Ex parte Garcia et al.

Board of Patent Appeals and Interferences

Jan 7, 1998

07927543 (B.P.A.I. Jan. 7, 1998)

Application for patent filed July 31, 1992, entitled1
"Concurrent Design Tradeoff Analysis System And Method."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FRED A. GARCIA
and KRISHNAN SRINIVASAN

Appeal No. 96-0587
Application 07/927,5431

ON BRIEF

Before HAIRSTON, KRASS, and BARRETT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Appeal No. 96-0587
Application 07/927,543
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final rejection of claims 1, 6, 7, 9, 11, 12, 15, 19, 20, 22,
24-28, 30, 32, 33, 36, and 42-45. Claims 2-5, 8, 10, 13, 14,
16-18, 21, 23, 29, 31, 34, 35, and 37-41 have been objected to as
being dependent upon a rejected base claim, but are indicated to
be allowable if rewritten in independent form to include all of
the limitations of the base claim and any intervening claims.
We affirm-in-part.
The disclosed invention is directed to a concurrent tradeoff
analysis system and method.
Claim 1 is reproduced below.
1. A computer implemented method for tradeoff
analysis, comprising steps of:
ascertaining a set of constraints;
defining a set of variables for specifying a solution;
defining a set of characteristics for specifying the
merit of said solution;
computing values for said sets of variables and said
sets of characteristics representing a current solution
state;
comparing said computed values of said variables and
said characteristics with said constraints;
generating at least one alternative to said current
solution state in response to at least one of said variables
and characteristics being inconsistent with said
constraints;
evaluating said current solution state and
alternatives; and
Appeal No. 96-0587
Application 07/927,543
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choosing a satisficing solution to satisfy all of said
constraints in response to said evaluating step.
The examiner relies on the following reference:
Sriram, D., ALL-RISE: A Case Study in Constraint-Based
Design, Artificial Intelligence in Engineering, Vol. 2,
No. 4 (1987), pages 186-203.
The rejection of claims 1-7 and 9-24 under 35 U.S.C. § 101
as being directed to nonstatutory subject matter as a
mathematical algorithm has been withdrawn (Examiner's Answer,
page 8).
Claims 1, 6, 7, 9, 11, 12, 15, 19, 20, 22, 24-28, 30, 32,
33, 36, and 42-45 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Sriram.
The examiner's statement of the rejection is contained in
the Final Rejection (Paper No. 6) and the Examiner's Answer
(Paper No. 12). Appellant's position is set forth in the Brief
(Paper No. 11).
OPINION
Appellants state that the rejected claims do not stand or
fall together (Brief, page 6). However, appellants only
separately argue claims 1, 12, 19, 20, 24, 27, and 42 (Brief,
pages 13-14). Accordingly, unargued claims will be presumed to
stand or fall together with the argued claims on which they
depend. See 37 CFR § 1.192(c)(5) (1994) ("it will be presumed
Appeal No. 96-0587
Application 07/927,543
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that the rejected claims stand or fall together unless a
statement is included that the rejected claims do not stand or
fall together, and in the appropriate part or parts of the
argument under subparagraph (c)(6) appellant presents reasons as
to why appellant considers the rejected claims to be separately
patentable" (emphasis added)).
We address only the limitations argued in appellants' brief.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior
art."); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661
(CCPA 1979) (arguments must first be presented to the Board
before they can be argued on appeal).
"Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
Appellants argue that Sriram does not disclose the step of
"choosing a satisficing solution to satisfy all of said
constraints" as recited in claim 1 or "selecting a satisficing
solution to satisfy all said constraints" as recited in claim 27.
Appeal No. 96-0587
Application 07/927,543
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"Satisficing" is defined as an artificial intelligence term
meaning "the process of searching for a solution that is
satisfactory, though not necessarily optimal." Academic Press
