Ex Parte 7299155 et al

Patent Trial and Appeal Board

Apr 27, 2017

95000670 (P.T.A.B. Apr. 27, 2017)

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.
95/000,670 05/31/2012 7299155 ART-12-5018REX 9750
25226 7590 04/27/2017
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
ENGLAND, DAVID E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/27/2017 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
____________

ARTERIS, INC.,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2017-004792
Reexamination Control 95/000,670
Patent 7,299,155 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION UNDER 37 C.F.R. § 41.77(f)

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In an earlier Decision, Appeal No. 2015-004350, mailed
November 20, 2015 (“Decision”), we reversed the Examiner’s decision
favorable to the patentability of claims 1, 4–6, 8, 9, 13, and 18 under
35 U.S.C. §§ 102(a) and/or 102(e) over Nadeau,1 as well as under 35 U.S.C.
§ 103(a) as unpatentable over Nadeau and either one of Bortfeld2 or
Bollano.3 Decision 13. Our reversal of the Examiner’s decision not to reject
claims 1, 4–6, 8, 9, 13, and 18 was designated as a new ground of rejection
pursuant to 37 C.F.R. 41.77(b). Id.
Patent Owner elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(1) (“Patent Owner’s Amendment and Request to Reopen
Prosecution Pursuant to 37 C.F.R. § 41.77(b)(l),” filed December 18, 2015,
“PO Request”) in which Patent Owner proposed claim amendments to
claims 1 and 9. In response to Patent Owner’s request to reopen
prosecution, Requester filed comments pursuant to 37 C.F.R. § 41.77(c)
(“Requestor’s Comments to Patent Owner’s Amendment and Request to
Reopen Prosecution,” filed January 19, 2016, “3PR Comments”) and argued
that claims 1, 4–6, 8, 9, 13, and 18 are unpatentable under 35 U.S.C. § 112,
first paragraph, as failing the written description requirement
(3PR Comments 2–4), under 35 U.S.C. § 102 or § 103(a) as either
anticipated by or unpatentable over Nadeau (3PR Comments 7–11), and
claims 2, 3, 7, and 15 under 35 U.S.C. § 103(a) as unpatentable over Nadeau
and either one of Bollano or Bortfeld. 3PR Comments 11.

1 Nadeau-Dosie et al., U.S. 6,868,532 B2, issued March 15, 2005
(“Nadeau”).
2 Bortfeld et al., U.S. 7,050,958 B1, issued May 23, 2006 (“Bortfeld”).
3 Bollano et al., WO 02/08966 A2, published January 31, 2002 (“Bollano”).
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In accordance with 37 C.F.R. § 41.77(e), the Examiner determined
that “the response by the [Patent Owner] . . . fails to overcome the new
grounds of rejection” and that the claims “would appear[] to not be
specifically supported by the ’155 Patent’s [S]pecification.” Examiner’s
Determination, dated May 25, 2016. The Examiner also summarizes the
parties’ positions regarding Requester’s proposed rejection of claims 1, 4–6,
8, 9, 13, and 18 as indefinite. Examiner’s Determination 9–10.
In response to Examiner’s Determination, Patent Owner filed “Patent
Owner’s Comments to Examiner’s Determination Under 37 C.F.R.
§ 41.77(d),” filed June 27, 2016 (“PO Comments on Exr’s Determ.”).
Requester filed “Requestor’s Reply to Patent Owner’s Comments to
Examiner’s Determination,” filed July 27, 2016 (“3PR Reply to PO
Comments”).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
Claim 1, as amended, reads as follows:
A method, comprising:
automatically decomposing, based on configuration data
and a configurable hardware library, a set of one or more units
at a first level of a configurable hardware system design
hierarchy into a set of two or more units of a lower level of the
hardware system design hierarchy, wherein the set of one or
more units at a first level includes one or more units
dynamically instantiated at design creation time as well as at
least a first unit composed of a previously instantiated hardware
system composed with two or more levels of units within the
hardware system design hierarchy of the previously instantiated
hardware system, and wherein at least a portion of the
configuration data is set during the process of automatically
decomposing; and
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individually verifying units of each hierarchy level of the
hardware system design hierarchy successively from the lower
levels to the first level with testbenches, wherein the sequences
of test inputs for the previously instantiated hardware system
are reused when testing that previously instantiated hardware
system in the configurable hardware system.

