Ex Parte Gammel et alDownload PDFPatent Trials and Appeals BoardJun 13, 201913951635 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/951,635 07/26/2013 Berndt Gammel 57579 7590 06/17/2019 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. 1012-0664 I 2013P50379 1619 us EXAMINER CALDWELL, ANDREW T ART UNIT PAPER NUMBER 2182 NOTIFICATION DATE DELIVERY MODE 06/17/2019 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 BERNDT GAMMEL, STEP AN MAN GARD, and STEFFEN SONNEKALB Appeal2017-005294 Application 13/951,635 1 Technology Center 2100 Before DAVID H. KOHUT, KAMRAN JIV ANI, and SCOTT E. BAIN, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review, under 35 U.S.C. § 134(a), of the Examiner's final decision rejecting claims 1-23. 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. App. Br. 2. Appeal2017-005294 Application 13/951,635 STATEMENT OF THE CASE The present application describes an apparatus for detecting integrity violations in a feedback shift register. Spec. Abs. Claim 1 is illustrative and reproduced below with disputed limitations emphasized: 1. An apparatus, comprising: a feedback shift register comprising: a plurality of registers connected in series, and a feedback function unit connected between an output of a number of the registers and an input of at least one of the registers; and an integrity violation detector connected to an input or an output of at least one register of the plurality of registers serially connected between a preceding and a succeeding register of the plurality of registers, wherein the integrity violation detector is adapted to: determine as to whether a sequence of values at an input or output of at least one of the registers, or a logic combination thereof, is a non-constant sequence or a constant sequence; and output an indication that the feedback shift register is in an integral state if the sequence of values is a non- constant sequence; or output an indication that the feedback shift register is subjected to an integrity violation if the sequence of values is a constant sequence. 2 Appeal2017-005294 Application 13/951,635 The Rejections Claims 1-15 and 21-23 stand rejected under 35 U.S.C. § 112(b) (AIA) as indefinite. Final Act. 2-3. Claims 1, 2, 7-11, 14--21, and 23 stand rejected under 35 U.S.C. § 103 over Goettfert (US 2009/0110137 Al; Apr. 30, 2009) and Rarick (US 2003/0206630 Al; Nov. 6, 2003). Final Act. 4--11 (Jan. 22, 2016). Claims 3-6 stand rejected under 35 U.S.C. § 103 over Goettfert, Rarick, and Porter (US 4,355,366; Oct. 19, 1982). Final Act. 11-15. Claim 12 stands rejected under 35 U.S.C. § 103 over Goettfert, Rarick, and Wikipedia (Linear Feedback Shift Register). Final Act. 15. Claims 13 and 22 stand rejected under 35 U.S.C. § 103 over Goettfert, Porter, Rarick, and Wikipedia. Final Act. 15-22. ANALYSIS Indefiniteness The Examiner finds that the following limitation of claims 1, 13, and 14 is unclear: "serially connected between a preceding and a succeeding register of the plurality of registers." Final Act. 2. The Examiner finds that one of ordinary skill in the art could reasonably interpret the claim language to mean either: (1) the "integrity violation detector" is serially connected between a preceding register and succeeding register or (2) "at least one register of the plurality of registers" is serially connected between a preceding register and succeeding register. Final Act. 2-3. Appellants contend that "[t]he specification makes explicitly clear that it is the integration violation detector which is serially connected between a preceding and a succeeding register of the plurality of registers ( see 3 Appeal2017-005294 Application 13/951,635 Element 210 in Fig. 2 and the corresponding text of the present application)." Id. at 13. We are not persuaded by Appellants' argument. The Examiner correctly finds that one of ordinary skill could interpret the above-quoted claim limitation in at least two different, reasonable ways. The scope of the claims would differ significantly depending on which of the two interpretations one applies. For instance, if the claim language is directed to the "integrity violation detector" being serially connected between a preceding register and succeeding register, the claims cover an embodiment in which the "plurality of registers" includes only two registers. Alternatively, if the claim language is directed to the "at least one register of the plurality of registers" being serially connected between a preceding register and succeeding register, the claims do not cover an embodiment in which the "plurality of registers" includes only two registers because the claims would require at least three registers, namely the preceding register, the "at least one register," and the succeeding register. We, therefore, agree with the Examiner that the claim language is indefinite. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-128 (BPAI 2008). Appellants further argue: "several claims were amended to address the § 112 rejection and claim objections raised in the Final Office Action. Entry of the amendments was requested under MPEP §714(13)(II), but denied even though the claim amendments would have eliminated the indefiniteness and claim objection issues on appeal." Appeal Br. 12. This 4 Appeal2017-005294 Application 13/951,635 argument, however, must be made to the Director by petition under 37 CPR § 1.181, not to the Board in appealing the Examiner's rejections. 