Ex parte Parulkar et al.

Board of Patent Appeals and Interferences

Sep 26, 2001

08590695 (B.P.A.I. Sep. 26, 2001)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ISHWAR PARULKAR and KAMALESH RUPAREL
________________
Appeal No. 1999-0134
Application 08/590,695
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-29, which constitute
all the claims in the application. An amendment after final
rejection was filed on May 23, 1997 and was entered by the
examiner.
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The disclosed invention pertains to a method and
apparatus for functionally testing an integrated circuit chip
using test patterns derived from simulation tests performed on
a system model which includes the integrated circuit chip.
Representative claim 1 is reproduced as follows:
1. A computer-implemented method for functionally
testing an integrated circuit chip using test patterns derived
from simulation tests performed on a system model which
includes the integrated circuit chip, said method comprising:
(a) receiving a simulation model for an electronic
system and a simulation test for the simulation model;
(b) identifying a portion of the simulation model to be
individually tested;
(c) producing portion-specific simulation test data
based on at least the portion identified in (b) and the
simulation test; and
(d) deriving test patterns for testing the portion
identified in (b) using the portion-specific simulation test
data.
The examiner relies on the following references:
Aihara et al. (Aihara) 5,282,146 Jan. 25, 1994
Millman et al. (Millman) 5,390,193 Feb. 14, 1995
Mannle 5,390,194 Feb. 14, 1995
Fukui et al. (Fukui) 5,400,270 Mar. 21, 1995
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The following rejections are separately set forth in
the examiner’s answer:
1. Claims 1-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Mannle.
2. Claim 5 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Mannle and further in view of Millman.
3. Claims 8-13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Mannle and further in view of Fukui.
4. Claim 14 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Fukui and further in view of Millman.
5. Claim 15 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Mannle.
6. Claims 16-29 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Aihara in view of
Mannle.
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7. Claim 26 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Aihara in view of
Mannle and further in view of Millman.
8. Claims 19 and 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Aihara in view
of Mannle and further in view of Fukui.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
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ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-29. Accordingly, we reverse.
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 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 teaching, suggestion or implication 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.),
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
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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, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
The details of the rejections made by the examiner are
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set forth on pages 4-11 of the examiner’s answer. Appellants
have offered eight major arguments in the main brief which are
set forth in sections II-IX respectively. Since we basically
agree with each of appellants’ arguments as set forth in the
brief, we do not sustain the examiner’s rejection of claims 1-
29.
It is not apparent to us how the examiner’s proposed
combination of Aihara and Mannle results in the claimed
invention. It appears that the examiner proposes to replace
the simulator of Aihara with the combined simulator and
testing of a circuit under test taught by Mannle. The problem
with this combination, in our view, is that neither Aihara nor
Mannle teaches producing portion-specific simulation test data
based on the simulation model and deriving test patterns using
the simulation test data. Aihara teaches the testing of a
complete simulation system with no derivation of test patterns
based on the simulation results. The test patterns in Aihara
are developed in response to the functional design of the
circuit. Mannle teaches that the generation of the test
program can be built incrementally as the device under test
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undergoes actual testing of the test program. The
determination of test patterns in Mannle, however, is not
based on portion-specific simulation test data, but instead,
is based on actual results of the device under test. The
simultaneous development and integration of test program sets
in Mannle does not teach or suggest using results from a
portion-specific simulation in determining the test patterns
to be applied to that portion of the circuit to be tested.
We also agree with appellants that the examiner has
essentially ignored specific recitations in the claims.
Appellants’ arguments set forth in sections IV-IX of the brief
point to specific recitations in the claims which are neither
taught nor suggested by the applied prior art. The examiner
either does not address these recitations or simply implies
that the recitations would inherently be present in the
applied prior art. When specific claim limitations are argued
by an applicant for patent, the examiner cannot simply dismiss
those limitations as being obvious when the applied prior art
does not provide an evidentiary record to support that finding
of obviousness. In this case, we find that the prior art
applied by the examiner does not support the examiner’s
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findings that each of the recitations argued in sections IV-IX
of the brief is taught or suggested by the applied prior art.
In summary, since we are essentially in agreement with
each of appellants’ arguments set forth in the brief, we find
that the examiner has failed to establish a prima facie case
of obviousness. Therefore, the decision of the examiner
rejecting claims 1-29 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
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PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JS/ki
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Application 08/590,695
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Hickman, Beyer & Weaver
P. O. Box 61059
Palo Alto, CA 94306