Ex Parte SchuelkeDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201010404573 (B.P.A.I. Jun. 28, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT JOHN SCHUELKE ____________ Appeal 2009-004707 Application 10/404,573 Technology Center 2100 ____________ Decided: June 28, 2010 ____________ Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and BADLEY W. BAUMEISTER, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 4-11, 14, 15, and 18-20, which are all of the pending claims. Claims 2, 3, 12, 13, 16, and 17 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-004707 Application 10/404,573 2 We reverse and enter a new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Appeal Brief (filed February 11, 2008), the Answer (mailed May 12, 2008), and the Reply Brief (filed July 17, 2008) for the respective details. 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 C.F.R. § 41.37(c)(1)(vii). Appellant’s Invention Appellant’s invention relates to integrated circuit architecture and methodology for detecting manufacturing defects in AC coupled circuitry interconnects. See generally Spec. ¶ [0008]. Claim 1 is illustrative of the invention and reads as follows: 1. A boundary scan cell, comprising: an AC signal activity detector in the boundary scan cell and coupled to detect an AC signal on an IC board interconnect having two differential signal lines; the AC signal activity detector including first and second inputs coupled to the differential signal lines, a logical AND output for representing an input signal on both of the differential signal lines, and a logical OR output for representing an input signal on either one of the differential signal lines; and Appeal 2009-004707 Application 10/404,573 3 the boundary scan cell being included in a scan chain circuit coupled to the AC signal activity detector for receiving the AND and OR outputs of the AC signal activity detector. The Examiner’s Rejection The Examiner’s Answer cites the following prior art references: Inoue US 4,839,878 Jun. 13, 1989 Lai US 6,763,486 B2 Jul. 13, 2004 (filed May 9, 2001) IEEE Std 1149.1-1990 (IEEE 1149.1), IEEE Standard Test Access Port and Boundary Scan Architecture, pp. 1, 4, 5, 10 and 11, IEEE (1993). Claims 1, 4-11, 14, 15, and 18-20, all of the pending claims, stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lai, Inoue and IEEE 1149.1. ISSUE The pivotal issue before us is whether the language of each of the appealed independent claims 1, 9, and 15 is sufficiently definite such that those skilled in the art would understand what is being claimed when the claims are read in light of the Specification. PRINCIPLES OF LAW The general rule is that a claim must set out and circumscribe a particular area with a reasonable degree of precision and particularity when read in light of the disclosure as it would be by the artisan. In re Moore, 439 Appeal 2009-004707 Application 10/404,573 4 F.2d 1232, 1235 (CCPA 1971). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed in light of the specification. Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004) (“The requirement to ‘distinctly’ claim means that the claim must have a meaning discernible to one of ordinary skill in the art when construed according to correct principles. Only when a claim remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction must a court declare it indefinite.” (citations omitted)). During prosecution, though, claims need not be “insolubly ambiguous” to be considered indefinite under 35 U.S.C. § 112, second paragraph. Instead, claims that are amenable to two or more plausible claim constructions may be considered indefinite, as follows: [W]e employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post- issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). THE EXAMINER’S 35 U.S.C. § 103(a) REJECTION In view of the new ground of rejection entered below against claims 1, 4-11, 14, 15, and 18-20 under 35 U.S.C. § 112, second paragraph, for indefiniteness, we are hereby reversing the Examiner’s prior-art rejection of Appeal 2009-004707 Application 10/404,573 5 these claims. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (reversing § 103 rejection because based on considerable speculation as to meaning of terms of claims and assumptions as to their scope). We will not speculate as to the scope of the appealed claims and as such can not determine whether the combination of the references teaches the claimed features. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. NEW GROUNDS OF REJECTION 35 U.S.C. § 112, SECOND PARAGRAPH Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new grounds of rejection under 35 U.S.C. § 112, second paragraph, of appealed claims 1, 4-11, 14, 15, and 18-20. From our review of independent claims 1, 9, and 15 and their corresponding dependent claims 4-8, 10, 11, 14, and 18- 20, we find that independent claims 1, 9, and 15 do not particularly point out and distinctly claim Appellant’s invention. With respect to independent claim 1, the concluding clause recites “the boundary scan cell being included in a scan chain circuit coupled to the AC signal activity detector for receiving the AND and OR outputs of the AC signal activity detector.” From this language, it is unclear as to what is actually coupled to the AC signal activity detector, i.e., the boundary scan cell or the scan chain circuit. If Appellant intended the coupled element to be the boundary scan cell, the claim language is ambiguous since previous language in the claim indicates that the AC signal activity detector is actually part of the boundary scan cell. If the intended coupled element is Appeal 2009-004707 Application 10/404,573 6 intended to be the scan chain circuit, then additional ambiguity exists because the description of the Figure 10 embodiment at page 8, paragraph [0026] of Appellant’s Specification indicates that multiplexer 236 and flip- flop circuit 238, which are part of the boundary scan cell, are the elements which respectively receive the AND and OR outputs of the AC signal activity detector circuit 202. A similar ambiguity is evident from the language of the concluding clause of independent claim 15 which recites “a scan chain circuit coupled to the AC signal activity detector for receiving the AND and OR outputs of the AC signal activity detector.” As previously discussed, Appellant’s disclosure at paragraph [0026] of the Specification indicates that it is the multiplexer and flip-flop circuit elements, which are a part of each boundary scan cell, which receive the outputs of the AC signal activity detector. Further, the language of independent of claim 15 includes a duplicate recitation of the boundary scan chain circuit since the preamble recites “[a] boundary scan circuit…,” which is also recited in the concluding clause as one of the elements of the boundary scan circuit. Lastly, we find that method claim 9 has ambiguity and lack of clarity problems similar to those of circuit independent claims 1 and 15. In particular, although the concluding clause recites that the results of the previously recited step of “providing” logical AND and OR outputs are stored in the boundary scan chain circuit, paragraph 29 of Appellant’s Specification indicates, as also argued by Appellant (App. Br. 4-5), that the results are stored in flip-flop circuit 260 which is part of the boundary scan cell and not the boundary scan chain circuit. Appeal 2009-004707 Application 10/404,573 7 In view of the above discussion, we are unable to make a meaningful review of the Examiner’s application of prior art against the appealed claims. The determination of the meaning and interrelationship of the claim terms “boundary scan cell” and “boundary scan chain circuit” is critical to a meaningful analysis of the Examiner’s prior art rejections since an important part of Appellant’s argued position (App. Br. 7-9; Reply Br. 4-6) is that the Examiner’s applied prior art does not include an AC signal activity detector “in the boundary scan cell” and that the prior art does not have a boundary scan cell included in a scan chain circuit. Since the language of independent claims 1, 9, and 15 is amenable to two or more plausible claim constructions, we must hold the appealed claims indefinite under the second paragraph of 35 U.S.C. § 112. See Miyazaki, 89 USPQ2d at 1211. CONCLUSION In view of the foregoing, we reverse the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1, 4-11, 14, 15, and 18-20. A new rejection of claims 1, 4-11, 14, 15, and 18-20 under 35 U.S.C. § 112, second paragraph, is entered pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides [a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. Appeal 2009-004707 Application 10/404,573 8 APPELLANT’S OPTIONS FOR RESPONDING TO THE NEW GROUNDS OF REJECTION Regarding the new grounds of rejection entered pursuant to 37 C.F.R. § 41.50(b), that paragraph explains that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appellant, within TWO MONTHS from the date of this decision, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b) (2008). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b) tkl QUALCOMM INCORPORATED 5775 MOREHOUSE DR. SAN DIEGO CA 92121 Copy with citationCopy as parenthetical citation