Ex parte Sun et al.

Board of Patent Appeals and Interferences

Aug 15, 2000

08398831 (B.P.A.I. Aug. 15, 2000)

HThe opinion in support of the decision being entered today
was not written for publication and is not precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte XIAO SUN and CARMIE A. HULL
____________
Appeal No. 1997-2112
Application No. 08/398,831
____________
ON BRIEF
____________
Before KRASS, RUGGIERO and BLANKENSHIP, Administrative Patent
Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of Claims 14-25, 27-32, and 34,
all the claims remaining in the application.
We reverse.
BACKGROUND
Appeal No. 1997-2112
Application No. 08/398,831
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The invention is directed to a method and apparatus for
testing conformance of electronic hardware or software with a
finite state machine model. Claim 14 is reproduced below.
14. A method of generating a Verification Test Sequence
(VTS) for use in testing conformance of a Machine Under Test
(MUT) with a Finite State Machine (FSM) Model, wherein:
said FSM Model has a plurality of Model States (ST) and a
plurality of State Transitions (TR),
each of the plurality of State Transitions (TR) is
located between a First Model State and a Second Model State,
each of the plurality of State Transition (TR) has a
corresponding Input/Output (I/O) Sequence,
each I/O Sequence includes an Input Stimulus and an
Output Response corresponding to the Input Stimulus,
each Input Stimulus comprises an Input Stimulus Signal,
and each Output Response comprises an Output Response Signal,
said method comprising the steps of:
(a) identifying at least one member of each of one or
more Sets of Edge-Under-Test (EUT) Unique I/O Sequence (UIO)
Sets, wherein:
each identified member of each Set of Edge-Under-Test
(EUT) Unique I/O Sequence (UIO) Sets is an Edge-Under-Test
(EUT) Unique I/O Sequence (UIO) Set, each member of each Edge-
Under-Test (EUT) Unique I/O Sequence (UIO) Set is an Edge-
Under-Test (EUT) I/O Sequence,
each Edge-Under-Test (EUT) I/O Sequence is a First
Sequentially Ordered Series of I/O Sequences corresponding to
a First Ordered Sequence of State Transitions,
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Application No. 08/398,831
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each Edge-Under-Test (EUT) Unique I/O Sequence (UIO) Set
corresponds to an Edge-Under-Test (EUT),
each Set of Edge-Under-Test (EUT) Unique I/O Sequence
(UIO) Sets consists of Edge-Under-Test (EUT) Unique I/O
Sequence (UIO) Sets corresponding to the same Edge-Under-Test
(EUT), and
all Edges-Under-Test (EUT) have corresponding I/O
Sequences;
(b) selecting one Edge-Under-Test (EUT) Unique I/O
Sequence (UIO) Set from each Set of Edge-Under-Test (EUT)
Unique I/O Sequence (UIO) Sets to form a plurality of Selected
Edge-Under-Test (EUT) Unique I/O Sequence (UIO) Sets, wherein:
each member of each of the plurality of Selected Edge-
Under-Test (EUT) Unique I/O Sequence (UIO) Sets is a Selected
Edge-Under-Test (EUT) I/O Sequence; and
(c) constructing for storage in a memory a plurality of
Test Sequences (TS), wherein:
each Test Subsequence (TS) comprises one Selected Edge-
Under-Test (EUT) I/O Sequence and the I/O Sequence
corresponding to the Edge-Under-Test (EUT) corresponding to
the Selected Edge-Under-Test (EUT)Unique I/O Sequence (UIO)
Set containing the Selected Edge-Under-Test (EUT) I/O
Sequence;
each Test Subsequence (TS) is a Second Sequentially
Ordered Series of I/O Sequences corresponding to a Second
Ordered Sequence of State Transitions (TR), and
each said Test Subsequence (TS) starts at a Test
Subsequences (TS) First State and ends at a Test Subsequences
(TS) Last State.
The examiner relies on the following reference:
Dahbura et al. (Dahbura) 4,991,176 Feb. 5,
1991
Appeal No. 1997-2112
Application No. 08/398,831
The examiner states that Claims 14-34 are rejected. (See Answer, page1
4.) The claim numbers are inconsistent with section (4) on page 2 of the
Answer, which correctly reflects that the amendment submitted November 19,
1996 (Paper No. 9) has been entered. The amendment canceled Claims 26 and 33.
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Although not prior art, application 08/399,020 (now U.S.
Patent 6,004,027) is also at issue.
Claims 14-25, 27-32, and 34 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Dahbura.
Claims 14-25, 27-32, and 34 stand provisionally rejected
under 35 U.S.C. § 101 as claiming the same invention as that
of application 08/399,020.
We refer to the Final Rejection (Paper No. 5) and the
Examiner's Answer (Paper No. 12) for a statement of the
examiner's position and to the Brief (Paper No. 11) for
appellants’ position.
OPINION
The rejection over Dahbura
The examiner has rejected all claims under 35 U.S.C. §
103 as unpatentable over Dahbura. The statement of the1
rejection which includes independent Claims 14, 27, 32, and 34
is set forth on pages 5 and 6 of the Answer. Appellants
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argue, inter alia, that the examiner has ignored significant
details in Claims 14, 27, 32, and 34. (See Brief, page 8.)
Obviousness is a question of law based on findings of
underlying facts. See Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). The examiner bears the initial
burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
We cannot sustain the rejection for the reason that the
examiner has failed to set out a prima facie case of
obviousness of the claimed subject matter. Two brief steps
are listed on page 5 of the Answer as purportedly being
disclosed by Dahbura, and two brief steps are listed on the
same page as purportedly not being disclosed by Dahbura. As
such, the conclusion of obviousness is not supported by the
