Ex Parte Komoda

Board of Patent Appeals and Interferences

Jan 31, 2005

09921604 (B.P.A.I. Jan. 31, 2005)

1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHIO KOMODA
_____________
Appeal No. 2004-1839
Application No. 09/921,604______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 20 and 21. Other
pending claims, 2-19, have been indicated by the examiner as being directed to
allowable subject matter and are not on appeal before us.
The invention is directed to a method of modifying a circuit such that a driving
circuit for driving a wire determined to have glitch errors therein is replaced with another
driving circuit having a higher driving ability.
Independent claim 20 is reproduced as follows:
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20. A circuit modification method comprising the steps of:
determining whether a glitch error is caused in said predetermined
wire by an aggressor comprised of one or more other wires;
when determining that a glitch error is caused in said
predetermined wire by an aggressor, replacing a driving circuit for driving
said predetermined wire with another one having a higher driving ability
than the driving circuit.
The examiner relies on the following references:
Tam 5,900,759 May 04, 1999
Young et al. (Young) 6,378,109 Apr. 23, 2002
(filed Jun. 30, 2000)
Claims 20 and 21 stand rejected under 35 U.S.C. §103 as unpatentable over
Young. While not recited in the statement of rejection, the examiner cites Tam merely
as an example of increasing the size of a driver by increasing the size of a buffer.
Reference is made to the briefs and answer for the respective positions of
appellant and the examiner.
OPINION
In rejecting claims under 35 U.S.C. §103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
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examiner is expected to make the factual determinations set forth in Graham v, John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed invention. Such reason must
stem from some teachings, suggestions or implications in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1040, 228 USPQ 685, 687 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
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F.2d 1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). 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 CFR 1.192 (a)].
It is the examiner’s position that Young discloses the claimed subject matter but
for replacing a driving circuit for driving a victim wire with another one having a higher
driving ability. The examiner contends, however, that it was well known to size a
driver/buffer up or down, and that it would have been obvious to replace one driver with
another driver as this would equally increase drivability and eliminate violations of
crosstalk noise or glitch error.
For his part, appellant argues that Young discloses the elimination of crosstalk by
either (a) changing the wire spacing or (b) inserting repeaters in the victim’s signal, but
nothing therein suggests “replacing” a driving circuit with another one. Thus, contends
appellant, Young changes wire spacing, by placing wires further apart to decrease
interference therebetween, and/or “adds” to the existing circuitry by inserting repeaters,
but neither increasing wire spacing nor “adding” repeaters is the same as “replacing”
drivers, as claimed.
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The examiner counters that modifying a circuit by inserting repeaters/buffers “is
equal” to modifying a circuit by replacing one driver with another.
In responding to appellant’s arguments,, the examiner alleges that inserting
repeaters/buffers into a circuit, as done by Young, increases the size of the modified
driver circuit. In order to buttress this allegation, the examiner cites Tam for a showing
that increasing the size of a driver is achieved by increasing the size of a buffer, citing
column 3, lines 22-34, of Tam, for a disclosure of “increasing the size of the output
buffer” as an example of one of many designs for reducing the effects of glitching.
Normally, we would not consider the Tam reference because there would appear
to be no reason for the examiner failing to include a reference relied on in the statement
of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA
1970). However, based on appellant’s arguments directed to the Tam reference, it is
clear that appellant was aware of the examiner’s reliance thereon and was not
prejudiced in any way in having the examiner rely on this reference in the manner
applied. Accordingly, we will treat the rejection as relying on Young and Tam.
Claim 20 clearly requires “replacing” a driving circuit with “another one.” Both
appellant and the examiner agree that Young “adds,’ or inserts, another circuit/buffer
into the circuit, but does not physically “replace” one circuit/buffer with one, single,
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other driving circuit. Yet, it is the examiner’s position that the addition of another buffer
in Young in order to increase driving ability is equivalent to replacing a driving circuit
with a higher driving ability circuit. Appellant takes issue with this analysis, arguing, at
page 2 of the reply brief, that the examiner is illogically contending that “when an effect
(i.e., driving ability increases) occurs by a well known method, another method which
results in the same effect is therefore also well known.”
It appears that appellant is arguing that just because two methods reach the
