Ex Parte 6324120 et al

Patent Trial and Appeal BoardJul 30, 2013

90011005 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/011,005 05/19/2010 6324120 000939-178700US 6407 22852 7590 07/31/2013 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/31/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAMBUS, INC. Appellant ___________ Appeal 2012-009762 Reexamination Control No. 90/011,005 United States Patent 6,324,120 B2 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-009762 Reexamination Control 90/011,005 Patent 6,324,120 B2 Rambus seeks relief in its Patent Owner’s Request for Rehearing, see 37 C.F.R. § 41.79, from the Decision of the Patent Trial and Appeal Board 1 affirming the Examiner’s decision to maintain the obviousness rejection of claims 26 and 29. In a rehearing request, appellants have the burden to “state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52 (a)(1). Rambus maintains that the Board overlooked its contention that the combination of Bennett and Fujishima does not suggest “the claimed ‘plurality of input receivers to sample block size information synchronously with respect to the external clock signal’” as claim 26 requires. (See Rehear. Req. 13 (emphasis omitted).) Rambus points to the Board’s finding that Bennett employs a maintenance processor to serially send a bit pattern to a configuration register in each memory device. (See id.) In its Appeal Brief, Rambus similarly refers to “parameters, which are serially shifted” (App. Br. 6) and relies on its expert Murphy who states that because the parameters are “serially shifted,” they “are not sampled synchronously with respect to an external clock signal by a plurality of input receivers.” (Murphy Dec. ¶ 27.) The Examiner cogently explains how the relevant portion of Bennett’s system functions. (See Ans. 9-13.) However, based on the Examiner’s explanation and upon further consideration of the claim terms at issue, the Examiner has not shown that Bennett discloses or suggests “a plurality of input receivers to sample block size information synchronously” as set forth in claim 26. (Emphasis added.) 1 Decided on January 28, 2013. Appeal 2012-009762 Reexamination Control 90/001,005 Patent 6,324,120 B2 3 There does not appear to be a dispute over the fact that Bennett discloses that the configuration parameter information is sequentially (i.e., serially) transmitted to a configuration register, which implies sampling by a single input receiver. While the record indicates that Bennett also employs two other data pins with respective receivers for receiving enable and select line signals for enabling the serial sampling of the block size information by the other configuration parameter input receiver (see Dec. 25; Ans. 9 (citing Bennett at col. 125, ll. 46-56); App. Br. 5-6), the record does not show, and the Examiner does not clearly indicate, that one of the former enabling receivers also samples block size information. For example, Bennett discloses that the 28 bits corresponding to the configuration parameters, and which include the block size according to the Examiner, are “successively clocked into the CONFIGURATION REGISTER.” (Bennett, col. 264, ll. 65-66.) The Examiner similarly refers to shifting of bits in Bennett using the SET DATA signal and refers to “sequentially shifted bit position[s].” (Ans. 12.) In other words, this sequential shifting, as opposed to parallel shifting, implies sampling on one data line (by one input receiver) for serially shifting the block size information into the configuration register. “[T]he Board's review of the claims of an expired patent is similar to that of a district court's review.” In re Rambus, 694 F.3d 42, 46 (Fed. Cir.2012). As the Decision explains, the ‘120 patent depicts two input receivers at Figure 10 which both sample block size information. (Dec. 25.) Claims typically are not limited to any single embodiment even under a district court’s review standard, but the specification guides claim interpretation. Claim 26 requires at least two “input receivers to sample Appeal 2012-009762 Reexamination Control 90/001,005 Patent 6,324,120 B2 4 block size information.” (Emphasis added.) The terms imply that both receivers sample, or are configured to sample, block size information. As an analogy, “two riflemen to shoot” logically would be interpreted as requiring both riflemen to shoot or have the ability to shoot. The nouns “riflemen” and “input receivers” inform of the ability by each member of the group to carry out the respective functions recited, shooting and synchronously sampling block size input data. It is not enough that one rifleman helps another rifleman to shoot (by loading the rifle, etc.) or that another receiver works in conjunction with another receiver to sample data synchronously (by analogously enabling the sampling process). As indicated, Figure 10 of the ‘120 patent supports the narrower interpretation. Stated differently, claim 26 does not recite the following bracketed terms which would imply a broader interpretation: “a first plurality of input receivers to [enable] sampl[ing] of block size information synchronously.” The Examiner’s findings and the record indicate that, at most, only one input receiver synchronously samples Bennett’s serially shifted configuration data which includes the block size information. The Examiner does not appear to maintain that each of at least two input receivers in a single memory device in Bennett samples or is configured to sample block size information synchronously. The Examiner also does not explain that claim 26 requires sampling by only one input receiver. CONCLUSION Rambus has shown that the Board overlooked material arguments or evidence warranting a modification of its Decision. Accordingly, the Decision is hereby modified to reflect that the rejection of claims 26 and 29 Appeal 2012-009762 Reexamination Control 90/001,005 Patent 6,324,120 B2 5 is not sustained and that the Examiner’s decision to reject the claims is reversed. REHEARING DECISION GRANTED PATENT OWNER: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 THIRD PARTY REQUESTER: Barmak Sani Townsend & Townsend & Crew, LLP Two Embarcadero Center, 8th Floor San Francisco, CA 94111-3834