required factual findings regarding the differences between
the claims and the prior art.
For example, each of Claims 14, 27, 32, and 34 recite
that “each Test Subsequence (TS) comprises one Selected Edge-
Under-Test (EUT) I/O Sequence and the I/O Sequence
corresponding to the Edge-Under-Test (EUT) corresponding to
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the Selected Edge-Under-Test (EUT) Unique I/O Sequence (UIO)
Set containing the Selected Edge-Under-Test (EUT) I/O
Sequence,” along with two further statements limiting the step
or means for constructing a plurality of test subsequences.
The recitation apparently relates to the second step (set
forth on page 5 of the Answer) that is purportedly not taught
by the reference: “constructing a test subsequence for storage
in a memory.” (Answer, page 5.) However, the claims are more
specific than merely “constructing a test subsequence”; the
claims recite how a plurality of test subsequences are
constructed.
The findings concerning motivation to modify the
reference are also deficient. Most seem to be based on the
explicit disclosure of Dahbura, and yet the modifications
depart from the teachings of the reference. While we tend to
agree with the general statements such as “breaking a problem
into its component parts improves upon the controllability of
test generation” (Answer, page 6), the generalities do not
address the claims at issue. We would agree that breaking a
problem into smaller parts may have been obvious to the
artisan. However, the claims are specific with regard to how
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Application No. 08/398,831
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the method or apparatus goes about achieving the results of
breaking the problems into smaller parts and generating a
verification test sequence (Claims 14, 27, and 32) or testing
conformance of a machine under test (Claim 34).
The examiner’s opinions in the remainder of the Answer
have also been considered, but do not remedy the deficiencies
in the rejection with regard to the underlying facts necessary
to support a case of prima facie obviousness of at least
independent Claims 14, 27, 32, and 34. The rejection of those
claims, and the rejection of the depending claims, is
therefore not sustained.
The double patenting rejection
The examiner has provisionally rejected all claims under
35 U.S.C. § 101 as claiming the same invention as “claims 1-30
of co-pending application Serial No. 08/399020.” (Answer,
page 3.) No claim-to-claim comparison is set forth. The
offered analysis consists of the statement that “[t]he claims
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Application No. 08/398,831
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are directed to essentially the same subject matter.” (Id. at
4.)
An inquiry into double patenting under 35 U.S.C. § 101
requires determination whether the “same invention” --
identical subject matter -- is being claimed twice. In re
Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621-22 (CCPA 1970). A
useful test is to determine whether one of the claims could be
literally infringed without literally infringing the other.
Id.
Upon review of the file wrapper of application 08/399,020
we note that, subsequent to mailing of Examiner’s Answer in
the instant application, an amendment was submitted in the
other application on August 17, 1997. The amendment was
entered and the application ultimately issued (with twenty-six
claims) as U.S. Patent 6,004,027. Each of the independent
Claims 1, 16, 17, and 18 in U.S. Patent 6,004,027 was amended
subsequent to entry of the instant provisional double
patenting rejection. Since the claims of application
08/399,020 have changed since entry of the present ground of
rejection, we dismiss the provisional double patenting
rejection under 35 U.S.C. § 101 as moot.
Appeal No. 1997-2112
Application No. 08/398,831
Application for patent filed on March 13, 1995, now U.S. patent2
5,555,270, with inventors Xiao Sun and Carmie A. Hull.
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The examiner also appears to raise the spectre of
“provisional double patenting” with respect to “recently
allowed 08/403,332" on page 11 of the Answer. However: (1)2
no formal rejection has been entered; (2) no basis for the
“provisional double patenting” (e.g., statutory or non-
statutory) rejection is set forth (in fact, although appearing
under a “double patenting” heading, it is not entirely clear
that it is double patenting which is to “be used to reject the
instant application,” but such is presumed in view of
commentary on page 10 of the Answer); (3) no claim-to-claim
comparison of the respective subject matter is set forth; and
(4) a position that the instant claims are unpatentable for
obviousness in view of a disclosure by another in 1991, and
yet conflict with claims in a later-filed application in which
all claims have been determined by the examiner to be
patentable, appears to be inconsistent on its face. For at
least the foregoing reasons, we decline to chase the spectre.
CONCLUSION
Appeal No. 1997-2112
Application No. 08/398,831
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The rejection of Claims 14-25, 27-32, and 34 under 35
U.S.C. § 103 as being unpatentable over Dahbura is reversed.
The provisional rejection of Claims 14-25, 27-32, and 34
under 35 U.S.C. § 101 as claiming the same invention as that
of application 08/399,020 is dismissed as moot.
REVERSED
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1997-2112
Application No. 08/398,831
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MAURICE J. JONES
MOTOROLA, INC.,
INTELLECTUAL PROP. DEPT.
SUITE 500 MD TX07 F4
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