Ex parte JAIN

Board of Patent Appeals and Interferences

Aug 30, 1999

08212908 (B.P.A.I. Aug. 30, 1999)

Application for patent filed March 14, 1994.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte PREM P. JAIN
__________________
Appeal No. 97-2477
Application 08/212,9081
________________
ON BRIEF
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Before LEE, KRASS, and THOMAS, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-24. Claim 25 has
been allowed.
References relied on by the Examiner
Dunn 4,813,013 Mar.
14, 1989
Watkins et al. (Watkins) 5,220,512 Jun.
15, 1993
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The Rejections on Appeal
Claims 1-24 stand finally rejected under 35 U.S.C. § 112,
first paragraph, as being without written description support
in the specification as filed.
Claims 1-24 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over Dunn and Watkins.
The Invention
The invention is directed to a method for graphically
designing a digital device (claim 1) and a method for
capturing a digital device as a behavioral description and for
converting the behavioral description to a structural
description (claim 11). Independent claims 1 and 11 are
reproduced below:
1. A method for graphically designing a digital
device, comprising the steps of:
identifying a fixed and limited number of
descriptors which behaviorally describe any
digital device to be designed;
placing symbolic icons representing at least two
of said descriptors upon a graphic display and
operationally connecting said icons with an arc
placed therebetween; and
using a pull-down menu activated from said
placed icons, thereafter defining a list of
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attributes to said icons, wherein said attributes
include both data path and control path information
for a digital device graphically designed from said
placed icons.
11. A method for capturing a digital device as
a behavioral description and for converting the
behavioral description to a structural description,
said method comprising the steps of:
constructing a behavioral description of a
digital device upon a graphic display by graphically
connecting a set of symbolic icons drawn from a
fixed number of icons contained within an icon
library having fewer than fifteen icons;
mapping user-defined inputs to each of said
symbolic icons to define a graphical model having
data path attributes of said digital device;
representing said graphical model as a matrix of
data values corresponding to binary values at a
plurality of internal states within said graphical
model;
applying a set of input values to said matrix of
data values to modify said matrix and, simultaneous
with rising edges of a clocking signal, monitoring
the modified said matrix at select said internal
states;
determining events at the select said internal
states, and determining transitions of said events
at said internal states between said rising edges of
the clocking cycle; and
combining events and transitions of events to
produce a finite state machine having control path
information, and merging said control path
information with said data path attributes to
produce a structural description of said digital
device.
Appeal No. 97-2477
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Opinion
We reverse the rejection of claims 1-24 under 35 U.S.C.
§ 112, first paragraph for lack of adequate written
description support in the specification as filed.
We reverse the rejection of claims 1-24 under 35 U.S.C.
§ 103 as being unpatentable over Dunn and Watkins.
A reversal of the prior art rejection on appeal should
not be construed as an affirmative indication that the
appellant’s claims are patentable over prior art. We address
only the positions and rationale as set forth by the examiner
and on which the examiner’s rejection of the claims on appeal
is based.
The rejection of claims 1-24
under 35 U.S.C. § 112, first paragraph
In the final Office action (Paper No. 9) on page 2, the
examiner identified the claim features at issue to be the
following:
Claim 1: identifying a fixed and limited number of
descriptors;
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Claim 11: a set of symbolic icons drawn from a fixed
number of icons containing within an icon library having fewer
than fifteen icons.
In the same final Office action on page 3, the examiner
states that he “cannot find the support in the specification
for the newly added feature.” No further explanation was
included in the Office action.
Focusing on what the examiner stated he cannot find, the
appellant in his brief on page 10 pointed to particular
portions of the specification as filed which in the
appellant’s view describes the added claim features which the
examiner indicated he could not find in the specification.
The presentation is specific, readily understood, and facially
plausible. It is then up to the examiner to explain why the
cited portions do not constitute an adequate written
description for the claim features at issue. However, in the
examiner’s answer on page 4, the examiner simply reiterated
his earlier statement that “[the examiner cannot find the
support in the specification for the newly added feature.” No
further explanation was provided. The examiner has failed
even to address the description pointed out by the appellant.
