Ex Parte Gammel et al

Patent Trials and Appeals Board

Jun 13, 2019

13951635 - (D) (P.T.A.B. Jun. 13, 2019)

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.
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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
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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
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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."
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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
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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]
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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
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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.
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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.
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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
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