Ex Parte Sinykin

Patent Trial and Appeal Board

Apr 28, 2016

13344851 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,851 01/06/2012
57299 7590 05/02/2016
Kathy Manke
A vago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
FIRST NAMED INVENTOR
Joshua P. Sinykin
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.
11-0464 3301
EXAMINER
AISAKA, BRYCE M
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
kathy.manke@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 JOSHUA P. SINYKIN
Appeal2014-005591
Application 13/344,851
Technology Center 2800
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1--4, 8-11, and 15-18. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Examiner has withdrawn the rejection of claims 5-7, 12-14, 19, and
20. (Ans. 6.)
Appeal2014-005591
Application 13/344,851
The subject matter on appeal is generally directed "generally to circuit
design/testing, and more specifically relates to acquiring internal signals of a
circuit by analyzing the circuit's design and programming test logic of the
circuit to output desired internal signals based upon the analysis." (Spec.
iT 1.)
Details of the appealed subject matter are recited in representative
claim 1, reproduced below:
1. A method operable as programmed instructions on a
computer system, the method comprising:
acquiring, by use of the computer system, a Register
Transfer Level (RTL) representation of an electronic circuit, the
circuit implementing operational logic for performing tasks, the
circuit further implementing test logic that may be externally
programmed for providing one or more output signals
corresponding to internal operational signals;
analyzing, via the computer system, the RTL
representation to identify test multiplexers (MUXs) having
registers for implementing the test logic;
correlating, via the computer system, test register values
for the test MUXs with outputs corresponding to the internal
operational signals, based upon the RTL representation;
selecting a desired internal operational signal for
acquisition; and
programming, via the computer system, the test registers
of the test MUXs of the circuit based on the correlated test
register values to acquire the selected internal operational signal
and to apply the acquired signal as one or more output signals.
(App. Br. 14 (Claims App'x).)
The Examiner maintains the following rejection (Ans. 2-5):
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Appeal2014-005591
Application 13/344,851
Claims 1--4, 8-11, and 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Hom et al. (US 2010/0169856 Al; published July 1, 2010
(hereinafter "Hom").
The Examiner has withdrawn the rejection of claims 5-7, 12-14, 19,
and 20 under 35 U.S.C. § 103(a) as unpatentable over Hom in view of Siu et
al. (US 2006/0149 803 A 1; published July 6, 2006) (hereinafter "Siu").
(Ans. 6.)
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellant, we concur with
Appellant that the Examiner has not carried the burden of establishing
obviousness regarding the subject matter recited in claims 1--4, 8-11, and
15-18 \vithin the meaning of 35 U.S.C. § 103(a). ii .. ccordingly, we reverse
the Examiner's§ 103(a) rejections of these claims for the reasons set forth in
the Appeal Brief. We add the following. 2
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The] [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a primafacie case ofunpatentability."); see also In re Jung, 637
F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while "the applicant
2 We limit our discussion to independent claims 1, 8, and 15.
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Appeal2014-005591
Application 13/344,851
must identify to the Board what the examiner did wrong, ... the examiner
retains the burden to show invalidity"). As explained by Appellant, Hom
does not teach analyzing the Register Transfer Level (RTL) representation to
identify test multiplexers having registers for implementing the test logic
and correlating the test register values for the test multiplexers with outputs
corresponding to the internal operational signals, based upon the RTL
representation as required by independent claim 1. 3 (Br. 8-9.)
The Examiner asserts Hom discloses gate level netlist which is an
RTL representation. (Ans. 8.) The Examiner further contends Hom
discloses:
testing and monitoring of the circuit via scan-in or scan-out.
The testing/monitoring test sequences necessarily include test
MUXs to be included in the circuit because the circuit will have
different modes of operation and there must be a way to set the
different modes or determine which inputs circuit elements
should use.
(Ans. 8 (citing Hom i-fi-f 10, 13, 14).)
While a netlist may be an RL T representation, the Examiner has not
explained adequately why "the testing/monitoring test sequences necessarily
include test MUXs." Hom's paragraph 10, cited by the Examiner, provides
a discussion of a mux-scan testing. This disclosure does not necessarily
indicate testing of multiplexers having registers for implementing the test
logic and correlating the test register values for the test multiplexers with
3 Similar language appears in independent claims 8 and 15.
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Appeal2014-005591
Application 13/344,851
outputs corresponding to the internal operational signals, based upon the
RTL representation as required by the independent claims.
Accordingly, on this record, we concur with Appellant that the
Examiner's evidence and explanation are not sufficient to establish
obviousness of the subject matter recited in claims 1--4, 8-11, and 15-18
within the meaning of 35 U.S.C. § 103(a). We therefore do not sustain the
rejections of these claims.
DECISION
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejection of claims 1--4, 8-11, and 15-18 is reversed.
REVERSED
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