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On this record, then, it cannot be said that the examiner has
made out a prima facie case for a rejection based on lack of
written description in the specification. What we have is
merely the examiner’s conclusion which is not based on any
reasoning or underlying factual findings. Accordingly, the
rejection of claims 1-24 for lack of written description in
the specification as filed cannot be sustained. It suffices
to say only that the examiner has not discharged his duty of
supporting the rejections of the appellant’s claims with
adequate reasons and factual findings capable of review on
appeal.
The rejection of claims 1-24
under 35 U.S.C. § 103 as being
unpatentable over prior art
The appellant has presented three separate arguments, at
least one of which identifies error or deficiency in the
examiner’s rejection.
First, the appellant argues that neither Dunn nor Watkins
discloses use of a fixed and limited number of descriptors
drawn from an icon library. According to the appellant, Dunn
allows icons to be added and the number of icons in the
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library varies with the particular application, and Watkins
allows the application of any circuit component on a graphical
display screen. In our view, the appellant’s argument is
misplaced. It appears that the appellant has overlooked a
very important detail with regard to Dunn, i.e., that there is
a distinction between an end user and a methodology designer,
and that an end user who is not a methodology designer also
uses the system as created by the methodology designer. While
it is true that Dunn’s system allows the end user who is
himself the methodology designer to create a variable number
of descriptor icons, an end user who is not the methodology
designer has to work with whatever library of descriptor icons
that was previously created by the methodology designer and
may not himself add to the library. See Dunn from column 3,
line 61 to column 4, line 18. Thus, at least in one intended
mode or environment of operation, for end users who are not
methodology designers, Dunn’s system relies on fixed and
limited number of usable descriptor icons.
Secondly, the appellant argues that neither Dunn nor
Watkins discloses descriptors or icons which depict a digital
device solely at the behavioral level. (Be. at 7). In that
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regard, claim 1 specifies that the fixed and limited number of
descriptors would “behaviorally describe any digital device to
be designed,” and claim 11 specifies that a behavioral
description of a digital device is constructed by using
symbolic icons drawn from the fixed number of such icons
contained in the icon library.
While it is true that neither claim 1 nor claim 11
expressly specifies that the description must solely be at the
behavioral level, both claims require that a behavioral
description for a digital device be provided from the fixed
number of icons in the icon library. In light of the
appellant’s specification from pages 2-4 which set forth what
constitutes a behavioral description model and what
constitutes a structural description model of a digital
device, it is implicit that a behavioral description has a
substantially higher level of abstraction and does not include
use of lower level structural elements. An illustrative
example of such behavioral descriptor icons is shown in
appellant’s Figure 8.
According to the appellant, the icons shown in Figure 2
of Dunn are lower level structural elements and are not at a
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sufficiently high level of abstraction for providing a
behavioral description as is required by the appellant’s
claims. We agree with the appellant. At least the icons 66,
68, 82, and 84 are structural circuit elements. Icon 66 is an
AND gate; icon 68 is an OR gate; icons 82 and 84 are other
logical circuits. We disagree with the examiner that these
icons are at the “behavioral” level within the context of the
appellant’s specification. Their presence in the collection
of descriptor icons used to design a digital device negates
and disqualifies the description as a “behavioral
description.”
On pages 7-8 of the examiner’s answer, the examiner cites
to four U.S. Patents which are not any part of the stated
ground of rejection. Supposedly, these patents are believed
by the examiner as supporting his position that the structural
schematic icons in Dunn are properly regarded as behavioral
descriptions. But no meaningful explanation has been provided
and no specific portion of those references have been
identified by the examiner. Just how those references support
the examiner’s position has not been articulated and we
decline to speculate as to what the examiner has in mind.
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Moreover, what is more important is what the appellant’s
specification regards as a behavioral description as opposed
to a structural description. Also, for the purpose evidently
intended by the examiner, it is inappropriate not to include
these references in the stated ground of rejection. See,
e.g., In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407
n.3 (CCPA 1970). Accordingly, these references have not been
considered.
