step of inputting protection parameters at design time.
We, therefore, understand the language of claim 42 following “to
determine” as merely setting forth the intended future use for the
configuration-parameter and protection-parameter inputs. That is, the
language following “to determine” merely explains the subjective rationale
for why the affirmative steps of inputting the configuration and protection
parameters are undertaken. In reexamination proceedings, the Board is to
give claims their broadest reasonable interpretation, consistent with the
specification. In re Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984). See
also Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005). In Hoffer,
our reviewing court noted that a “‘whereby clause in a method claim is not
given weight when it simply expresses the intended result of a process step
positively recited.’” Id. at 1329 (quoting Minton v. Nat’l Ass’n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)).
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To summarize, claim 42 reads on inputting two sets of numbers into a
computer “at design time” for a merely subjective purpose. Claim 42 does
not specify how these parameters or numbers are to be input into the
computer. Claim 42 does not require that anything actually be done with the
parameters—the claim does not require that the parameters subsequently be
used in any way to functionally modify a general purpose computer into any
special-purpose machine. That is, claim 42 does not require the parameters
to be functionally related or tied to the general purpose computer—just
stored in the computer as raw data. Absent any further affirmative steps,
then, the parameters—or raw data or simple numbers—constitute merely
nonfunctional descriptive material. Stated another way, a reasonable
interpretation of claim 42 is that the configuration parameters and the
protection parameters amount to nonfunctional descriptive material, and the
steps of inputting the parameters correspond to merely inputting
nonfunctional descriptive material into a general-purpose computer.
We reach this conclusion because, for claims involving a computer
process, the Board has held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process “by
changing the efficiency or accuracy or any other characteristic” of the steps.
Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential).
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-
precedential) (holding “wellness-related” data stored in a database and
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communicated over a network was nonfunctional descriptive material as
claimed because the data “does not functionally change” the system), aff’d,
No. 2006-1003 (Fed. Cir. June 12, 2006) (aff’d Rule 36).
If we were to give patentable weight to the language of claim 42 that
is directed to the intended use of the data being input, or if we were to find
that the intended purpose of entering the data sets into the computer
patentably distinguishes claim 42 from merely entering raw data into a
general purpose computer, that decision would essentially permit multiple
patents to be sought for the act of entering any given set of numbers into a
computer spreadsheet or lookup file, just so long as the exact same data is
being entered for respectively different subjective (and allegedly
nonobvious) purposes.
Furthermore, if claim 42’s various recitations of intended use were a
sufficient basis for finding the affirmative acts of merely entering data into a
spreadsheet to be patentable, it would be virtually impossible to determine
whether any given event of inputting a set of numbers into a general-purpose
computer would infringe claim 42. The infringement determination would
not depend on the objective attributes of the data being input into the
computer, but rather on the programmer’s subjective intent for inputting the
data into the computer.
Granted, because the claim language does describe the subjective,
intended use of the input parameters, arguably it could be asserted that the
appropriate test for infringement at least should be whether data being
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entered into a lookup table is objectively capable of serving as configuration
and protection parameters.
However, this candidate test would be equally unsatisfactory. The
’786 Patent does not provide any express definition that would enable one to
ascertain with sufficient clarity what numbers or data may be reasonably
interpreted as being capable of constituting configuration and protection
parameters. As such, entering professional sporting event scores into a
computer (e.g., “5” and “2”) potentially could read on the step of inputting
configuration parameters. See ’786 Patent, FIG. 6 (depicting the set of
numbers 5 and 2—along with 16, 20, and 2—as constituting numbers that
are objectively capable of being used as configuration parameters).
