Ex Parte Sinanoglu

Patent Trial and Appeal Board

Dec 27, 2017

13368963 (P.T.A.B. Dec. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/368,963 02/08/2012 Ozgur Sinanoglu 219176.US.02-32882-214337 1531
120944 7590 12/29/2017
ANDREWS KURTH KENYON LLP
Attention: Intellectual Property - Patent Docket
450 Lexington Avenue
New York, NY 10017
EXAMINER
KABIR, ENAMUL MD
ART UNIT PAPER NUMBER
2112
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OZGUR SINANOGLU
Appeal 2017-008072
Application 13/368,963
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-008072
Application 13/368,963
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3—13, 15—21, and 23—45. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection.
Appellant’s application relates to the testing of integrated circuits,
specifically, a “test architecture, system, method, and computer-readable
medium for reduced power consumption for the scan testing of flip-flops.”
Spec. 12. In an exemplary testing architecture, a single scan-out channel is
associated with four scan chains, each divided into two regions. Spec. 130;
Fig. 2. A first compactor is placed between the two regions so as to feed the
second region with the compressed response of the first region, and a second
compactor is placed after the second region to propagate the compressed
response of the second region to the scan-out channel. Id. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A test configuration, comprising:
at least one scan-out channel having a plurality of regions;
and
a plurality of identical compactors associated with the
plurality of regions.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang US 2005/0055617 A1 Mar. 10, 2005
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Application 13/368,963
Chandra et al., “Low Power Illinois Scan Architecture for Simultaneous
Power and Test Data Volume Reduction”
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 4, 10, 11, 13, 15, 21, 27, 28, 34, and 40 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Wang.
Claims 5—9, 12, 16—20, 23—26, 29—33, 35—39, and 41—45 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang and
Chandra.
ANALYSIS
The Examiner’s Anticipation Rejection
Claims 1, 3, 4, 10, 11, 13, 15, 21, and27
The Examiner finds Wang discloses all the limitations of independent
claim 1, including “a plurality of identical compactors associated with the
plurality of regions.” Final Act. 4. Appellant contends Wang’s compressors
(i.e., “compactors”) cannot be identical because the number of inputs into
the second compressor 658 is less than the number of inputs into the first
compressor 654. App. Br. 17; Wang, Fig. 6B. Further, Wang’s illustrated
compressor 654 is shown to be wider than the illustrated compressor 658.
See App. 16—17; Wang, Fig. 6B. We are persuaded by Appellant’s
arguments.
The Examiner previously argued that the number of connections to a
device are not descriptive of the device, but are rather external conditions of
the device (see Final Act. 3). Accordingly, the Examiner appears to assert
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Application 13/368,963
compressors 654 and 658 in Wang could be identical, and that compressor
658 simply has fewer connected inputs. Further, we note that the difference
in width between Wang’s compressors 654 and 658 could simply be
illustrative of the different numbers of connected inputs, and not reflective
of the exact architecture of the respective compressors. See Wang, Fig. 6B.
However, as Appellant argues, Wang’s Figure 6B could also be
illustrative of different compressors with different numbers of actual input
ports, and not merely different numbers of connected inputs. App. Br. 18.
We agree with Appellant that if it is the case that Wang’s compressors have
different numbers of actual input ports, they are not identical. See id. Given
the lack of definite disclosure in Wang to support the Examiner’s finding,
and Appellant’s plausible non-anticipating interpretation of Wang, we find
Wang fails to anticipate independent claim 1. In other words, the ambiguity
in Wang’s disclosure regarding whether Wang’s compressors have the same
architecture, but different numbers of connect inputs, or whether Wang’s
compressors have different architectures based on different numbers of
actual input ports, precludes a finding of anticipation. Cf. In re Hughes, 345
F.2d 184, 188 (CCPA 1965) (reversing an anticipation rejection and noting
“a reference ... is good only for that which it clearly and definitely
discloses” and “an ambiguous reference . . . will not support an anticipation
rejection”).
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 13 and 21 which
recited commensurate limitations, and dependent claims 3, 4, 10, 11, 15, and
27. However, we enter a new ground of rejection for claims 1,3,4, 10, 11,
13, 15, 21, and 27, as detailed below.
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Application 13/368,963
Claims 28, 34, and 40
The Examiner also rejects independent claim 28 as anticipated by
Wang. Final Act. 5—6. Claim 28 recites
A test configuration comprising:
at least one scan-out channel having a plurality of regions,
each of the regions including at least one scan cell; and
a plurality of compactors associated with the plurality of
regions, wherein
the compactors comprise a first compactor and a
second compactor,
the regions comprise a first region and a second region,
the first compactor is positioned between the first
region and the second region, and
the second compactor is positioned after the second
region.
Appellant contends Wang does not disclose “at least one scan-out channel,”
as recited in independent claim 28. App. Br. 21—22; Reply Br.
6—7. We are not persuaded by Appellant’s arguments.
In the Answer, the Examiner points to Wang’s line 673 as being a
scan-out channel. Ans. 6. Appellant does not specifically explain why line
673 of Wang fails to disclose “at least one scan-out channel.” Rather,
Appellant merely states “the alleged scan-out channel of Wang pointed to by
the Examiner (e.g., element 673) is simply an output from compressor 2,
which can either be a compactor or a MISR. Indeed, element 673 is
certainly not the same as the scan-out channel recited in independent claims
28, 34, and 40.” Reply. Br. 6—7. We do not find Appellant’s argument
persuasive because it does not provide sufficient reasoning, aside from a
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conclusory statement that Wang’s line 673 is different than the claimed
