Ex Parte Cho

Board of Patent Appeals and Interferences

Nov 20, 2007

10201265 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KI-SEON CHO
____________

Appeal 2007-3128
Application 10/201,265
Technology Center 2100
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Decided: November 20, 2007
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Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2007-3128
Application 10/201,265

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 4/2, 4/1, 5, 6, 8/6, 8/5, 9, 10, 12/10, 12/9, 24, 25,
26/25, 26/24, 27, 28, 30/28, 30/27, 31, 32, 34/32, and 34/31. Claims 3, 4/3,
7, 8/7, 11, 12/11, 13-23, 29, 30/29, 33, and 34/33 have been indicated as
containing allowable subject matter.1 We have jurisdiction under 35 U.S.C.
§ 6(b), and we heard the appeal on October 24, 2007. We affirm.

STATEMENT OF THE CASE
Appellant invented a conditional select adder of a digital signal
processor. Specifically, the invention includes a carry generator that
generates a carry of input data Xi and Yi according to an initial carry. A key
feature of the carry generator is that according to the XOR result, either
predetermined data based on both the input data Xi and the input Yi input to
the first input unit, or the initial carry input to the second input unit is
selected and output as a carry. Providing such a feature in a carry generator

1 Based on the record before us, the current status of the claims is unclear.
Specifically, it is unclear whether the amendment filed December 14, 2006
(rewriting dependent claims 3, 7, 11, 29, and 33 in independent form) was
actually entered. Although the Examiner indicates in the Office
Communication mailed May 9, 2007 that this amendment was entered, the
same paper nevertheless indicates that the status of the claims is unchanged.
See Office Communication mailed May 9, 2007.

In any event, neither Appellant’s nor the Examiner’s statements regarding
the claim status account for the multiple dependent claims -- some of which
contain allowable subject matter and others of which are rejected as
indicated above.
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reduces power consumption, chip area, logic use, and delay time.2 Claim 1
is illustrative with the relevant limitations in dispute emphasized:
1. A carry generator for generating a carry of input data Xi and Yi
according to an initial carry, the carry generator comprising:

a first input unit which receives predetermined data based on the input
data Xi and Yi;

a second input unit which receives the initial carry; and

a selection unit which receives the result of performing an XOR
operation on the input data Xi and Yi,

wherein according to the XOR result, either predetermined data based
on both the input data Xi and the input Yi input to the first input unit, or the
initial carry input to the second input unit is selected and output as a carry.

The Examiner relies on the following prior art references to show
unpatentability:
New US 5,629,886 May 13, 1997
Winters US 6,466,960 B1 Oct. 15, 2002
(filed May 13, 1999)

1. Claims 1, 2, 4/2, 4/1, 5, 6, 8/6, 8/5, 24, 25, 26/25, 26/24, 27, 28, 30/28,
and 30/273 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by New.
2. Claims 9, 10, 12/10, 12/9, 31, 32, 34/32, and 34/314 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over New and Winters.

2 See generally Specification ¶¶ 12-14.
3 In view of the incorrect claim status noted above, only these claims are
subject to this rejection. We therefore presume that the Examiner intended
to include only these claims in this rejection.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
The Anticipation Rejection
We first consider the Examiner’s rejection of claims 1, 2, 4/2, 4/1, 5,
6, 8/6, 8/5, 24, 25, 26/25, 26/24, 27, 28, 30/28, and 30/27 under 35 U.S.C.
§ 102(b) as being anticipated by New. Anticipation is established only when
a single prior art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of New (Answer 4-7). Regarding
representative claim 1,5 Appellant argues that New does not disclose the

