10210026 (B.P.A.I. Jul. 30, 2009)

Ex Parte Montijo

Board of Patent Appeals and InterferencesJul 30, 2009

10210026 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALLEN MONTIJO ____________ Appeal 2009-003126 Application 10/210,026 Technology Center 2400 ____________ Decided:1 July 30, 2009 ____________ Before KENNETH W. HAIRSTON, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-003126 Application 10/210,026 2 STATEMENT OF CASE Appellant’s claimed invention is a cascaded pseudo random binary sequence (PRBS) counter. The PRBS counts to its full binary capacity. This allows a fast counter having modest power consumption, minimal device count, yet easy to program (Spec. 2:26-3:6). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A counter comprising a plurality of cascaded PRBS counters each of which counts to its full binary capacity. REFERENCES Devane US 5,187,676 Feb. 16, 1993 Kolagotla US 6,031,997 Feb. 29, 2000 The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) based upon the teachings of Kolagotla and Devane. Appellant contends that Devane’s shift registers (20,30) are not “cascaded counters,” but rather, are shift registers in a pseudorandom number generator and thus cannot replace Kolagotla’s binary counters to obtain Appellant’s claimed invention (App. Br. 9-10; Reply Br 3). ISSUE Has Appellant established that the Examiner erred in finding Devane’s pseudo-random number generator can replace Kolagotla’s binary counters? Appeal 2009-003126 Application 10/210,026 3 FINDINGS OF FACT 1. PRBS counters are conventionally arranged to disallow an all- zero state and thus only operate over 2n-1 different states (counts) (Spec. 2:11-12). 2. Appellant has cascaded PRBS counters modified to include the all-zeroes state and thus have full 2n different states (Spec. 2:27-28). 3. Kolagotla teaches a high speed binary synchronous counter that includes cascaded counters that count to their full binary capacity (col. 1, ll. 22-23). 4. Devane teaches a high speed pseudo-random number generator that includes two shift registers (15, 16) and a serial adder (40) (Abstract; Fig. 3). The random number generator generates pseudo-random numbers in accordance with a linear congruent sequence (col. 1, ll. 7-10). 5. Devane provides a counter 60 that receives the pseudo-random number generated and counts out the value in accordance with a clock signal (col. 7, ll. 14-20). PRINCIPLES OF LAW 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 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of Appeal 2009-003126 Application 10/210,026 4 the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner bears the initial burden of presenting a prima facie case of unpatentability on review of the prior art or on any other ground. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden then shifts to the Appellants 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. Id. ANALYSIS The Examiner rejected claims 1 and 2 as obvious over Kolagotla and Devane. The Examiner finds that Kolagotla discloses substantially all the claimed limitations except for cascaded PRBS counters. The Examiner then finds that Devane teaches a pseudo-random binary sequence counter including cascaded counters 20 and 30 (Ans. 4). The Examiner states that the PRBS counters of Devane can be substituted for the cascaded counters of Kolagotla, which count to full binary capacity (Ans. 6). Appellant contends that the elements 20 and 30 in Devane are not “cascaded counters” as characterized by the Examiner; rather they are shift registers (App. Br. 9; FF 4). Appellant further contends that Devane refers to the shift registers, serial adder, and controller 50 as a pseudo-random number generator, and that a pseudo random-number generator is not necessarily a counter (App. Br. 9). Appellant also provides analysis of the Appeal 2009-003126 Application 10/210,026 5 operation of Devane’s device (App. Br. 9-10; Reply Br. 3-4). Appellant asserts that the shifting performed in Devane is akin to “mirroring” and not “cascaded counting” and the counting performed by the binary counter 60 is not PRBS counting (App. Br. 10; FF 5). The Examiner has provided no evidence rebutting Appellant’s allegations. Rather, the Examiner has maintained that Devane teaches PRBS counters (Ans. 6) and that it would be obvious to combine the cascaded counters of Kolagotla, which count to full binary capacity (FF 3), with the PRBS counters of Devane, resulting in cascaded PRBS counters that count to full binary capacity (Ans. 8). The Examiner has not stated why the pseudo-random number generator of Devane would be considered a counter and, if so, why it would be constructed any differently than a conventional PRBS (FF 1). Further, the Examiner has not shown that if the pseudo- random number generator of Devane is substituted for the binary counter of Kolagotla, how the claimed cascaded PRBS counters counting to full binary capacity would result. Thus, the Examiner has not presented a prima facie case of obviousness. In view of the above discussion, since Devane does not teach PRBS counters that count to full binary capacity, combining Kolagotla with Devane would not result in Appellant’s claimed invention. Thus, claims 1 and claim 2, claim 2 including substantially the same limitations as claim 1, are not obvious over the combination of Kolagotla and Devane. Appeal 2009-003126 Application 10/210,026 6 CONCLUSION Appellant has established that the Examiner erred in finding that Devane’s pseudo-random number generator can replace Kolagotla’s binary counters. DECISION The Examiner’s decision rejecting claims 1 and 2 is reversed. REVERSED mp AGILENT TECHNOLOGIES INC. INTELLECTUAL PROPERTY ADMINISTRATION, LEGAL DEPT. MS BLDG. E P.O. BOX 7599 LOVELAND, CO 80537