scan-out channel, to show Wang fails to disclose the disputed feature.
We are, therefore, not persuaded the Examiner erred in rejecting
independent claim 28, and independent claims 34 and 40, which include
limitations of commensurate scope, but were not specifically argued
separately.
The Examiner’s Obviousness Rejection
Claims 5—9, 12, 16—20, and 23—26
The Examiner has not shown Chandra cures the deficiency of Wang
discussed above regarding independent claims 1,13, and 21, from which
claims 5—9, 12, 16—20, and 23—26 depend. Accordingly, we are constrained
by the record to find the Examiner erred in rejecting claims 5—9, 12, 16—20,
and 23—26 for the reasons already discussed with respect to claims 1,13, and
21. However, we enter a new ground of rejection for claims 5—9, 12, 16—20,
and 23—26, as detailed below.
Claims 29—33, 35—39, and 41—45
Appellant contends Chandra fails to teach “the at least one scan-chain
includes a reference chain and at least one shadow chain,” as recited in claim
29 (which depends from claim 28 {supra)). App. Br. 22. Similarly, claim
35 depends from claim 34 and claim 41 depends from claim 40 {supra)
include limitations of commensurate scope. We are not persuaded by
Appellant’s arguments.
We adopt the Examiner’s findings regarding Chandra as our own and
thus, agree with the Examiner that Chandra teaches “the at least one scan-
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chain includes a reference chain and at least one shadow chain.” See Final
Act. 7—8; Ans. 7—9. Specifically, we agree with the Examiner’s
identification of a reference chain and multiple shadow chains in the test
architecture shown in Chandra’s Figure 2. See Ans. 9. We disagree with
Appellant’s interpretation of claim 29 that requires a single scan-chain to
include both a reference chain and a shadow chain. See Reply Br. 8—9. The
language of claim 29 recites “the at least one scan chain includes a reference
chain and at least one shadow chain.” This language encompasses a test
architecture with multiple scan chains, where the multiple scan chains
comprise a reference chain and one or more shadow chains. Chandra’s
Figure 2 discloses this feature, as shown by the Examiner. See Ans. 9.
Appellant further asserts Chandra’s scan chains are not part of a scan-
out channel in accordance with the claim 29 language “the at least one scan-
out channel includes at least one scan-chain.” See Reply Br. 8—9. First, we
note that the Examiner relies on Wang for disclosing a scan-out channel, as
discussed above regarding independent claim 28. See Ans. 6. Second,
Chandra’s Figure 1 suggests feeding scan chains into a scan-out channel.
We are, therefore, not persuaded the Examiner erred in rejecting claim
29, and claims 35 and 41 that are similar in scope and claims 30-33, 36—39,
and 42 45 that depend from claims 29, 35, and 41, respectively, and are not
specifically argued separately.
NEW GROUNDS OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection.
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Claims 1,13, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang. We adopt all of the Examiner’s findings regarding
the rejection of claim 1 as anticipated by Wang (see Final Act. 4), except we
find Wang does not explicitly disclose “a plurality of identical compactors.”
Rather, we find Wang teaches two compressors (i.e., “compactors”) 654 and
658 that appear to utilize different numbers of respective inputs. Wang,
61—62; Fig. 6B. We conclude it would have been obvious to a person
having ordinary skill in the art to employ two identical compressors in
Wang, but to connect fewer inputs to compressor 658 than to compressor
654. One would have recognized that such a test architecture would be
simpler and more economical than designing and building two different
compressors with distinct architectures including different numbers of actual
input ports, and would have thus been motivated to make this variation of
Wang’s test architecture. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it.”).
Moreover, using two identical compressors would not have been
beyond the level of ordinary skill in the art and would have had a reasonable
expectation of success. That is, Wang discloses a compressor can be “a
compactor comprising one or more combinational logic gates” (Wang, | 60),
and building the obvious variation described above would require no more
than using two of the same combinational logic-based compressors, rather
than designing two different compressors. Further, one would expect the
second, identical compressor to work the same as the first compressor. We
find independent claims 13 and 21 would have been obvious for the same
reasons as independent claim 1.
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As the Examiner has relied on Wang to anticipate the limitations in
dependent claims 3,4, 10, 11, 15, and 27 (see Final Act. 6), and Appellant
has not specifically challenged those findings, we find dependent claims 3,
4, 10, 11, 15, and 27 to also be obvious over Wang. See In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982) (“evidence establishing lack of all novelty
in the claimed invention necessarily evidences obviousness”).
We also enter a new ground of rejection for dependent claims 5—9, 12,
16—20, and 23—26 as obvious over Wang and Chandra. Although the
Examiner rejected claims 5—9, 12, 16—20, and 23—26 as obvious over Wang
and Chandra (Final Act. 7—9), we find it proper to designate it as a new
ground here based on our new finding that the “plurality of identical
compactors” feature of independent claims 1,13, and 21, from which claims
5—9, 12, 16—20, and 23—26 depend, would have been obvious over Wang,
rather than explicitly disclosed by Wang.
CONCFUSIONS
Under 35 U.S.C. § 102(b), the Examiner erred in rejecting claims 1, 3,
4, 10, 11, 13, 15,21, and 27, but did not err in rejecting claims 28, 34, and
40.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 5—9,
12, 16—20, and 23—26, but did not err in rejecting claims 29-33, 35—39, and
41—45.
We enter new grounds of rejections for claims 1, 3—13, 15—21, and
23—27 under the provisions of 37 C.F.R. § 41.50(b).
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DECISION
We reverse the Examiner’s decision to reject claims 1, 3—13, 15—21,
and 23—27, and affirm the Examiner’s decision to reject claims 28-45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
NEW GROUNDS OF REJECTION
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