Ex Parte Handgen et al

Board of Patent Appeals and Interferences

Jun 12, 2007

10630260 (B.P.A.I. Jun. 12, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIN ANTONY HANDGEN, ERI M. RENTSCHLER,
and MICHAEL KENNARD TAYLER
____________________

Appeal 2007-0439
Application 10/630,2601
Technology Center 2100
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Decided: June 12, 2007
____________________

Before: KENNETH W. HAIRSTON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 12 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed July 30, 2003. The real party in interest is Hewlett
Packard Development Co.

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Application 10/630260
Appellants’ invention relates to a configuration for integrated circuit
(IC) components in which the logic can be shared between components to
permit companion ICs to perform part of the interface with a bus. Each
component IC would greatly reduce its pin count under the shared logic,
resulting in a net reduction in the overall number of conductive pins, and
thus an overall savings in manufacturing costs. (Specification, page 2).

Claim 1, Claim 6, and Claim 11 are exemplary:
1. An integrated circuit component comprising:
a logic block capable of being configured to interface with a first
companion integrated circuit and to receive information that is
communicated from the first companion integrated circuit, which
information was communicated to the first companion integrated
circuit via a first portion of a system bus;
and a logic block capable of being configured to interface with
a second companion integrated circuit and to receive information that
is communicated from the second companion integrated circuit, which
information was communicated to the second companion integrated
circuit via a second portion of the system bus, wherein the first
companion integrated circuit and the second companion integrated
circuit are disposed in separate integrated circuit chips.

6. A system m which a plurality of companion integrated circuit
components collectively implement a logic function embodied in a
single, conventional integrated circuit component, comprising:
a host integrated circuit component communicating with other
integrated circuit components via a system bus;
a first integrated circuit component comprising logic for
interfacing with a first portion of system bus;
a second integrated circuit component comprising logic for
interfacing with a second portion of system bus;
a third integrated circuit component not directly coupled with
the system bus and comprising logic for communicating with the host
integrated circuit via the first and second integrated circuit
components, wherein the first integrated circuit component, the
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second integrated circuit component, and the third integrated circuit
component are provided in separate integrated circuit chips.

11. An integrated circuit component comprising two independent
logic portions, each logic portion being capable of being alternatively
configured to communicate with a host integrated circuit via a portion
of a system bus and a companion integrated circuit and to receive
information that is communicated from the companion integrated
circuit, which information was communicated to the companion
integrated circuit via a portion of a system bus.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Estakhri (‘906) US 6,172,906 B1 Jan. 9, 2001
REJECTIONS
Claim 7 was rejected under 35 U.S.C. § 112, second paragraph, for
being indefinite. Examiner has withdrawn the rejection of claim 7 under 35
U.S.C. § 112, 2nd paragraph, in view of Appellants’ argument presented in
the Appeal Brief. (Answer 9).
Claim 11 was rejected under 35 U.S.C. § 112, 2nd paragraph, for being
indefinite. Examiner has maintained the rejection of claim 11 under 35
U.S.C. § 112, 2nd paragraph, and argued that the word “alternatively” renders
the claim indefinite. (Answer 9). Appellants have argued against this
position of the Examiner, but have mentioned that they would be agreeable
to an Examiner’s amendment that deletes the term “alternatively”. (Br. 9).
However, the Examiner has not acted upon that offer, so we will proceed
with the rejection still standing in the case. We do note, in passing, that the
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proposed bare deletion of the word “alternatively” changes the meaning of
claim 11, unless there are further changes.2
Claims 1 to 6 and 8 to 12 stand rejected under 35 U.S.C. § 102(b) for
being anticipated by ‘9063.
Appellants contend that the claimed subject matter is not anticipated
by ‘906 because required elements of the claimed subject matter are not
taught by the reference, and for reasons to be discussed more fully below.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).4

We affirm the rejections in part.
ISSUES
The first issue is whether Appellants have shown that the Examiner
erred in rejecting claim 11 under 35 U.S.C. § 112, 2nd paragraph, for being

2 In the Brief, page 17, as applied to claim 11, there is a hint that the “and”
becomes an “or” when alternatively is deleted.
3 It is noted that claim 7, for which the rejection under 35 U.S.C. § 112
paragraph 2 was withdrawn, is specifically not mentioned in this rejection
under 35 U.S.C. § 102 (b), and was not argued by either party. Claim 7 is
therefore not subject to this appeal.
4 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).
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indefinite. The second issue is whether the there is a legally sufficient
justification for reading the limitations of the claims 1 to 6 and 8 to 12 on the
reference ‘906 under 35 U.S.C. § 102(b).