To be clear, though, resolving the present appeal actually may not
even require determining whether the configuration and protection
parameters recited in claim 42 may be reasonably characterized as
nonfunctional descriptive material or data. This is because Patent Owner
does not present substantive arguments as to whether Krueger discloses
inputting configuration parameters and protection parameters into a
computer; Patent Owner instead argues that Krueger’s parameters are not
entered at a time that can be reasonably interpreted as constituting “at design
time.” See, e.g., PO App. Br. 16 (contending “Krueger discloses the
configuring of its alleged protection parameters clearly at operational time
during the initialization/power up of the fabricated device rather than at
design time); see also id. (contending that pages 15–16 of the RAN reach the
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same conclusion); accord PO App. Br. 7, 13, and 26. See also Patent
Owner’s discussion of how Krueger configures the system protection map
(SPM):
As described by the Examiner in the RAN, the claim 42
is patentable over Krueger at least because Krueger fails to
disclose “at design time,” as expressly recited by claim 42. At
most, Krueger describes static partitioning of a system. This
static partition, however, is not at design creation time. Rather,
the static partitioning is set at an initialization (e.g., power on)
of the system. Krueger at 8:52–54 (“In an embodiment of the
present invention in which the configuration is static, the SPM
would not be set by any OS, but rather as a startup step before
starting the OSs.” (Emphasis added)). Accordingly, Krueger
fails to disclose or suggest inputting protection parameters at
design time, as recite by claim 42.
PO Reb. Br. 14 (citing Krueger col. 8, ll. 52–54).
The primary reason we have analyzed the meaning of the terms
“configuration parameters” and “protection parameters” instead is to provide
a better contextual background for our subsequent analysis of how the
claim’s additional phrase “at design time” may further limit the scope of
claim 42, if at all. We turn to that question now.
b.
As just explained, claim 42 does not require actually doing anything
with the configuration and protection parameters that are input into the
computer. In fact, claim 42 does not require any subsequent steps be
performed at all. The claim just requires that two data sets be input into a
computer. As such, claim 42 does not further limit the actual method steps
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of inputting “parameters” data into a computer merely by more specifically
stating that the data is entered “at design time.”
Characterizing the time at which data is entered into a computer as
being “at design time” potentially could limit some hypothetical method
claim. For example, if a claim were to recite the steps of (1) inputting
configuration and protection parameters at design time; (2) initializing a
computer program after the design is completed; and (3) running the
computer program after the initialization is completed, then the claim could
distinguish over a process that entailed first initializing a computer program,
and then inputting the parameters while the program is running. But absent
the presence of any additional claim limitations reciting affirmative steps
that establish relative temporal relationships to the inputting steps, stating
that parameters are input “at design time” does not distinguish from any
other act of data entry. Instead, when employed in a claim that solely recites
inputting data, the phrase “at design time” amounts to a non-limiting, merely
subjective reason for inputting numbers into the computer.
Arguably, we need not even reach whether such a limited subjective
intent even should be ascribed to the inputting act at all. Claim 42 recites
that parameters are input at a time when something is being designed, but it
does not specify at the time of what design. Broadly interpreted, claim 42
might read on inputting the configuration and protection parameters at the
time of designing anything, regardless of how unrelated the anything being
designed is to the configurable address mapping and protection architecture.
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For example, claim 42 is sufficiently broad that it reads on one programmer
inputting the configuration and protection parameters during device
operation, so long as the parameters are input while somebody else is
designing (including merely mentally considering) some unrelated
modification to the system in which the device operates.
Regardless, Patent Owner’s arguments, as well as the ’786 Patent,
render it reasonably clear that the requirement to input the configuration and
protection parameters specifically at design time does not necessarily result
in any physical difference or necessarily create any inherent or implicit
temporal restriction. Patent Owner explains
The inputting of protection parameters at design time can of
course establish protection relationships between requesting
sources and service modules but can also have the functional
result of generating (or not) certain protection hardware on the
chip and is different from the act of configuring of the
fabricated generated hardware because they occur at different
moments in time (post fabrication time is distinct from and
occurs strictly later than design time) and post fabrication the
hardware is already generated.
PO App. Br. 26 (emphasis added).
Patent Owner also explains that the act of entering the parameters into
a computer, alone, does not convert a general-purpose computer into a
special machine. Rather, the client-server system must take the input
parameter specifications and generate a netlist. Then, the netlist, in turn, is
used to actually fabricate a hardware chip:
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The client-server system based on the inputted protection and
configuration parameters generates a netlist of an optimized
protection module that is used in determining whether a request
from a first module in the device should be passed on to the
service module or blocked based upon the inputted protection
parameters and configuration parameters.
