Ex Parte Kilzer et al

Patent Trial and Appeal Board

Mar 19, 2018

14197721 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/197,721 03/05/2014 Kevin Kilzer
86528 7590 03/21/2018
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1900
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
68354.227111 7022
EXAMINER
MYERS, PAUL R
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
03/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN KILZER and SEAN STEEDMAN
Appeal2017-009518
Application 14/197,721
Technology Center 2100
Before JOSEPH L. DIXON, LARRY J. HUME and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 4-13, and 16-25, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-009518
Application 14/197,721
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to a
digital system with a debug interface. See generally Spec. 1. Claim 1 is
exemplary:
1. A microcontroller comprising a housing having external pins
and an integrated debugging interface using only a single signal
pm,
wherein the single signal pin is high voltage tolerant with
respect to an operating supply voltage and wherein a signal
sequence using a high voltage fed to the single signal pin
activates a debugging or programming mode of the device. 1
References and Rejections
Claims 1, 5-6, 11-13, 17-18, 21, 22, and 23-24 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sibigtroth (US
5,740,199; Apr. 14, 1998) and Thomsen (US 2007/0061524 Al;
Mar. 15, 2007).
Claims 4, 9-10, 16, 25 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Sibigtroth, Thomsen, and Microchip UNI/O Bus
Specification, 2009 ("UNI/O").
Claim 7-8, 19-20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sibigtroth, Thomsen, and Microchip
PIC12F629/675 Data Sheet 8-pin, Flash-Based 8-Bit CMOS
Microcontrollers, 2007 ("PIC l 2F").
1 Claim 1 recites "the device" (emphasis added), but does not provide any
antecedent basis for "the device." See claim 1. If prosecution reopens, we
leave it to the Examiner to determine whether claim 1 (and similarly, claims
4-13, and 16-25) is unpatentable for indefiniteness under 35 U.S.C. § 112, ,-i
2.
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Application 14/197,721
PRINCIPLES OF LAW
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
The "mere disclosure of alternative designs does not teach away" and
"just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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Application 14/197,721
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.2
On this record, the Examiner did not err in rejecting claim 1.
Appellants contend Sibigtroth and Thomsen do not collectively teach
"wherein a signal sequence using a high voltage fed to the single signal pin
activates a debugging or programming mode of the device," as recited in
claim 1. See Supplemental Appeal Brief filed March 27, 2017 ("App. Br.")
4-8; Reply Br. 2-5. In particular, Appellants assert each of the references
teaches away from the disputed limitation. See App. Br. 4-8; Reply Br. 2-5.
Appellants also contend the Examiner impermissibly cites a feature from
Thomsen's paragraph 2, because that paragraph requires multiple pins and a
dedicated pin for the high voltage. See App. Br. 6-8; Reply Br. 3-5.3
Appellants have not persuaded us of error. Because the Examiner
relies on the combination of Sibigtroth and Thomsen to teach the disputed
claim limitation, Appellants cannot establish nonobviousness by attacking
2 To the extent Appellants may advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.4l(b)(2).
3 Appellants' assertion that "the single signal pin is used to activate a
programming/debugging mode by a special signal sequence which implies
that when the programming/debugging mode is not activated, the pin can be
used for other purposes because its usage can otherwise not be reliably
distinguished from the programming/debugging mode" (App. Br. 4-5) is not
commensurate with the scope of claim 1, as Appellants have not shown the
claim requires a "special" signal sequence or "the pin can be used for other
purposes."
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Application 14/197,721
the references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The Examiner finds-and Appellants do not dispute-
Sibigtroth teaches "an integrated debugging interface using only a single
signal pin." See Final Act. 4. Therefore, Sibigtroth teaches the "single
signal pin." As a result, Thomsen does not need to separately teach that
claim element.
The Examiner finds-and Appellants do not persuasively argue-
Thomsen teaches "using a high voltage fed to [one] pin" and "a signal
sequence ... activates a programming mode of the device." See Final
Act. 4; Ans. 6; Thomsen ,-i 2 ("using one pin at a higher voltage during
programing"), Thomsen ,-i 4 ("the processor programmer causes the digital
processor to enter into a programing mode by sending a plurality of
alternating logic 1 s and Os for a certain time"). Therefore, the Examiner
modifies Sibigtroth's system to incorporate the above features of Thomsen,
and correctly determines Sibigtroth and Thomsen collectively teach
"wherein a signal sequence using a high voltage fed to the single signal pin
activates a debugging or programming mode of the device," as recited in
claim 1. See Final Act. 4; Ans. 6.
Appellants' assertion that according to Thomsen's paragraph 2,
"conventional processor devices require a dedicated pin to which a high
voltage is applied and this pin has no other function" and as a result, the
combination "would require to provide an additional high voltage tolerant
pin for switching the device into a programming mode" (App. Br. 7; see also
App. Br. 8; Reply Br. 3-5) is speculative and unsupported by any persuasive
evidence of record.
The relevant section of Thomsen' s paragraph 2 states:
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Application 14/197,721
Typically, three or four connections may be used in
programming the digital processor, e.g., JTAG uses four
connections with at least one dedicated full time. One
connection may be driven to a voltage above a normal operating
voltage of that connection to signify that the digital processor
should be in a programming mode. The other two connections
may be used for data and a synchronous clock. By using one
pin at a higher voltage during programming, other functions
(non-programming) may also be associated with the
