Ex Parte Harris et al

Patent Trial and Appeal Board

Jan 3, 2013

11522733 (P.T.A.B. Jan. 3, 2013)

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.
11/522,733 09/18/2006 Edward B. Harris Harris 33-7-6 4949
47386 7590 01/03/2013
RYAN, MASON & LEWIS, LLP
1300 POST ROAD
SUITE 205
FAIRFIELD, CT 06824
EXAMINER
WHITMORE, STACY
ART UNIT PAPER NUMBER
2825
MAIL DATE DELIVERY MODE
01/03/2013 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 EDWARD B. HARRIS, CYNTHIA C. LEE, and
GERARD ZANESKI
________________

Appeal 2010-005509
Application 11/522,733
Technology Center 2800
________________

Before SCOTT R. BOALICK, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
1

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18, all the claims pending in the application. App.
Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).

1
Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed August 6, 2009; the Examiner’s
Answer (Ans.) mailed September 30, 2009; and the Reply Brief (Reply Br.)
filed November 30, 2009.
Appeal 2010-005509
Application 11/522,733

2
Claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Kerzman (US 5,726,903; issued Mar. 10, 1998).
Ans. 3-4.
Claims 3, 9, and 15 are rejected under 35 U.S.C. § 103(a) as obvious
over Kerzman and Tsuchiya (US 7,219,312 B2; issued May 15, 2007; filed
Dec. 8, 2004). Ans. 5.
Claims 5, 6, 11, 12, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as obvious over Kerzman and Zhang (US 7,114,134 B2; issued Sep. 26,
2006; filed May 27, 2004). Ans. 6-7.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to designing a logic circuit using one or
more circuit elements having a substantially continuous range of values.
Abstract. Claim 1 is illustrative and reproduced below with the key disputed
limitation emphasized:
1. A method for designing a circuit based on a functional
description of the circuit and one or more circuit constraints, said method
comprising:
designing said circuit using a library containing a plurality of discrete
circuit element options;
evaluating whether one or more discrete circuit elements are causing
the circuit to not satisfy the one or more circuit constraints;
configuring at least one replacement circuit element, the at least one
replacement circuit element having at least one cell parameter configured
such that the at least one replacement circuit element will have a
performance characteristic which allows the circuit to satisfy the one or
more circuit constraints, the at least one cell parameter for the at least one
replacement circuit element being configurable so that the performance
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Application 11/522,733

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characteristic can be selectable from a substantially continuous range of
values; and
replacing at least one of the discrete circuit elements in said circuit
with at least one of the replacement circuit elements.

PIVOTAL ISSUE
Under 35 U.S.C. § 102(b), has the Examiner erred by finding that
Kerzman teaches "the at least one cell parameter for the at least one
replacement circuit element being configurable so that the performance
characteristic can be selectable from a substantially continuous range of
values," as recited in claim 1?

ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1, 2, 4, 7,
8, 10, 13, 14, AND 16 OVER KERZMAN
We agree with the Examiner’s position, with regard to claim 1, that
Kerzman describes all claim limitations. Ans. 3-4, 8-9. The Examiner relies
on Kerzman’s logically equivalent cells with different drive strengths (for
example, a “1X” drive strength inverter and a “2X” drive strength inverter)
for describing the disputed limitation. Ans. 4 (citing col. 4, ll. 15-39; col. 5-
6; col. 7, ll. 1-28; col. 10; col. 12).
Kerzman (col. 10, ll. 34-39) states “FIG. 2 shows exemplary
representations for a ‘1X’ inverter and a ‘2X’ inverter, wherein the ‘1X’ and
‘2X’ designations indicate the drive strength of the corresponding cell. For
example, the ‘2X’ inverter has twice the drive strength as the ‘1X’ inverter.”
Kerzman (col. 10, ll. 42-44) further states “[t]he schematic representation 84
[for the ‘1X’ inverter] shows a P-Channel device 86 with a width of 20 and
Appeal 2010-005509
Application 11/522,733

4
an N-Channel device 88 with a width of 10.” Kerzman (col. 10, ll. 56-59)
further states “[t]he schematic representation 102 [for the ‘2X’ inverter]
shows a P-Channel device 104 with a width of 40 and an N-Channel device
106 with a width of 20. Note that these widths are twice that of the ‘1X’
inverter 84.”
Appellants have not persuaded us that Kerzman’s logically equivalent
cells with different drive strengths would not teach the disputed limitation of
claim 1. As the Examiner explains, Kerzman discloses that drive strength is
configurable so that a desired drive strength is selectable from a substantially
continuous range of values. Ans. 8 (citing col. 10, ll. 34-40).
We note the Specification (5:16-18) describes “a series of discrete
NAND gates are provided, having standard cells of varying ‘strengths.’ For
example, the library 200 can provide four NAND gates, identified as 1x, 2x,
3x, and 5x.” The Specification (4:12-13) further describes “[a]n over-
designed element is then replaced with an element offering a finer
granularity, such as a substantially continuous range of values.” However,
“[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). That said, claim 1 recites “selectable from a substantially continuous
range of values” (emphasis added) which is not limited to offering a finer
granularity than the discrete circuit elements initially employed.
The claims do not recite that the substantially continuous range of
values offers a finer granularity than the discrete circuit elements initially
employed as Appellants argue (App. Br. 5-6; Reply Br. 2-4). Whether the
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Application 11/522,733

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substantially continuous range of values offers a finer granularity is
irrelevant to the language of the claims at issue; the claims recite “the at
least one cell parameter for the at least one replacement circuit element
being configurable so that the performance characteristic can be selectable
from a substantially continuous range of values.” The fact that Kerzman
does not necessarily offer a finer granularity than the discrete circuit
elements initially employed does not preclude a finding that Kerzman
describes the argued limitation.
We are not persuaded that the Examiner has erred in rejecting claim 1.
We therefore sustain the Examiner’s rejection of claim 1, as well as claims
2, 4, 7, 8, 10, 13, 14, and 16, which are not argued separately.

THE OBVIOUSNESS REJECTION OF CLAIMS 3, 9, AND
15 OVER KERZMAN AND TSUCHIYA
We agree with the Examiner’s position, with regard to claims 3, 9,
and 15, that the cited art collectively teaches or suggests all claim
limitations. Ans. 5. We therefore, sustain the Examiner’s rejection of
claims 3, 9, and 15.

THE OBVIOUSNESS REJECTION OF CLAIMS 5, 6, 11,
12, 17, AND 18 OVER KERZMAN AND ZHANG
We agree with the Examiner’s position, with regard to claims 5, 6, 11,
12, 17, and 18, that the cited art collectively teaches or suggests all claim
limitations. Ans. 6-7. We therefore, sustain the Examiner’s rejection of
claims 5, 6, 11, 12, 17, and 18.

Appeal 2010-005509
Application 11/522,733

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ORDER
The Examiner’s decision rejecting claims 1-18 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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