Ex Parte Hartnett

Board of Patent Appeals and Interferences

Jun 27, 2012

11180429 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRED HARTNETT
____________

Appeal 2010-000908
Application 11/180,429
Technology Center 2100
____________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH,
and JEFFREY S. SMITH, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2010-000908
Application 11/180,429

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a scan system including a non-
microprocessor based scan engine (see generally Spec. ¶ [0011]).
Claim 1, which is illustrative of the invention, reads as follows:
1. A scan system, comprising:
a non-microprocessor based scan engine adapted to receive a
scan request from a host system for performing a scan test on a
system-under-test, the non-microprocessor based scan engine
comprising dedicated logic where a state of the dedicated logic is
adapted to control processing of the scan request on the system-under-
test.

The Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-5, 7-10, 12-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Warren (US 7,165,199 B2) and Wang
(US 2004/0268181 A1).
Claims 1-5, 7-10, 12-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harthcock (US 6,347,368 B1) and
Wang.
Claims 6, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warren, Wang, and Waldie (US 2002/0065646 A1).1

1 The rejection of claims 1-12 under 35 U.S.C. § 101 has been withdrawn by
the Examiner (see Ans. 3).
Appeal 2010-000908
Application 11/180,429

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ISSUES
1. Did the Examiner err in rejecting claims 1-20 under 35 U.S.C
§ 112, first paragraph, as failing to comply with the “written description”
requirement of the statute?
2. Did the Examiner err in rejecting claims 1-5, 7-10, 12-16, and
18-20 under 35 U.S.C § 103(a) based on the improper combination of Wang
with Warren or Harthcock?

ANALYSIS
1. Rejection under 35 U.S.C. § 112, First Paragraph
The Examiner has taken the position (Ans. 5) that Appellant’s
disclosure lacks a written description of “a non-microprocessor based scan
engine” recited in independent claims 1, 8, and 13. The Examiner states
(id.) that no support was identified for the above-cited claim limitation.
Appellant contends that the feature “a non-microprocessor based scan
engine,” which was added to the independent claims, was based on the
discussion regarding the disadvantages of using a microprocessor-based
system, as described in paragraphs 3 and 20 of the instant Specification (Br.
6-7). Appellant further asserts that the claimed invention is described with
sufficient detail in the Specification which indicates possession by Appellant
of the claimed invention when the application was filed (Br. 7).
Based on a review of Appellant’s Specification, we agree with
Appellant that the description of the problems associated with
microprocessor-based scan engines and the disclosed elements of the scan
engine would have been recognized by one of ordinary skill in the art as
providing sufficient support for the claimed non-microprocessor based scan
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Application 11/180,429

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engine. We find that the details of the scan engine, including a dedicated
logic, are further described with reference to Appellant’s Figures 2-4. As
stated by Appellant (Br. 7), these figures show that no microprocessor is
included in the scan engine.
In view of the above discussion and considering the presented facts
and the arguments made by Appellant and the Examiner, we find that
Appellant’s disclosure indicates that Appellant was in possession of the
claimed subject matter at the time of filing of the application. Therefore, the
rejection of claims 1-20 under the first paragraph of 35 U.S.C. § 112 cannot
be sustained.
2. Rejections under 35 U.S.C § 103(a) over Wang in combination
with Warren or Harthcock
With respect to claims 1-5, 7-10, 12-16, and 18-20, Appellant
contends that Wang fails to overcome the deficiencies of Harthcock and
Warren in disclosing “dedicated logic where a state of the dedicated logic is
adapted to control processing of the scan request,” as required in claim 1
(Br. 9-14). Appellant specifically asserts that:
[T]he Unified Test Controller 603 and/or the BIST Controller
607 in Fig. 6 of Wang do not appear to control processing of the
scan request. Instead, as noted in paragraph [0076] of Wang, the
Automatic Test Equipment (ATE) 601 of Wang, which directly
controls the Unified Test Controller 603 through Test Access
Port (TAP) controller 602, appears to control processing of scan
requests. Indeed, the Unified Test Controller 603 of Wang
appears to merely provide post-processing assistance to the
ATE 601 of Wang by synchronizing between clock domains.
(Br. 10, 12)(emphases in original). Additionally, in response to the
Examiner’s position that Wang’s lack of specific discussion of a
microprocessor used as a scan engine suggests the claimed “non-
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microprocessor based scan engine” (Ans. 7, 14), Appellant asserts that
modifying the references to use a non-microprocessor based scan engine
would not have been obvious to one of ordinary skill in the art (Br. 11, 13).
Wang teaches that the unified test controller 603 generates three scan
enable signals and three scan clocks and also includes three shift registers, a
clock type selector, a capture phase selector, and a test type selector
(¶ [0079], see Fig. 6). Wang further discloses that the use of the unified test
controller 603 together with the Test Access Port (TAP) 602, simplifies the
function of the Automatic Test Equipment (ATE) 601 and the Built-in Self
Test (BIST) controller 607 because “scan test control signals, including scan
enable (SE) signals and scan clocks (SCKs) can be generated by the unified
test controller 603 instead of the ATE 601 and the BIST controller 607”
(¶ [0081]). Therefore, as pointed out by the Examiner (Ans. 23-24), Wang
discloses a dedicated logic as the unified test controller 603, which controls
processing of the scan request by generating the control signals for testing
and scanning.
We also concur with the Examiner (Ans. 24) that Wang’s unified test
controller has the dedicated logic to process the scan request. Wang
specifically describes different registers, rather than a microprocessor (¶
[0081]), to generate the scan signals and scan clocks when a scan mode
signal Scan_Mode 634 is generated by the TAP controller 602 and sent to
the unified test controller 603 (¶ [0078]). As such, as the Examiner
concluded (Ans. 24), the scan arrangement disclosed by Wang processes the
scan request in the unified test controller 603, which includes no
microprocessor.
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Application 11/180,429

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Appellant presents no additional arguments for other claims and
merely asserts the patentability of claims 8, 13, and the remaining dependent
claims based on the same reasons provided for claim 1 (Br. 11, 13-14),
which were found to be unpersuasive. Therefore, in view of our analysis
above, we find that the teachings of Wang, in combination with Warren or
Harthcock, or further in view of Waldie, support the Examiner’s § 103
grounds of rejection.

CONCLUSIONS
1. The Examiner erred in rejecting claims 1-20 under 35 U.S.C
§ 112, first paragraph, as failing to comply with the “written description”
requirement of the statute.
2. The Examiner did not err in combining Wang with Warren or
Harthcock, or further with Waldie to reject claims 1-20.
3. Claims 1-20 are not patentable.

DECISION
The decision of the Examiner rejecting claims 1-20 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).

AFFIRMED

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