Ex Parte Sandri et al

Patent Trial and Appeal BoardAug 24, 2017

13788028 (P.T.A.B. Aug. 24, 2017)

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. 13/788,028 03/07/2013 Jason G. Sandri ITL.2939US P48795 1082 47795 7590 08/28/2017 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER HIDALGO, FERNANDO N ART UNIT PAPER NUMBER 2827 NOTIFICATION DATE DELIVERY MODE 08/28/2017 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): tphpto@tphm.com Inteldocs_docketing @ cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON G. SANDRI, HORAIRA ABU, CHARLES A. PETERSON, MATTHEW B. PEDERSEN, BRIAN HARRIS, IAN S. WALKER, and MONIB AHMED (Applicant: Intel Corporation) Appeal 2017-001402 Application 13/788,0281 Technology Center 2800 Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL The Appellant appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1—15, 17, and 19-29.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The Applicant (hereinafter “Appellant”) states that the real party in interest is “Intel Corporation.” Appeal Brief filed on June 28, 2016, hereinafter “Appeal Br.,” 3. 2 Appeal Br. 9-13; Reply Brief (filed on November 2, 2016), hereinafter “Reply Br.,” 1—7; Examiner’s Answer (notice emailed on September 30, 2016), hereinafter “Ans.,” 2—13; Final Office Action (notice emailed on August 6, 2014) hereinafter “Final Act.,” 2—18. Appeal 2017-001402 Application 13/788,028 We AFFIRM-IN-PART. A. BACKGROUND As recited in reproduced claim 1 below, the subject matter on appeal relates to a computer-executed method comprising a step of randomly selecting a fuse address to begin fuse sensing (i.e., “the sensing of memory arrays, including bits arranged in rows and columns”). Specification, hereinafter “Spec.,” 1—2. The inventors disclose that current fuse sensing protocols sense fuses in the same order every time. Id. ^3. The inventors disclose that this exposes the protocols to “so-called side channel attack methods” in which hackers can determine the signature of fuse values by placing a device in an infinite reset loop and taking measurements at the same location and same time after the loop is reset. Id. 14. In view of this problem, the inventors disclose using a random order to sense fuses. Id. 1 6. Representative claim 1 is reproduced from page 14 of the Appeal Brief (Claims Appendix), as follows: 1. A computer executed method comprising: randomly selecting a fuse address to begin fuse sensing. 2 Appeal 2017-001402 Application 13/788,028 B. REJECTIONS ON APPEAL3 On appeal, the Examiner maintains several rejections,4 which are as follows (Final Act. 7—18): I. claims 9, 15, and 28 as indefinite under 35 U.S.C. § 112, second paragraph; II. claims 11, 17, and 19 as anticipated under 35 U.S.C. § 102(b) over Qi et al.5 (Qi); III. claims 1,2, 10, 20, 21, and 29 as being unpatentable 3 The Examiner lists claims 1—29 as being rejected in the Office Action Summary of the Final Office Action. However, claim 16 is not expressly addressed in any of the rejections. Moreover, claims 9, 15, and 28 are rejected under 35 U.S.C. § 112, second paragraph, but not on any prior art unpatentability grounds. The Examiner does not indicate that claim 16 includes allowable subject matter or that claims 9, 15, and 28 would be allowable if rewritten to overcome the § 112 rejection. Upon return of this application to the Examiner’s jurisdiction, the Examiner may wish to clarity the status of claims 9, 15, 16, and 28. Further, in the event of continued examination, the Examiner may wish to evaluate the claims under broadest reasonable interpretation in light of the Specification and determine whether they comply with 35 U.S.C. § 101. 4 An after-Final Rejection amendment was submitted on September 23, 2014 to cancel claim 18. The Advisory Action dated September 29, 2014 indicates that the amendment was not entered. However, the Continuation Sheet of the Advisory Action states that the drawing objection due to the recitations of claim 18 (set forth at pages 6—7 of the Final Office Action) has been rendered moot due to the cancelation of claim 18. The Examiner lists claims 1—17 and 19-29, but not claim 18, as rejected in the Advisory Action. Nor does the Examiner refer to the § 103 rejection of claim 18 in the Examiner’s Answer. As such, there is apparent agreement between the Examiner and the Appellant that claim 18 is cancelled. Therefore, we presume that the after-Final Rejection amendment to cancel claim 18 was entered and the § 103 rejection of claim 18 was withdrawn. 