Ex parte Mcclure

Board of Patent Appeals and Interferences

Nov 24, 1999

08367681 (B.P.A.I. Nov. 24, 1999)

The application was filed on December 30, 1994. It is a1
continuation of Application Serial No. 07/938,401, which was
filed on August 31, 1992 and is now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID C. McCLURE
____________
Appeal No. 1997-1644
Application No. 08/367,6811
____________
ON BRIEF
____________
Before KRASS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-22. We affirm.
BACKGROUND
Appeal No. 1997-1644 Page 2
Application No. 08/367,681
The invention at issue in this appeal increases the
operating speed of an output driver integrated circuit (IC).
The physical construction of ICs causes variations in the
inherent signal delays between the ICs’ output drivers and its
output pins. No matter how much the output drivers are
slowed, the signal delay to some output pins is longer than it
is to others.
The invention capitalizes on this phenomenon to speed
operation of an IC. More specifically, the invention provides
different amounts of slew-rate limiting to different output
drivers of the IC to ensure that all the ICs' output pins are
driven to change state at approximately the same time.
Reducing the output switching speed of only a few of the
output drivers, moreover, decreases inductive switching noise
and reduces power supply bounce.
Claim 9, which is representative for our purposes,
follows:
9. A semiconductor device, comprising:
a plurality of output drivers; and
Appeal No. 1997-1644 Page 3
Application No. 08/367,681
means connected to said output drivers for
controlling the slew rates of said output drivers
such that the slew rate of at least one of said
output drivers is different than the slew rate of a
different said output driver, wherein the power
supply oscillation settling time is reduced.
Besides admitted prior art (APA), the reference relied on
in rejecting the claims follows:
Boomer 5,218,239 June 8,
1993
(filed Oct. 3, 1991).
Claims 1-22 stand rejected under 35 U.S.C. § 103 as
obvious over APA in view of Boomer. (First Action on Merits
at 2.) Rather than repeat the arguments of the appellant or
examiner in toto, we refer the reader to the brief and answer
for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection and evidence
advanced by the examiner. Furthermore, we duly considered the
arguments of the appellant and examiner. After considering
the totality of the record, we are not persuaded that the
Appeal No. 1997-1644 Page 4
Application No. 08/367,681
examiner erred in rejecting claims 1-22. Accordingly, we
affirm. Our opinion addresses the grouping and obviousness of
the claims.
Grouping of the Claims
37 C.F.R. § 1.192(c)(7), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and ...
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
Appeal No. 1997-1644 Page 5
Application No. 08/367,681
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
Appeal No. 1997-1644 Page 6
Application No. 08/367,681
The appellant states that the claims should be considered
in the following groups for the appeal:
• claims 1-10 and 12-22
• claim 11.
(Appeal Br. at 5.) Conversely, he omits a statement that
claims 1-10 and 12-22 do not stand or fall together and
reasons why claims 1-8, 10, and 12-22 are separately
patentable. Therefore, we consider the claims to stand or
fall together in these groups, with claims 9 and 11 as the
respective representative claims of the two groups. Next, we
address the obviousness of the claims.
Obviousness of the Claims
We begin by finding that the references represent the
level of ordinary skill in the art. See In re GPAC Inc., 57
F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995)
(finding that the Board of Patent Appeals and Interference did
not err in concluding that the level of ordinary skill in the
art was best determined by the references of record); In re
Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978)
("[T]he PTO usually must evaluate ... the level of ordinary
Appeal No. 1997-1644 Page 7
Application No. 08/367,681
skill solely on the cold words of the literature."). Of
course, every patent application and reference relies on the
knowledge of persons skilled in the art to complement its
disclosure. In re Bode, 550 F.2d 656, 660, 193 USPQ 12, 16
(CCPA 1977). Such persons must be presumed to know something
about the art apart from what the references teach. In re
Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962). We
address the appellant’s arguments regarding the obviousness of
claims 1-10 and 12-22 and regarding the obviousness of claim
11.
Claims 1-10 and 12-22
The appellant argues, “Claims 1-10 and 12-22 provide that
at least two output drivers have different slew-rate limiting
applied to them; such a concept is neither shown nor suggested
by Boomer.” (Appeal Br. at 8.) He adds, “Without some motive
or incentive in the prior art for modifying the output driver
of Boomer (1) to apply to multiple signals from multiple
output pins, and (2) to independently delay signals from
multiple output pins, the Examiner has not established a prima
Appeal No. 1997-1644 Page 8
Application No. 08/367,681
facie case of obviousness.” (Reply Br. at 5-6.) The
examiner’s reply follows:
[I]t is noted that the Boomer reference was intended
as an output driver for an interface. Nowhere does
Boomer advocate employing his design only once for a
singular output terminal and using another's design
for every subsequent output terminal. Therefore, if
an interface has multiple output drivers performing
at respective multiple outputs, it is reasonable to
assume that it
Appeal No. 1997-1644 Page 9
Application No. 08/367,681
would be within the scope of the Boomer disclosure
to accept the applicability of his driver in every
capacity for which an output driver is required.
Further, it is illogical to assume that Boomer would
intend all output buffers to be adjusted the same.
(Examiner’s Answer at 3.)
We agree with the examiner.
Representative claim 9 specifies in pertinent part the
following limitations: “a plurality of output drivers” and
“means ... for controlling the slew rates of said output
drivers such that the slew rate of at least one of said output