FINDINGS OF FACT
Findings with respect to the rejection of claim 11 under 35 U.S.C. § 112, 2nd
paragraph:
1. A careful reading of Claim 11 shows an alternative structure.
The claim requires an IC component comprising two
independent logic portions, each being capable of being
alternatively configured to [do X] and to [do Y]. We notice that
X and Y are different. X requires that the logic portion
communicates with a host IC in a certain way, and Y requires
the logic portion receives information, not mentioning the host.
We do not agree with the Examiner’s conclusion that there is
only one configuration for each logic portion.
Findings with respect to the rejection of claim 1 to 6 and 8 to 12 under 35
U.S.C. § 102 (b):
2. Appellants have invented a system for configuring the logic on
integrated circuits (IC) between a one IC and at least one other
companion IC, which serves to reduce the total pin count and
thus the manufacturing costs as a whole. (Specification 2).
3. Examiner has read the claims on the ‘906 patent to Estakhri et
al. In his rejection recited in the Examiner’s Answer, page 4
and 5, the Examiner has recited how each claimed component
in Claim 1 is read on the reference. Appellants’ argument that
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the ‘906 patent is “simply inapplicable” does not indicate the
error in applying the claimed limitations as Examiner indicated.
4. With respect to claims 2 to 5, we note in Figure 6a that bus 675
carries the output of controller 510, using all data bits (indicated
as D[0:15]. We note in the same figure that the signals along
bus segment 680 contain the low order data bits (D[0:7]) and
those long bus segment 684 contain the high order data bits
(D[8:15]). Thus it is not an error to read the unified bus logic,
using all the data bits, on the controller 510.
5. With respect to claim 6 to 8, we can comprehend the
Examiner’s argument about the possibility of the item 670
being conceptually embodied in multiple chips. However,
inherency requires a stronger showing, namely that the inherent
characteristic is necessarily as indicated in the rejection. See
the Continental Can Co. case below. Items 670 and 672 are
described in ‘906, column 6, line 60 ff as “a first flash memory
chip 670 designated FLASH0 and a second flash memory chip
672 designated FLASH1.” We do not find support in ‘906, nor
in the Wikipedia definition of flash memory, of the claimed
three components being necessarily provided in separate
integrated circuit chips.
6. With respect to claims 9 and 10, we note in Figure 6a of ‘906
connections between the flash memory chips 670 and 672.
Portions of the information from each of the memory chips is
channeled to host 504 (Figure 6b) through these connections
connecting the two chips. Examiner has read each of these two
recited memory chips as the two claimed intermediate
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integrated circuits, and the overall full circuitry of Figures 6a
and 6b as the integrated circuit component recited in the
preamble and last line. (Answer, 7). We do not find error in
reading the breadth of this claim on ‘906.
7. With respect to claims 11 and 12, in ‘906 we note the reading
of the claimed limitations of alternatively configuring each
logic portion to communicate with the host IC and with the
companion IC as specified in the claim. (‘906, Figure 6a). We
have reviewed Examiner’s reading of the claim on ‘906, and
find no error, as each logic portion is alternatively connected to
the host through the companion and bus and to the companion
without the host as the I/O registers latch on the bus data lines.
(Answer, 8). Note the cross connections between the Flash
Memory Chips 670, 672.

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

Although "the meaning of terms, phrases, or diagrams in a disclosure
is to be explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification." Lockwood v.
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American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997). The specification need not describe the claimed subject matter in
exactly the same terms as used in the claims, but it must contain an
equivalent description of the claimed subject matter. (Id.)

Patent claim is not invalid for indefiniteness unless it is insolubly
ambiguous; therefore, if meaning of claim is discernible, claim is
sufficiently clear to avoid invalidity on indefiniteness grounds, even if
interpreting claim is difficult, and construction is one over which reasonable
persons could disagree. Bancorp Services LLC v. Hartford Life Insurance
Co., 359 F3d 1367, 69 USPQ2d 1996, 1999 (Fed. Cir. 2004)

It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states,
“[t]he terms used in the claims bear a ‘heavy presumption’ that they mean
what they say and have the ordinary meaning that would be attributed to
those words by persons skilled in the relevant art.” Texas Digital Sys. Inc v.
Telegenix Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir.
2002).
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To serve as anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA Inc. v. Monsanto Co., 948 F2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991)

ANALYSIS
Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 112 2nd paragraph. According to the Bancorp case cited
above, such a claim must be insolubly ambiguous to be rejected under this
statutory provision. Reviewing the Findings of Facts #1 above, we found
that the meaning of claim 11 can, and was, discerned. We, thus, conclude
that the Examiner erred, as expressed by Appellants.
Appellants contend that Examiner erred in rejecting claims 1 to 6, and
8 to 12 under 35 U.S.C. § 102(b). Reviewing Findings of Fact #2 to #7, we
find support for the rejection of claims 1 to 5 and 9 to 12 in the prior art as
recited in the ‘906 patent. The claimed elements in the context of a memory
interface device are present in the reference. However, we do not find
support for the rejection of claim 6 and its dependent claim 8. In Finding of
Fact #5 we found that the ICs need not be inherently in separate chips, and
thus the three chips of claims 6 and 8 are not anticipated by the reference.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claim 11 under 35 U.S.C. § 112, 2nd
paragraph.
Based on the findings of facts and analysis above, we further conclude
that the examiner did not err in rejecting claims 1 to 5 and 9 to 12 under 35
U.S.C. § 102 (b). The Examiner did err in rejecting claims 6 and 8 under 35
U.S.C. § 102 (b). Claim 7 does not stand rejected under 35 U.S.C. § 102(b).

DECISION
The Examiner’s rejection under 35 U.S.C. § 112, 2nd paragraph of
claim 11 is reversed.
The Examiner's rejection under 35 U.S.C. § 102(b) of claims 1 to 5
and 9 to 12 is affirmed. The rejection of claims 6 and 8 is reversed.

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-IN-PART

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