Dictionary of Science and Technology (1992) (copy provided by
appellants). Appellants argue that Sriram merely discloses that
several feasible alternatives are extracted from the solution
tree. An alternate solution is argued to not be a satisficing
solution because (Brief, pages 13-14):
The Examiner alleges that alternate is not optimal and falls
within the definition of satisficy. A satisficy solution
includes a solution that is satisfactory. Satisfactory
implies a criteria or rank of solution, yet is not
necessarily optimal. Alternate could be any solution. . . .
Clearly alternatives do not anticipate satisficing. Sriram
does not disclose satisficing.
"The examiner contends that a feasible alternative is a
satisficing solution, as feasible can be considered as at least
satisfactory; a feasible alternative is not unsatisfactory"
(Examiner's Answer, page 8).
Claim 1 recites "evaluating said current solution state and
alternatives; and choosing a satisficing solution to satisfy all
of said constraints in response to said evaluating step." The
solution tree in Sriram (e.g., figure 9) consists of "a number of
feasible solutions (structural configurations) to the design
problem" (page 187, sec. 1.3). A feasible solution (also called
a feasible alternative in Sriram) is one that satisfies all of
Appeal No. 96-0587
Application 07/927,543
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the constraints, because if a constraint is violated "the
subsystem or component is termed unsatisfactory" (page 186,
item 1.c, right col.). A feasible solution is a satisfactory
solution and, therefore, must also be a satisficing solution, as
broadly claimed. Appellants' argument that "[s]atisfactory
implies a criteria or rank of solution" (Brief, page 13) is not
persuasive. "Satisfactory" is defined as "adequate." Webster's
New Collegiate Dictionary (1977). Neither "satisfactory" nor
"satisficing" imply a criteria or rank of solution. If claim 1
was meant to include a ranking, it could have been expressly
recited as in claim 12. Accordingly, we sustain the rejection of
claim 1 and the rejection of claims 6, 7, 9, 11, and 25, which
depend on claim 1 and which have not been separately argued.
Claim 27 recites "ranking said solution states and said
alternatives in response to said evaluation, and selecting a
satisficing solution to satisfy all said constraints." Claim 27
does not recite that "selecting a satisficing solution" is
selecting the solution having the highest rank. Dependent
claim 12 similarly recites "ranking said additional current
solution states and alternatives in response to said figure of
merit," but does not tie the satisficing solution to the ranking.
Nevertheless, Sriram must disclose ranking for it to be an
anticipation. The examiner refers to section "4.1.2 Control
Appeal No. 96-0587
Application 07/927,543
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flow" for the limitations of computing a figure of merit and
ranking the current solution states (Examiner's Answer,
pages 5-6). Section 4.1.2 discusses how the SYNTHESIZER
"recursively generates the solution tree from the information
encoded in the '-components' and '-alt' slots of the nodes or
schemas representing the SKH" (page 194, sec. 4.1.2) and how
"[a]t every level in the solution tree, synthesis constraints are
used either to retain or to eliminate alternatives" (page 194,
sec. 4.1.2). However, we find nothing in section 4.1.2 that
discusses ranking. All alternative solutions which satisfy the
constraints are generated in Sriram and there is no attempt that
we can see to rank the alternatives. Accordingly, we reverse the
rejection of claims 12 and 27. We also reverse the rejection of
claims 15, 19, 20, 22, 24, and 26, which depend on claim 12, and
the rejection of claims 28, 30, 32, 33, 36, and 42-45 which
depend directly or indirectly from claim 27.
Appeal No. 96-0587
Application 07/927,543
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CONCLUSION
The rejection of claims 1, 6, 7, 9, 11, and 25 is sustained.
The rejection of claims 12, 15, 19, 20, 22, 24, 26-28, 30,
32, 33, 36, and 42-45 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-0587
Application 07/927,543
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L. Joy Griebenow
TEXAS INSTRUMENTS INCORPORATED
P.O. Box 655474, M/S 219
Dallas, TX 75265