Ex Parte Stewart et al

Patent Trial and Appeal Board

Aug 16, 2016

13118762 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/118,762 05/31/2011
45590 7590 08/17/2016
Patent Prosecution Dept.
MURABITO, HAO & BARNES LLP
TWO NORTH MARKET STREET
THIRD FLOOR
SAN JOSE, CA 95113
FIRST NAMED INVENTOR
Thomas E. Stewart
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.
TRAN-Pl57Cl 1198
EXAMINER
RAHMAN, FAHMIDA
ART UNIT PAPER NUMBER
2116
MAILDATE DELIVERY MODE
08/17/2016 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 THOMAS E. STEWART and LOUIS C. KORDUS
Appeal2015-003222
Application 13/118,762
Technology Center 2100
Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Intellectual Venture Funding LLC as the real party in
interest. App. Br. 1.
Appeal2015-003222
Application 13/118,762
THE INVENTION
The disclosed and claimed invention is directed to an adaptive power
control based on post package characterization of integrated circuits. "More
particularly, embodiments of the present invention relate to computer
implemented processes for operating an integrated circuit at an optimal
voltage forthat integrated circuit." Spec. 1:11-14; see also Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
determining, independent of operating voltage, a desirable
operating frequency for an integrated circuit;
accessing, from storage external to a substrate of the
integrated circuit, an indication of voltage corresponding to the
desirable operating frequency, the voltage selected based upon
characteristics that are specific for the integrated circuit and
determined after packaging of the integrated circuit; and
operating the integrated circuit at the voltage.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Soerensen US 2003/0071657 Al Apr. 1 7, 2003
Casto US 6,791,157 Bl Sept. 14, 2004
Ando US 6,792,379 B2 Sept. 14, 2004
Tobias US 7,188,261 Bl Mar. 6, 2007
Burr US 7,941,675 B2 May 10, 2011
Stewart US 7,953,990 B2 May 31, 2011
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REJECTIONS
Claims 1-20 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1--42
of Stewart. Final Act. 3-5.
Claims 1-20 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-36
of Burr in view of Ando. Final Act. 5-6.
Claims 1-3 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ando in view of Casto. Final Act. 7-8.
Claims 4---6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ando in view of Casto and Tobias. Final Act. 9.
Claims 8, 10, and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ando in view of Soerensen. Final Act. 9-11.
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ando in view of Soerensen and Casto. Final Act. 11-12.
Claims 11-13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ando in view of Soerensen and Tobias. Final
Act. 12-13.
Claims 15 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Casto in view of Ando. Final Act. 13-14.
Claims 17-20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Casto, Ando, and Tobias. Final Act. 14--15.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
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considered all evidence presented and all arguments made by Appellants. 2
We do not consider arguments that Appellants could have made but chose
not to make in the Briefs so that we deem any such arguments as waived.
See 37 C.F.R. § 41.37(c)(l)(vii); see also Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) ("Filing a Board appeal does not, unto
itself, entitle an appellant to de nova review of all aspects of a rejection. If
an appellant fails to present arguments on a particular issue ... the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection."). We are not persuaded by Appellants' arguments regarding
claims 1-20, and we incorporate herein and adopt as our own: ( 1) the
findings and reasons set forth by the Examiner in the Final Office Action
from which this appeal is taken (Final Act. 3-15), and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments (Ans. 15-27). We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments for emphasis as follows.
Claims 1-3 and 7 (§ 103 Rejection)
Teaching Away (Arguments A, E, F, G, and H)
Appellants argue both Ando and Casto teach away from the claimed
invention and, therefore, the rejection of the claims over Ando and/or Casto
is improper. See App. Br. 9-11, 18-24; Reply Br. 9-11, 25-38. For
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed July 16, 2014 );
the Reply Brief (filed Jan. 6, 2015); the Final Office Action (mailed Feb. 11,
2014); and the Examiner's Answer (mailed Nov. 17, 2014) for the respective
details.
