Ex Parte Zahn

Patent Trial and Appeal Board

Feb 29, 2016

12333288 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/333,288 12/11/2008
24319 7590
LSI CORPORATION
1110 American Parkway NE
Allentown, PA 18109
03/02/2016
FIRST NAMED INVENTOR
Bruce E. Zahn
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.
ZAHN2 6064
EXAMINER
AISAKA, BRYCE M
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
kee.rivers@broadcom.com
patent.lsi@broadcom.com
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
BOARD
Ex parte BRUCE E. ZAHN
Appeal2014-002254
Application 12/333,288
Technology Center 2800
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-9, 11-18, and 20-22. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, is representative of the claimed invention (emphasis added):
1. A leakage power recovery system, comprising:
a power recovery module configured to make first
conditional replacements of cells in at least one path in a
circuit design with lower leakage cells and estimate a delay and
Appeal2014-002254
Application 12/333,288
a slack of said at least one path based on said first conditional
replacement; and
a speed recovery module associated with said power
recovery module and configured to determine whether said first
conditional replacements cause a timing violation with respect
to said at least one path and make second conditional
replacements with higher leakage cells until said timing
violation is removed.
At the outset, we note the Examiner rejected claims 1-20 on the
ground of nonstatutory obviousness-type double-patenting over claims 1-20
of co-pending Application Serial No. 12/198,0301 (currently Appeal No.
2014-002170) (Final Rej. 9-10). Appellant does not present any arguments
traversing this provisional double-patenting rejection (Br. generally).
Accordingly, this rejection is summarily affirmed.
The Examiner also maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
1) Claims 1--4, 6, 7, 11-15, 17, 18, 21 and 22 as unpatentable over
the combined prior art of Rahmat et al., US Patent 7,366,997
Bl issued Apr. 29, 2008 ("Rahmat"), Fotakis, US
2008/0244476 Al published Oct. 2, 2008 ("Fotakis"), and
Pundoor, US 2007/0180415 Al published Aug. 2, 2007
("Pundoor");
1 Appellant should have identified Serial No. 12/198,030 in the Related
Appeals section of the Appeal Brief, since the Appeal Brief in each case was
filed on the same day.
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Application 12/333,288
2) Claims 5 and 16 as unpatentable over Rahmat, Fotakis,
Pundoor, and Acar et al., US 2009/0055780 Al published Feb.
26, 2009 ("Acar ");
3) Claim 8 as unpatentable over Rahmat, Fotakis, Pundoor, and
Becer et al., US 2006/0112359 Al published May 25, 2006
("Becer"); and
4) Claims 9 and 20 as unpatentable over Rahmat, Fotakis Pundoor,
and Evers et al., US Patent 7,188,325 Bl issued Mar. 6, 2007
("Evers").
Appellant focuses the argument on independent claim 1 (Br. 6-8).
Appellant relies upon similar arguments for independent claims 12 and 21
(Br. 8-9). Appellant does not present separate arguments for any of the
dependent claims, including those separately rejected (Br. 9-12). Thus, all
the claims stand or fall together.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellant's claims are unpatentable over the applied prior art. We sustain
the Examiner's § 103 rejection essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
It is axiomatic that "the PTO must give claims their broadest
reasonable construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
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Application 12/333,288
otherwise apply a broad interpretation." Jn re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
Appellant argues that the claimed invention requires that the claimed
optimization be performed as part of timing signoff of a circuit design, and
that the optimization "must be carried out after an accurate representation of
the finished circuit design and after design timing has been closed" (Br. 6).
Appellant contends that "the cited portions of neither Rahmat nor Pundoor2
teach optimization after an accurate representation of the finished circuit
design and after design timing has been closed" (Br. 6-7).
The Examiner points out that Appellant's argument relies upon
limitations that are not recited in the claim (Ans. 2-3). It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). The claim does
not recite optimization that "must" be carried out after an accurate
representation of the finished circuit design and after design timing has been
closed as argued by the Appellant (Br. 6).
Appellant has not directed our attention to any persuasive reasoning or
credible evidence to establish that the Examiner's interpretation that the
claim encompasses the power recovery module and speed recovery module
of the Rahmat/Pundoor combination is unreasonable. Notably, while
Appellant points to paragraphs 16 and 18 of their Specification (Br. 6), this
falls short of a special definition in the Specification that would establish
2 Appellant does not present any arguments regarding Fotakis (generally,
Br.).
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Application 12/333,288
that the claim is limited to circumstances where "the optimization must be
carried out after an accurate representation of the finished circuit design and
after design timing has been closed" (Br. 6, italics added). Indeed,
Appellant's Specification merely states the leakage power recovery system
is "typically" run on a circuit design process after the design timing is closed
(Spec. i-f 18; reproduced at Br. 6).
Furthermore, Appellant has not persuasively disputed the Examiner's
determination that even if claim 1 were interpreted to require optimization
during timing signoff, one of ordinary skill in the art would have reasonably
inferred this from the applied prior art combination (Ans. 3). Indeed,
Appellants has not adequately refuted the Examiner's position that one of
ordinary skill would have readily appreciated that Rahmat teaches that
timing has already been set (e.g., Ans. 2; Rahmat col 9, 1. 55 ("without
reducing clock frequency"); see also col. 9, 1. 51 to col. 10, 1. 2; col. 6, 11. 1-
31). Contrary to Appellant's position, Pundoor's teaching of the
preservation of timing closure is reasonably encompassed by claim 1 's
language "as part of timing sign off' (Pundoor i-f 11 ("preserves timing
closure"); Ans. 2; Br. 7). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) ("[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ."); see also id., at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."); In re Fritch, 972 F.2d
1260, 1264---65 (Fed. Cir. 1992) (It is well settled that a reference stands for
all of the specific teachings thereof as well as the inferences one of ordinary
skill in this art would have reasonably been expected to draw therefrom).
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Application 12/333,288
Appellant's argument that Pundoor teaches away from the claimed
invention because Pundoor teaches that "[r]eversing a prior swap it is out of
the scope of this invention" (Pundoor i-f 54, see also i-f 50) is unavailing (Br.
7, 8). Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to "teach away," it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
As recognized by Appellant, reversing a swap is only one form of a
second conditional replacement. As the Examiner aptly points out, not being
able to reverse a swap does not preclude making two sets of conditional
replacements (Final Rej. 10; Ans. 3). The Examiner's position that the claim
does not require the ability to reverse a swap is reasonable (Ans. 3).
Accordingly, Pundoor does not criticize, or teach away from, the claimed
invention. Notably, second conditional replacements are also taught by
Rahmat (col. 14, 11. 31--43 (describing additional replacements to avoid
timing violations to maintain a clock frequency)) (Final Rej. 3; Ans. 3).
Accordingly, for all the reasons stated above and in the Answer, and
taking into account "the inferences and creative steps that a person of
ordinary skill in the art would employ," KSR Int'!, 550 U.S. at 418,
Appellant has not shown reversible error in the Examiner's obviousness
determination.
We sustain all of the Examiner's § 103 rejections on appeal.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal2014-002254
Application 12/333,288
AFFIRMED