Ex parte Tuttle

Board of Patent Appeals and Interferences

Mar 30, 1999

07979607 (B.P.A.I. Mar. 30, 1999)

Application for patent filed November 20, 1992.1
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journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK E. TUTTLE
_____________
Appeal No. 96-0086
Application 07/979,6071
______________
ON BRIEF
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Before KRASS, JERRY SMITH and HECKER, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 through 22, all of the claims
pending in the application.
Appeal No. 96-0086
Application 07/979,607
2
The invention pertains to the remote testing of IC chips by employing radio frequency (RF)
transmission.
The nature of the invention is clear from an analysis of representative independent claim 1,
reproduced as follows:
1. A testing system for evaluating an integrated circuit chip comprising:
(A) an interrogator unit having a radio communication range, the interrogator unit comprising
data evaluation means for transmitting interrogating information via radio communication and for
receiving test data via radio communication;
(B) an integrated circuit chip positioned remotely from the interrogator unit, but within the radio
communication range, comprising:
operational circuitry;
test interface circuitry electrically coupled to the operational circuitry and including means for
receiving the interrogating information from the data evaluation means of the interrogator unit, the test
interface circuitry test cycling the operational circuitry according to the interrogating information, the test
interface circuitry including means for transmitting via radio communication test data output by the
operational circuitry in response to the interrogating information back to the data evaluation means of
the interrogator unit; and
the data evaluation means including means for examining the test data to determine whether the
integrated circuit chip has a defect.
The examiner relies on the following reference:
Katayama 5,113,184 May 12, 1992
Appeal No. 96-0086
Application 07/979,607
3
Claims 1 through 22 stand rejected under 35 U.S.C.§ 103 as unpatentable over Katayama.
Reference is made to the brief and answer for the respective positions of appellant and the
examiner.
OPINION
We reverse.
Each of the claims on appeal recites, and requires, at least a testing system or method, wherein
there is some test interface circuitry and a data evaluation, and radio communication between an
interrogator unit and a remote IC chip being tested.
The reference applied by the examiner is directed to a data communication system and method
for an IC card. Katayama is neither concerned with any type of test at all nor with radio
communication, elements and/or steps which are crucial to the instant claimed subject matter.
While the examiner recognizes these deficiencies in Katayama, the examiner contends that it
would have been obvious to modify Katayama to test an IC because “one would want to know
Appeal No. 96-0086
Application 07/979,607
4
whether defects are present in one’s integrated circuit” [answer-page 4]. Also, while the examiner
recognizes the lack of any specific teaching of radio communication in Katayama, the examiner explains
that radio communication is “part of the electromagnetic spectrum” [answer-page 4] and Katayama
does teach electromagnetic communication.
The examiner has failed to establish a prima facie case of obviousness with regard to the instant
claimed subject matter and the examiner’s rationale for modifying Katayama is clearly based on
impermissible hindsight.
While it might very well be that “one would want to know whether defects are present in one’s
integrated circuit,” there is simply no teaching or suggestion of any kind of testing operation in
Katayama and the examiner has presented no cogent rationale as to why the skilled artisan having
Katayama’s system before him/her would have been led to test the integrated circuits of Katayama and,
moreover, to test the circuits in the specific manner claimed.
Further, while Katayama may refer to “electromagnetic coupling,” there is no suggestion, within
the four corners of the reference, to test integrated circuits by radio communication. Had the instant
claims broadly recited “electromagnetic coupling” and the reference disclosed radio communication, we
Appeal No. 96-0086
Application 07/979,607
U.S. Patent No. 5,212,373, issued May 18, 1993 (filed Oct. 31, 1990), of record in the2
application file.
5
might agree that the reference taught that claimed element since radio communication is a type, or
subset, of “electromagnetic coupling.” But, in our view, it is blatant hindsight for the examiner to point
to a general disclosure of “electromagnetic coupling” in the reference and conclude that the reference
teaches or suggest the use of radio communication to test integrated circuits.
The only common element we can find between the instant claimed invention and that disclosed
by Katayama is that Katayama has an integrated circuit. Katayama lacks disclosure of more claimed
elements and/or steps than it teaches. It would have been better had the examiner not focused only on
the integrated circuit aspect of the claimed invention when selecting a reference and, instead, had
located a reference or references disclosing remote testing by radio communication.
The examiner’s belated reliance on the Fujioka reference , at page 6 of the answer, for a2
teaching of radio frequency coupling is improper. First, while the reference refers to data transmitted
and received by radio waves, there is no indication of any testing achieved thereby. More importantly,
this reference forms no part of the statement of the outstanding rejection against the claims and there
would appear to be no excuse for not positively including the reference in the statement of the rejection.
In re Hoch, 428 F.2d 1341, 1142 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Appeal No. 96-0086
Application 07/979,607
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The examiner’s decision rejecting claims 1 through 22 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
EAK/dal
Appeal No. 96-0086
Application 07/979,607
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WELLS, ST. JOHN, ROBERTS,
GREGORY & MATKIN, P.S.
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