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example, Appellants argue that although Ando teaches placing a reference
table on the integrated circuit chip, claim 1 recites that the data is accessed
"from storage external to a substrate of the integrated circuit." App. Br. 9-
11. According to Appellants, "the rejection and the Examiner's Answer do
not consider this fundamental teaching and principle of operation of the
primary art, in favor of a directly opposite teaching of the secondary
reference." Reply Br. 10. Appellants cite W.L. Gore & Associates, Inc. v.
Garlock, Inc., 721F.2d1540 (Fed. Cir. 1983), which holds that "[a] prior art
reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention" and In re
Haruna, 249 F.3d 1327 (Fed. Cir. 2001), discussing teaching away, in
support of their argument. See, e.g., App. Br. 9-11; Reply Br. 9-11.
We find Appellants have not established the prior art teaches away
from the claimed invention because Appellants have not demonstrated that
"a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). "'A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant."' Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332
(Fed. Cir. 2008) (quoting Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006)).
The passages cited by Appellants, which discuss a preferred
embodiment, "does not teach away ... [as] it merely expresses a general
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preference for an alternative invention but does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed." DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (internal citation omitted). For example, Appellants do not
identify any passage in Ando that explicitly discredits or discourages storing
the data in a storage external to a substrate of the integrated circuit, and the
cited statement does no more than articulate a preference for storage internal
to the substrate of the integrated circuit. Similarly, the various sections cited
by Appellants regarding Casto do not explicitly discredit or discourage the
claimed invention but merely discuss an embodiment that has different
features than those claimed in Applicants' invention. That stated preference
in the prior art is insufficient to teach away from the claimed invention. See
id.; In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
Modification Would Change the Principle of Operation (Arguments B
andC)
Appellants further argue modifying Ando so that the storage is
external to the substrate of the integrated circuit would change the principle
of operation of Ando. App. Br. 12-14 (citing In re Ratti, 270 F.2d 810
(CCPA 1959); Reply Br. 14--19 (same). In further support of this argument,
Appellants assert the rejection is silent as to how the modification is to be
made (App. Br. 13) and Ando and Casto teach two mutually exclusive
systems that may not be combined as proposed (App. Br. 15).
We are not persuaded Appellants have established that the proposed
change would result in such a change in the principle of operation of the
prior art as to make the claimed invention nonobvious. If a proposed
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modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification. In re Gordon, 733 F .2d 900,
902 (Fed. Cir. 1984); see also Ratti, 270 F.2d at 813 (holding an invention
was not obvious where the proposed modification would require "a change
in the basic principles under which the [primary reference] was designed to
operate"). For example, in Gordon, our reviewing court found the proposed
modification would result in a device that would not work:
Indeed, if the French apparatus were turned upside down,
it would be rendered inoperable for its intended purpose. The
gasoline to be filtered would be trapped in pocket 9, and the water
French seeks to separate would flow freely out of the outlet 5.
Further, unwanted dirt would build up in the space between the
wall of shell 1 and screen 21, so that, in time, screen 21 would
become clogged unless a drain valve, such as pet-cock 13, were
re-introduced at the new "bottom" of the apparatus. See In re
Schulpen, 390 F.2d 1009, 1013, 157 USPQ 52, 55 (CCPA 1968).
In effect, French teaches away from the board's proposed
modification.
733 F .2d at 902.
We do not find changing the location of the storage from internal to
the integrated circuit to a storage external to the integrated circuit is such a
change in principle. Unlike in Ratti and Gordon, the function of the
elements remains the same and, as discussed supra, the primary reference
does not teach away from the claimed invention. Moreover, as discussed
infra, unlike in Gordon and Ratti, the Examiner finds sufficient reason for
the person of ordinary skill in the art to have made the proposed
modification.
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Additionally, although Appellants state that "[t]he proposed
modification changes at least this principle of operation of Ando,"
Appellants provide no evidence in support of their argument. See App.
Br. 14. "Attorney's argument in a brief cannot take the place of evidence."
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
We are also not persuaded by Appellants' argument that the Final
Office Action does not specify how to incorporate the features of Casto into
Ando. See App. Br. 13. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Instead, the relevant issue is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art." Id.