2 The Examiner also finds that claims 21-23 are unclear regarding which register the phrase "the input of the register" refers to. Final Act. 3. The Examiner finds that one could interpret "the register" to refer to either the claimed "succeeding register" or "one of the registers of the plurality of registers." Id. Appellants again argue that the Specification cures the ambiguity and that the refused claim amendments would have eliminated the issue. Appeal Br. 13. We are unpersuaded by Appellants' arguments regarding claims 21- 23 for reasons similar to those set forth above for claims 1, 13, and 14. Here, the Examiner correctly notes that one could reasonably interpret each of claims 21-23 as having two differing scopes depending on which interpretation of "the register" one adopts, and we thus agree that each of claims 21-23 is indefinite. See Ex Parte Miyazaki, 89 USPQ2d at 1211- 128. We decline to import limitations from the Specification into the claims (See CollegeNet, Inc., 418 F.3d at 1231), and Appellants' argument that the refused claim amendments would have eliminated the indefiniteness is an argument that is not properly made to the Board (See MPEP § 2272). The Examiner also finds that claim 22 is unclear regarding whether the recited "a logic circuit" refers to the logic circuit introduced in claim 13 2 MPEP § 2272 states: "In the event that the patent owner is of the opinion that ... an amendment submitted after final rejection complies with 37 CPR 1.116 but the examiner improperly refused entry of such an amendment, the patent owner may file a petition under 3 7 CPR 1.181 requesting that the final rejection be withdrawn and that prosecution be reopened, or file a petition under 3 7 CPR 1.181 requesting entry of the amendment, where appropriate." 5 Appeal2017-005294 Application 13/951,635 or to a new logic circuit. Final Act. 3. Appellants argue that "a logic circuit" is a typographical error and, by context, refers to the logic circuit introduced in claim 13. Appeal Br. 14. Appellants argue that entry of the refused claimed amendments would have eliminated this issue. Id. Here too, we are unpersuaded by Appellants' arguments. Even though one could reasonably interpret "a logic circuit" to refer to the same logic circuit recited in claim 13, an ordinarily skilled artisan could also reasonably interpret "a logic circuit" to refer to a different logic circuit. Claim 22 is thus indefinite (See Ex Parte Miyazaki, 89 USPQ2d at 1211- 128), and Appellants' argument that the refused claim amendments would have eliminated this indefiniteness is an argument that is not properly before us (See MPEP § 2272). Accordingly, we sustain the Examiner's rejection of independent claims 1, 13, and 14, and their dependent claims 2-12, 15, and 21-23 under 35 U.S.C. § 112(b ). Obviousness Appellants' arguments of nonobviousness address only representative claim 1. See, e.g., Appeal Br. 10 (arguing against the motivation to combine the prior art references in the manner recited in independent claim 1, and then arguing that "the same argumentation applies with equal force to the other independent claims"). We thus focus our analysis on claim 1. The Examiner finds that the combination of Goettfert and Rarick teaches "an integrity violation detector serially connected between a preceding and a succeeding register of a plurality of registers," as recited in claim 1. See Final Act. 5-6 (modifying Goettfert in view of Rarick to reject the claimed limitation). To that end, the Examiner first finds that Goettfert's 6 Appeal2017-005294 Application 13/951,635 checking circuit 12, depicted in Goettfert's Figure 1, is an integrity violation detector. Final Act. 4. Goettfert's checking circuit 12 is configured to output an exception signal in response to a signal "indicating that the feedback shift register is in a not-allowed state, or is going to assume a not- allowed state." Goettfert, Abstract. The Examiner, however, finds that checking circuit 12 is not an integrity violation detector that is serially connected between a preceding and a succeeding register of the plurality of registers. Final Act. 5. The Examiner then finds that Rarick's XOR register logic circuits 260 are a "device serially connected between a preceding and a succeeding register of a plurality of registers." Id. at 5. Rarick's XOR register logic circuits 260 comprise three XNOR gates and two XOR gates, which are configurable as in Rarick's Figure 2. Rarick, ,r 58. The Examiner then reasons that it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the apparatus as taught by Goettfert by embedding element 260 as taught by Rarick inside the checking circuit 12 as taught by Goettfert and coupling this configuration between a preceding and a succeeding register of the plurality of registers 30 as taught by Goettfert in order to provide the integrity violation detector with the connectivity required to detect a violation between two registers in the shift register in addition to its existing functionality of detecting a violation merely at the output of the shift register, thus increasing the flexibility of the circuit. Id. at 6. In the Answer, the Examiner further elaborates that "[t]his combination uses the known technique of detecting