Ex Parte Agarwal et al

Patent Trial and Appeal Board

Mar 26, 2014

11961442 (P.T.A.B. Mar. 26, 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.
11/961,442 12/20/2007 Kanak B. Agarwal AUS920070566US1 6285
61043 7590 03/26/2014
IBM CORPORATION (MH)
c/o MITCH HARRIS, ATTORNEY AT LAW, L.L.C.
P.O. BOX 7998
ATHENS, GA 30604
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
MAIL DATE DELIVERY MODE
03/26/2014 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
____________

Ex parte KANAK B. AGARWAL, JERRY D. HAYES,
and SANI R. NASSIF
____________

Appeal 2012-002199
Application 11/961,442
Technology Center 2800
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
The named inventors (hereinafter the “Appellants”)1 seek our review
under 35 U.S.C. § 134(a) of a final rejection of claims 1 through 18. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 The Appellants identify the real party in interest as International Business
Machines Corporation. Appeal Brief filed June 7, 2011 (“App. Br.”) at 3.
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Application 11/961,442

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STATEMENT OF THE CASE
The invention relates to a “device characterization method and system
that use a digital multi-meter, voltmeter and/or current meter to provide
indications of standard deviation and/or mean values of device parameter
variation within an array of devices.” Specification (“Spec.”) ¶ 0014.
Claims 1-3 and 6-8 are representative of the claimed subject matter and
reproduced below (key limitations in dispute italicized):
1. A computer-performed method for characterizing
device parameter variation in an array of devices, the method
comprising:
under control of a computer system, sequentially
selecting devices within said array as a selected device under
test;
producing a voltage or current waveform at a test output
of the array of devices corresponding to a value of a particular
device parameter of the selected device, wherein the voltage or
current waveform is generated at the test output by action of the
sequentially selecting;
measuring at least one of a DC value or a root mean
square value of a variation of the voltage or current waveform
during the sequentially selecting with a digital meter interfaced
to the computer system; and
storing the at least one of the DC value or the root mean
square value of the variation of the voltage or current waveform
in a memory of the computer system as an indication of a
statistic of the device parameter variation.
2. The computer-performed method of Claim 1, wherein
the measuring measures a root mean square value of variation
of the waveform as an indication of a standard deviation of the
device parameter variation.
3. The computer-performed method of Claim 1, wherein
the measuring measures a direct current value of the waveform
as an indication of a mean of the device parameter variation.
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6. The computer-performed method of Claim 1, wherein
the producing produces a voltage indicative of a capacitance of
the selected device under test.
7. The computer-performed method of Claim 6, further
comprising low-pass filtering the voltage or current produced
by the producing to remove transients due to the sequentially
selecting.
8. The computer-performed method of Claim 1, wherein
the producing produces a voltage indicative of a resistance of
the selected device under test.
App. Br. 25-26 (Claims App’x).
The Examiner rejected the claims as follows:2
Rejection 1. Claims 1, 3-6, 8, 9, 11-16, and 18 under 35 U.S.C.
§ 102(e) as anticipated by Acharyya;3
Rejection 2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Acharyya in view of Masleid;4
Rejection 3. Claims 1, 5, 6, 8, 9, and 13-16 under 35 U.S.C. § 103(a)
as unpatentable over Bi5 and Murtagh;6
Rejection 4. Claims 2, 10, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Bi and Murtagh and further in view of Agilent 34401A
Digital Multimeter;7

2 The Examiner has withdrawn the rejections of claims 2, 10, and 17 under
35 U.S.C. § 102(e) as anticipated by Archaryya, claims 17 and 18 under 35
U.S.C. § 103(a) over Bi and Murtagh, and all rejections on the ground of
obviousness-type double patenting. Ans. 4.
3 US Patent Application Publication 2008/0209285 A1 published August 28,
2008.
4 US Patent Application Publication 2004/0135622 A1 published July 15,
2004.
5 US Patent 7,038,482 B1 issued May 2, 2006.
6 US Patent Application Publication 2008/0218741 A1 published September
11, 2008.
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Rejection 5. Claims 3, 11, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Bi and Murtagh and further in view of the Examiner’s
observations;
Rejection 6. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Bi and Murtagh and further in view of Masleid.
Examiner’s Answer mailed September 16, 2011 (“Ans.”) 5-15.

