Ex Parte Khoche et al

Patent Trial and Appeal Board

Jun 30, 2014

11535909 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/535,909 09/27/2006 A. Jay Khoche 10060524-1 8261
109838 7590 06/30/2014
Advantest c/o Murabito Hao & Barnes LLP
Two North Market Street
Third Floor
San Jose, CA 95113
EXAMINER
MCMAHON, DANIEL F
ART UNIT PAPER NUMBER
2117
MAIL DATE DELIVERY MODE
06/30/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte A. JAY KHOCHE and KLAUS-DIETER HILLIGES
_____________

Appeal 2012-002963
Application 11/535,909
Technology Center 2100
______________

Before ROBERT E. NAPPI, JUSTIN BUSCH, and J. JOHN LEE,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 33.
We affirm.
INVENTION
The invention is directed to automatic test equipment capable of
receiving diagnostic information from a device under test having a built-in
self-test system and a diagnostic information collector that temporarily
stores diagnostic patterns output by the built-in self-test system and provides
Appeal 2012-002963
Application 11/535,909

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a fault indication upon detecting a fault in the device under test. See
Abstract of Appellants’ Specification. Claim 1 is illustrative of the
invention and reproduced below:
1. Automatic test equipment capable of receiving diagnostic
information from a device under test, the device under test
comprising a built-in self-test system (BIST) and a diagnostic
information collector, the diagnostic information collector
temporarily storing diagnostic patterns output by the BIST and
providing a fault indication upon detecting a fault in the device
under test, the automatic test equipment comprising:
a device interface connectable to the device under test;
a processing system; and
processing channels each connected to the device interface
and to the processing system, the processing channels
comprising:
test channels interoperable with the BIST to subject the
device under test to a sequence of tests, the sequence of tests
causing the diagnostic information collector to i) temporarily
store the diagnostic patterns output by the BIST, and ii) provide
the fault indication upon detecting the fault,
a fault indication channel connected to receive the fault
indication from the device interface, and
a diagnostic information channel operable in response to the
fault indication received at the fault indication channel to
receive from the device interface at least some of the diagnostic
patterns temporarily stored in the device under test as the
diagnostic information, the received diagnostic patterns having
been output by the BIST prior to the detection of the fault in the
device under test.

Appeal 2012-002963
Application 11/535,909

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REJECTION AT ISSUE
The Examiner has rejected claims 1, 7, 15 through 17 and 25 under 35
U.S.C. § 103(a) as unpatentable over Chindamo (US 2006/0075316) and
Anand (US 2005/0120270). Answer 5-11.1
The Examiner has rejected claims 2 through 4, 6, 8 through 14, 18
through 24 and 26 through 33 under 35 U.S.C. § 103(a) as unpatentable over
Chindamo, Anand and Demidov (US 6,460,152 B1). Answer 11-26.
The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Chindamo, Anand and Fukasawa (US 6,094,737).
Answer 26-27.

ISSUES
Appellants argue on pages 14 through 18 of the Appeal Brief that the
Examiner’s rejection of independent claim 1 is in error. The issues
presented by these arguments are:
a) Did the Examiner err in finding the combination of Chindamo and
Anand teaches the diagnostic information collector temporarily
storing the diagnostic patterns output by the BIST?
b) Did the Examiner provide a clear explanation of how the teachings
of the references are being applied?
c) Did the Examiner err in finding the combination of Chindamo and
Anand teaches a fault indication channel and a diagnostic
indication channel?

1 Throughout this opinion we refer to the Appeal Brief dated July 6, 2011,
Reply Brief dated November 28, 2011, and the Examiner’s Answer mailed
on September 28, 2011.
Appeal 2012-002963
Application 11/535,909

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ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in rejecting representative claim 1. The Examiner has provided a
comprehensive response to each of Appellants’ arguments on pages 27
through 30 of the Answer. We have reviewed these responses and concur
with the Examiner’s findings directed to each of the three issues.
With respect to the first issue we add the following. The Examiner
has found that the signature analyzer (item 104) of Chindamo temporarily
stores the patterns output by the built in self-test when the device is in the
“production test mode.” Answer 27 and 28. We concur and note that in
addition to the evidence cited by the Examiner, this finding is supported by
Chindamo’s statement “responses to the patterns are captured via the scan
chains and shifted to the signature analyzer 104.” Chindamo ¶ 12. We
consider shifting the captured data into the analyzer to be temporarily storing
the data. Further, Appellants’ argument on page 2 of the Reply Brief, that
item 104 does not compare a response signature with an expected response,
is not persuasive of error as it is not commensurate with the scope of claim
1.
For the above reasons we are not persuaded of error in the Examiner’s
rejection of claim 1 and sustain the rejection. Appellants assert the
remainder of the claims are allowable for the same reasons as claim 1.
Accordingly, we similarly sustain the Examiner’s rejection of claims 2
through 33. We note that Appellants, on page 19 of the Appeal Brief,
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Application 11/535,909

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separately addressed claim 25. However, this statement merely recites a
claim limitation and asserts that the feature is not taught. This does not
amount to a separate argument under 37 C.F.R. §41.37. Further, the
Examiner has specifically addressed these limitations and identified where
they are taught in the prior art. Answer 9-11. Appellants’ statements do not
identify error in these fact findings.

DECISION
The decision of the Examiner to reject claims 1 through 33 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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