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
Appellants have not offered any evidence that the proposed
modification to Ando would have been "uniquely challenging or difficult for
one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485F.3d1157, 1162 (Fed. Cir. 2007) (citingKSRint'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007)). Absent such evidence, we "take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ," and find a person of ordinary skill in the art would
overcome those difficulties within their level of skill. KSR, 550 U.S. at 418;
see also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton.").
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Motivation to Modify (Argument D)
Appellants also argue the Examiner erred because there is no
motivation to modify Ando in view of Casto in the manner proposed in the
Final Office Action. App. Br. 16-17; Reply Br. 20-24. Appellants argue
that the proposed modification would "increase the complexity and decrease
the function" of the design disclosed in Ando. App. Br. 17. Appellants
further argue, as a matter of law, that "[r]egardless of the type of disclosure,
the prior art must provide some motivation or suggestion to one of ordinary
skill in the art to make the claimed invention in order to support a conclusion
of obviousness." App. Br. 17 (emphasis added) (citing In re Vaeck, 947
F.2d 488, 493 (Fed. Circ. 1991) ("'[A] proper analysis under§ 103 requires,
inter alia, consideration of ... whether the prior art would have suggested
to those of ordinary skill in the art that they should make the claimed
composition or device, or carry out the claimed process'") (emphasis
added)).
The Examiner finds Casto provides a motivation for using its external
storage and that provides the motivation to modify Ando:
One ordinary skill would be motivated to provide external
storage storing the frequency voltage characteristics (as taught in
Casto) in Ando so that additional processing steps need not be
performed on die (lines 5-12 of col 2 of Casto). Casto was
motivated to program the fuse external to the chip die since it is
easier and more convenient to program the fuse within package
than the chip die itself.
Final Act. 8; see also Ans. 18 ("When information is provided in off-chip
storage, the burden of die programming is removed." (citing Casto 2:7-12)).
Although the Examiner notes there are some benefits associated with on-
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chip storage, the Examiner further finds "the off-chip storage is popular
because of the flexibility and die space saving." Ans. 18.
In KSR, the Supreme Court rejected the rigid application of the
teaching, suggestion, or motivation (TSM) test in favor of a more expansive
and flexible approach to the determination of obviousness. KSR, 550 U.S. at
415. In KSR, the Court stated, "the 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." Id. at 418. Thus, to the extent
Appellants' argument is premised on strictly applying the TSM test, it is not
persuasive of Examiner error.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418. Although Appellants contend
the Examiner failed to provide articulated reasoning as to the proposed
modification at issue, Appellants do not persuasively rebut the reasoning
provided by the Examiner (Final Act. 8; Ans. 18).
Furthermore, we are not persuaded by Appellants' argument the
Examiner erred because the rejection "ignores the cost associated with
additional processing on the package, incurred by Casto." See Reply Br. 24.
To the contrary, the Examiner considered both the advantages and
disadvantages associated with modifying the location of the storage (see
Ans. 18), and Appellants' attorney argument is insufficient to persuade us of
Examiner error.
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Specific Limitations (Arguments E, G, and H)
Finally, Appellants argue Casto does not teach or suggest several
limitations recited in claim 1. Specifically, Appellants argue Casto does not
teach or suggest "characteristics that are specific for the integrated circuit
and determined after packaging of the integrated circuit," "determining,
independent of operating voltage, a desirable operating frequency for an
integrated circuit," and a stored "indication of voltage corresponding to the
desirable operating frequency," as recited by claim 1. App. Br. 18-19, 22-
24; Reply Br. 25-28, 31-35.
The Examiner finds Ando teaches each of the limitations Appellants
argue is not taught by Casto. Final Act. 7; Ans. 18-21.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. Keller, 642 F.2d at 425.
Because Appellants argue the references individually and do not address the
Examiner's findings that Ando teaches each of the disputed limitations, we
are not persuaded by Appellants' arguments that the Examiner erred.
Appellants also argue the Examiner "concedes that Casto was not
considered in this rejection" in contravention to Gore v. Garlock. Reply
Br. 31. We are not persuaded by Appellants' argument the Examiner erred.