PO App. Br. 4 (discussing ’786 Patent, Fig. 4). See also ’786 Patent, col. 3,
l. 6 – col. 4, l. 20 (discussing the FIG. 4 flowchart for generating optimized
address mapping and protection hardware).
To summarize, claim 42 broadly sets forth inputting two sets of data
or numbers (configuration and protection parameters) into a computer. The
rest of the claim language may be reasonably interpreted as merely
describing various subjective reasons for why the data is being entered.
None of this additional claim language places any meaningful limits on the
physical act of entering the data sets or on the content of the data sets being
entered. As such, none of this additional claim language is shown to
patentably distinguish claim 42 from the simple acts of entering two sets of
numbers into a computer at any point in time. Furthermore, Patent Owner
does not dispute that Krueger enters data that can be characterized as
configuration and protection parameters. Based upon the arguments of
record, then, we find no reasonable basis to conclude that the method of
claim 42 is patentably distinguishable from the methods taught by Krueger.
Accordingly, we exercise our discretionary authority pursuant to
37 C.F.R. § 41.77(a) and reject claim 42 under 35 U.S.C. § 102(e) as being
anticipated by Krueger.
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III.
A patent owner may not broaden a claim of a patent during a
reexamination proceeding:
In any reexamination proceeding under this chapter, the patent
owner will be permitted to propose any amendment to his
patent and a new claim or claims thereto, in order to distinguish
the invention as claimed from the prior art cited under the
provisions of section 301 of this title, or in response to a
decision adverse to the patentability of a claim of a patent. No
proposed amended or new claim enlarging the scope of a claim
of the patent will be permitted in a reexamination proceeding
under this chapter.
35 U.S.C. § 305.
In any inter partes reexamination proceeding under this chapter,
the patent owner shall be permitted to propose any amendment
to the patent and a new claim or claims, except that no proposed
amended or new claim enlarging the scope of the claims of the
patent shall be permitted.
35 U.S.C. § 314.
The test for when a new claim enlarges the scope of an original
claim under § 305 is the same as that under the two-year
limitation for reissue applications adding enlarging claims
under 35 U.S.C. § 251, last paragraph. In the reissue context
this court has stated that
a claim of a reissue application is broader in scope
than the original claims if it contains within its
scope any conceivable apparatus or process which
would not have infringed the original patent . . . A
claim that is broader in any respect is considered to
be broader than the original claims even though it
may be narrower in other respects.
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In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994) (internal citations
omitted).
In Section II, supra, we noted that claim 42 was newly added by
amendment during the reexamination proceeding. Decision on Req. for
Reh’g 6–7. We also explained why method claim 42 is broader than method
claim 1 of the ’786 Patent—because claim 42 removes the affirmative
“determining” step that is present in claim 1. Id. at 9–10. As such, it is
immaterial whether the additional recitation of “at design time” can be
interpreted as narrowing the input steps of claim 1. See Freeman, 30 F.3d
at 1464. Inputting configuration and protection parameters into a computer
at design time will not infringe claim 1 until the subsequent “determining”
step is carried out. However, merely inputting the configuration and
protection parameters at design time will infringe claim 1.
In fact, claim 42 is broader than any of the claims of the ’786 Patent.
The other independent claims of the ’786 Patent are claims 33, 35, 36, and
40. Each of these independent claims are apparatus claims, and each
additionally requires the presence of a “means for 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 parameter” (claim
33). Specifically, claims 35 and 36 both recite “security checking logic” that
performs this function. Claim 40 recites “a comparator” that performs this
function. The use of such a means is not required to infringe method
claim 42.
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For the foregoing reasons, then, we exercise our discretionary
authority under 35 U.S.C. § 41.77(a) and newly reject claim 42 under
35 U.S.C. § 314 for constituting a proposed new claim that impermissibly
enlarges the scope of the claims of the ’786 Patent.