4 See n. 2, supra.
5 Appellant argues all of the claims rejected as anticipated together as a
group. See Br. 11-12; see also Reply Br. 4-7. Accordingly, we select claim
1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
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limitations in the last clause of the claim, namely “wherein according to the
XOR result, either predetermined data based on both the input data Xi and
the input data Yi input to the first input unit, or the initial carry input to the
second input unit is selected and output as a carry” (emphasis added).
Appellant emphasizes that for New to anticipate claim 1, the reference must
disclose that the selected predetermined data is based on both input data Ai
and Bi -- not merely on one or the other as the Examiner contends (Br. 11-
12).
The Examiner contends that New’s disclosure (col. 1, ll. 57-62) of
selecting either Ai or Bi as input data satisfies this claim language (Answer
10). The Examiner also held that the last clause of the claim is drafted in an
alternative format (i.e., due to the presence of the term “or”) and that New
need only meet one of the two conditions recited in the alternative to
anticipate the claim, namely that the XOR result is used to select either (1)
predetermined data based on both the input data Xi and the input data Yi
input to the first input unit, or (2) the initial carry input to the second input
unit (Answer 11). The Examiner found (id.), and Appellant does not deny,
that New discloses the second alternative.
Appellant disagrees that the claim is drafted in the alternative form
such that only one of the conditions need be present. According to
Appellant, since the claim requires a selection of two alternatives according
to an XOR result, the two alternatives must be available for there to be a
selection (Reply Br. 5-6).
The potentially dispositive issue before us, then, is whether the last
clause of claim 1 recites alternative limitations. For if it does, then the New
reference need only disclose one recited alternative to anticipate the claim.
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For the following reasons, we conclude that claim 1 does, in fact, recite
alternative limitations and thus is satisfied by New, which Appellant does
not deny discloses one of the recited alternatives.
For clarity, we have reproduced and rearranged the last clause of
claim 1 below and added numerals to emphasize the disputed alternative
limitations:
…wherein according to the XOR result, either

(1) predetermined data based on both the input data Xi and the
input data Yi input to the first input unit, or

(2) the initial carry input to the second input unit

is selected and output as a carry.

As this excerpt illustrates, the clause merely calls for selecting either
alternatives (1) or (2) according to the XOR result. That is, so long as the
XOR operation results in selecting one recited alternative, the claim is fully
met.
With this interpretation, we turn to the disclosure of New and, in
particular, Figure 6 of the reference. Although the figure depicts a four-bit
carry logic structure comprising four cascaded carry logic circuits 100-500,
logic circuit 100 is most pertinent to this appeal. The relevant portion of this
logic circuit in Figure 6 of New is reproduced below for clarity.
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Relevant Portion of Logic Circuit 100 in Figure 6 of New

As shown above, input signals Ai and Bi are provided to XOR gate
125 which produces an output Pi (i.e., the XOR result). This output Pi, in
turn, is then used by multiplexer 103 to select the signals present at either
terminal “0” (Ai) or terminal “1” (carry chain signal CAi). This functionality
that the Examiner describes on Page 5 of the Answer is undisputed.6
In our view, this functionality of New anticipates claim 1 since it
satisfies the second alterative of claim 1, namely that, according to the XOR
result, the initial carry input (CAi) to the second input unit is selected and
output as a carry (CAi+1).
Simply put, according to the XOR result Pi, the multiplexer will select
one of the recited alternatives. That is all the claim requires.
We find Appellant’s argument that the two recited alternatives must
be available for a selection unavailing. The scope and breadth of the claim