The Examiner did not indicate the entirety of the reference was not
considered, including any portions that would teach away from the claimed
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invention. Instead, the Examiner merely indicated that Casto was not relied
on for a specific claim limitation. See Ans. 20-21. That is not a statement
that the entirety of the reference was not considered. Moreover, as discussed
supra, Casto does not teach away from the claimed invention.
According! y, we sustain the Examiner's rejection of claim 1, along
with the rejection of claims 2, 3, and 7, which are not argued separately. See
Ans. 25.
Claims 4-6 (§ 103 Rejection)
Dependent Claims (Argument I)
Appellants argue claims 4---6 are patentable due to their depending
from claim 1 and for the same reasons given in Arguments A-D and F.
App. Br. 25. For the same reasons discussed above, we are not persuaded
that the Examiner erred.
Teaching Away (Argument J)
Appellants also argue Tobias teaches away from Ando because Ando
teaches using characteristics of a specific integrated circuit and Tobias
teaches using sample data for a representative group of integrated circuits.
App. Br. 26-27; Reply Br. 36-38. Appellants rely on the following sentence
from Tobias: "Alternatively (and more commonly), Schmoo Plot 602 can
contain operational data obtained by deriving a Schmoo Plot for a sample of
devices of the same class, for example of the same processor revision and
speed grade." Tobias 7:12-15 quoted by App. Br 26 (emphasis added in
Appeal Brief). Appellants also argue the Examiner "concedes that the whole
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of Tobias was not considered in this rejection" in contravention to Gore v.
Garlock. Reply Br. 3 6.
The Examiner did not rely on Tobias for the data located in the
storage; instead, the Examiner relied on Tobias only for findings related to
the additional limitations of claims 4---6 relating to the stored characteristics.
Final Act. 9. The Examiner further finds Tobias teaches in at least three
locations-including the sentence immediately preceding the sentence cited
by Appellants-that the embodiments "can contain voltage/frequency pairs
for individual device (i.e., processor)" and not just use data from a sample of
devices in the same device class. Ans. 22 (citing Tobias 7:10-15, 3:33-37,
7 :40-50) (emphasis omitted).
Appellants have not persuaded us the Examiner erred. Tobias
discloses in relevant part:
According to an embodiment of the invention, Schmoo Plot 602
can contain the exact operational data for the attached device.
ii.Jternatively (and more commonly), Schmoo Plot 602 can
contain operational data obtained by deriving a Schmoo Plot for
a sample of devices of the same class, for example of the same
processor revision and speed grade.
Tobias 7:9-15 (emphasis in original omitted, emphasis added). As the
emphasized sentences make clear-a sentence that Appellants do not
address (see App. Br. 26-27; Reply Br. 36-38}-Tobias can be used with
operational data for the specific integrated circuit and not just operational
data relating to samples of devices in the same class. While the use of
sample data may be the more commonly used approach, that stated
description of the common practice is insufficient to teach away from the
claimed invention. See DePuy, 567 F.3d at 1327; Fulton, 391 F.3d at 1201.
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To the contrary, the entirety of the reference shows that a person of ordinary
skill in the art was aware of both choices and the selection of individual data
or sample data was just a matter of routine design choice. See In re Rice,
341 F.2d 309, 314 (CCPA 1965) (Absent "factual evidence of any critical
relationship in position or size, or of any difference in effect or
result ... [ s ]uch [routine] changes in design of the various features are no
more than obvious variations consistent with the principles known in that
art."). "If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability." KSR, 550 U.S. at 417.
Moreover, we disagree with Appellants that the Examiner performed
an improper review of Tobias. See Reply Br. 36. Instead, the Examiner
merely indicated on which claim limitations the Examiner was relying on
Tobias:
Examiner disagrees. Tobias is not relied upon for providing
correspondence between the voltage/frequency pairs and a
specific, individual processor in the rejection. Instead, Tobias is
relied upon for temperature measurement of the IC when
determining voltage-frequency. Ando's test is temperature
dependent (lines 10-15 of col 4). As Ando performs the test for
various temperature (lines 10-18 of col 4), one ordinary skill
would be able to measure the temperature of IC as taught in
Tobias, to conduct the test of Ando.
Ans. 22. Therefore, we are not persuaded by Appellants' argument the
Examiner erred.