violations in random numbers to improve the random number generator as taught by Goettfert by detecting violations in a plurality of locations." Ans. 3. "The 'use of [a] 7 Appeal2017-005294 Application 13/951,635 known technique to improve similar devices ... in the same way' is a rationale that satisfies the standards of KSR." Id. Appellants argue that the Examiner errs in this rejection because even though Rarick's XOR register logic circuits 260 are comparable to the feedback function disclosed in Goettfert, they are not comparable to an integrity violation detector-i.e. the feature claimed in the above-quoted claim limitation. App. Br. 9 ("Rarick's arrangement of XOR and XNOR gates may be compared to, or may have a comparable effect of, the feedback function disclosed by Goettfert. That is, Rarick does not address ... that the XOR and XNOR gates improve the detection of ... an intrusion."). Thus, according to Appellants, an ordinarily skilled artisan would not have modified Goettfert in view of Rarick to arrive at the claimed invention because Rarick does not provide a motivation to adapt the checking circuit 12 of Goettfert. Id. at 9-10. Appellants further argue that "using Rarick's XOR and XNOR gates in connection with Goettfert's checking circuit 12 and further applying Goettfert's checking circuit between a preceding and a succeeding register as claimed by [Examiner] still would have been realizable only in view of Appellant[s'] application which, of course, is impermissible hindsight reconstruction." Appeal Br. 12. We agree. "When prior art references require selective combination ... to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself." Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988) (citing Interconnect Planning Corp., 774 F.2d 1132, 1143, (Fed. Cir. 1985)). "Something in the prior art as a whole must suggest the desirability, and thus the obviousness, of making the combination." Id. ( citing Lindemann 8 Appeal2017-005294 Application 13/951,635 Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462 (Fed.Cir.1984)); see also MPEP § 2142 ("Knowledge of applicant's disclosure must be put aside in reaching [ a proper determination under 3 5 U.S.C. § 103] ... impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art."). The Examiner relies on the configuration of XOR register logic circuits 260 as disclosed in Rarick's Figure 2 to modify Goettfert's checking circuit 12 to arrive at the claimed integrity violation detector that is serially connected between a preceding and a succeeding register. Final Act. 6. However, we find that neither the prior art references nor the Examiner's discussion thereof indicates how checking circuit 12 and XOR register logic circuits 260 are similar, conceptually related to each other, or why the teachings of one feature could or should apply to the other. We find that a checking circuit 12 that determines whether a sequence of values is a constant or non-constant sequence is not the same as a logic circuit that is made up of XOR and XNOR gates. The Examiner justifies the modification by stating that the combination uses the known technique of detecting violations in random numbers to improve the random number generator as taught by Goettfert by detecting violations in a plurality of locations. Ans. 3. The Examiner relies on the KSR rationale that a known technique to improve similar devices in the same way may form the basis of an obviousness rejection. Id. The Examiner, however, does not identify support in the record for this finding, and we discern none. 9 Appeal2017-005294 Application 13/951,635 We find that the record does not sufficiently present a prima facie case of obviousness under KSR. "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated rational underpinning to support the legal conclusions of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2207). Here, the Examiner did not sufficiently explain why Goettfert' s and Rarick' s devices are similar to each other. The Examiner has also not made clear how Rarick's teachings would benefit Goettfert's random number generator, why an ordinarily skilled artisan would have been motivated to modify Goettfert without relying on the teachings of Applicants' own Specification, or whether it would have been known how to combine the references in a way that would have given a predictable result. Further, the Examiner's rationale does not sufficiently show where the prior art provides a motivation for modifying Goettfert's checking circuit 12 on the basis of Rarick's XOR register logic circuits 260. Because of the insufficient rationale and because it would not have been obvious to combine the prior art references, we determine that the combination of Goettfert' s checking circuit 12 on the basis of Rarick' s teachings, such that it is serially connected between a preceding and a succeeding register, has been improperly gleaned from Applicant's own Specification. For the foregoing reasons, we do not sustain the prior art rejections of claims 1-23. 10 Appeal2017-005294 Application 13/951,635 DECISION We affirm the Examiner's decisions rejecting claims 1-15, and 21-23 under 35 U.S.C. § 112(b). We reverse the Examiner's decisions rejecting claims 1-23 under 35 U.S.C. § 103. 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 11 Copy with citationCopy as parenthetical citation