DISCUSSION
The Appellants argue rejection 1 based on claims 1, 9, and 16 as a
group, claims 3 and 11 as a group, claims 6 and 14 as a group, and claims 8
and 15 as a group; rejection 3 based on claims 1, 9 and 16 as a group;
rejection 4 based on claims 2, 10 and 17 as a group; and rejection 5 based on
claims 3, 11 and 18 as a group. App. Br. 9-19. Therefore, we confine our
discussion of the rejections to claims 1-3 and 6-8, which we select as
representative of the claims as grouped and argued by the Appellants. 37
C.F.R. § 41.37(c)(1)(vii).
Rejection 1
Claim 1
The Examiner finds that Acharyya discloses every limitation required
by claim 1, including the measurement and storage of DC values of voltage
and current using a digital meter during sequential testing. Ans. 5-6, 16-17
(citing Acharyya Fig. 3 and ¶¶ 0008, 0009, 0022, 0023, 0024).
The Appellants contend that the Examiner’s rejection is flawed
because Acharyya does not disclose either the step of measuring a DC value

7 TestEquity, Meter, Agilent Meters at http://www.testequity.com (last
visited March 12, 2009).
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or storing the DC value. App. Br. 9-10. In the Reply Brief, Appellants
argue that Acharyya “does not disclose generation of an AC waveform by
the sequential selection of devices, nor the measurement and storage of a DC
or RMS value of that waveform as an indication of a statistic of device
parameter variation.” Reply Br. 6 (emphasis omitted).
Thus, the dispositive issue arising from these contentions is:
Did the Appellants show reversible error in the Examiner’s finding
that Acharyya describes measuring and storing the DC value of a voltage or
current waveform produced during sequential selection of devices as
required by claim 1?
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990)(the prima facie case is a procedural tool for
anticipation rejections). “[A]nticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim . . . .” In
re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457
(Fed. Cir. 1984)). The Examiner’s determination of anticipation depends on
the interpretation of “a DC value or a root mean square value of a variation
of the voltage or current waveform” as recited in claim 1. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
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The Examiner correctly finds that Acharyya describes measuring and
storing a DC value of the voltage and current waveform. We determine
claim 1 does not require generation of an AC waveform by the sequential
selection of devices as argued by Appellants. Therefore, Appellants’
argument that Acharyya does not disclose all of the limitations of claim 1 is
not persuasive. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability).
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 102(e) as anticipated by Acharyya, as well as claims 9 and 16 which are
not separately argued.
Claim 3
The Examiner finds that “even though Archaryya et al. (‘285) does
not explicitly disclose measuring a direct current value, measuring direct
current value are inherent features of a digital multi-meter” and “the mean of
the device parameter variation is implied by the direct current value
measurements” (Ans. 6-7 citing Acharyya 0024, Agilent 34401A Digital
Multimeter;, page 2).
The Appellants argue that “Archaryya does not disclose any
measurement as an indication of a statistic of the device parameter variation,
and in particular does not disclose measuring the DC value as an indication
of mean of the device parameter variation as recited in dependent Claims 3,
11 and 18.” App. Br. 12.
The Examiner responds that “Archaryya discloses measuring a DC
value of a voltage or current waveform (paragraph 0008, lines 5-11;
paragraph 0009, lines 3-7) as an indication of the mean of the device
parameter variation (paragraph 0024, lines 10-24).” Ans. 17-18.
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In the Reply Brief, Appellants refer back to the argument made with
respect to claim 1. For the same reason that Appellants’ argument is not
persuasive with respect to claim 1, it is also not persuasive with respect to
claim 3. Accordingly, we affirm the rejection of claim 3 under 35 U.S.C. §
102(e) as anticipated by Acharyya, as well as claims 11 and 18 which are not
separately argued.
Claim 6
The Examiner finds that Acharyya discloses every limitation of claim
6 because “even though Acharyya . . . does not explicitly disclose the
produced voltage is indicative of a capacitance of the selected device under
test, there exist[s] a relationship between voltage and capacitance
(C = q/V).” Ans. 7.
The Appellants do not dispute that “a capacitance has a voltage
related to the capacitance,” but, instead, contend that the Examiner has not
demonstrated that Acharyya has the ability “to make a measurement of a
voltage waveform indicative of a capacitance of the selected device.” App.
Br. 13 (emphasis omitted).
The Examiner responds that in addition to the relationship that exists
between voltage and capacitance, in electrical paths parasitic capacitance
unavoidably exists between the parts of an electronic component or circuit
due to proximity to each other. Ans. 18. In the Reply Brief, Appellants
assert that “[w]hether a parasitic capacitance is present or not is not germane
to whether Archaryya discloses measuring the DC or rms value of a voltage
waveform” as recited in claim 1 from which claim 6 depends.
Appellants’ argument is not persuasive because Acharyya measures a
DC value of the voltage or current waveform as discussed above with
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respect to claim 1. Accordingly, we affirm the grounds of rejection of claim
6 under 35 U.S.C. § 102(e) as well as claim 14, which is not separately
argued by Appellants.
Claim 8
The Examiner finds that “even though Acharyya . . . does not
explicitly disclose the produced voltage is indicative of a resistance of the
selected device under test, there exist[s] a relationship between voltage,
current, and resistance (R=V/I).” Ans. 7.
The Appellants do not dispute the relationship between voltage and
resistance, but, instead, contend that the Examiner’s rejection is flawed
because “Ohm’s law is not evidence that the methods and apparatus and
methods of [Acharyya] . . . have an ability to make a measurement of a
voltage waveform indicative of a resistance of the selected device” (App. Br.
14 (emphasis omitted); Reply Br. 10).
Appellants’ argument is not persuasive because Acharyya measures a
DC value of the voltage or current waveform as discussed above with
respect to claim 1. Accordingly, we affirm the grounds of rejection of claim
8 under 35 U.S.C. § 102(e) as well as claim 15, which is not separately
argued by Appellants.

