Ex Parte Tetelbaum

Patent Trial and Appeal Board

Jun 14, 2016

13246075 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246,075 09/27/2011
24319 7590
Broadcom Limited
4380 Ziegler Road
Fort Collins, CO 80525
06/16/2016
FIRST NAMED INVENTOR
Alexander Y. Tetelbaum
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ll 0-0396US 1 9990
EXAMINER
GILLS, KURTIS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/16/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER Y. TETELBAUM
Appeal2014-005271
Application 13/246,075
Technology Center 3600
Before: WILLIAM A. CAPP, AMANDA F. WIEKER and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-14 as unpatentable under 35 U.S.C. § 103(a) over Iyer
(US 2012/0284680 Al, pub. Nov. 8, 2012), West (US 2003/0122220 Al,
pub. July 3, 2003), and Staib (US 2007/0130090 Al, pub. June 7, 2007). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-005271
Application 13/246,075
THE INVENTION
Appellant's invention relates to a method of estimating a profit margin
for an integrated circuit chip. Spec. i-f 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method of estimating a profit margin for an integrated
circuit (IC) chip, comprising:
providing design, manufacturing and financial input data for
the IC chip;
determining a ratio of performing to manufactured IC chips
using chip yields apart from timing;
characterizing IC chip performance corresponding to clock
timing and on-chip-variation (OCV) margins;
calculating, with a processor, price and costs corresponding
to design, manufacturing and testing of the IC chip; and
Claim 1
generating a profit margin based on the price and costs.
OPINION
Unpatentability of Claims 1-10
over Iyer, West, and Staib
The Examiner finds that Iyer discloses the limitation in claim 1
directed to characterizing IC chip performance. Final Action 10. The
Examiner relies on West for disclosing the limitations directed to providing
financial input data for the IC chip, determining a ratio of performing to
manufactured IC chips using chip yields, and calculating price and costs. Id.
at 11-12. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
modify Iyer to include the scribe street seals and method of fabrication of
West. Id. at 12. According to the Examiner, a person of ordinary skill in the
art would have done this because several solutions have been proposed to
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Application 13/246,075
solve technical problems associated with the manufacture and dicing of
semiconductor wafers. Id.
The Examiner further relies on Staib as disclosing generating a profit
margin based on price and costs. Id. at 12-13. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Iyer and West to further include the
system for on-line merchant price setting of Staib. Id. at 14. According to
the Examiner, a person of ordinary skill in the art would have done this
because it is often difficult for merchants to know the price at which their
competition is selling a particular product. Id.
Appellant traverses the Examiner's rejection by arguing that West
does not disclose calculating price and costs corresponding to design,
manufacturing, and testing an IC chip. Appeal Br. 5.
In response, the Examiner states that calculating price and costs is a
limitation that can be performed for any type of product. Ans. 25. The
Examiner then directs our attention to paragraph 22 of Iyer which discusses
estimating the value of removable pessimism from a static timing analysis.
Id. (citing Iyer i-f 22); see also Iyer i-f 21. As further support for the factual
findings underlying the rejection, the Examiner also directs our attention to
paragraphs 30 and 34 of Iyer as well as paragraphs 16, 22, and 42 of West.
Ans. 26-27.
We have reviewed the above cited passages relied on by the Examiner
to support the rejection. Although the factors discussed in paragraphs 22,
30, and 34 of Iyer and paragraphs 16, 22, and 42 of West may, in some
respects, affect the price and cost of an IC chip, we agree with Appellant that
they do not fairly disclose "calculating price and costs" corresponding to
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Appeal2014-005271
Application 13/246,075
design, manufacturing, and testing an IC chip as claimed. In particular, the
recited disclosures in West are directed to minimizing the sacrifice of
material for dicing. West i-fi-f 16, 22, 42. We agree with Appellant that there
is no disclosure in such paragraphs regarding calculating price and costs
corresponding to design, manufacturing, and testing an IC chip, let alone
disclosure of calculating price and costs in conjunction with the other recited
method steps of providing financial input data for the IC chip and
determining a ratio of performing to manufactured IC chips using chip
yields, which the Examiner also asserts to be taught by West. Final Action
11-12 (citing West i-fi-12, 16, 22, 42).
Similarly, we find that the Examiner erred in finding that West
satisfies the limitation directed to providing "financial input data" for the IC
chip. Final Action 10-11 (citing West i-f 16). Contrary to the Examiner's
finding, paragraph 16 of West discusses minimizing the sacrifice of
semiconductor material for dicing. West i-f 16. While this minimization of
sacrifice in dicing may affect the economics of chip manufacture, there is no
disclosure of ''providing financial input data" within the meaning of claim 1.
With respect to the Examiner's observation that calculating price and
costs can be performed for any type of product, Ans. 25, we note that such
observation is not supported by any citation to evidence in the record and the
Examiner fails to explain how or why it would have been obvious to derive
price and costs "corresponding to design, manufacturing and testing of the
IC chip" in connection with ''providing design, manufacturing and financial
input data" and "determining a ratio of performing to manufactured IC
chips" as claimed by Appellant. Final Action 4, 10-11.
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Appeal2014-005271
Application 13/246,075
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984).
Here, we determine that the Examiner has failed to set out a prima facie case
ofunpatentability with respect to claim 1. Accordingly, we do not sustain
the Examiner's unpatentability rejection of claim 1.
Claims 2-10
Claims 2-10 depend, directly or indirectly, from claim 1. Claims
App. The Examiner's rejection of these claims suffers from the same
infirmities that were identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2-10.
Claim 11
Unpatentability of Claims 11-14
over Iyer, West, and Staib
Claim 11 is an independent claim. Claims App. In rejecting claim 11,
the Examiner relies on essentially the same findings of fact regarding West's
purported disclosure regarding "providing design, manufacturing, and
financial input data" that we previously found to be erroneous in connection
with the rejection of claim 1 and discussed further above. Final Action 26.
Thus, the Examiner's rejection of claim 11 suffers from the same infirmity
that we previously discussed with respect to the rejection of claim 1, which
includes a similar limitation.
Thus, for similar reasons as discussed above with respect to claim 1,
we do not sustain the rejection of claim 11.
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Appeal2014-005271
Application 13/246,075
Claims 12-14
Claims 12-14 depend from independent claim 11. Claims App. The
Examiner's rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 11. Thus, for essentially the same
reason expressed above in connection with claim 11, we do not sustain the
rejection of claims 12-14.
DECISION
The decision of the Examiner to reject claims 1-14 is reversed 1.
REVERSED
1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the examination instructions on
patent eligible subject matter in light of Alice Corporation Pty, Ltd. v. CLS
Bank, 134 S.Ct. 2347 (2014).
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