Ex parte Harward

Board of Patent Appeals and Interferences

Feb 28, 2000

08224407 (B.P.A.I. Feb. 28, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK G. HARWARD
____________
Appeal No. 1997-2660
Application No. 08/224,407
____________
ON BRIEF
____________
Before URYNOWICZ, THOMAS, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-20. We reverse and enter
new grounds of rejection under 37 C.F.R. § 1.196(b).
Appeal No. 1997-2660 Page 2
Application No. 08/224,407
BACKGROUND
The invention at issue in this appeal enables built-in,
self-testing of a smart memory. A smart memory is a memory
that includes on-chip processing capabilities that allow for
implementation of a parallel processing system. The
performance of such a system depends on the reliability of its
components, particularly on the reliability of its smart
memories.
The invention enables a smart memory to perform a self-
test to detect its operability. Because the self-test is done
internally, it can be completed quickly so as not to degrade
the efficiency of a parallel processing system in which the
smart memory resides.
Claim 12, which is representative for our purposes,
follows:
12. A method of self-testing a smart memory
including a data RAM, a broadcast RAM, and a data
path which includes a plurality of processing
elements operable to perform specific functions,
comprising the steps of:
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Application No. 08/224,407
writing a pattern to the data RAM and the
broadcast RAM;
comparing the contents of the data RAM with the
pattern using memory test circuitry; and comparing
the contents of the broadcast RAM with the pattern
using said memory test circuitry;
writing another pattern to the data path;
testing said specific functions of said
plurality of processing elements of the data path
with data path test circuitry in accordance with
results of said comparing steps using said another
pattern; and
controlling said data path to perform said
specific functions during said testing step.
The references relied on in rejecting the claims follow:
Jacobson 4,715,034 Dec. 22,
1987
Choy 5,075,892 Dec.
24, 1991
Eikill et al. (Eikill) 5,274,648 Dec. 28,
1993. (filing date Feb. 3,
1992)
Claims 1-3 and 12-14 stand rejected under 35 U.S.C. § 103
as obvious over Choy in view of Eikill. Claims 4-11 and 15-20
stand rejected under 35 U.S.C. § 103 as obvious over Choy in
view of Eikill, further in view of Jacobson. Rather than
repeat the arguments of the appellant or examiner in toto, we
Appeal No. 1997-2660 Page 4
Application No. 08/224,407
refer the reader to the briefs and answer for the respective
details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we find that claims 1-11 as
presently claimed, lack an written description under 35 U.S.C.
§ 112, ¶ 1, and are indefinite under 35 U.S.C. § 112, ¶ 2. We
also find that the rejection of claims 1-11 under 35 U.S.C.
§ 103 is inappropriate. We are persuaded, moreover, that the
examiner erred in rejecting claims 12-20. Accordingly, we
reverse and enter new grounds of rejection under 37 C.F.R. §
Appeal No. 1997-2660 Page 5
Application No. 08/224,407
Because he appellant filed U.S. Patent Application No.1
08/477,742 (‘742 Application), he should know that its claims
21-23 and 25-34 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-20 of the
instant application. The examiner should consider
(provisionally) rejecting claims 1-20 of the instant
application under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 21-23 and 25-34 of the ‘742 Application.
1.196(b). Our opinion addresses the patentability of claims1
12-20 and of claims 1-11 seriatim.
Patentability of Claims 12-20
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
Appeal No. 1997-2660 Page 6
Application No. 08/224,407
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we analyze the appellant’s arguments.