CONCLUSIONS
Requester has not established that Krueger inputs the disclosed
configuration parameters and protection parameters specifically at a time
prior to device fabrication.
Krueger anticipates claim 42 because the claim is broad enough to
simply read on inputting two sets of numbers into a general-purpose
computer, and Krueger at least discloses this.
Claim 42 constitutes a proposed new claim in an inter partes
reexamination proceeding that impermissibly enlarges the scope of the
claims of the ’786 Patent.

DECISION
We modify our previous Decision to the extent that we now reverse
the Examiner’s non-adoption of the rejection of claim 42 under 35 U.S.C.
§ 102(e) as anticipated by Krueger. We also newly reject claim 42 under
35 U.S.C. § 314. The previous Decision remains unchanged in all other
respects.
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Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal 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
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
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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.

REHEARING GRANTED
37 C.F.R. 41.77(a)

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.
____________

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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’ discussion pertaining to the
rejection of claim 42 as anticipated by Krueger based on the rationale
outlined in the majority decision.
Claim 42 recites “inputting protection parameters at design time . . . to
determine during the device’s operation whether a request . . . should be
passed on to a first service module.” Patent Owner previously argued for a
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broad but reasonable construction of the term “at design time” as would
have been understood by one of ordinary skill in the art in light of the
Specification to mean “prior to fabrication.” See, e.g., PO Resp. Br. 11,
Affidavit Pursuant to 37 C.F.R. § 1.132 and MPEP 2616, dated October 5,
2012 (“Goossens Dec.”) paras.11a, 27, Goossens Supp. Decl. paras.20–24.
Patent Owner also argued that Krueger fails to disclose performing the
claimed step of inputting parameters “at design time,” based on the
construction of the term “at design time” proposed by Patent Owner. For
example, Patent Owner argued that Krueger “very clearly inputs . . .
parameters . . . during the operation of the fabricated device” but that
“[o]nce the circuit is fabricated/built, then no design time changes occur.”
PO Resp. Br. 11.
Requester did not dispute Patent Owner’s suggested construction of
the term “at design time” but argued that Krueger “discloses [inputting
parameters] prior to the actual operation of the device.” Requester Reb. Br.
2. Requester did not demonstrate sufficiently that Krueger discloses
inputting parameters prior to fabrication of the device, however. In view of
Requester’s apparent agreement with Patent Owner that one of ordinary skill
in the art would have broadly but reasonably understood the term “at design
time” to mean prior to fabrication of the device, as opposed to merely prior
to operation of the device, we previously concluded that Krueger fails to
disclose inputting parameters, specifically, prior to fabrication of the device.
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On rehearing, Requester continues to argue that Krueger discloses
inputting parameters prior to operation of the device but does not provide a
sufficient showing that Krueger also discloses inputting parameters prior to
fabrication of the device. The majority now “withdraws the earlier finding
that” the disputed claim term “at design time” “is limited to pre-fabrication
periods.” Maj. Op. 5.
I do not disagree that the previously adopted construction of the term
“at design time” as being “prior to fabrication” should be withdrawn if
determined to be improper. However, the majority does not indicate that the
previously adopted construction of the term “at design time” is improper and
does not indicate that one of ordinary skill in the art would have broadly but
reasonably construed the term “at design time” differently from “prior to
fabrication” or what such a broad but reasonable construction would be.
Instead, the majority chooses to read the claim limitation “at design time”
out of claim 42 entirely for various stated reasons. I do not agree with the
majority’s stated reasons and I believe that, if the previously adopted
construction of the term “at design time” is to be withdrawn, as the majority
implies, then the term “at design time” should be considered as a claim
limitation with patentable weight, properly construed under a broad but
reasonable standard, and then applied to the Krueger reference. As such, I
disagree with the majority’s decision that “it would be premature to construe
‘at design time’ because the term is not dispositive of the current appeal.”
