Ex Parte Baumgartner et al

Board of Patent Appeals and Interferences

May 4, 2012

11866110 (B.P.A.I. May. 4, 2012)

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.
11/866,110 10/02/2007 Steven J. Baumgartner ROC920060091US2 6539
55992 7590 05/04/2012
IBM CORPORATION
3605 HIGHWAY 52 NORTH
DEPT. 917
ROCHESTER, MN 55901-7829
EXAMINER
ENGLUND, TERRY LEE
ART UNIT PAPER NUMBER
2816
MAIL DATE DELIVERY MODE
05/04/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN J. BAUMGARTNER, PATRICK L. ROSNO, and
DANA M. WOESTE
____________
Appeal 2009-015143
Application 11/866,110
Technology Center 2800
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015143
Application 11/866,110

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I. STATEMENT OF THE CASE
Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-18. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a machine readable medium that stores a design
structure used in a design process. According to Appellants, the design
structure is directed to a current mirror circuit that includes a reference
current source, a reference transistor, at least one mirror transistor, and a
ratioed body bias feedback unit. See Spec. ¶¶ [0002] and [0012].
Illustrative Claim
1. A design structure embodied in a machine readable
medium used in a design process, the design structure
comprising a current mirror circuit, that includes:
a. a reference current source, having an output, that
generates a reference current;
b. a reference transistor, having a first node having a first
node voltage that is coupled to the output of the reference
current source, a gate that is coupled to the first node, a
second node coupled to a common voltage and a body;
c. at least one mirror transistor, having a gate coupled to the
first node, a source, a drain and a body; and
d. a ratioed body bias feedback unit, responsive to the first
node voltage, that generates a body bias voltage coupled
to the body of the reference transistor and the body of the
at least one mirror transistor, the ratioed body bias
feedback unit configured to adjust the body bias voltage
in relationship to the common voltage so that the
reference transistor and the at least one mirror transistor
each have a threshold voltage within a predefined range.

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Application 11/866,110

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Prior Art Relied Upon
McGowan US 2003/0030474 A1 Feb. 13, 2003

Rejections on Appeal
Claims 1-18 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3.
Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by McGowan. Ans. 3-4.
Examiner’s Findings and Conclusions
The Examiner finds that the claimed machine readable medium only
stores data representing the current mirror circuit. Ans. 3. To support this
finding, the Examiner references multiple disclosures in the present
Specification, including: 1) the design structure comprises a circuit in the
form of schematics or HDL, a hardware descriptive language; 2) the design
structure may be a text file or a graphical representation of the circuit; and 3)
the design structure may comprise information. Ans. 5. Moreover, the
Examiner acknowledges that while the circuit itself might have
functionality, the data representing the circuit does not. Ans. 3. The
Examiner also finds that dependent claims 3 and 12 refer to the data stored
on the claimed machine readable medium as a “data format.” Id.
Consequently, the Examiner finds that the data representing the current
mirror circuit amounts to non-functional descriptive material and, therefore,
is directed to non-statutory subject matter under 35 U.S.C. § 101. Ans. 3
and 5. Further, the Examiner finds that Appellants’ reference to three U.S.
patents, each of which recite a “design structure” in the claims, are unrelated
to the present patent application. Ans. 5.
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Application 11/866,110

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Appellants’ Contentions
Appellants contend that the “play back” of a design structure results in
the creation of a specific circuit having specific functionality. App. Br. 7.
Consequently, Appellants argue that when the claimed “design structure” is
played back on a fabrication facility computer, it will permit the
functionality of the data structure to be realized—which in turn indicates that
the claims recite functional descriptive material. App. Br. 8. As such,
Appellants allege that the present claims are directed to statutory subject
matter under 35 U.S.C. § 101. Id. Further, Appellants contend that the U.S.
Patent and Trademark Office (“USPTO”) has issued patents that use the
“design structure” language as claimed and, therefore, it would be consistent
for the Board to decide that the present claims are statutory as well. App.
Br. 8-9. In response to the Answer, Appellants argue that the Examiner fails
to respond substantively to the arguments set forth in the Appeal Brief.
Reply Br. 1-2.

II. ISSUE
Did the Examiner err in finding that claims 1-18 are directed to non-
statutory subject matter under 35 U.S.C. § 101? In particular, the issue turns
on whether “a design structure” is merely a compilation or arrangement of
data that is only nominally tied to an article of manufacture.

