Ex Parte Stewart et al

Patent Trial and Appeal Board

Sep 26, 2013

11305953 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES B. STEWART III, JOEL D. WOODWARD, and
ADRIAN HERNANDEZ
____________________

Appeal 2011-001498
Application 11/305,953
Technology Center 2100
____________________

Before CARLA M. KRIVAK, KALYAN K. DESHPANDE, and
JASON V. MORGAN, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001498
Application 11/305,953

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STATEMENT OF THE CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a Final
Rejection of claims 1-9 and 11-20, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a method and system for tracing program
execution in field programmable gate arrays.
An understanding of the invention can be derived from a reading of
exemplary claim 9, which is reproduced below:
9. A method for setting up a test instrument to perform
measurements on a microprocessor, the method comprising:
providing a microprocessor trace core on a programmable logic
device (PLD);
selecting a subset of signals, wherein the subset of signals
includes only signals associated with the microprocessor; and
selecting microprocessor trace signals from the subset of
signals based on a number of pins allocated.

REFERENCES
The Examiner relies on the following prior art:
Groom
Manela
U.S. 4,483,002
U.S. 5,717,695
Nov. 13, 1984
Feb. 10, 1998

1 Our decision makes reference to the Appellants’ Appeal Brief (“App. Br.,”
filed Jun. 22, 2010) and Reply Brief (“Reply Br.,” filed Oct. 12, 2010), and
the Examiner’s Answer (“Ans.,” mailed Aug. 11, 2010) and Final Rejection
(“Final Rej.,” mailed Jan. 22, 2010).
Appeal 2011-001498
Application 11/305,953

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REJECTIONS
Claims 9 and 13 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Manela.
Claims 11, 12, and 14-20 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Manela and Appellants Admitted Prior Art
("AAPA").
Claims 1-8 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Manela, AAPA, and Groom.

ISSUE
The issue of whether the Examiner erred turns on whether Manela
describes selecting a subset of signals associated only with the
microprocessor and from that subset a subset of microprocessor trace
signals.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

Appeal 2011-001498
Application 11/305,953

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Claims 9 and 13 Rejected under 35 U.S.C. §102(b) as Being Anticipated by
Manela
The Appellants first contend Manela fails to describe microprocessor
trace signals and accordingly fails to describe “selecting a subset of signals
associated only with the microprocessor and from that subset a subset of
microprocessor trace signals” (emphasis in original). App. Br. 6. The
Appellants specifically argue trace signals are “one type of signal routed to
isolate the root cause of problems with a microprocessor” and Manela fails
to describe such signals. App. Br. 7-8 and Reply Br. 2-5.
We disagree with the Appellants. Manela describes a system for
diagnostics and the debugging of semiconductor chips. Manela 1:9-10.
Manela specifically describes one or more groups of signals of interest are
connected to multiplexer/selector 204. Manela 3:40-42.
For instance, “M” group of signals from processor 201 and “N” group
of signals from memory 202 can be directly connected to
multiplexer/selector 204.
The function of multiplexer/selector 204 is to single out one of
these M or N signals to output to pin 205. For example, if the test
engineer suspects that there is a timing problem, the test engineer can
instruct multiplexer/selector 204 to select one of the clock signals to
be output onto pin 205 so that particular clock signal can be
monitored. If the clock signal appears to be functioning correctly, the
test engineer might wish to examine one of the signals internal to
processor 201.

Manela 3:42-53. As such, Manela explicitly describes determining a signal
from a set of signals is used to isolate the root cause of a problem with the
microprocessor, such as a timing problem. Therefore, Manela describes
microprocessor trace signals even as construed by the Appellants and further
Appeal 2011-001498
Application 11/305,953

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describes “selecting a subset of signals associated only with the
microprocessor and from that subset a subset of microprocessor trace
signals.” As such, we sustain the Examiner’s rejection of independent
claims 9 and 13.

Claims 11, 12, and 14-20 Rejected under 35 U.S.C. §103(a) as Being
Unpatentable over Manela and AAPA
The Appellants contend claims 11, 12, and 14-16 are allowable
because of their dependence on claim 9, without providing any further
arguments. App. Br. 9. The Appellants also contend, with respect to
independent claim 17, Manela fails to teach or suggest a “microprocessor
trace core” because Manela fails to teach or suggest “microprocessor trace
signals” and “selecting microprocessor trace signals from a subset of
signals.” App. Br. 9-11. We disagree with the Appellants. The Appellants’
argument that Manela fails to teach or suggest selecting microprocessor
trace signals was not found to be persuasive supra and is not found to be
persuasive with respect to claims17, and claims 18-20, dependent therefrom,
for the same reasons. We further agree with the Examiner’s construction of
a “microprocessor trace core” to encompass “a device ‘configured to select
microprocessor trace signals from a subset of signals.’” Final Rej. 12. As
such, we sustain the Examiner’s rejection of claims 11, 12, and 14-20.

Claims 1-8 Rejected under 35 U.S.C. §103(a) as Being Unpatentable over
Manela, AAPA, and Groom
The Appellants contend Manela fails to teach or suggest “determining
a number of internal signals required to fully represent a memory space.”
Appeal 2011-001498
Application 11/305,953

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App. Br. 12-14. However, we are unpersuaded by the Appellants’ argument
because the Examiner has relied on AAPA to describe this limitation in
rejecting claims 1-8, which Appellant has not addressed. As such, the
Appellants’ argument is tantamount to an attack on the references
individually. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).

CONCLUSION
The Examiner did not err in rejecting claims 1-9 and 11-20.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-9 and 11-20 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) .

AFFIRMED

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