Ex Parte Borchert et al

Patent Trial and Appeal Board

Aug 26, 2016

12363863 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/363,863 0210212009 Joerg Borchert
57579 7590 08/30/2016
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 Crescent Green
Suite 200
CARY, NC 27518
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.
1012-0136 2923
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERG BORCHERT, JURIJUS CIZAS,
SHRINATH ESWARAHALL Y, MARK STAFFORD, and
RAJAGOP ALAN KRISHNAMURTHY
Appeal2015-004474
Application 12/363,863
Technology Center 2400
Before NORMAN H. BEAMER, JOHN D. HAMANN, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is INFINEON
TECHNOLOGIES AG. App. Br. 2.
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Application 12/363,863
fNVENTION
Appellants' invention relates to a programmable logic device that
includes a plurality of logic blocks grouped into one or more partitions and a
logic unit that controls external access to the one or more partitions, controls
programming of the one or more partitions, and controls interconnection and
operation of the one or more partitions during operation of the
programmable logic device. Abstract. Claims 1 and 10 are illustrative and
read as follows:
1. A method of manufacturing a programmable logic
device having a plurality of logic blocks, comprising:
grouping the logic blocks into two or more partitions; and
inserting specific operating instructions into a logic unit of
the programmable logic device to control external access to the
two or more partitions, control programming of the two or more
partitions and control operation of and interconnection between
the two or more partitions during operation of the programmable
logic device.
10. The method of claim 1, wherein inserting specific
operating instructions into the logic unit to control operation of
and interconnection between the two or more partitions during
operation of the programmable logic device comprises inserting
specific operating instructions into the logic unit to control how
the two or more partitions access a shared resource of the
programmable logic device.
REJECTIONS
Claims 1 and 3-10 stand rejected under 35 U.S.C. 101 as directed to
nonstatutory subject matter.
Claims 1, 11, and 21 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1 and 13 of
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copending Application No. 12/363,903 (now US 8,984,300 B2; issued Mar.
17, 2015).
Claims 1-3, 8-13, and 18-21 stand rejected under 35 U.S.C. 103(a) as
unpatentable over the combination of Oesterreicher et al. (US 2004/0197073
Al; published Oct. 7, 2004) and Yan et al. (US 2010/0050241 Al; published
Feb. 25, 2010).
Claims 4 and 14 stand rejected 35 U.S.C. 103(a) as unpatentable over
the combination of Oesterreicher, Yan, and Swanson et al.
(US2006/0248329 Al; published Nov. 2, 2006).
Claims 5-7, 15, and 17 stand rejected under 35 U.S.C. 103(a) as
unpatentable over the combination of Oesterreicher, Yan, and Gueron (US
2008/0104403 Al; published May 1, 2008).
ANALYSIS
Non-Statutory Subject Matter Rejection of Claims 1 and 3-10
In rejecting claim 1 for lack of statutory subject matter, the Examiner
found that the claim is directed to an abstract idea because it "could be
completely performed mentally, verbally or without a machine nor is any
transformation apparent." Final Act. 13. The Examiner further found that
"all the steps of the claimed method could be done by a
user/programmer/ developer." Id.
Appellants contend the Examiner erred because the Examiner has not
performed the proper legal analysis or even identified the abstract idea to
which claim 1 is allegedly directed. App. Br. 11 (citing Alice Corp. Pty. Ltd.
v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)). Appellants further argue that
Claim 1 is not directed to an algorithm implemented on a general-purpose
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computer, but rather the manufacturing of a specific-purpose type of
electronic device. Id. at 12.
We agree with Appellants that the Examiner erred. Before the
notification date of the Examiner's Answer (December 31, 2014), the
Supreme Court confirmed in Alice that a two-step framework for
determining subject matter eligibility under 35 U.S.C. § 101 is required.
134 S.Ct. at 2355; see also "2014 Interim Guidance on Patent Subject Matter
Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014). Because the Examiner
relied only on the machine-or-transformation test in concluding that claim 1
lacks subject matter eligibility, we do not sustain the Examiner's 35 U.S.C.
§ 101 rejection of claims 1 and 3-10. See Ans. 4--5.
Obviousness Rejection of Claims 1-3, 8-13, and 18-21
Appellants contend the Examiner erred in rejecting claim 1 for
obviousness because Oesterreicher does not teach the recited "inserting" step
of claim 1. App. Br. 13-14. Appellants specifically argue that neither
Oesterreicher nor Yan teaches or suggests a "logic unit" onboard the
programmable logic device ("PLD") into which specific operating
instructions for controlling the partitions can be inserted. App. Br. 14--16;
Reply Br. 8. Appellants further argue that the Examiner improperly ignored
the "inserting" step by focusing instead on the "control" phrase recited
within the "inserting" step. Id. at 13-14.
