Ex Parte Lam et al

Patent Trial and Appeal Board

Apr 7, 2016

11164622 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/164,622 11130/2005
29153 7590 04/11/2016
ADVANCED MICRO DEVICES, INC.
C/O Faegre Baker Daniels LLP
311 S. WACKER DRIVE
Suite 4300
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Shirley Lam
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.
00100.05.0056 5621
EXAMINER
ALMO, KHAREEM E
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
amddocketinternal@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
BOARD
Ex parte SHIRLEY LAM, NANCY CHAN, MIKHAIL RODIONOV, and
RAMESH SENTHINATHAN
Appeal2014-005709
Application 11/164,622
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1--4, 6, 8, 18, 20, and 22. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter (emphasis added):
1. An integrated circuit having a clock generating circuit with
a feedback loop and a variable clock signal generator
compnsmg:
open feedback loop switch logic responsive to a controlled
change in power supply voltage indication signal, and operative
to selectively open the feedback loop; and
1 The Real Party in Interest is ATI Technologies ULC (App. Br. 3).
Appeal2014-005709
Application 11/164,622
a dynamic fast lock control signal generator operative to
selectively apply a stabilizing control signal to the variable
clock signal generator in response to opening the feedback
loop.
App. Br. (Claims Appendix A).
Claims 1--4 are rejected under 35 U.S.C. § 102 as anticipated by
Martin (US 5,128,633, issued July 7, 1992)2, and claims 6, 8, 18, 20, and 22
are rejected under 35 U.S.C. § 103 as unpatentable over Martin in view of
Salvati (US 4,998,163, issued Mar. 5, 1991). 3 Claims 5, 7, 9-15, 17, 19, 23-
31 were previously indicated as allowable (Final Rej. 11-12).
PRINCIPLES OF LAW
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"[D]uring examination proceedings, claims are given their broadest
2 A heading in the Final Rejection stating that claims 1-3 are anticipated by
Martin is harmless error, since the text underneath the heading discusses
claims 1--4 (Final Rej. 2-5), and Appellants understand that claims 1--4 were
rejected under 35 U.S.C. 102(b) as being anticipated by Martin (App. Br. 21
and31).
3 Claims 6, 18, and 20 are independent, with Claim 18 being a method claim
mirroring claim 1 and claims 6 and 20 being circuit and method claims
similar to claim 1 with the addition of closing the feedback loop in response
to the controlled change in power supply voltage being completed (Claims
Appendix).
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Application 11/164,622
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211F.3d1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
("[T]he specification 'is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.'" (Internal citation omitted)).
ANALYSIS
Upon consideration of the evidence on this record in light of the
arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner has not carried the burden of establishing that
the subject matter recited in independent claim 1 is identically described in
Martin within the meaning of 35 U.S.C. § 102.
As explained by Appellants in the Briefs (App. Br. 21-30; Reply Br.
1-2), the Examiner has not shown that Martin describes a clock generating
circuit with a feedback loop and variable clock signal generator with "open
feedback loop switch logic responsive to a controlled change in power
supply voltage indication signal, and operative to selectively open the
feedback loop" as recited in claim 1 (emphasis added) (App. Br. 25-28,
Reply Br. 1-2 (stating that when a feedback loop is "open" as claimed, no
signal passes)). The Examiner points to the mixer of Martin's circuit for the
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Application 11/164,622
open loop feedback switch logic because the mixer controls whether the
circuit operates at a half cycle or a full cycle, with the full cycle loop being
an open loop when the half cycle loop is the closed loop (Ans. 13, Final Rej.
5, 13). It is clear that the claim language requires a feedback loop with,
somewhere in the loop, a switch that is opened in response to a controlled
change in power supply voltage such that there is no feedback. However,
the feedback loop of Martin is never fully open since it operates at either full
or half cycles, always having some feedback, so Martin does not anticipate
claim 1.
The Examiner does not rely upon Salvati to cure this deficiency of
claim 1 (Salvati does not disclose or suggest switch logic that selectively
opens a feedback loop in response to a controlled change in power supply
voltage indication signal), so the § 103 obviousness rejections fail for similar
reasons as the§ 102 rejection (e.g., App. Br. 31-35, Reply Br. 1-2).
Furthermore, the Examiner's assertion that the claimed logic
responsive to "a controlled change in the power supply voltage indication
signal" is intended use language is flawed, as pointed out by the Appellants
(App. Br. 29-30; Ans. 15-16). It is well established that claims directed to
an apparatus must be distinguished from the prior art in terms of structure
rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997), in order to satisfy the functional limitations in an apparatus
claim. However, the prior art apparatus must be capable of performing the
claimed function. Id. at 1478. As such, to be capable of performing the
functional limitations in claim 1, the circuit must possess the necessary
structure, hardware or software, for example, the programming, to function
as claimed. The Examiner indeed de facto admits that Martin is not
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Application 11/164,622
programmed or otherwise structured to function as claimed (Ans. 15-16),
and the Examiner does not rely upon any reasoning why one of ordinary
skill in the art would have been motivated to have configured the circuit to
function as claimed (see generally Ans.).
The Examiner asserts that the circuit of Martin would have been
capable of performing the claimed functions upon further modifications
(Ans. 15-16).4 Even though it might be possible to install software and/or
hardware that would allow Martin's circuit to be capable of being operated
by and responsive to a change in power supply voltage indication signal as
required by claim 1, the "capable of' test requires that the prior art structure
be capable of performing the function without further programming.
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir.
2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments,
Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is
associated with programming or some other structure required to perform
the function, that programming or structure must be present in order to meet
the claim limitation. Id. While in some circumstances generic structural
disclosures may be sufficient to meet the requirements of a "controller," see
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed.
4 Indeed, Examiner applies an additional reference in Salvati in an
obviousness rejection of claim 18, the corresponding method claim to claim
1 (see Claims App'x), apparently to address the application of a stabilizing
control signal when the feedback loop is opened, but this citation is not
included in the rejection of claim 1, which also requires a signal generator
operative to selectively apply a stabilizing control signal when the feedback
loop is opened (Final Rej. 5 and 10). This inconsistency further illustrates
why the anticipation rejection of claim 1 over Martin was improper.
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Application 11/164,622
Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365,
1376-77 (Fed. Cir. 2010)), that is not the case here.
A preponderance of the evidence supports Appellants' arguments that
their circuit requires structure that is not identically disclosed in Martin to
perform the functions recited in claim 1 (App. Br. 29-30). Salvati does not
cure this deficiency of claim 1, which is also required in corresponding
independent claims 6, 18, and 20, since Salvati does not disclose or suggest
switch logic that selectively opens a feedback loop in response to a
controlled change in power supply voltage indication signal. Thus, the
Examiner's§ 103 obviousness rejections fail for similar reasons as the§ 102
rejection (e.g., App. Br. 31-35, Reply Br. 1-2).
Based on the above, we cannot sustain the anticipation rejection of
claims 1--4 based on Martin. Similarly, the obviousness rejections of
independent claims 6, 18, and 20, along with dependent claims 8 and 22,
based on Martin in view of Salvati also fail.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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