6 See also New, col. 5, ll. 5-38; Figure 2; col. 1, l. 54 - col. 2, l. 4 (discussing
a commensurate carry logic circuit).
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language simply does not preclude the selection of one recited alternative
according to the XOR result -- an alternative fully met by New.
In reaching this conclusion, however, we emphasize that our decision
is based solely on New satisfying one alternative limitation. We agree with
Appellant that New fails to disclose the first alternative limitation (i.e.,
selecting predetermined data based on both the input data Xi and the input
data Yi input to the first input unit). Significantly, as illustrated in Figure 6
of New (and the portion reproduced above), only input signal Ai is provided
to terminal “0” of multiplexer 103. Moreover, in a discussion pertaining to
a commensurate carry logic circuit shown in Figure 2, New indicates that the
multiplexer receives an input signal (typically either the Ai or Bi signal) on
one input terminal (New, col. 1, ll. 61-63; Fig. 2) (emphasis added).
The clear import of these teachings is that the multiplexer selects only
one input signal (Ai or Bi) -- not both. Contrary to the Examiner’s
suggestion, the fact that both input signals are used to produce the XOR
result Pi merely dictates which alternative is selected; it has no bearing on
the predetermined data corresponding to the first recited alternative (i.e., the
signal appearing at terminal “0” of the multiplexer in New). That alternative
must be based on both input signals--a feature that is simply lacking in New.
Notwithstanding this deficiency in New, we nevertheless conclude
that claim 1 recites alternative limitations, and New discloses one of the
recited alternatives. For this reason alone, and because New otherwise
discloses all recited limitations of representative claim 1, we will sustain the
Examiner’s anticipation rejection of that claim. We will also sustain the
Examiner’s rejection of claims 2, 4/2, 4/1, 5, 6, 8/6, 8/5, 24, 25, 26/25,
26/24, 27, 28, 30/28, and 30/27 which fall with claim 1.
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The Obviousness Rejection
We will also sustain the Examiner’s rejection of claims 9, 10, 12/10,
12/9, 31, 32, 34/32, and 34/31 under 35 U.S.C. § 103(a) as unpatentable over
New and Winters. We find that the Examiner has established at least a
prima facie case of obviousness of those claims that Appellant has not
persuasively rebutted. Specifically, the Examiner has (1) pointed out the
teachings of New, (2) noted the perceived differences between New and the
claimed invention, and (3) reasonably indicated how and why New would
have been modified to arrive at the claimed invention (Answer 7-9). Once
the Examiner has satisfied the burden of presenting a prima facie case of
obviousness, the burden then shifts to Appellant to present evidence or
arguments that persuasively rebut the Examiner's prima facie case.
Appellant did not persuasively rebut the Examiner's prima facie case of
obviousness, but merely noted that the addition of Winters fails to cure the
deficiencies of New in connection with the anticipation rejection of the
independent claims (Br. 12; Reply Br. 7). The rejection is therefore
sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1, 2, 4/2,
4/1, 5, 6, 8/6, 8/5, 9, 10, 12/10, 12/9, 24, 25, 26/25, 26/24, 27, 28, 30/28,
30/27, 31, 32, 34/32, and 34/31 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

Martin, Administrative Patent Judge, dissenting.

I respectfully disagree with the majority’s findings that claim 1 is
anticipated by New. The Examiner reads the recited “a first input unit which
receives predetermined data based on the input data Xi and Yi” on input
terminal “0” of multiplexer 103 (Fig. 6) and reads the recited “a second
input unit which receives the initial carry” on terminal “1” of that
multiplexer (Answer 10). However, as found by the majority in discussing
the first recited alternative of the “wherein” clause (which recites
“predetermined data based on both the input data Xi and the input data Yi”),
the data that is applied to terminal “0” represents only Ai and thus is not
based on both Ai and B1, as argued by the Examiner. It would seem to
follow that the recited “a first input unit which receives predetermined data
based on the input data Xi and Yi” likewise fails to read on terminal “0”,
leaving it unclear how the majority would read this limitation on New.
Furthermore, I am of the opinion that when the “either . . . or”
structure of the “wherein” clause is construed in light of the claim as a
whole, including the fact that selection is made “according to the XOR
result” and the fact that the “predetermined data based on the input data Xi
and Yi” and “the initial carry” are applied to the first and second input units,
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respectively, it is clear that the claim is calling for a first XOR result to
cause the “predetermined data” to be selected as the output and for a
different XOR result to cause the “initial carry” to be selected as the output.
As found by the majority, New’s multiplexer 103 is incapable of providing
the “predetermined data” as an output.
I therefore would reverse the § 102 and § 103(a) rejections as to all of
the rejected claims.

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eld

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