Maj. Op. 5. In my view, the determination of a proper broad but reasonable
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construction of the term “at design time” and application of the claim
construction to Krueger is central to resolving the only issue before us —
i.e., whether Krueger discloses “at design time,” as properly construed. In
contrast to the majority’s approach, I do not agree that it is “preferable to
delay further analysis of Krueger” (Maj. Op. 5) for at least the reasons
discussed in detail below.
The majority discusses at length that the recited “parameters” of claim
42 constitute “nonfunctional descriptive material” and, presumably, should
not be accorded patentable weight. See e.g. Maj. Op. 7–9. Curiously, the
majority then correctly points out that “Patent Owner does not present
substantive arguments as to whether Krueger discloses inputting
configuration parameters and protection parameters into a computer.” Maj.
Op. 13. I would agree that Patent Owner appears not to dispute that Krueger
discloses the claimed “parameters” so, in my view, the majority’s lengthy
discussion of whether or not the recited “parameters” constitute non-
functional descriptive material is irrelevant. In addition, I disagree that the
question of whether or not the recited parameters constitute non-functional
descriptive material is relevant to whether or not the separate and distinct
claim limitation “at design time” should be accorded patentable weight (or
how “at design time” should be broadly but reasonably construed in light of
the Specification). Indeed, the majority does not adequately point out how
the presumption that the claimed “parameters” constitute non-functional
descriptive material (even if that is the case) leads to the conclusion that a
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separate and distinct claim limitation (i.e., “at design time”) also should not
be accorded patentable weight.
The majority also discusses at length that the claim limitation “to
determine . . . whether a request . . . should be passed on to a first service
module based upon the . . . parameter[]” constitutes an “intended future use”
and “merely explains the subjective rationale for why the . . . steps of
inputting . . . parameters are undertaken.” Maj. Op. 10. Presumably, the
majority is suggesting that the claim limitation “to determine . . .” should not
be accorded patentable weight. Assuming that is the majority’s position, the
parties have framed the sole issue in this case as whether or not Krueger
discloses “at design time” — and not whether Krueger discloses “to
determine . . . .” Therefore, I do not agree that the question of whether or
not the undisputed claim limitation of “to determine . . .” constitutes an
“intended future use” of parameters or “merely explains the subjective
rationale for why . . . inputting . . . parameters are undertaken” is relevant to
whether the separate and distinct claim limitation “at design time” should be
accorded patentable weight and, if so, how one of ordinary skill in the art
would have broadly but reasonably construed the term “at design time.” Id.
The majority also hypothesizes as to “the appropriate test for
infringement” as being “whether the data being entered into a lookup table is
objectively capable of serving as configuration and protection parameters.”
Maj. Op. 12–13. I agree with the majority that “this candidate test would be
. . . unsatisfactory” (Maj. Op. 13) but for different reasons as those set forth
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by the majority. In my view, the proposed test would be “unsatisfactory”
because there is no relevance of this “test” to how or whether the only
disputed claim term “at design time” should be construed and/or whether or
not Krueger discloses “at design time” as properly construed. Nor does the
proposed test demonstrate that the claim limitation “at design time” should
not be accorded patentable weight, as the majority appears to imply.
Following the majority’s observation that Patent Owner does not
dispute that Krueger discloses “parameters,” the majority states that the
discussion of whether or not the claimed “parameters” constitute non-
functional descriptive material (and, presumably, the discussion whether or
not “to determine . . .” constitutes an intended use) is relevant for the
“subsequent analysis of how the claim’s additional phrase ‘at design time’
may further limit the scope of claim 42.” Maj. Op. 13–14. I disagree with
the majority that the discussions of non-functional descriptive material (i.e.,
“parameters”) and intended use (i.e., “to determine . . .”) are relevant to the
majority’s approach to the separate and distinct claim limitation “at design
time” (the only claim limitation actually in dispute). Nor do I believe that
the majority’s theories logically lead to the conclusion that the positively
recited claim limitation “at design time” should not be accorded patentable
weight. These points will be discussed in further detail below.
