Ex parte SWOBODA et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

07827549 (B.P.A.I. Apr. 30, 1998)

Application for patent filed January 29, 1992. 1
According to appellants, this application is a continuation of
Application 07/387,475, filed July 31, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY L. SWOBODA and MARTIN D. DANIELS
__________
Appeal No. 95-4501
Application 07/827,5491
__________
ON BRIEF
__________
Before THOMAS, KRASS, and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4501
Application No. 07/827,549
2
This is a decision on appeal from the final rejection of
claims 1 through 32, all of the claims pending in the
application.
The invention pertains to the improvement of emulation,
simulation and testability architecture and methods in data
processing devices. More particularly, a data processing
device, comprising a processor and on-chip peripheral
circuitry, ordinarily operable together, and formed on a
single chip, has the capability of selectively entering
externally supplied data into the processor and on-chip
peripherals circuitry for starting and stopping operations of
the processor and the on-chip peripheral circuitry
independently of each other in an emulation mode of operation.
Representative independent claim 1 is reproduced as
follows:
1. A data processing device formed in a single
semiconductor chip comprising:
an electronic processor, and on-chip peripheral circuitry
ordinarily operative together; and
means for selectively entering externally supplied data
into the electronic processor and on-chip peripheral circuitry
and starting and stopping operations of the electronic
processor and the on-chip peripheral circuitry independently
of each other in an emulation mode of operation.
Appeal No. 95-4501
Application No. 07/827,549
3
The examiner relies on the following references:
Hester et al. 4,788,683 Nov. 29, 1988
(Hester)
Daniels et al. 4,860,290 Aug. 22, 1989
(Daniels) (filed Jun. 2, 1987)
Claims 1 through 32 stand rejected under 35 U.S.C. 102(e)
or 103, in the alternative, as anticipated by, or unpatentable
over, Daniels. Additionally, claims 17 and 18 stand rejected
under 35 U.S.C. 103 as unpatentable over Hester in view of
Daniels.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
We reverse.
Each of the independent claims 1, 11, 17, 21 and 23 calls
for, in one form or another, starting and/or stopping
operations of a processor and on-chip peripheral circuitry
independently of each other. Claim 11 specifically requires
the execution of different stops selectively determined by the
contents of said mode register.
Appeal No. 95-4501
Application No. 07/827,549
4
The examiner’s only substantive explanation of where to
find such limitations in Daniels occurs at pages 10-11 of the
answer, in responding to appellants’ argument that there is no
such teaching in Daniels. The examiner states:
...one of ordinary skill in the DP art would
clearly see the ability to isolate and test the
circuits independently. Daniels [sic, Daniels’]
teaching of control of the timing module...seems a
clear teaching...of something capable of starting
and stopping operations. From Daniels’ teaching of
a CPU which can execute instructions...one...would
readily conclude that halt/stop instructions might
be executed.
The initial burden is on the examiner to make out a prima
facie case of anticipation and/or obviousness with regard to
the claimed subject matter. Although the examiner has pointed
to various, broad sections of the Daniels disclosure (column
4, lines 30 through 63, column 8, line 57 through column 9,
line 50, column 19, lines 19 through 23), the examiner never
specifically points out the particular part or parts of the
Daniels disclosure which anticipate or make obvious the
claimed starting and/or stopping operations. As appellants
state, at page 5 of the principal brief, appellants are left
“to speculate as to how [the] examiner concludes that the
Appeal No. 95-4501
Application No. 07/827,549
5
limitations...are either taught or made obvious by the cited
portions of the Daniels text.”
Especially in light of appellants’ contention that
Daniels fails to teach or suggest the claimed feature of
“starting and stopping operations...,” the examiner had the
burden to specifically point out exactly where, in Daniels,
these limitations were taught or suggested. Failure to do so
constitutes a failure to establish a prima facie case of
anticipation and/or obviousness.
Although the examiner states that the skilled artisan,
having Daniels before him/her “would clearly see the ability
to isolate and test the circuits independently,” this does not
identify what portion of Daniels teaches or suggests the
claimed “starting and stopping.” Although the examiner
contends that the timing circuit of Daniels is “a clear
teaching...of something capable of starting and stopping
operations,” this, too, does not identify a teaching or
suggestion of the claimed “starting and stopping...” The
examiner does not identify what this “something” capable of
being started and stopped, comprises. Further, the examiner’s
identification of a “CPU which can execute instructions” in
Appeal No. 95-4501
Application No. 07/827,549
6
Daniels does not present a teaching or suggestion of the
claimed limitation of “starting and stopping” and the
examiner’s reasoning that one could “conclude that halt/stop
instructions might be executed” [emphasis ours] also does not
persuade us of any teaching or suggestion in Daniels of
“starting and stopping operations of the electronic processor
and the on-chip peripheral circuitry independently of each
other,” as claimed. That something might be done falls far
short of a suggestion to do it.
We also note that while appellants’ arguments are not
very compelling, basically merely denying that Daniels teaches
or suggests the claimed limitations, and, had the examiner
established a prima facie case for anticipation and/or
obviousness, appellants’ arguments would not appear to carry
much weight, the fact remains that the initial burden for
establishing such a prima facie case rests with the examiner
and the examiner, here, has simply failed to establish such.
Appellants admit that “the module in Daniels are
selectively excludable from the scan path in order to provide
the capability of realizing shorter scan paths and faster
testing times when desired” [reply brief-page 2]. While it
Appeal No. 95-4501
Application No. 07/827,549
7
may very well be that such exclusion of a module from a scan
path might be considered a “stopping” operation of peripheral
circuitry, as broadly claimed, this was not part of the
examiner’s rejection or rationale therefor and we will not
speculate at this point in the prosecution as to whether or
not an exclusion of a module is tantamount to stopping
operation of that module, or peripheral circuit.
It is the examiner’s job to establish an anticipation
through a specific correlation of claimed elements to elements
in the prior art and/or to establish obviousness through a
convincing line of reasoning based on teachings and/or
suggestions from the prior art. Unless and until the examiner
has done so, appellants are under no obligation to present
specific arguments distinguishing the claimed invention from
the applied prior art for to do so would amount to speculation
on appellants’ part as to the exact nature of the examiner’s
rejection. Thus, while we find, in the instant case, that
appellants’ arguments comprise substantially nothing more than
a general denial that Daniels (and for claims 17 and 18, a
combination of Hester and Daniels) teaches or suggests the
claimed “starting and stopping operations...,” no more was
Appeal No. 95-4501
Application No. 07/827,549
8
required in the face of the examiner’s failure to specifically
set forth a prima facie case of anticipation and/or
obviousness, specifically identifying where, and how, Daniels,
and/or Hester and Daniels in the case of the additional
rejection of claims 17 and 18, suggests the claimed limitation
of “starting and stopping operations...”
We make no representations that the instant claimed
subject matter may not somehow be anticipated, or made
obvious, by Daniels and/or Hester. We reverse the instant
rejections solely on the grounds that the examiner has failed
to present any convincing line of reasoning that would
establish a prima facie case of anticipation and/or
obviousness.
Appeal No. 95-4501
Application No. 07/827,549
9
The examiner’s decision rejecting claims 1 through 32 under
35 U.S.C. 102(e)/103 over Daniels and claims 17 and 18 under
35 U.S.C. 103 over Hester in view of Daniels is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )
Appeal No. 95-4501
Application No. 07/827,549
10
Scott B. Stahl
Texas Instruments Incorporated
Patent Department, M/S 219
P.O. Box 655474
Dallas, TX 75262