Accordingly, we sustain the Examiner's rejection of claims 4---6.
Claims 8, 10, and 14 (§ 103 Rejection)
Does Not Teach/Teaches Away (Argument K)
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Appellants argue Soerensen does not teach or suggest "first software
for determining an operating frequency independent of operating voltage" as
recited by claim 8. App. Br. 28-29; Reply Br. 39--43. According to
Appellants, Soerensen teaches monitoring software that determines a current
clock frequency that is dependent on the present-time operating voltage. Id.
Therefore, Appellants contend Soerensen teaches away from the claimed
invention. App. Br. 29.
The Examiner finds Ando teaches or suggests a first component "for
determining an operating frequency independent of operating voltage," as
recited in claim 8. Final Act. 9-10 (citing Ando 2:50-61). Because Ando
does not explicitly state the first component/monitor circuit 7 and control
circuit 9 has software, the Examiner relies on Soerensen, and finds
Soerensen teaches circuits that operate by software. Final Act. 10-11. The
Examiner further finds Soerensen teaches determining the frequency
independent on the operating voltage because the frequency is not
determined based on the operating voltage. Final Act. 10-11; Ans. 23-24.
We are not persuaded by Appellants' arguments the Examiner erred.
First, Appellants' argument is premised on the teachings of Soerensen alone.
However, the test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. Keller, 642
F.2d at 425; see also Merck, 800 F.2d at 1097.
Second, we agree with the Examiner that Soerensen teaches
determining the frequency independent on the operating voltage because the
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frequency is not determined based on the operating voltage. Soerensen
discloses:
As the computational demands on a processor vary with
time, there may be opportunities to reduce both the clock signal
frequencies and the voltage level applied to the processor (i.e.,
the processor may be transitioned into a lower power state).
Thus, the power consumption of the device can be dynamically
adjusted to reflect the processing requirements of the
processor. Accordingly, one embodiment according to the
present invention includes identifying a clock frequency
requirement of a processor and adjusting the voltage supplied to
the processor to support the identified clock frequency
requirement.
Soerensen i-f 27 (emphasis added). Paragraph 27 explicitly teaches
determining what frequency is needed based on the processing requirements
of the processor. Contrary to Appellants' assertions, paragraph 27 does not
teach or suggest using a frequency determination based on the current
operating voltage. We are not persuaded of Examiner error because
Appellants' argument does not address the reasoning relied on by the
Examiner-specifically the reliance on Soerensen i-f 27 (Ans. 23-24}-and,
thus, does not persuasively rebut the rejection on appeal.
Furthermore, we are not persuaded by Appellants' argument that
Soerensen teaches away from the claimed invention. First, for the reasons
discussed above, we disagree with Appellants' argument that Soerensen
teaches determining a frequency based on present-time operating voltage.
Second, even if Appellants were correct, merely stating a preference in the
prior art is insufficient to teach away from the claimed invention. See
DePuy, 567 F.3d at 1327; Fulton, 391 F.3d at 1201. Appellants have failed
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to identify where Soerensen criticizes, discredits, or otherwise discourages
investigation into the invention claimed. See DePuy, 567 F.3d at 1327.
Teaches Away/Change of Principle (Argument L)
Relying on the same contention discussed above, Appellants also
argue that the combination of prior art is improper in view of Soerensen
changing the principle of operation of Ando. App. Br. 30. Appellants also
repeat the argument that Soerensen teaches away from the claimed
invention. Id.
We are not persuaded that using software in a circuit is such a change
in principle that would render the reference inoperable for its intended
purpose. See Ratti, 270 F.2d at 813. Moreover, although Appellants state
"modification in view of Soerensen must change at least this operating
principle of Ando, " Appellants provide no evidence in support of their
argument. App. Br. 30. "Attorney's argument in a brief cannot take the
place of evidence." Pearson, 494 F.2d at 1405. Therefore, we are not
persuaded that the Examiner erred.
With regard to the Examiner's rejection of claims 10 and 14,
Appellants rely on Arguments A, B, C, D, and F for claim 1 along with the
arguments discussed above for claim 8. App. Br. 31. For the same reasons
discussed above, we are not persuaded by those arguments that the Examiner
erred.