The majority states that “claim 42 does not require actually doing
anything with the configuration and protection parameters that are input into
the computer.” Maj. Op. 14. This statement pertains to whether or not the
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recited “parameters” constitute non-functional descriptive material. This
statement does not address the issue in dispute, namely, the question of
whether “at design time” should be accorded patentable weight, how “at
design time” should be properly construed, or whether Krueger discloses “at
design time.” Thus, in my view and as previously stated, the majority’s
inference that the claimed “parameters” constitute “non-functional
descriptive material” is irrelevant to the issue at hand, even if assumed to be
true.
The majority states that “claim 42 does not further limit the actual
method steps of inputting ‘parameters’ data into a computer merely by more
specifically stating that the data is entered ‘at design time’.” Maj. Op. 14. I
disagree with the majority that a positively recited limitation in a claim does
not “further limit” a method step in which the positively recited limitation is
recited. While the majority states that the positively recited claim limitation
“at design time” “merely [states] that the data is entered ‘at design time,’”
the majority does not explain why a specific claim limitation that is
“merely” recited is insufficient to be considered a claim limitation. Id. In
effect, the majority concludes that a positively recited claim limitation (e.g.,
“at design time”) is not accorded patentable weight because it “merely”
recites what it recites. In my view, since all claim limitations recite what
they recite, the majority’s apparent conclusion would produce the untenable
result in which all claim limitations are not accorded patentable weight.
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The majority does not consider the claim limitation “at design time”
to be a claim limitation because, according to the majority, “absent the
presence of any additional claim limitations reciting affirmative steps that
establish relative temporal relationships to the inputting steps, . . . ‘at design
time’ does not distinguish from any other data entry step.” Maj. Op. 14.
The majority appears to conclude that the positively recited claim limitation
“at design time” is not considered a claim limitation without “additional
claim limitations.” I cannot agree that a positively recited claim limitation
necessarily requires “additional claim limitations” in order to be considered
a claim limitation. The majority does not make clear under what
circumstances a particular claim limitation would require “additional claim
limitations” or, conversely, what kind of claim limitation would not require
“additional claim limitations” and, if “additional claim limitations” would be
required for whatever reason, then what those “additional claim limitations”
would need to be. While the majority does draft a proposed claim on the
Patent Owner’s behalf that the majority suggests would be acceptable (see
e.g., Maj. Op. 14), the majority does not explain adequately how or why this
proposed claim, which also recites “at design time,” would somehow be
acceptable or why the majority’s proposed additional claim language would
qualify as necessary and sufficient “additional claim limitations” that would,
in the majority’s view, convert the claim limitation “at design time” into an
actual claim limitation that can be accorded patentable weight.
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The majority also suggests that the claim limitation “at design time”
does not constitute a claim limitation because, according to the majority, “at
design time” is a “merely subjective reason for inputting numbers into the
computer.” Maj. Op. 15. In my view, however, “at design time” is not
merely a “subjective reason” for performing the positively recited method
step of inputting parameters. Rather, “at design time” further limits the
claimed method step by characterizing the performance of the step “at
design time,” as broadly but reasonably construed. While the specific
construction of what “at design time” would be to one of ordinary skill in the
art in the context of the claim (i.e., the proper construction of the term “at
design time”) may be disputed, the majority does not express specific
concerns with the previously adopted construction of the term “at design
time” and, in fact, does not indicate how the term “at design time” should be
or is construed.
In any event, even if the positively recited claim limitation “at design
time” would be considered a “subjective reason for inputting numbers,” the
majority does not provide a cogent rationale or other support as to why such
a “subjective reason” for performing a claimed method step in a particular
manner (i.e., “at design time”) would not be considered a claim limitation.
Rather, the majority seemingly arbitrarily classifies the positively recited
claim limitation “at design time” as a “subjective reason” for performing the
claimed method step and appears to conclude, based on this unsubstantiated
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classification, that the claim limitation “at design time” is not a claim
limitation. I cannot agree with my colleagues on this point.