As a further backup position, the examiner cited to
Watkins. (Answer at page 8). Specifically, the examiner
referred to column 2, lines 46-63 of Watkins which simply
describe in general terms that simulation may be performed at
several different levels, i.e., the component-level model
which describe the exact behavior of a specific component such
as a gate or a transistor, the high level behavioral model
which provides a logical or mathematical equation or set of
equations describing the behavior of the component, viewed as
a “black box”, and circuit-level models which comprise a
plurality of component-level or behavioral-level models. This
does not demonstrate that Dunn’s specific gate icons and logic
circuit icons are behavioral descriptions.
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However, in light of Watkins, it would have been obvious
to one with ordinary skill in the art that as an alternative
to Dunn’s embodiment, it would have been obvious to one with
ordinary skill in the art to use solely behavioral icons to
describe a digital device. Thus, claim 1 does not distinguish
from the prior art combination of Dunn and Watkins on the
basis of the behavioral description feature of claim 1. The
same, however, cannot be said for claim 11 which additionally
requires an icon library having fewer than fifteen icons. The
cited portion of Watkins would not have reasonably suggested a
purely behavioral-model using fewer than fifteen icons.
Finally, the appellant argues that neither Dunn nor
Watkins suggests merging data path information with control
path information to create a structural description for a
digital device. It should be noted that “data path” and
“control path” are specially defined on page 5 of the
appellant’s specification and are not generic terms which read
on anything having to do with data in the case of data path
and with control in the case of control path. Claim 1
requires attributes of icons to include both data path and
control path information and claim 11 requires merging of data
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path attributes with control path information. With respect
to these features of the appellant’s claimed invention, the
examiner’s analysis is conclusory and not supported by
adequate rationale and underlying factual determinations. For
example, the examiner states (answer at page 8):
[The icons as shown in Fig. 2 of Dunn include both data
path and control path information. For instan[ce], icon
76 should have data path (data flow) and control path
(program flow) to indicate which way data flow in and out
of the icon 76. [Emphasis added.]
The above-quoted text reflects not a well reasoned analysis
but mere speculation and conjecture.
As a backup position, the examiner states (answer at page
9):
[The state table 318 as shown [in] Watkins et al is known
to be a “control information”, and paths as disclosed in
Watkins et al (e.g., 324, 326, 328) are data paths.
However, “control path” as defined in the appellant’s
specification is not simply any control information, and “data
path” as defined in the appellant’s specification is not mere
interconnections between components. The examiner has not
explained how the state table of Watkins constitutes control
path information as is defined by the appellant and how the
interconnections 324, 326, and 328 of Watkins constitute data
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paths as defined by the appellant. Furthermore, the examiner
has not explained how or whether such data path information
and control path information are merged in Watkins or both
included in a defined attribute for a descriptor icon. As a
whole, the examiner’s position is largely disjointed and does
not put together a persuasive case for prima facie
obviousness. Note further that Dunn and Watkins are separate
prior art references and the examiner has not put forth
sufficient reasons to combine their teachings insofar as the
claim features of data paths and control paths are concerned.
The appellant has also set forth a facially plausible
explanation as to why the state table 318 in Watkins is not
attributable to any particular icon and why data path and
control path information in Watkins do not appear to be merged
or both included as an attribute of an icon. With regard to
those arguments of the appellant, the examiner has provided no
answer. It should also be noted that claim 1 requires the use
of a pull-down menu which is activated by icons which have
been placed upon a graphical display to define a list of
attributes to the icons. No such pull-down menu in the
applied prior art has been properly identified by the
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examiner. The examiner states that element 60 in Dunn is a
pull-down menu. However, even if element 60 is regarded as a
pull-down menu, the menu has not been shown as being activated
by any placed descriptor icon and the examiner has not shown
how attributes have been defined for the icons by using the
pull-down menu.
For the foregoing reasons, the rejection of claims 1-24
as being unpatentable over Dunn and Watkins cannot be
sustained.
Conclusion
The rejection of claims 1-24 under 35 U.S.C. § 112, first
paragraph, as being without written description in the
specification is reversed.
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The rejection of claims 1-24 under 35 U.S.C. § 103 as
being unpatentable over Dunn and Watkins is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
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) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
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Kevin L. Daffer
CONLEY ROSE AND TAYON
P. O. Box 3267
Houston, TX 77523-3267