The appellant’s argues, "It is not seen where the cited
references suggest that this data path ...processing elements
operable to perform specific functions ... are tested by
writing another pattern to the data path." (Appeal Br. at 9.)
The examiner replies, "Eikill show that an interface includes
... processing devices (18 & 20) and main storage. The main
storage includes memory cards (24, 26 & 28). Such processing
devices (18 [&] 20) perform operation on data and provide
commands and related data for transferring to and from the
main storage (the memory cards) (column 4 lines 10-13, 23-25 &
45-49)." (Examiner’s Answer at 9.) He adds, "it would have
been obvious
... to realize that not only the memory array integrity can be
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Application No. 08/224,407
tested ... but also the data lines (96, 98 & 100) [data path]
can be tested while testing each of the memory arrays." (Id.
at 10-11.) We agree with the appellant.
Each of claims 12-20 specifies in pertinent part the
following limitations: "testing said specific functions of
said plurality of processing elements of the data path with
data path test circuitry ...." In summary, the claims recite
circuitry for testing processing elements.
The examiner fails to show that teaching or suggestion of
the claimed limitations. "Obviousness may not be establish
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnace Mfg., SGS Importers Int’l, 73
F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984)). The mere fact that prior art
may be modified as proposed by an examiner does not make the
modification obvious unless the prior art suggested the
Appeal No. 1997-2660 Page 8
Application No. 08/224,407
desirability thereof. In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992), In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, the examiner admits, “Choy does not show the data
path test circuitry for testing the path ...." (Examiner’s
Answer at 8.) Although Eikill "includes two processing
device, identified as 18 and 20," col. 4, 11. 10-11, the
examiner fails to identify any teaching of testing the
processor devices. Noting that Eikill only teaches testing
memories, he alleges, "it would have been obvious ... to
realize that not only the memory array integrity can be tested
... but also the data lines (96, 98 & 100) [data path] can be
tested while testing each of the memory arrays." (Examiner’s
Answer at 10-11.) Because the examiner has not shown that the
references teach testing a processor, his allegation amounts
to impermissible reliance on the appellant’s teachings or
suggestions. The addition of Jacobson has not been shown to
cure the defects of Choy and Eikill.
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Application No. 08/224,407
For the foregoing reasons, we are not persuaded that
teachings from the prior art would appear to have suggested
the claimed limitation of circuitry for testing processing
elements. The examiner has not established a prima facie case
of obviousness. Therefore, we reverse the rejections of claims
12-20 under U.S.C. § 103. Next, we address the patentability
of claims 1-11.
Patentability of Claims 1-11
Our opinion addresses the following patentability issues
for claims 1-11:
• inadequacy of written description
• indefiniteness
• obviousness.
We begin by addressing the inadequacy of the written
description of claims 1-11.
Written Description
Under 37 C.F.R. § 1.196(b), we enter a new ground of
rejection against claims 1-11. "To fulfill the written
description requirement, the patent specification ‘must
clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’"
Appeal No. 1997-2660 Page 10
Application No. 08/224,407
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479,
45 USPQ2d 1498, 1503 (Fed. Cir. 1998) (quoting In re Gosteli,
872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)).
Fulfillment of the requirement is adjudged "as of the filing
date" of the associated patent application. Vas-Cath, Inc. v.
Mahurhar, 935 F.2d 1555, 1566, 19 USPQ2d 1111, 1119 (Fed. Cir.
1991).
Here, the appellant modified independent claim 1 by an
"Amendment Pursuant to 37 C.F.R. § 1.115." (Paper No. 18
at 1-3.) Accordingly, each of claims 1-11 now specifies in
pertinent part the following limitation: "data path test
circuitry ... for testing said specific functions of said
plurality of processing elements of said data path, wherein
said testing includes: writing another pattern to said data
RAM and comparing a response from said data path with an
expected result ...." In summary, the amendment added that
the data path test circuitry writes a pattern to the data RAM.
Appeal No. 1997-2660 Page 11
Application No. 08/224,407
The appellant fails to show that the original
specification, which includes the original claims, disclosed
limitation. To
the contrary, the specification teaches that the data path
test circuitry writes the pattern to the data path. For
example, the specification discloses that "data path tester 50
will send a pattern to data path 30." (Spec. at 8.) It adds
that "the pattern that is sent to data path 30 by data path
tester 50 is generated by stimulus generator 54 of data path
tester 50." (Id. at 9.) The specification further teaches
that "a linear feedback shift register is used to generate the
stimulus to be output to data path 30." (Id. at 10.)

For the foregoing reasons, we are not persuaded that when
the appellant’s application was filed, the invention included
the features of the data path test circuitry writing a pattern
to
the data RAM as now claimed. The appellant has not shown that
the disclosure provides a written description of the invention
Appeal No. 1997-2660 Page 12
Application No. 08/224,407
as presently claimed. Therefore, we reject claims 1-11 under
35 U.S.C. § 112, ¶ 1. Next, we address the indefiniteness of
claims 1-11.
Indefiniteness
Under 37 C.F.R. § 1.196(b), we enter another new ground
of rejection against claims 1-11. The second paragraph of
35 U.S.C. § 112 requires that the specification conclude "with
one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention."
As aforementioned regarding the inadequacy of the written
description of the claims, each of claims 1-11 recites that
the data path test circuitry writes a pattern to the data RAM.
In view of the teachings of the specification explained in the
previous section of our opinion, the claims take on an
unreasonable degree of uncertainty. Therefore, claims 1-11
fail to particularly point out and distinctly claim the
subject matter that the appellant regards as his invention.
Next, we address the obviousness of claims 1-11.
Appeal No. 1997-2660 Page 13
Application No. 08/224,407
Obviousness
A rejection under 35 U.S.C. 103 should not be based on
"speculations and assumptions." In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). "All words in a claim
must be considered in judging the patentability of that claim
against the prior art. If no reasonably definite meaning can
be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite." In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Appeal No. 1997-2660 Page 14
Application No. 08/224,407
For the reasons explained in addressing the inadequacy of
the written description and the indefiniteness of claims 1-11,
our analysis of the claims leaves us in a quandary as to what
they specify. Speculations and assumptions would be required
to decide the meaning of the terms employed in the claims and
the scope of the claims. Therefore, we reverse pro forma the
rejections of claims 1-11 under 35 U.S.C. § 103. We emphasize
that out reversal is based on procedure rather than on the
merits of the obviousness rejections. The reversal is not to
be construed as meaning that we consider the claims to be
patentable as presently drawn.
CONCLUSION
To summarize, the rejections of claims 1-20 under 35
U.S.C. § 103 are reversed. New rejections of claims 1-11
under
35 U.S.C. § 112, ¶ 1, and under 35 U.S.C. § 112, ¶ 2, are
added.
Our opinion contains new grounds of rejection pursuant to
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Application No. 08/224,407
37 CFR § 1.196(b) as amended at 62 Fed. Reg. 53131, 53197
(Oct. 10, 1997). Section § 1.196(b) provides that "[a] new
ground of rejection shall not be considered final for purposes
of judicial review." It also includes the following
provisions.
The appellant, withing two months from the date
of the decision, must exercise one of the following
two options with respect to the new grounds of
rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner ....
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record ....
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1997-2660 Page 16
Application No. 08/224,407
REVERSED
37 CFR § 1.196(b)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES D. THOMAS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
LLB/sld
Appeal No. 1997-2660 Page 17
Application No. 08/224,407
Richard A. Stolz
Texas Instruments Incorporated
Patent Department, M/S 219
P.O. Box 655474
Dallas, TX 75265
APPEAL NO. 1997-2660 - JUDGE BARRY
APPLICATION NO. 08/224,407 April 7,
1994
APJ BARRY
APJ THOMAS
APJ URYNOWICZ
DECISION: ?ED
Prepared by:
DRAFT TYPED: 21 Jun 01
FINAL TYPED:
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