10174681 (B.P.A.I. Dec. 10, 2009)

Ex Parte Schultz

Board of Patent Appeals and InterferencesDec 10, 2009

10174681 (B.P.A.I. Dec. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte RICHARD T. SCHULTZ ________________ Appeal 2009-004740 Application 10/174,681 Technology Center 2100 ________________ Decided: December 10, 2009 ________________ Before JOSEPH L. DIXON, STEPHEN C. SIU, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-004740 Application 10/174,681 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from the Examiner's rejection of claims 1-6, 8-14, and 16-22. Claims 7 and 15 have been canceled. (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b) (2008). We pro forma reverse and enter a new ground of rejection. STATEMENT OF THE CASE According to Appellant, the invention relates to (1) simulating micro- integrated circuit performance, and (2) an instantaneous voltage drop sensitivity analysis tool (IVDSAT). (Spec. 1, ll. 4-6). Exemplary Claim 1. A method for analyzing an electrical characteristic of a simulation of wire segments configured as one or more power meshes to be used in an integrated circuit (IC) core, comprising the steps of: (A) specifying a network of power busses corresponding to said power meshes; (B) specifying at least one type of analysis to be performed, wherein said analysis comprises (i) generating during said analysis a first file corresponding to said IC core in a format compatible with an electronic circuit simulator and (ii) calculating said electrical characteristic of said wire segments via said electronic circuit simulator, wherein (i) said IC core comprises (a) one or more capacitance zones and (b) one or more pad cells connected to respective ones of said power meshes and (c) one or more power zones, (ii) each of said power meshes resides on a respective f conductive layer of said IC core, (iii) each of said power zones is bounded between a respective two horizontal busses of said power busses and a respective two vertical busses of said power busses in a respective one of said power meshes and (iv) each of said Appeal 2009-004740 Application 10/174,681 3 capacitance zones comprises (a) a respective capacitance value, (b) a respective orientation and (c) a respective width; (C) displaying said electrical characteristic as calculated to a user; (D) allowing said user to vary respective package and bond wire (i) resistances, (ii) capacitances and (iii) inductances related to said pad cells via a graphical user interface; and (E) allowing said user to vary respective current values within said power zones via said graphical user interface. Prior Art The Examiner relies on the following prior art references to show unpatentability: Tuan 5,872,952 Feb. 16, 1999 Jetton 6,675,139 B1 Jan. 6, 2004 Knebel 6,895,372 B1 May 17, 2005 Kaustav Banerjee & Amit Mehrotra, Coupled Analysis of Electromigration Reliability and Performance in ULSI Signal Nets, PROC. OF 2001 IEEE/ACM INT’L CONF. ON COMPUTER- AIDED DESIGN, at 158 (2001) (hereinafter “Banerjee”). Examiner's Rejections 1. The Examiner rejected claims 1-3, 6, 8-12, 14, and 16-22 under 35 U.S.C. §102(b) as anticipated by Tuan. 2. The Examiner rejected claim 4 as unpatentable under 35 U.S.C. § 103(a) over Tuan in view of Jetton. 3. The Examiner rejected claim 5 as unpatentable under 35 U.S.C. § 103(a) over Tuan in view of Banerjee. 4. The Examiner rejected claim 13 as unpatentable under 35 U.S.C. § 103(a) over Tuan in view of Knebel. Appeal 2009-004740 Application 10/174,681 4 NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(B) ISSUE Before we address the Examiner's anticipation rejection, we see a threshold issue regarding whether independent claims 1, 19, and 20 are indefinite under 35 U.S.C. §112, second paragraph. PRINCIPLES OF LAW Claim Construction During prosecution, “the PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The USPTO is not required in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings. “It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The question then is whether the PTO's interpretation of the disputed claim language is “reasonable.” Id. at 1055. 35 U.S.C. § 112, Second Paragraph The test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). A prior art Appeal 2009-004740 Application 10/174,681 5 cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of the claim language. See In re Steele, 305 F.2d 859, 862-863 (CCPA 1962). ANALYSIS Claim 1 Exemplary claim 1 recites "allowing said user to vary respective package and bond wire (i) resistances, (ii) capacitances and (iii) inductances related to said pad cells via a graphical user interface." (App. Br. VIII, Claims App’x). Based on our review of the Appellant's Specification, we find Appellant fails to provide an express definition for the term "package." We find one of ordinary skill in the art, upon reading this claim in light of the Specification, would be unable to determine whether the term "package," utilized in the claim 1, refers to (1) the IC core, (2) the material surrounding the IC core; or (3) an IC core and material surrounding the IC core. Further, we find claim 1 is not clear regarding which element's (1) resistances; (2) capacitances; and (3) inductances can be varied via the graphical user interface. Appellant appears to argue that the capacitances, inductances, and package and wire bond resistances are within pad cells. (See App. Br. 22-23). However, exemplary claim 1 recites that the (1) resistances; (2) capacitances; and (3) inductances are related to the pad cells (App. Br. VIII, Claims App’x) (emphasis added). Further, when we look to the Specification of the present application, we also find Appellant discloses: Appeal 2009-004740 Application 10/174,681 6 [t]he block 402d and the field 404d may correspond to a package and bond wire resistance that relates to the selected (or respective) pad cell 112. The block 402e and the field 404e may correspond to a package and bond wire capacitance that relates to the respective pad cell 112. The block 402n and the field 404n may correspond to a package and bond wire inductance that relates to the selected (e.g., respective) pad cell 112. Each pad cell 112 generally has unique values for the resistance 404d, the capacitance 404e, and the inductance 404n. The resistance 404d, the capacitance 404e, and/or the inductance 404n specified in the respective pad 112 fields may provide a method (e.g., the IVDSAT 100) for more accurately calculating (or determining) the instantaneous voltage drop V values over the simulation time than conventional approaches. The design parameters (or values) 404a- 404n generally provide the definition of the respective pad cells 112 (and the corresponding package pin). (Spec. 20, ll. 5-20). We find it is also not clear from the Specification whether (1) blocks 402d, 402e, 402n, and (2) fields 404d, 404e, and 404n are the respective resistances, capacitances, and inductance of the package and bond wire or the pad cell 112, as the Specification (a) indicates that 402d, 402e, 402n and fields 404d, 404e, and 404n "correspond to the package and bond wire," and (b) are "unique values" for the resistance, capacitance and inductance for the pad cell 112. (Id.) Thus, the Specification simultaneously indicates that the resistances, capacitances, and inductances correspond to the (1) package and bond wire and (2) the pad cell. We find that one of ordinary skill in the art would recognize that the package and bond wire are elements separate and apart from the pad cell. Thus, we find the resistances, capacitances, and inductances cannot be the same resistances, capacitances, and inductances for both (1) the package and bond wire and (2) the pad cell. Further, the Appeal 2009-004740 Application 10/174,681 7 Specification of the present application discloses “wire segments of the power busses 116 and 118 . . . may be simulated comprising a resistance 130 …, an inductance 132 connected in series with the resistance 130 …, and a capacitance 134 connected in parallel with the respective resistance 130 and/or inductance 132” (Spec. 12, l. 16 - 13, l. 2). Thus, based on our reading, we find that one of ordinary skill in the art, when reading exemplary claim 1 in light of the Specification, would find it unclear as to whether the (1) resistances; (2) capacitances; and (3) inductances are those of (a) the package and bond wire; (b) the pad cell 112; or (c) the wire segments. Accordingly, the prior art rejection of exemplary claim 1 cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of the claim language. See Steele, 305 F.2d at 862-863. As a result, a material issue of claim interpretation is present which must be resolved before the merits of the Examiner's and Appellant’s positions can be properly considered. Therefore, we pro forma reverse the Examiner's rejection of independent claim 1, and claims 2-6, 8-14, 16-18, and 21 which depend therefrom. Independent claims 19 similarly recites "one or more pad cells having respective package and bond wire (a) resistances, (b) capacitances and (c) inductances” (App. Br. VIII, Claims App’x). Also, independent claim 20 similarly recites "allowing said user to vary respective package and bond wire (a) resistances, (b) capacitances and (c) inductances related to one or more pad cells" (App. Br. VIII, Claims Appendix). Accordingly, we pro forma reverse the Examiner's rejection of (1) independent claim 19 and claim 22 which depends therefrom, and (2) independent claim 20. Appeal 2009-004740 Application 10/174,681 8 CONCLUSION As discussed above, we find independent claim 1 is not clear, as (1) we are unable to ascertain the meaning of the term package, and (2) we are unable to determine whether the reference to the resistances, capacitances, and inductances are those of (a) the package and bond wire, or (b) the pad cell 112. 35 U.S.C. 112, second paragraph provides: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Thus, we find, pursuant to 35 U.S.C. § 112, second paragraph, that independent claim 1, and claims 2-6, 8-14, 16-18, and 21 which depend therefrom are indefinite. Accordingly, based on the reasons set forth above, we also find, pursuant 35 U.S.C. § 112, second paragraph, that (1) independent claim 19 and claim 22 which depends therefrom, and (2) independent claim 20, are indefinite. DECISION We (1) pro forma reverse the Examiner’s respective rejection of claims 1-3, 6, 8-12, 14, and 16-22 under 35 U.S.C. §102(b);and (2)we reverse the Examiner’s respective rejection of claims 4, 5 and 13 under 35 U.S.C. §103(a); and (3) we enter a new ground of rejection for claims 1-6, 8- 14, and 16-22 under 35 U.S.C. § 112, second paragraph. Appeal 2009-004740 Application 10/174,681 9 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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.… REVERSED 41.50(b) nhl CHRISTOPHER P MAIORANA, PC LSI Corporation 24840 HARPER SUITE 100 ST CLAIR SHORES MI 48080