The majority then states that the positively recited claim limitation “at
design time” “does not further recite at the time of what design” and
hypothesizes that the claim limitation “at design time” “might read on
inputting the . . . parameters at the time of designing anything, regardless of
how unrelated the anything being designed is to the configurable address
mapping and protection architecture.” Maj. Op. 15. It is unclear whether
the majority concludes that the claim limitation “at design time” is
considered a claim limitation that is met by “at the time of designing
anything” (including things that are unrelated) — and that Krueger discloses
this feature — or if the majority is suggesting that the claim limitation “at
design time” is not considered a claim limitation because the claim does not
also recite “what” design is being claimed. If the former, the majority does
not state where in the cited prior art reference Krueger discloses a time of
designing anything that is unrelated (to something else). Indeed, the
majority makes no reference to the Krueger reference at all. If the latter, the
majority does not explain why a specific recitation of the exact nature of
“what” design is being referred to by the claim limitation “at design time” is
necessary in order to consider the claim limitation “at design time” to be a
claim limitation. I cannot agree with my colleagues on this point.
The majority also states that claim 42 “is sufficiently broad that it
reads on one programmer inputting the configuration and protection
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parameters during device operation, so long as the parameters are input
while somebody else is designing . . . some unrelated modification to the
system in which the device operates.” Maj. Op. 15. In my view, even if the
majority’s presumed claim construction of “at design time” is true (i.e., one
of ordinary skill in the art would have understood the term “at design time”
to mean during device operation and performed by somebody else designing
an unrelated — or related — modification to a system), the proper next step
would have been to then determine if Krueger discloses this feature, rather
than reading the claim term out of the claim. Even if the majority is correct
that the claim term “at design time” is broad, the majority does not indicate
why the breadth of a claim term is sufficient cause to read the claim term
entirely out of the claim and to give the claim term no patentable weight at
all.
The majority states that the claim limitation “at design time” “does
not necessarily result in any physical difference.” Maj. Op. 15. Presumably,
the majority is suggesting that the claim limitation “at design time” is not
considered a claim limitation because “at design time” does not necessarily
result in any physical difference or change of something. However, the
majority does not provide support for the theory that a specific positively
recited claim limitation must “necessarily result in [a] physical difference”
of something to be considered a claim limitation. Nor does the majority
specify what the majority believes the allegedly required “physical
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difference” or what the thing to be physically changed must be. I cannot
agree with my colleagues on this point.
The majority states that the positively recited claim limitation “at
design time” does not “create any inherent or implicit temporal restriction”
because, according to the majority, Patent Owner allegedly “explain[ed] that
the act of entering the parameters into a computer, alone, does not convert a
general-purpose computer into a special machine” and a “client-server
system must take the input parameter specifications and generate a netlist”
that “is used to actually fabricate a hardware chip.” Maj. Op. 15–17.
Presumably, the majority is suggesting that the claim limitation “at design
time” is not considered a claim limitation because the claim limitation “at
design time” supposedly does not create a “temporal restriction.” I cannot
agree with my colleagues on this point.
First, the majority does not provide support for the theory that a
positively recited claim limitation must “create [an] inherent or implicit
temporal restriction” in order to be considered a claim limitation. I do not
agree that such a requirement exists. Second, the majority does not explain
how the explicit recitation of “at design time” (i.e., performing a recited
method step at a time designated as “at design time”) differs from a
“temporal restriction,” even if the majority’s theory that a “temporal
restriction” is somehow required. Third, the reasons proffered by the
majority (i.e., the alleged admissions by the Patent Owner) do not support
the majority’s conclusion as to why the positively recited claim limitation
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“at design time” is supposedly not a “temporal restriction.” For example,
whether or not entering parameters into a computer “converts” a general-
purpose computer into a “specific machine” or whether or not a “netlist” is
generated or used in some way does not address whether “at design time” is
a “temporal restriction.” In fact, there does not appear to be any clear
relationship between these seemingly disparate concepts.
At least the above reasons lead me to dissent from my colleagues’
decision as expressed in the majority opinion.

Patent Owner:

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

Third Party Requester:

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