Ex Parte Schuelke

Board of Patent Appeals and Interferences

Jun 28, 2010

10404573 (B.P.A.I. Jun. 28, 2010)

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
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Decided: June 28, 2010
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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).
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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
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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
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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
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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
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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.
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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.

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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)

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