Ex Parte TAIN

Board of Patent Appeals and Interferences

Dec 13, 2002

09007138 (B.P.A.I. Dec. 13, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALEXANDER C. TAIN
__________
Appeal No. 2001-0326
Application 09/007,138
___________
ON BRIEF
___________
Before FLEMING, LALL, and SAADAT, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appellant’s invention generally relates to a computer
implemented method for converting an input representation (30,
34) of a pattern of integrated circuit interconnects (32) in a
format suitable for a circuit design program into an output
representation (46) in a format suitable for a package design
program. See Appellant’s specification, Figures 4 and 10, see
also page 3, lines 19-24; page 5 lines: 8-15, lines: 20-30.
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This is accomplished by controlling the computer to run a
converter program which converts the input representation (30,
34) into an intermediate representation in a format suitable for
a mechanical design program (42, 44). See Appellant’s
specification Figures 6 and 8, see also page 3, lines 26-34.
Then further controlling the computer to run a mechanical design
program (58) which is adapted to automatically input the
intermediate representation (42, 44), identify and label the
interconnects, and create the output representation (48) in
which the interconnects are labeled (See Appellant’s
specification Figure 10, see also page 3, line 36 through page 4
line 6; page 6, lines: 15-25).
References
The references relied on by the Examiner are as follows:
Jimbo et al. 5,517,421 May 14, 1996
Fulcher 5,686,764 Nov. 11, 1997
Stager et al. 5,777,383 July 7, 1998
(filed May 9, 1996)
Rejections at Issue
Claims 1, 2, 4, 5, 8-16, 19-24, 26, and 29-31 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Jimbo et al.
(hereinafter referred to as “Jimbo”).
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Claims 3, 14, and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jimbo in view of Stager et al.
Claims 6, 7, 17, 18 and 27-28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jimbo in view of Fulcher.
Opinion
With full consideration begin given to the subject matter on
appeal, the Examiner’s rejections and arguments of the Appellant
and Examiner, we cannot sustain the rejections of claims 1, 12
and 23 which were rejected under 35 U.S.C. § 103.
On page 8, lines 8-12 of the Appeal Brief, Appellant argues
that his invention “begins where Jimbo leaves off”. Appellant
argues that his invention “inputs data generated by a CAD program
(e.g. output data from a program for which Jimbo’s format
conversion produces input data) and converts it into an output
representation suitable for a package design program”. Appellant
points out that the Examiner admitted that Jimbo does not teach
the claimed limitation of converting a circuit design format to a
package design format. See Appeal Brief, Paper No. 9, dated
March 20, 2000, page 8, lines 29-31). Appellant further argues
that the Examiner has not provided any evidence which supports a
showing that prior art teaches or suggests enabling “a conversion
from a format necessary for a circuit design program to format
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Application 09/007,138
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necessary for a package design program as required in the
explicit language of claim 1.” See Appeal Brief, Paper No. 9,
page 9, lines 28-32.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 1443,
1444 (Fed Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 87 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
“[E]vidence of a suggestion, teaching, or motivation to
combine may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some cases,
from the nature of the problem to be solved, see Pro-Mold & Tool
Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
Appeal No. 2001-0326
Application 09/007,138
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1626, 1630 (Fed. Cir.1996), Para-Ordnance Mfg. v. SGS Importers
Intern., Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed.
Cir. 1995), although "the suggestion more often comes from the
teachings of the pertinent references," Rouffet, 149 F.3d at
1355, 47 USPQ2d at 1456. The range of sources available, however,
does not diminish the requirement for actual evidence. That is,
the showing must be clear and particular. See, e.g., C.R. Bard,
157 F.3d at 1352, 48 USPQ2d at 1232.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all the evidence and arguments.” In re
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency’s conclusion.” In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002). With these principles in mind, we commence review of the
pertinent evidence and arguments of Appellant and Examiner.
Independent claims 1 includes the following limitations:
[C]onverting an input representation of a pattern of
integrated circuit interconnects in a format suitable for a
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circuit design program into an output representation in a
format suitable for a package design program, comprising the
steps of:
a converter program which converts the input representation
into an intermediate representation in a format suitable for
a mechanical design program; and
a mechanical design program which is adapted to
automatically input the intermediate representation,
identify and label the interconnects, and create the output
representation in which the interconnects are labeled.
We note that claims 12 and 23, the only other independent claims,
recite similar limitations, as do the rest of the appealed
claims, being the dependent claims.
On page 4, first column, third paragraph of the Examiner’s
Answer, the Examiner admits that Jimbo fails to teach “conversion
of a circuit design format to a package design output format”.
The Examiner provides an unsupported rationale that it would be
obvious to “convert data into formats suitable for use by
particular CAD tools for easy design data management, this
capability would extend to include the conversion from a format
necessary for circuit design application programs (one CAD tool)
to a format necessary for a package design program (another CAD
tool)”. The Examiner asserts that a package design program is a
CAD tool. Further on page 4, second column, fifth paragraph of
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the Examiner’s Answer, the Examiner admits that Jimbo fails to
teach “conversion an from input representation to (Jimbo’s one
representation) an intermediate representation”. The Examiner
again provides an unsupported rationale that it would be obvious
that a “representation converting means converts one
representation to another representation, this would include
conversion from an input representation (Jimbo’s one
representation) to an intermediate representation (another
representation)”.
Upon review, we find that there is no evidence of record to
support converting an input representation of a pattern of
integrated circuit interconnects in a format suitable for a
circuit design program into an output representation in a format
suitable for a package design program, as required by claims 1,
12 and 23. The Examiner’s conclusory statements and unsupported
rationales do not constitute evidence. Broad conclusory
statements regarding the teaching of multiple references,
standing alone, are not "evidence." E.g., McElmurry v. Arkansas
Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131
(Fed. Cir.1993) "Mere denials and conclusory statements, however,
are not sufficient to establish a genuine issue of material
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fact." See In re Dembiczak, 175 F.3d 994, 1000, 150 USPQ2d 1614,
(Fed. Cir. 1999), In re Sichert, 566 F.2d 1154, 1164, 196 USPQ
209, 217 (CCPA 1977). Without such evidence, we cannot find that
Jimbo anticipates Appellant’s conversion of an input
representation suitable for a circuit design program to an output
representation suitable for a package design program.
Consequently, the Examiner’s § 103 rejection based on Jimbo of
claims 1, 12, and 23 is reversed.
REVERSED.
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID SAADAT )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2001-0326
Application 09/007,138
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David G. Alexander
Arter & Hadden LLP
725 South Figueroa Street
Suite 3400
Los Angeles, CA 90017-9255