Accordingly, we sustain the Examiner's rejection of claims 8, 10, and
14.
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Claim 9 (§ 103 Rejection)
Dependent Claim (Argument M)
Appellants argue claim 9 is patentable due to it depending from claim
8 and for the same reasons given in Arguments A-D and F (claim 1) and
Arguments Kand L (claim 8). App. Br. 31. For the reasons discussed
above, we are not persuaded the Examiner erred.
Claims 11-13 (§ 103 Rejection)
Dependent Claims (Argument N)
Appellants argue claims 11-13 are patentable due to their depending
from claim 8 and for the same reasons given in Arguments A-D and F
(claim 1) and Arguments K and L (claim 8). App. Br. 3 2. For the same
reasons discussed above, we are not persuaded the Examiner erred.
Teaches Away/Change of Principle (Arguments 0, P)
Appellants also argue the Examiner erred in rejecting claims 11-13
because Tobias teaches away from Ando. App. Br. 33-34. This is
substantially the same as Appellants' argument regarding claims 4---6
(Argument J). Compare App. Br. 26-27, with App. Br. 33-34. For the
same reasons discussed above in discussing those arguments with regard to
claims 4---6, we are not persuaded the Examiner erred.
Appellants further argue the Examiner erred in rejecting claims 11-13
because "[m]odification of Ando in view of Tobias would change Ando's
principle of operation from using specific characteristics to using sample
data." App. Br. 35.
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Appellants provide no evidence in support of their argument. Id.
"Attorney's argument in a brief cannot take the place of evidence."
Pearson, 494 F.2d at 1405. Therefore, we are not persuaded that the
Examiner erred.
Moreover, Appellants argue Tobias teaches using sample data,
whereas the claimed invention involves using characteristics specific to the
integrated circuit. App. Br. 35. As discussed above in regard to claims 4--6,
we are not persuaded that Appellants' discussion of the prior art it correct.
To the contrary, we agree with the Examiner's findings (Final Act. 12-13)
and further observe Tobias teaches using characteristics specific to the
integrated circuit and not just sample data. See, e.g., Tobias 7:9-15. Thus,
we are not persuaded that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claims 11-13.
Claim 15 and 16 (§ 103 Rejection)
Appellants do not make any arguments directed to claim 15. "If an
appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection-the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection." Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we
summarily sustain the rejection of claim 15.
Appellants argue claim 16 is patentable due to it depending from
claim 15 and for the same reasons given in Arguments A-D and F (claim 1)
and Argument J (claims 4--6). App. Br. 36. Because we determine that the
rejection of claims 1 and 4--6 are not erroneous for the reasons discussed
above, we sustain the rejection of claim 16.
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Claims 17-20 (§ 103 Rejection)
Appellants argue claims 17-20 are patentable due to their depending
from claim 15 and for the same reasons given in Arguments A-D and F
(claim 1) and Argument J (claims 4---6). App. Br. 36. Because we determine
that the rejections of claims 1, 4---6, and 15 are not erroneous for the reasons
discussed above, we sustain the rejection of claim 17-20.
Double Patenting Based on Stewart
Appellants state in the Status of Claims section of the Appeal Brief
the rejection of claims 1-20 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1-12 of Stewart "is held
in abeyance and not appealed herein." App. Br. 3.
Appellants have not identified any errors in the Examiners findings
regarding this ground of rejection, and, as discussed earlier, we will not
"unilaterally review those uncontested aspects of the rejection." Frye, 94
USPQ2d at 1075. Accordingly, we summarily sustain the Examiner's
rejection of claims 1-20 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1--42 of Stewart.
Double Patenting Based on Burr in view of Ando
Ando Teaches Away (Argument R)
Appellants argue Ando teaches away from the claimed invention
because Ando teaches an integrated circuit having reference data stored on
the substrate of the integrated circuit. App. Br. 37-38. As discussed above
with regard to claim 1, because Ando does not teach away from the claimed
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invention, we are not persuaded by Appellants' arguments that the Examiner
erred.
Burr Teaches Away (Argument S)
Appellants argue Burr teaches away from the claim invention. App.