5 US 2009/0010424 Al, published Jan. 8, 2009. 3 Appeal 2017-001402 Application 13/788,028 under 35 U.S.C. § 103(a) over Ahmed6 in view of O’Loughlin et al.7 (O’Loughlin); IV. claims 3, 5, 7, 8, 22, 24, 26, and 27 as being unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and further in view of Shiga;8 V. claims 4 and 23 as being unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Peart et al.9 (Peart); VI. claims 6, 12—14, and 25 as being unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Engelien-Lopes.10 C. DISCUSSION Rejection I Claims 9, 15, and 28 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claim 9 For claim 9, the Examiner determines claim 1 is directed to sensing fuses (i.e., memory arrays) but claim 9 is directed to recording a state, which is a separate operation from sensing. Final Act. 8. 6 US 2011/0141791 Al, published June 16, 2011. 7 US 2012/0102334 Al, published Apr. 26, 2012. 8 US 2009/0154244 Al, published June 18, 2009. 9 US 2011/0270759 Al, published Nov. 3, 2011. 10 US 2014/0105396 Al, published Apr. 17, 2014. 4 Appeal 2017-001402 Application 13/788,028 The Appellant asserts the basis for the rejection lacks support because claims (e.g., independent claims and their dependents) do not have to be directed to the same aspect of an invention. Appeal Br. 9; Reply Br. 1—2. The Appellant’s argument is persuasive. Claim 9 recites a further step for the computer-executed method of claim 1, not a further operation for the fuse sensing recited in claim 1. Therefore, we do not sustain the Examiner’s §112 rejection of claim 9. Claims 15 and 28 The Examiner determines claims 15 and 28 are indefinite because claims 15 and 28 recite storing a value or a string of bits along an address line but “address lines, as well-known in the art, are merely electrical conductor, traces or aluminum-based conductor; such traces are not known to be operable to store data.” Final Act. 8—9. The Appellant argues that one skilled in the art would understand how memories work and that such memories are addressable along address lines. Appeal Br. 9; Reply Br. 2—3. In other words, claims 15 and 28 do not require that the value or string of bits is stored on or within an address line itself. Storage along an address line, as recited in claims 15 and 28, does not require that the value or bits are stored by the address line itself. As discussed in paragraphs 37-40 of the inventors’ Specification, a fuse array (i.e., memory array) may include bits arranged in rows and columns and a string of code may be stored in the array, such as along a column. Therefore, the storage of a value or a string of bits in memory locations along an address line (e.g., column) was contemplated by the inventors’ disclosure, and, therefore, the Examiner’s interpretation of storing a value or 5 Appeal 2017-001402 Application 13/788,028 a string of bits along an address line, as recited in claims 15 and 28, is unreasonable. As a result, we do not sustain the Examiner’s § 112 rejection of claims 15 and 28. Rejection II Claims 11, 17, and 19 are rejected as anticipated under 35 U.S.C. § 102(b) over Qi. The Appellant states “[tjhis rejection is not a subject of this appeal.” Appeal Br. 9. But absent an entered amendment canceling these claims, they are presumed to be on appeal. 37 C.F.R. § 41.31(c). Therefore, we summarily affirm the § 102 rejection of claims 11, 17, and 19. Rejection III Claims 1,2, 10, 20, 21, and 29 are rejected as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin. Claims 1 and 20 The Examiner finds Ahmed discloses a computer-executed method in which a fuse address of its one-time-programmable (OTP) memory is randomly selected to begin fuse sensing. Final Act. 10—11. The Examiner finds it is well-known in the art that OTP memory is considered a fuse-type memory and that the disclosure of O’Loughlin corroborates this. Id. at 11. The Appellant contends that Ahmed does not disclose how a first location to be sensed is selected and one of ordinary skill in the art would have understood that Ahmed is directed to random access memory, not randomly selecting a fuse to be sensed. Appeal Br. 10; Reply Br. 3. These arguments