Appellants' arguments do not persuade us of Examiner error. The
Examiner explained that, because Oesterreicher is capable of controlling
programming of two or more partitions and controlling operation of and
interconnection between the two or more partitions during operation of the
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programmable logic device, it would have been inherent that the "grouping"
and "inserting" steps already would have been performed. Ans. 5---6. In
other words, the Examiner found that Oesterreicher' s teachings of
controlling partition programming, operation, and interconnection during
operation of the PLD would have suggested to an artisan of ordinary skill
that operating instructions would have had to be inserted into the portion of
the PLD responsible for controlling programming, operation, and
interconnection of the partitions. See id.
Appellants argue in a conclusory manner that neither Oesterreicher
nor Yan teaches or suggests the "logic unit" limitation recited in the
"inserting" step in claim 1. Appellants, however, merely recite the claim
limitation and state that Oesterreicher and Yan do not teach or suggest the
disputed element. App. Br.15-16. As stated by the Federal Circuit, Rule
41.3 7 "require[ s] more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art." In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011 ). Although Appellants rely on the recited "logic unit,"
Appellants present no persuasive explanation or evidence as to why the
Examiner erred in finding the cited teachings in Oesterreicher would have
suggested the "inserting" step recited in claim 1.
We note that Appellants describe the claimed "logic unit" broadly in
the Specification. See Spec. i-f 15. Specifically, Appellants describe logic
unit 114 as controlling partition programming, as well as the interconnection
and operation of the partitions 102, 104 during operation of the
programmable logic device 100." Id. Moreover, in the Summary of
Claimed Subject Matter in the Appeal Brief, Appellants state that partition
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programming is controlled by a logic unit 114 included in the programmable
device, and that the logic unit also controls the interconnection and operation
of the partitions 102, 104 during operation of the programmable logic
device. App. Br. 3. Because Oesterreicher teaches controlling the
interconnection and operation of the partitions during operation of the
programmable logic device, we are not persuaded the Examiner erred in
finding that those teachings would have suggested the "inserting" step
recited in claim 1 to an artisan of ordinary skill.
Appellants further argue for the first time in the Reply Brief that, in
contrast to the requirement in claim 1 that programming of partitions be
controlled, "Oesterreicher is teaching that reprogramming of the partitions is
uncontrolled, since any given partition can be reprogrammed while other
partitions continue to operate." Reply Br. 9. This argument is entitled to no
consideration because it was not presented for the first time in the opening
brief. Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply
brief that could have been raised in the opening brief is waived); accord Ex
parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative
opinion) (absent a showing of good cause, the Board is not required to
address an argument newly presented in the reply brief that could have been
presented in the principal brief on appeal).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Oesterreicher and Yan teaches or suggests
the limitations recited in claim 1.
Appellants also contend the Examiner erred in combining
Oesterreicher with Yan because the Examiner did not explain "how Yan's
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description of partitioned memory devices, where access to secure memory
partitions requires authentication of the user, would lead the skilled person
to modify Oesterreicher's digital media server to control access to partitions
on Oesterreicher's programmable logic devices." Reply Br. 12. Appellants
further argue that the combination of Oesterreicher and Yan "results in a
digital media server that includes both a partitionable PLD and a
partitionable memory, where access to memory partitions may require
authentication." App. Br. 17.
We are not persuaded the Examiner erred. The Examiner relied on
Yan as teaching external access to two or more partitions. Ans. 7 (citing
Yan i-f 3 5). We find that it would have been within the level of skill of one
skilled in the art to combine the known techniques in Oesterreicher and Yan
to use Oesterreicher's control programming of the two or more partitions of
the programmable logic device to control external access to the partitions, as
taught or suggested by Yan. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) ("[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill" (citations omitted)). We are not
persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would have been
"uniquely challenging or difficult for one of ordinary skill in the art" at the
time of Appellants' invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Moreover, "[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
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primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, we find that the Examiner has provided a valid articulated
line of reasoning with a rational underpinning to support the conclusion of
obviousness with respect to the proposed combination of Oesterreicher and
Yan. Final Act. 21.
For these reasons, we are not persuaded the Examiner erred in
combining the teachings of Oesterreicher and Yan.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 11 and 21, which Appellants contend are patentable for
similar reasons. App. Br. 13. We also sustain the 35 U.S.C. § 103(a)
rejection of claims 2, 3, 8-10, 12, 13, and 18-20, for which Appellants make
no additional arguments.
Obviousness Rejection of Claims 2 and 12
In addition to the arguments made for independent claims, discussed
above, Appellants contend the Examiner erred in rejecting dependent claims
2 and 12 as obvious over the combination of Oesterreicher and Yan because
"Yan does not discuss partitions of a programmable logic device" or
"describe or suggest storing authentication information in a programmable
logic device." App. Br. 18-19. Appellants further argue that Oesterreicher
"says nothing about storing partitioning information in the programmable
logic device for use by a logic unit in controlling programming of the
partitions." Id. at 19.