III. ANALYSIS
Claim Construction
It is well settled that claim construction is a question of law that we
review de novo. In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994)
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(en banc). Consequently, we begin our analysis by considering the scope
and meaning of the claim term “a design structure,” which must be given its
broadest reasonable interpretation consistent with Appellants’ disclosure.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that during examination “claims
must be interpreted as broadly as their terms reasonably allow”).
Appellants’ Specification states that “[d]esign structure 320 may be
contained on one or more machine readable medium. For example, design
structure 320 may be a text file or a graphical representation of circuit 100.”
Spec. ¶ [0023]. Further, Appellants’ Specification states that:
[d]esign structure 390 resides on a storage medium in a data
format used for the exchange of layout data of integrated
circuits…. Design structure 390 may comprise information
such as, for example, test data files, design content files,
manufacturing data, layout parameters, wires, levels of metal,
vias, shapes, data for routing through the manufacturing line,
and any other data required by a semiconductor manufacturer to
produce an embodiment of the invention as shown in FIG. 2.

Spec. ¶ [0025].
Upon reviewing Appellants’ Specification for context, we find that the
claim term “a design structure” may be broadly, but reasonably construed as
merely a text file, an image, or simply data. With this claim construction in
mind, we turn to the merits of the Examiner’s rejections under §§ 101 and
102(b).
35 U.S.C. § 101 Rejection
We do not find error in the Examiner’s rejection of claims 1-18 as
being directed to non-statutory subject matter. At the outset, we note that
Appellants’ Specification is silent with respect to what constitutes “a
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machine readable medium.” Therefore, since the broadest reasonable
interpretation of “a machine readable medium” encompasses a transitory,
propagating signal, the claims are directed to non-statutory subject matter.1
Notwithstanding that the present claims cover a signal per se, we find that in
light of our claim construction supra, the claimed “design structure
embodied in a machine readable medium” is not capable of causing
functional change to a computer because the design structure amounts to
nothing more than a compilation or arrangement of data (i.e., a text file or
simply data). See Manual of Patent Examining Procedure § 2106.01(I)
(Rev. 8, July 2010); see also In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed.
Cir. 1994).
Moreover, we note that the nominal recitation to “a machine readable
medium” in the preamble does not limit the body of independent claim 1 as
it only states the claimed invention’s purpose or intended use. See Catalina
Marketing Int'l, Inc., v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002).2 Additionally, even if the “machine readable medium” in the

1 The U.S. Patent and Trademark Office has issued the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium … typically covers forms of
nontransitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media, particularly when the specification is
silent. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFF. GAZ. U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010)
(citation omitted).
2 See also Am. Med. Sys., Inc. v. Biolitec, 618 F.3d 1354, 1358 (Fed. Cir.
2010) (citations omitted) (noting that a preamble that “merely gives a
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preamble were given weight and thus literally fit within the article of
manufacture category set forth in 35 U.S.C. § 101, that alone is not sufficient
to determine if the claims are directed to statutory subject matter. See In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009). The claims must be
construed in their entirety and, as discussed supra, each claim recites “a
design structure” which is nothing more than a compilation or arrangement
of data.
Appellants’ contention that the USPTO has previously issued patents
that use the “design structure” language (see App. Br. 8-9) presents us with
arguments regarding the impact of other patents with respect to the § 101
rejection of the present claims. The Court of Customs and Patent Appeals,
predecessor court to the Court of Appeals for the Federal Circuit, held that
“[e]ach case is determined on its own merits. In reviewing specific
rejections of specific claims, this court does not consider allowed claims in
other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018 n. 15
(CCPA 1979) (citations omitted). As our reviewing court directs, we will
not consider the allowed claims in other patents when determining whether
the present claims are directed to non-statutory subject matter. It follows
that the Examiner has not erred in finding that claims 1-18 are directed to
non-statutory subject matter under 35 U.S.C. § 101.

descriptive name to the set of limitations in the body of the claim that has
completely set forth the invention” has no separate limiting effect).
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35 U.S.C. § 102(b) Rejection—McGowan
We do not find error in the Examiner’s anticipation rejection of claims
1-18. In light of our claim construction supra, we agree with the Examiner
that the claimed “design structure embodied in a machine readable media”
simply amounts to design related data stored on an article of manufacture.
See Ans. 3-4. We also agree with the Examiner that Appellants cannot rely
solely upon the content or type of data stored on the claimed “machine
readable medium” to patentably distinguish these claims over the prior art of
record. See id. The content or type of such data is non-functional
descriptive material. Case law dictates that the Examiner does not need to
give any patentable weight to this non-functional descriptive material absent
a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material). Since each claim
merely recites design related data—non-functional descriptive material—
these claims fail to distinguish patentably over McGowan. It follows that
the Examiner has not erred in finding that McGowan anticipates claims 1-
18.

V. CONCLUSIONS
1. The Examiner has not erred in rejecting claims 1-18 as being
directed to non-statutory subject matter under 35 U.S.C. § 101.
2. The Examiner has not erred in rejecting claims 1-18 as being
anticipated under 35 U.S.C. § 102(b).
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VI. DECISION
We affirm the Examiner’s decision to reject claims 1-18.
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)(iv).

AFFIRMED

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