do not identify a reversible error in the Examiner’s rejection. Ahmed discloses an OTP memory that includes “multiple random 6 Appeal 2017-001402 Application 13/788,028 accessible input/output (I/O) pins, wherein each random accessible I/O pin corresponds to a unique memory address in the OTP memory.” Ahmed 112. Thus, it is reasonable that one of ordinary skill in the art would have understood that Ahmed discloses the random sensing of memory devices. Here, the Examiner further finds that because Ahmed is directed to an OTP memory device and does not discuss random-access-memory (RAM), one cannot premise that Ahmed’s OTP device operates the same as a RAM device. Ans. 8. Moreover, the Examiner finds the Appellant has not provided any evidence that Ahmed is directed to a RAM device or would operate in the same manner. Id. Indeed, the Appellant submits mere attorney arguments that Ahmed’s OTP device would operate like a RAM device but does not cite evidence to support this. Essentially, the Appellant argues a different interpretation of Ahmed’s disclosure than the Examiner but does not support these arguments with evidence or persuasive technical reasoning. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney's argument in a brief cannot take the place of evidence.”). The Appellant does cite to a dictionary definition for “Random Access Memory” at page 10 of the Appeal Brief but this does not demonstrate that the OTP device of Ahmed would operate like a RAM device and not select fuses randomly, as argued by the Appellant. Therefore, we conclude that the Examiner set forth a prima facie case of obviousness and the Appellant failed to rebut it with persuasive argument and evidence. For these reasons and those set forth in the Examiner’s Answer, a preponderance of the evidence in the record supports the Examiner’s § 103 rejection of claims 1 and 20. 7 Appeal 2017-001402 Application 13/788,028 Claims 2 and 21 Claim 2 depends from claim 1 and claim 21 depends from claim 20. Each of claims 2 and 21 further recites “including randomly selecting an initial row to sense.” Appeal Br. 14, 16. The Appellant argues the Examiner reversibly erred in rejecting claims 2 and 21 because Ahmed does not disclose the random selection of rows and instead selects entire memory banks. Appeal Br. 11; Reply Br. 3^1. This argument is unpersuasive. As discussed above, the Appellant has not identified a reversible error in the Examiner’s finding that Ahmed discloses the random selection of fuses to be sensed. Moreover, the Examiner finds paragraph 24 of Ahmed discloses that data is read from one of its memory arrays (i.e., memory banks). Ans. 9. The Examiner explains that reading an entire memory array would require accessing millions of memory cell locations, which is impractical and not how memory arrays are accessed. Id. Moreover, the Examiner finds Ahmed discloses accessing the unique memory address of memory arrays, which would involve at least a row of a memory array. The abstract and paragraph 12 of Ahmed support this finding. Therefore, the Appellant’s arguments do not identify a reversible error in the Examiner’s § 103 rejection of claims 2 and 21. Claims 10 and 29 Similar to the rejection of claims 2 and 21, the Appellant asserts Ahmed selects entire memory banks. Appeal Br. 11; Reply Br. 4—5. This argument is unpersuasive for the reasons discussed above with regard to claims 2 and 21. 8 Appeal 2017-001402 Application 13/788,028 For these reasons and those discussed in the Examiner’s Answer, we uphold the Examiner’s § 103(a) rejection of claims 1, 2, 10, 20, 21, and 29. Rejection IV Claims 3, 5, 7, 8, 22, 24, 26, and 27 are rejected as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and further in view of Shiga. Claim 3 Claim 3 depends from claim 2 and further recites “including using a random number generator to select the row.” Appeal Br. 14. The Examiner finds Shiga discloses the use of a random number generator to select a row for a memory device and concludes it would have been obvious to modify Ahmed in view of Shiga to provide a means for generating randomness for randomly selecting a fuse. Final Act. 13—14. The Appellant contends Shiga is directed to the random assignment of an address during programming, not randomly selecting a location to be accessed and Ahmed does not disclose randomly