same result, this does not make one of the methods, per se, obvious over the other.
With this general statement, we agree. Expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another. Equivalency is not a test
for obviousness. In re Scott, 323 F.2d 1016, 1019, 139 USPQ 297, 299 (CCPA 1963);
In re Flint, 330 F.2d 363, 367, 141 USPQ 299, 302 (CCPA 1964).
However, in the instant case, we view the examiner’s position as contending that
if one has a driving circuit A and it is “replaced” with a driving circuit B, having a higher
driving ability than A (which is what is claimed), this is no different than the “addition” of
a driving circuit C, to driving circuit A, which results in a higher driving ability, because
the circuit which now has both driving circuits A and C can be said to have had driving
circuit A “replaced” with the driving circuit combination A/C.
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Since the instant claims require “replacing a driving circuit...with another one
having a higher driving ability than the driving circuit” and, broadly, this is what would
essentially occur via the “addition” of another driving circuit, the instant claimed subject
matter would appear to be met.
The question here, as we see it, is whether either of the references suggests the
replacement, or addition, of “driving circuits.” Tam seems to focus on a “buffer” while
Young focuses on “repeaters.”
Tam discloses minimizing glitches by “increasing the size of the output buffer,”
but the examiner has offered no evidence that equates Tam’s output buffer to the
claimed “driving circuit.” Moreover, appellant challenges the disclosure of a “driving
circuit” by Tam, at page 2, line 2, of the reply brief, stating that “[n]owhere in Tam does
Tam show, teach or suggest any drive circuit.” Since the examiner has not provided
evidence to the contrary, we are constrained to agree with appellant that Tam’s output
buffer is not a “driving circuit,” as claimed.
We find otherwise with regard to the Young disclosure. The addition of repeaters
to a circuit in order to eliminate crosstalk noise, in Young, appears to act as an addition
of a “drive circuit” and appellant does not appear to deny this.
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Appellant does argue, at page 7 of the principal brief, for example, that nothing in
Young teaches or suggests “replacing a driving circuit as claimed” and that “insertion of
buffers/repeaters means that additional circuits are added to the existing circuitry.”
Appellant also argues thereat that Young’s spacing wires further apart is “not the same
as replacing a driving circuit.” Accordingly, we find it telling that appellant stresses the
claimed “replacement” of a driving circuit as patentably distinct from the addition of a
buffer/repeater, but does not stress or argue that buffers/repeaters, e.g., the repeaters
of Young, are different from the claimed drive circuits. None of appellant’s arguments
are directed to Young not disclosing or suggesting “drive circuits” and, it would almost
appear from such lack of argument in the briefs, and the acknowledgment (principal
brief-page 7) that the instant invention is an improvement over Young and that buffers
were known to be inserted in the circuit but that this increased the number of elements,
that appellant understands, as did the examiner, that the repeaters of Young do, in fact,
constitute “driving circuits,” as claimed.
In fact, it is apparent from appellant’s arguments that appellant is contending only
that the “replacement,” rather than the “addition,” of a driving circuit allegedly
distinguishes the instant claimed invention over the prior art of Young. For the reasons
supra, we cannot agree. As an example, if an additional resistor of equal value is
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placed in series with an original resistor in a circuit, doubling the total resistance, we do
not see how, instead, replacing the original resistor with one of double the original
value, is unobvious thereover. Note that such an example has particular relevance
since even a simple resistor may be considered a “driving circuit,” as broadly claimed.
Similarly, if adding a driving circuit to the original driving circuit in Young produces a
desirable result, it is not considered unobvious, within the meaning of 35 U.S.C. §103,
to, instead, “replace” the original driving circuit with one having the driving power equal
to the power of the combination of the two driving circuits that would be employed in
Young to achieve that same result.
We note, again, that appellant does not appear to challenge the disclosure of
such driving circuits by Young. Accordingly, we accept the finding by the examiner that
the repeaters of Young are the type of driving circuits claimed by appellant.
Since appellant has not convinced us of any error in what we view as the
examiner’s prima facie case of obviousness with regard to the instant claimed subject
matter, we will sustain the rejection of claims 20 and 21 under 35 U.S.C. §103.
The examiner’s decision rejecting claims 20 and 21 under 35 U.S.C. §103 is
affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a) (1) (iv).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
EAK/vsh
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Application No. 09/921,604
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PLATON N. MANDROS
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. BOX 1404
ALEXANDRIA, VA 22313