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We are not persuaded of Examiner error. Appellants attack the Yan
and Oesterreicher references individually, even though the Examiner relied
on the combination in rejecting claims 2 and 12. Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
( CCP A 1981) ). The Examiner relied on Oesterreich er as teaching a
programmable logic device and on Yan as teaching storing authentication
information. Ans. 9.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 2 and 12.
Obviousness Rejection of Claims 3 and 13
In addition to the arguments made for the independent claims,
discussed above, Appellants contend the Examiner erred in rejecting
dependent claims 3 and 13 because "neither reference describes the storing
of partition information" or "the authentication of access to partitions of a
programmable logic device." App. Br. 19. Appellants also again argue that
the Examiner erred in combining Oesterreicher and Yan. Id. at 19--20.
Appellants' arguments are not persuasive of error. Appellants again
attack the Yan and Oesterreicher references individually, even though the
Examiner relied on the combination in rejecting claims 3 and 13. See Merck
800 F .2d at 1097. Moreover, for the reasons discussed above with regard to
the independent claims, we are not persuaded the Examiner erred in
combining the teachings of Oesterreicher and Yan. Accordingly, we sustain
the 35 U.S.C. § 103(a) rejection of dependent claims 3 and 13.
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Obviousness Rejection of Claims 8 and 18
In addition to the arguments made for the independent claims,
discussed above, Appellants contend the Examiner erred in rejecting
dependent claims 8 and 18 because "Yan does not discuss programmable
logic devices" and "neither reference says anything about the inclusion of a
secure microcontroller in a programmable logic device." App. Br. 20.
Appellants' arguments are not persuasive of error. Appellants again
attack the Yan and Oesterreicher references individually, even though the
Examiner relied on the combination in rejecting claims 3 and 13. See Merck
800 F .2d at 1097. Moreover, the Examiner found that Yan teaches a
controller used in controlling data that will be authenticated before being
allowed to access a partition, and that the controller has the same function as
the recited "secure microcontroller." Ans. 10 (citing Yan i-f 70). Appellants
present no persuasive explanation or evidence to rebut the Examiner's
findings. See Reply Br. 16. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of dependent claims 8 and 18.
Obviousness Rejection of Claims 9 and 19
In addition to the arguments made for the independent claims,
discussed above, Appellants contend the Examiner erred in rejecting
dependent claims 9 and 19 because "Yan does not discuss programmable
logic devices at all" and "neither reference says anything about the inclusion
of secure non-volatile memory in a programmable logic device." App. Br.
21.
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Appellants' arguments are not persuasive of error. Appellants again
attack the Yan and Oesterreicher references individually, even though the
Examiner relied on the combination in rejecting claims 9 and 19. See Merck
800 F.2d at 1097. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection
of dependent claims 9 and 19.
Obviousness Rejection of Claims 10 and 20
In addition to the arguments made for the independent claims,
discussed above, Appellants contend the Examiner erred in rejecting
dependent claims 10 and 20 because Oesterreicher does not teach or suggest
"that a logic unit is programmed to control how two or more partitions
access a shared resource of the programmable logic device." App. Br. 21.
We agree with Appellants that the Examiner erred. The Examiner
relies on the operating system in Oesterreicher as teaching the recited
"shared resource." Ans. 12 (citing Oesterreicher Fig. 8, i-f 82). Appellants'
Specification provides examples of shared resources of the programmable
device 100, including "memory, DSP, CPU, etc." Spec. i-f 21. We disagree
with the Examiner that an artisan of ordinary skill would have considered an
operating system a shared resource of a PLD. Moreover, we agree with
Appellants that the cited portions of Oesterreicher do not teach that
partitionable PLD 700 uses or accesses an operating system. See Reply Br.
17. Accordingly, on the record before us, we do not sustain the 35 U.S.C.
§ 103(a) rejection of dependent claims 10 and 20.
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Nonstatutory Double Patenting
The Examiner rejects, provisionally, claims 1, 11, and 21 on the
ground of non-statutory double patenting over claims 1 and 13 of co-pending
Application No. 12/363,903. The Board has the flexibility whether to
review provisional obviousness-type double patenting rejections. See Ex
parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Application
No. 12/363,903 has now issued as Patent No. 8,984,300 B2. Because of the
changed circumstances resulting from issuance of the patent, we decline to
rule on the provisional obviousness-type double patenting rejections at this
time, but instead leave this issue for the Examiner to consider in the event of
further prosecution.
DECISION
We reverse the Examiner's decision rejecting claims 1 and 3-10 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 10 and 20 under
35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claims 1-9, 11-19, and
21under35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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