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Rejection 2:
Claim 7
The Examiner finds that Acharyya discloses all of the limitations of
claim 6 on which claim 7 depends as discussed above. The Examiner
further finds that it would have been obvious to provide Acharyya with low-
pass filtering as required by claim 7 because “Masleid et al. discloses that it
is well-known to low-pass filter voltage or current for the purpose of
removing transients.” Ans. 9 (citing Masleid ¶ 0049).
Appellants contend that the Examiner’s rejection is flawed because
Acharyya “does not disclose or suggest producing a voltage or current
waveform by sequentially selecting devices, so the Examiner’s asserted
purpose for the inclusion of the low-pass filtering of [Masleid] in the system
of [Acharyya] is not valid, as there is no reason for filtering the output of
[Acharyya]” (App. Br. 19).
Appellants’ argument is not persuasive because Acharyya measures a
DC value of the voltage or current waveform as discussed above with
respect to claim 1. Accordingly, we affirm the rejection of claim 7 as
obvious over the combination of Acharyya and Masleid.

Rejection 3:
Claim 1
The Examiner finds that Bi discloses all of the steps of claim 1, but
“Bi does not disclose measuring the voltage or current waveform with a
digital meter interfaced to the computer system.” Ans. 10. The Examiner
determines that “it would have been obvious to a person having ordinary
skill in the art at the time the invention was made to provide Bi with a digital
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meter interfaced to the computer system as disclosed by Murtagh et al. for
the purpose of reading output from [the] meter and performing data
acquisition/analysis.” Id. at 11.
The Appellants contend that the Examiner’s rejection is flawed
because Figure 4 of Bi, including its associated description at column 10,
“clearly describes the operation of the circuit of Fig. 4 as cycling through the
measurements of two different gate-source voltages.” App. Br. 15; Reply
Br. 11. Murtagh is said to “add[] nothing to further suggest generating a
waveform having a voltage or current corresponding to a value of a device
parameter by sequentially selecting devices.” App. Br. 15; Reply Br. 11.
The Examiner responds that
Bi discloses storing a result of the measuring in a memory
(storage of control circuit 308) of the computer system (308) as
an indication of a statistic of the device parameter variation
(column 9, lines 24-30). Voltage at node (312) is read by
comparator (306), compared with reference voltages (Vref1,
Vref2) and the result is stored in computer (308) (Fig. 3).
Furthermore, Fig. 11 shows storing measured voltage value
(VGS, step 1108) and current value (step 1114). The digital
meter (34) of Murtagh is capable of measuring Gate-To-Source
DC Voltage (VGS) since it can measure dc voltage (paragraph
0062, lines 8-9).
Ans. 19.
Thus, the dispositive issue arising from these contentions is:
Did the Appellants show reversible error in the Examiner’s
finding that it would have been obvious to combine the meter of
Murtagh at a particular location in Bi’s circuit such that the
combination encompasses claim 1 because Murtagh’s meter is capable
of measuring DC voltage?
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In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed.
Cir. 1988). The Examiner provides no reason for selecting the
particular location in Bi’s circuit at which to provide the meter of
Murtagh other that the ability of Murtagh’s meter to measure DC
voltage. Therefore, we find the preponderance of the evidence on this
record supports the Appellants’ argument that the Examiner has not
set forth a prima facie case of obviousness of claim 1 over the
combination of Bi and Murtagh. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) (“The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification.”).
Accordingly, we reverse the rejection of claim 1 under
35 U.S.C. § 103 as well as independent claims 9 and 16 and
dependent claims 5, 6, 8, 10, 11, 13-15, 17, and 18 in the absence of a
reasonable basis for using the measuring device of Murtaugh to
measure the claimed output in the circuit of Bi. See App. Br. 15;
Reply Br. 11.