Br. 39--40; Reply Br. 48. Specifically, Appellants argue claims 3, 4, 30, and
31 teach away from determining the characteristics of the specific integrated
circuit after packaging. Id. According to Appellants, those claims require
the measurement to occur prior to the packaging of the individual integrated
circuits. Id.
The Examiner finds claims 1-20 are not patentably distinct from Burr
claims 1, 10-13, 15, 16, 20, and 28 in view of Ando. Final Act. 5---6. More
specifically, the Examiner provides a claim chart comparing application
claim 1 with Burr claim 15 and supplements the chart with a discussion of
the teachings of Ando. Id. The Examiner further finds the other pending
claims of the instant application to be obvious over specifically identified
claims of Burr:
Claims 1 and 8 of the pending application are obvious over
claims 1 and 11 of [Burr], claims 2, 9 and 16 of the pending
application are obvious over claims 10 and 20 of [Burr], claims
3, 10 and 19 of the pending application are obvious over claims
11, 12, 13 and 28 of [Burr], claims 4, 5, 11, 12, 17, 18 and 20 of
the pending application are obvious over claim 13 and claim 28
of [Burr], claims 6, 7, 13 and 14 of the pending application are
obvious over claims 15 and 16 of [Burr].
Final Act. 6.
Although the Examiner notes Burr claim 5 recites determining the
characteristics of the circuit after packaging, the Examiner finds Ando
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"teaches determining frequency-voltage characteristic after packaging of the
integrated circuit." Final Act. 6 (citing Ando 3:48-53). The Examiner
determines that a person of ordinary skill in the art would have
"determine [ d] the voltage-frequency characteristic after packaging of the
integrated circuit, since testing after packaging provides more accurate
data." Final Act. 6
We are not persuaded by Appellants' arguments the Examiner erred.
Double patenting is determined by comparing a specific claim in the instant
application to a specific claim in an issued patent or co-pending application:
Generally, an obviousness-type double patenting analysis
entails two steps. First, as a matter of law, a court construes the
claim in the earlier patent and the claim in the later patent and
determines the differences. Georgia-Pacific Corp. v. United
States Gypsum Co., 195 F.3d 1322, 1326, 52 USPQ2d 1590,
1593 (Fed.Cir.1999). Second, the court determines whether the
differences in subject matter between the two claims render the
claims patentably distinct. Id. at 1327, 52 USPQ2d at 1595. A
later claim that is not patentably distinct from an earlier claim in
a commonly owned patent is invalid for obvious-type double
patenting. In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226,
1229 (Fed.Cir.1998). A later patent claim is not patentably
distinct from an earlier patent claim if the later claim is obvious
over, or anticipated by, the earlier claim. In re Langi, 759 F.2d
at 896, 225 USPQ at 651 (affirming a holding of obviousness-
type double patenting because the claims at issue were obvious
over claims in four prior art patents); In re Berg, 140 F.3d at
1437, 46 USPQ2d at 1233 (Fed.Cir.1998) (affirming a holding
of obviousness-type double patenting where a patent application
claim to a genus is anticipated by a patent claim to a species
within that genus).
Eli Lilly & Co. v. Barr Laboratories, Inc., 251F.3d955, 968 (Fed. Cir.
2001) (footnote omitted) (emphasis added). Appellants have not cited any
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cases indicating that we can-let alone must---consider claims in the patent
that are not the basis for the double-patenting rejection.
In this case, the rejection is based on Burr claims 1, 10-13, 15, 16, 20,
and 28. Final Act. 6. None of those claims are identified by Appellants as
teaching away from the claimed invention. Accordingly, we are not
persuaded that the Examiner erred.
Second, as discussed above, teaching away requires more than
disclosing or claiming the opposite of what is claimed in the claims on
appeal. Instead, teaching away requires the reference to criticize, discredit,
or otherwise discourage investigation into the invention claimed. DePuy,
567 F.3d at 1327. We are not persuaded by Appellants' argument the cited
claims teach away as opposed to merely claiming a preferred embodiment.
Accordingly, we sustain the Examiner's rejection of claims 1-20 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over the claims of Burr in view of Ando.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-2 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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