Ex Parte Balakrishnan et al

Patent Trial and Appeal Board

Sep 26, 2016

12787919 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121787,919
134359 7590
Gibb & Riley, LLC
844 West Street
Suite 200
FILING DATE
05/26/2010
09/28/2016
Annapolis, MD 21401
FIRST NAMED INVENTOR
Bargav Balakrishnan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
POU920100032US1 5558
EXAMINER
KERVEROS, DEMETRIOS C
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
gfsupport@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARGA V BALAKRISHNAN, PRADIP PATEL,
ANTONIO R. PELELLA, and DANIEL RODK0 1
Appeal2015-004165
Application 12/787,919
Technology Center 2100
Before: KARA L. SZPONDOWSKI, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify International Business Machines Corp. as the real party
in interest. App. Br. 1.
Appeal2015-004165
Application 12/787,919
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134 from a rejection of claims 1-
14, which constitute all claims pending in the application. Final Act. 1; App.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
The claimed invention relates to simultaneously testing memory
arrays and associated logic using Array Built-In Self Test (ABIST) circuitry.
Spec. i-f 1. Claim 1, reproduced below with its disputed limitation italicized,
is representative of the claimed subject matter:
1. A method of testing an integrated circuit device, the
integrated circuit device having a memory array portion and a
logic portion, the method comprising:
providing test data to both the memory array portion and
the logic portion of the integrated circuit device using only on-
chip Array Built-In Self Test (ABIST) circuitry of the
integrated circuit device, the test data being generated by an
ABIST engine of the ABIST circuitry; and
simultaneously testing the logic portion of the integrated
circuit device using the ABIST circuitry, wherein both the
memory array portion and the logic portion of the integrated
circuit device are tested at speed using a variety of multi-cycle
read and write patterns for the memory array portion and the
logic portion.
Watanabe
REFERENCE
US 7,596,730 B2
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Sep.29,2009
Appeal2015-004165
Application 12/787,919
REJECTIONS
Claims 1-14 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 5.
Claims 1-14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Watanabe. Final Act. 5.
ANALYSIS
Written Description Rejection
The Examiner finds the originally-filed disclosure does not describe
the disputed limitation of "the test data being generated by an ABIST engine
of the ABIST circuitry," recited in independent claims 1, 5, 9, and 12. Final
Act. 5. Appellants argue that the Examiner erred because the Specification
discloses an ABIST engine 104, which "inherently" generates ABIST test
data 110 and provides it to memory array 102 and logic 108. App. Br. 9-1 O;
Spec. i-f 1 7. Appellants note that paragraph 17 of the Specification states
"the ABIST test data 110 from the ABIST engine 104 is communicated both
to the array 102, as well as to the logic 108." App. Br. 10; Spec. i-f 17.
Appellants contend this statement means that the ABIST test data comes
from the ABIST engine 104 and not from any external source. Reply Br. 2.
Appellants further argue that "ABIST" is an acronym that stands for
"Automatic Built-In Self Test"; "if the test data were not generated by the
ABIST engine, then it would not be 'self-testing"'; and "an ABIST 'engine'
is a device that enables built-in, self testing of memory array circuitry."
App. Br. 9-10. In addition, Appellants argue that anABIST engine
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Appeal2015-004165
Application 12/787,919
inherently generates ABIST test data, citing Shephard (US Patent No.
5,633,877) for support. App. Br. 10; Reply Br. 3--4.
In response, the Examiner finds the Specification does not disclose
that the AB I ST engine 104 generates the recited test data, noting that the
Specification does not disclose embedding a Test Pattern Generating device,
which is normally associated with the generation of the test data, in that
ABIST engine. Ans. 3. Further, the Examiner finds that ABIST engines do
not inherently generate ABIST test data, citing Boehler (US 7,171,596 B2)
for support. Id. at 3--4.
In their Reply Brief, Appellants argue Boehler, in fact, supports their
inherency argument. Reply Br. 3-5. Appellants contend that, in Boehler,
the Built-In Self Testing (BIST) circuitry has two test modes: a Direct
Access mode, cited by the Examiner, and another mode, in which the BIST
circuitry itself generates test patterns. Id.
Our reviewing court guides that the written description support for a
claim "must clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citation and
quotations omitted). The test is whether the disclosure "conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Id. "[A ]ctual 'possession' or reduction to
practice outside of the specification is not enough. Rather ... it is the
specification itself that must demonstrate possession." Id. at 1352; see also
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir.
2008) (explaining§ 112, i-f 1 "requires that the written description actually or
inherently disclose the claim element"). Our reviewing court emphasizes:
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Appeal2015-004165
Application 12/787,919
[I]t is not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
disclosure ... Rather, it is a question whether the application
necessarily discloses that particular device . . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(internal quotation marks omitted) (quoting Jepson v. Coleman, 314 F .2d
533, 536 (CCP A 1963)).
On this record, we agree with the Examiner that a preponderance of
the evidence demonstrates a lack of express or inherent written description
support for the disputed limitation. The cited descriptions in the
Specification do not describe that the disclosed ABIST engine generates test
data: none of the descriptions preclude the AB I ST engine from merely
storing test patterns generated from another source or from merely providing
test patterns generated from another source. App. Br. 5, 9-11; Ans. 2--4;
Reply Br. 2--4; Spec. i1i1 4, 17, Fig. 2. Further, the cited disclosures in
Boehler and Shephard do not indicate that ABIST engines inherently
generate test data (e.g., the cited disclosures do not explicitly or implicitly
define the term ABIST engine to necessarily require generating ABIST test
data). App. Br. 10; Ans. 2--4; Reply Br. 3-5; Boehler 1:23--40, 4:4--32;
Shephard 3: 10-13. The cited disclosures merely address the generation of
test data in particular embodiments of BIST engines, not the generation of
test data in the embodiments disclosed in the Specification. Ans. 2--4.
Accordingly, we sustain the written description rejection of
independent claims 1, 5, 9, and 12 and of dependent claims 2--4, 6-8, 10, 11,
13, and 14, each of which ultimately depend on one of claims 1, 5, 9, and 12.
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Appeal2015-004165
Application 12/787,919
Anticipation Rejection
Appellants argue the disputed limitation addressed above has been
afforded no patentable weight in terms of what Watanabe discloses. App.
Br. 12. Appellants further argue that "since the claim language does satisfy
the written description as discussed above, it should be afforded patentable
weight, in which case the claims are not anticipated by Watanabe." Id. In
light of our resolution of the written description issue, discussed supra, the
dispute regarding anticipation is moot.
DECISION
We affirm the Examiner's 35 U.S.C. § 112, first paragraph, written
description rejection of claims 1-14.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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