accessing a location. Appeal Br. 11—12; Reply Br. 5—6. The Appellant’s arguments are unpersuasive. “[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As discussed above with regard to the § 103 rejection of claims 1 and 20, Ahmed discloses the random selection of a fuse to be sensed. Although paragraph 71 of Shiga is set in the context of programming, it nonetheless discloses the generation of a page address via a 9 Appeal 2017-001402 Application 13/788,028 random number generator. Therefore, the combination of Ahmed and Shiga suggest the use of a random number generator as the means to generate randomness for randomly selecting a fuse to be sensed. Moreover, to the extent Shiga is directed to using a random number generator for a programming or writing operation instead of a reading or sensing operation, the Appellant does not direct us to sufficient evidence that this difference would have been an obstacle for one of ordinary skill in the art to use the random number generator for Ahmed’s random selection of a fuse to be sensed. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSRInt'l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For these reasons and those expressed in the Examiner’s Answer, the Appellant has not identified a reversible error in the Examiner’s § 103 rejection of claim 3. Claims 5, 7, 8, 22, 24, 26, and 27 The Appellant argues claims 5 and 24 as a group, claims 7 and 26 as a group, and claim 22 as a group separately from claim 3. Appeal Br. 12. For each of these groups, the Appellant asserts the applied references do not disclose random selection, such as random selection of a row. Appeal Br. 12; Reply Br. 6. These arguments are unpersuasive. As discussed above with regard to the § 103 rejection of claims 1 and 20 and the § 103 rejection of claims 2 and 21, Ahmed discloses the random selection of a fuse to be sensed and such fuses may be located in an array having an address including a row. In order to randomly select such a fuse, the row of the fuse’s address would have to be selected. The Appellant does not argue claims 8 and 27 separately from claim 3. Appeal Br. 12. Therefore, we sustain the Examiner’s § 103 rejection of claims 5, 7, 8, 22, 24, 26, and 27. 10 Appeal 2017-001402 Application 13/788,028 Rejection V Claims 4 and 23 are rejected as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Peart. The Appellant states “[tjhese rejections are not appealed.”11 Appeal Br. 12—13. Therefore, we summarily affirm the § 103 rejection of claims 4 and 23. Rejection VI Claims 6, 12—14, and 25 are rejected as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Engelien-Lopes. The Appellant contends Ahmed selects entire memory banks, not fuse array addresses, as recited in claim 13. Appeal Br. 13; Reply Br. 6—7. As discussed above with regard to the § 103 rejection of claims 2 and 21, the Examiner explains that the device of Ahmed randomly selects fuse array addresses, not entire memory banks, and we agree that the disclosure of Ahmed supports this analysis. See Ans. 9. Therefore, the Appellant’s argument is unpersuasive and we sustain the Examiner’s § 103 rejection of claims 6, 12—14, and 25. 11 Because claim 4 depends from claims 3 and 1 and claim 23 depends from claims 20-22, broader claim 1,3, and 20—22 must also be held obvious. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). 11 Appeal 2017-001402 Application 13/788,028 D. SUMMARY On the record before us: A. the Examiner’s rejection of claims 9, 15, and 28 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed', B. the Examiner’s rejection of claims 11, 17, and 19 as anticipated under 35 U.S.C. § 102(b) over Qi is affirmed', C. the Examiner’s rejection of claims 1, 2, 10, 20, 21, and 29 as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin is affirmed', D. the Examiner’s rejection of claims 3, 5, 7, 8, 22, 24, 26, and 27 as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and further in view of Shiga is affirmed', and E. the Examiner’s rejection of claims 4 and 23 as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Peart is affirmed', and F. the Examiner’s rejection of claims 6, 12—14, and 25 as unpatentable under 35 U.S.C. § 103(a) over Ahmed in view of O’Loughlin and Shiga and further in view of Engelien-Lopes 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)(1). AFFIRMED-IN-PART 12