drivers is different than the slew rate of a different said
output driver ....”
The appellant errs in considering Boomer individually.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings
of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)). In
determining obviousness, furthermore, references are read not
Appeal No. 1997-1644 Page 10
Application No. 08/367,681
in isolation but for what they fairly teach in combination
with the prior art as a whole. Id., 231 USPQ at 380.
Here, the rejection is based on APA and Boomer in
combination with the prior art as a whole. The appellant
admits that a semiconductor device having a plurality of
output drivers was known at the time of invention. (Spec. at
2-3 (referring to “output drivers”).) He also admits that the
problem that “the outputs at the output pins of the integrated
circuit package do not all change state at the same time,”
(Spec. at 3), was also known then. These admissions, i.e.,
the APA, would have suggested a plurality of output drivers,
each having a slew rate.
The appellant further errs in determining the content of
the prior art. A reference must be considered as a whole for
what it reveals “to workers in the art.” Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d 1593, 1595
(Fed. Cir. 1987).
Such persons, moreover, must be presumed to know something
about the art apart from what the reference teaches. Jacoby,
309 F.2d at 516, 135 USPQ at 319.
Appeal No. 1997-1644 Page 11
Application No. 08/367,681
Here, the appellant admits, “The Boomer reference is
directed to control of slew rates of output drivers. Boomer
provides an output driver which can be programmed ... to give
faster or slower slew rates for the output drivers.” (Appeal
Br. at 5.) The reference teaches, moreover, that its
invention “is particularly intended for high speed switching,
high drive digital output buffer circuits.” Boomer, col. 2,
ll. 44-46 (emphasis added). The teaching of plural “digital
output buffer circuits,” Id. at l. 46, would have suggested
the application of Boomer’s programmable slew rates to a
plurality of output circuits. This suggestion would have
motivated one of ordinary skill in the art to equip each of
APA’s output drivers with Boomer’s programmable slew rate.
Workers in the art, moreover, would have known that when
Boomer was applied to the plurality of output circuits, the
slew rates of the output circuits would have been adjusted
individually and differently to achieve uniform outputs from
the output circuits. This knowledge would have suggested
programming the slew rates of APA’s output drivers such that
the slew rate of at least one output driver is different than
Appeal No. 1997-1644 Page 12
Application No. 08/367,681
the slew rate of a different one. Therefore, the teachings of
the combinations of references in combination with the prior
art as a whole would have suggested a plurality of output
drivers and means for controlling the slew rates of said
output drivers such that the slew rate of at least one of said
output drivers is different than the slew rate of a different
said output driver as claimed.
Next, we address the appellant’s arguments regarding the
obviousness of claim 11.
Claim 11
The appellant makes the following argument.
Claim 11 adds the further limitation that the
differential slew-rate limiting is programmed in at
the time device interconnect is formed; Boomer
teaches away from this concept by providing that all
output drivers are programmed to have equal slew-
rate limiting at the time the device is used, using
a control signal. (Appeal Br. at 8.)
He adds, “a circuit which must be programmed for each use
does not render obvious a circuit which needs only be
programmed
once, during fabrication.” (Reply Br. at 6.) The examiner’s
reply follows:
Appeal No. 1997-1644 Page 13
Application No. 08/367,681
... Boomer merely preserves the option of
programming the driver during use. Certainly, they
could be programmed any time prior to that if the
additional feature of flexibility was not needed.
Moreover, appellant is touting the commonplace
method of programmability. If the flexibility of
programming provided by Boomer was superfluous to
the application, then it would have been obvious to
Boomer to program the circuit when it was most
convenient with the motivation of yielding to the
particular requirements of the application.
(Examiner’s Answer at 4.)
We agree with the examiner.
Claim 11 specifies in pertinent part that the “means for
controlling the slew rates of said output drivers includes
control circuitry containing resistors programmable by
interconnect definition during device fabrication.”
The appellant again errs in determining the content of
the prior art. In particular, his characterization of Boomer
as “a circuit which must be programmed for each use,” (Reply
Br. at 6), is specious. Workers in the art would have known
that the reference’s programmable resistors, R and R , wereP N
initially programmed to achieve an acceptable slew rate. Once
Appeal No. 1997-1644 Page 14
Application No. 08/367,681
that rate was achieved, further programming was unnecessary.
Workers in the art would also have known that a circuit
assembler at the time of fabrication would be best equipped to
program the resistors. Therefore, the teachings of the
combinations of references in combination with the prior art
as a whole would have suggested that the means for controlling
the slew rates of said output drivers includes control
circuitry containing resistors programmable by interconnect
definition during device fabrication as claimed.
Therefore, we affirm the rejection of claims 1-22 under
35 U.S.C. § 103 as obvious over APA in view of Boomer. We end
by noting that the affirmance is based only on the arguments
made in the brief. Arguments not raised therein are not
before us, are not at issue, and are thus considered waived.
CONCLUSION
To summarize, the examiner’s rejection of claims 1-22
under 35 U.S.C. § 103 is affirmed.
Appeal No. 1997-1644 Page 15
Application No. 08/367,681
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-1644 Page 16
Application No. 08/367,681
RICHARD K. ROBINSON
SGS THOMSON MICROELECTRONICS INC.
1310 ELECTRONICS DRIVE M S 2346
CARROLLTON, TX 75006
LLB/dal