Ex Parte Hayhow

Board of Patent Appeals and Interferences

Mar 8, 2010

10684281 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte REID F. HAYHOW
____________________
Appeal 2009-012653
Application 10/684,281
Technology Center 3600
____________________
Decided: Mach 8, 2010
____________________

Before JOSPH A. FISCHETTI, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 14-25. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

THE INVENTION
Appellant’s claimed invention relates to a system for testing a device
communicatively connected to a tester. The tests are performed based on
logic which enables one or more tests and creates a log. (Spec. 3-4).
Independent claim 14, which is deemed to be representative, reads as
follows:
14. A system comprising:
a tester to apply one or more tests to a device; and
logic, communicatively coupled to the tester, to
enable one or more resources of the tester according to
one or more properties of an electronic license and to
create at least one log file having resource use
information for one or more tests executed on the tester.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Organ et al. 7,191,368 B1 Mar. 13, 2007

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 9, 2009) and Reply Brief (“Reply Br.,” filed Jun. 22, 2009),
and the Examiner’s Answer (“Ans.,” mailed Apr. 14, 2009).
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The Examiner rejected claims 14-25 under 35 U.S.C. § 102(e) as
being anticipated by Organ.

ISSUES
Appellant argues that Organ fails to disclose logic to enable one or
more resources of the tester according to one or more properties of an
electronic license. (App. Br. 8-9). Additionally, Appellant argues Organ
fails to disclose logic to create a log file having resource use information.
(App. Br. 11). The Examiner finds that Organ is capable of checking rules
(Ans. 5) and discloses at least one log file having resource use information.
(Ans. 3).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
Has Appellant shown that Organ fails to disclose logic to enable one
or more resources of the tester according to one or more properties of an
electronic license, as recited in the independent claim 14?
Has Appellant shown that Organ fails to disclose logic to create a log
file having resource use information, as recited in the independent claim 14?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
Claim Interpretation
1. Appellant’s Specification describes that “logic” may be part of an
operating system or part of the firmware. (p. 3, ¶ [0010]).
2. The ordinary and customary meaning of “logic” in the context of
computer science is “a. [t]he nonarithmetic operations performed by a
computer, such as sorting, comparing, and matching, that involve yes-no
decisions.”2
3. The Examiner found that “logic” was equivalent to a program.
(Ans. 6).
4. Appellant’s Specification describes that logic may be used to
enable the tester according to one or more properties associated with an
electronic license. (p. 3, ¶ [0011]).

Organ
5. Organ is directed to an electronic tester with digital, analog, and
memory test circuitry. (Abs.).

2 Logic Definition, The American Heritage® Dictionary of the English
Language,4th ed., http://dictionary.reference.com/browse/logic (last visited
Mar 2, 2010).

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6. Organ describes that its tester is coupled to a device under test
which can be a system-on-a-chip (SOC) integrated circuit. (Abs.).
7. Organ describes that when a program is loaded, tester resource
allocation and rules checking is performed. (col. 12, ll. 4-6).
8. Organ describes a data log which records measurements made
during the device testing. (col. 14, ll. 46-49).

PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994). Under the principles of inherency, a reference anticipates
if it necessarily includes or functions in accordance with the claimed
limitations. Atlas Powder, 190 F.3d at 1347. Inherency may be established
by extrinsic evidence, but "[s]uch 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. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Inherency may not be established by probabilities or possibilities,
and "[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id. at 1269 .
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
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art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).

ANALYSIS
Claims 14-25 rejected under 35 U.S.C. § 102(e) as being anticipated by
Organ.
Claim 14
Appellant argues that Organ fails to disclose logic to enable one or
more resources of the tester according to one or more properties of an
electronic license. (App. Br. 8-9). We are not persuaded by Appellant’s
argument and agree with the Examiner that Organ’s electronic tester
discloses rules which are processed when its program is loaded. (FF 5, 7).
We find that these rules are equivalent to the one or more properties of the
electronic license, but not necessarily the electronic license per se. Since
logic enables Appellant’s tester according to the one more properties
associated with the electronic license, it is these properties that enable the
resources of the tester, rather than the electronic license itself. While
Appellant is correct that nothing in Organ implies that rules checking
includes license checking, (App. Br. 8), we do not find claim 14 to have
such a requirement. Accordingly, the rules in Organ are capable of enabling
the program (i.e., logic) to allocate the resources of the tester and thus do not
distinguish the claimed system from the prior art. (FF 1, 2, 3, 4). Therefore,
Appellant’s argument is not persuasive as to error in the rejection.
Additionally, Appellant argues Organ fails to disclose logic to create a
log file having resource use information. (App. Br. 11). We are not
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persuaded by Appellant’s argument and find that Organ discloses a data log
which records measurements made while testing a device. (FF 8). Thus, the
system of Organ is capable of creating a log file having resource use
information for the test performed by the tester, as recited by Appellant’s
claim 14. Therefore, Appellant’s argument is not persuasive as to error in
the rejection.

Dependent claims 15-25
Appellant does not separately argue claims 15-25 which depend
from claim 14, and so has not shown that the Examiner erred in
rejecting claims 15-25 under 35 U.S.C. § 102(e) as anticipated by
Organ for the same reasons we found as to claims 14, supra.

CONCLUSION OF LAW
We conclude that the Appellant has not shown that Organ fails to
disclose logic to enable one or more resources of the tester according to one
or more properties of an electronic license, as recited in the independent
claim 14.
We conclude that the Appellant has not shown that Organ fails to
disclose logic to create a log file having resource use information, as recited
in the independent claim 14.

DECISION
The decision of the Examiner to reject claims 14-25 is AFFIRMED.

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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)(2007).

AFFIRMED
ack

cc:

Gregory W. Osterloth
Holland & Hart, LLP
P.O. Box 8749
Denver, CO 80201