programming pins, unless in system programming is desired.
Thomsen iJ 2.
Appellants have not shown why and how the above Thomsen
excerpt leads to Appellants' conclusion that "a dedicated pin to which
a high voltage is applied and this pin has no other function" (App.
Br. 7). 4 In any event, Appellants' assertion that the combination
"would require to provide an additional high voltage tolerant pin for
switching the device into a programming mode" (App. Br. 7) is
unpersuasive, because it is not directed to the Examiner's proposed
combination.
Further, Appellants' teaching away argument is unpersuasive because
Appellants fail to provide adequate and persuasive analysis under the case
4 In the Reply Brief and for the first time, Appellants belatedly argue
paragraph 24 of the Specification explains why "a high voltage needs to be
available via a separate pin ... because the high voltage is used for the
actual programming." See Reply Br. 4. That argument is untimely, and
Appellants have not demonstrated any "good cause" for the belated
presentation. See 37 C.F.R. § 41.4l(b)(2). Further, the belated argument is
unpersuasive, because that paragraph merely states "the device may use the
high voltage for programming" (emphasis added). In any event, that
paragraph does not show "conventional processor devices require a
dedicated pin to which a high voltage is applied and this pin has no other
function," as Appellants assert (App. Br. 7).
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Application 14/197,721
law. As discussed above, Appellants' assertion about Thomsen's
requirement of a separate "dedicated" pin (App. Br. 7) is incorrect.
Therefore, Appellants teaching away argument based on that incorrect
assertion (App. Br. 8; Reply Br. 4-5) is unpersuasive. Appellants also cite
Thomsen's paragraph 3 for the teaching away argument. See App. Br. 8;
Reply Br. 5. That paragraph states:
As smaller and smaller geometry integrated circuit fabrication
processes are used to produce integrated circuit digital
processors, these newer processes produce circuit elements that
may not be able to withstand a high voltage without damage
when used to signify a programming mode. What is needed is a
way to program integrated circuit digital processors without
requiring a high voltage for indicating a programming mode,
and to further reduce the number of connections needed during
the programming mode.
Thomsen ,-i 3 (emphases added).
Appellants have not shown the above paragraph renders the
teaching away argument persuasive, because using a high voltage pin
was known in the art, and "[a] known or obvious composition does
not become patentable simply because it has been described as
somewhat inferior to some other product for the same use." Gurley,
27 F.3d at 553. Likewise, Appellants have not explained why
Thomsen' s paragraph 16, which describes "providing a string of logic
ls on the programming connection 212 of the digital processor 200 for
a certain length of time" (Thomsen ,-i 16) teaches away from the
claimed invention, as Appellants assert (App. Br. 6).
Similarly, Appellants' teaching away argument with respect to
Sibigtroth is unpersuasive. Appellants argue claim 1 "require[ s] that a
high voltage signal is sent to the microcontroller," while Sibigtroth's
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paragraph 16 teaches "send[ing] a single pulse from the
microcontroller to initiate communication with the host." App. Br. 6.
However, Sibigtroth does not have paragraph 16. Further, even if
Appellants' assertion about Sibigtroth's teaching is correct,
Appellants have not explained why that assertion leads to the argued
teaching away conclusion. In any event, Appellants' argument is not
commensurate with the scope of the claim, because claim 1 recites "a
signal sequence using a high voltage fed to the single signal pin"
(claim 1) and the claim does not preclude sending the high voltage
from other parts of the microcontroller to the pin.
In short, Appellants' teaching away argument is unpersuasive
because Appellants fail to show one skilled in the art "would be
discouraged from following the path set out in the reference, or would
be led in a direction divergent from the path that was taken by the
applicant." Kahn, 441 F.3d at 990.
In the Reply Brief and for the first time, Appellants belatedly argue
the Examiner uses impermissible hindsight for the combination. See Reply
Br. 3. Appellants have waived the argument because it is untimely, and
Appellants have not demonstrated any "good cause" for the belated
presentation. See 37 C.F.R. § 41.4l(b)(2). Further, we find the belated
argument is unpersuasive for the following reasons.
Our reviewing courts have not established a bright-line test for
hindsight. The U.S. Supreme Court guides that "[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning." KSR, 550 U.S. at 421
(citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
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Nevertheless, the Court has also qualified the issue of hindsight by stating
"[ r ]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it."
KSR, 550 U.S. at 421.
Appellants have not demonstrated the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Further, after reviewing the respective teachings and
suggestions of the cited references, we find the weight of the evidence shows
the proffered combination of "a signal sequence using a high voltage fed to
the single signal pin activates a debugging or programming mode of the
device" is merely a predictable use of prior art elements according to their
established functions, because the combination uses prior art elements based
on their well-known functions described in Sibigtroth and Thomsen.
Therefore, on this record, Appellants have not persuaded us the Examiner
engaged in impermissible hindsight.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1, and independent
claim 13 for similar reasons.
We also sustain the Examiner's rejection of corresponding dependent
claims 4-12 and 16-25, as Appellants do not advance separate substantive
arguments about those claims.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4-13,
and 16-25.
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Application 14/197,721
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 4150(±).
AFFIRMED
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