Rejection 4:
Claim 2
Claim 2 stands rejected under 35 U.S.C. § 103 based on the
same combination of Bi and Murtagh as applied to claim 1 and further
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in view of Agilent 34401A Digital Multimeter;. The Examiner finds
that Bi as modified by Murtagh “does not disclose measuring a root
mean square value of variation of the waveform,” but “Agilent
Technologies discloses that it is well-known to use RMS values for
the purpose of indicating measured AC voltage/current signal values”
(Ans. 13 citing Agilent 34401A, page 2).
Appellants argue that Agilent 34401A Digital Multimeter;
“adds nothing to further suggest the invention of Claims 1, 9 and 16.”
App. Br. 16. We agree.
Accordingly, we reverse the rejection of claim 2 as well as
claims 10 and 17 for the same reason as claim 1 discussed above
because Agilent 34401A does not fix the deficiency in the Examiner’s
rationale for combining Bi and Murtagh.

Rejection 5:
Claim 3
Claim 3 stands rejected under 35 U.S.C. § 103 based on the
same combination of Bi and Murtagh as applied to claim 1 combined
with the Examiner’s observation that “[e]ven though Bi as modified
does not disclose measuring a direct current value of the waveform as
an indication of the mean of the mean of the device parameter
variation, it would be obvious to obtain a direct current value to
represent an average or mean parameter variation. Thus, efforts to
generate ICODE’s can be reduced.” Ans. 14.
The Appellants argue that “Bi and Murtagh do not suggest the
invention as recited in the independent Claims.” App. Br. 17.
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Appellants further argue that “there is no indication in Bi or the
combination of Bi and Murtagh that the circuit of Bi could be
modified in a manner that would reduce ICODES by using a direct
current value.” We agree.
Accordingly, we reverse the rejection of claim 3 as well as
claims 11 and 18 for the same reason as claim 1 discussed above
because the Examiner observations that the measurement of direct
current value of the waveform would reduce ICODES, shown in
Figure 4 of Bi, do not fix the deficiency in the Examiner’s rationale
for combining Bi and Murtagh.

Rejection 6:
Claim 7
The Appellants do not address the rejection of claim 7 under 35
U.S.C. § 103(a) over Bi in view of Murtagh and further in view of
Masleid maintained by the Examiner. See generally App. Br; Ans.
15. Accordingly, we summarily affirm this ground of rejection of
claim 7.

SUMMARY
The Examiner’s rejection of claims 1, 3-6, 8, 9, 11-16, and 18 under
35 U.S.C. § 102(e) is affirmed.
The Examiner’s § 103(a) rejection of claim 7 under Acharyya in view
of Masleid is affirmed.
The Examiner’s § 103(a) rejections of claims 1, 2, 3, 5, 6, 8-11, and
13-18 over Bi and Murtagh alone or further in view of Agilent and the
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Examiner’s observations are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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