35 U.S.C. § 112, first paragraph
Claim 1, as amended, recites “automatically decomposing, based on
configuration data and a configurable hardware library.” Claims 1 and
claim 9, as amended, recite “wherein at least a portion of the configuration
data is set during the process of automatically decomposing.” As written
description support for these claim amendments, Patent Owner argues that
the Specification discloses that “the generation and verification unit 103 sets
some parameters during the hardware integration and/or decomposition
process.’” PO Request 9, 10 (citing Spec. 4:1–8, 3:50–67, and 4:8–59,
original claims, Figs. 1–6).
Requester argues that “the portion of the Specification relied upon [by
Patent Owner] does not actually state that any portion of the ‘configuration
data’ is ‘set’ during decomposition” and that Patent Owner allegedly
“improperly confuse[s] and conflate[s] ‘configuration data’ with
‘parameters.’” 3PR Comments 3, 4 (citing Spec. 4:1–26, 7:65–8:6). The
Examiner concurs with Requester and states that the Specification discloses
that “the parameters of the system and units in the configuration data itself
are set at decomposition time,” but that “the units and system are specified
before decomposition time” and “is not set . . . at decomposition time.”
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Examiner’s Determination 9 (citing Spec. 4:1–26). We are not persuaded by
Requester’s argument.
The Specification discloses “configuration data 113” that “specifies
the system and unit parameters” and that a unit “sets some parameters during
the hardware . . . decomposition process.” Spec. 1, 2, 4, 5, 7, and 8. In other
words, the Specification discloses configuration data (including
“parameters”) that are “set” during the decomposition process, as recited in
amended claim 1.
Because the Specification explicitly discloses that the configuration
data (including “parameters”) are “set” during decomposition process, we
are not persuaded by Requester’s argument that the Specification fails to
disclose this feature. Also, we are not persuaded by Requester’s argument
of “conflation” of configuration data and “parameters.” The Specification
discloses that configuration data “specifies the . . . parameters” and that a
user or a unit may “set[] . . . parameters in the configuration data.” 4:5–8.
One of skill in the art would have understood that the “parameters,” being
“in” the configuration data, constitute a portion of the configuration data.
Claim 9, as amended, further recites that a first instance of the
configurable hardware system is different “in hardware.” As written
description support for the system being “different in hardware,” Patent
Owner argues that the Specification discloses “multiple instances of a
configuration hardware system may be generated and decomposed, where
different instances vary in both hardware/structure and function.”
PO Request 10 (citing 4:27–67, 7:12–55). We agree with Patent Owner.
Requester does not dispute this issue.
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Therefore, we disagree with Requester’s proposed rejection of claims
1 and 9 under 35 U.S.C. § 112, first paragraph, as failing the written
description requirement.

35 U.S.C. § 112, second paragraph
Requester argues that “the [claim] limitation reciting that ‘at least a
portion of the configuration data is set,’ as added to both claims 1 and 9 . . .
is indefinite” because the Specification discloses “that some ‘parameters’
may be set during decomposition, but does not state that any portion of the
‘configuration data 113’ is ‘set’ during decomposition,” as recited in
amended claims 1 and 9, and that the Specification “does not use the term
‘set’ with respect to the configuration data.” 3PR Comments 5.
As stated above, the Specification discloses parameters are “in” the
configuration data. One of skill in the art would have understood that the
“parameters,” being “in” the configuration data, would be part of the
configuration data.
Therefore, we disagree with Requester’s proposed rejection of claim 1
and 9 under 35 U.S.C. § 112, second paragraph, as indefinite.

Nadeau
Patent Owner argues that “there is nothing in Nadeau that discloses or
suggests that the described hierarchy was created with automatic
decompositions” and that “nothing in [Nadeau] describes automatic
decomposition or even implies any type of decomposition.” PO Request 12,
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13. This issue was previously raised and addressed. See, e.g., PO Resp. Br.
14–15; see also Decision 4–8. We remain unpersuaded by Patent Owner’s
arguments for at least the previously stated reasons of record. We also are
not persuaded by Patent Owner’s arguments for at least the reasons set forth
by Requester. 3PR Comments 5–10.
Patent Owner also argues that Nadeau fails to disclose automatic
decomposition that is “based on configuration data” and that “at least a
portion of the configuration data is set during the process of automatically
decomposing,” as recited in amended claims 1 and 9. PO Request 9, see
also PO Comments on Exr’s Determ. 7–10. Requester argues that Nadeau
discloses or suggests the newly amended claim features. 3PR Comments 8–
9, see also 3PR Reply to PO Comments 8–12. The Examiner agrees with
Requester. Examiner’s Determination 11–13. We are not persuaded by
Patent Owner’s arguments for at least the reasons set forth by the Examiner
and Requester. 3PR Comments 8–10; see also 3PR Reply to PO Comments
8–12; Examiner’s Determination 11–13.
For example, Nadeau discloses that during decomposition, memory
elements are “configurable” in which “data . . . is applied to its associated
block output node.” Nadeau 5:32–34, 41–44. Hence, Nadeau discloses
configuration data (i.e., data used for configuring memory elements).
Nadeau also discloses that when “not in external test mode, data generated
by the block is passed through to the output node.” Nadeau 5:37–37. In
other words, Nadeau discloses that configuration data is “set” (or generated
and “passed through to the output node”) by the block during decomposition
(when not in external test mode).
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Patent Owner asserts Nadeau fails to disclose decomposition “based
on configuration data” and “at least a portion of the configuration data is set
during the process” of decomposing. Patent Owner does not explain a
difference between Nadeau’s disclosure of generating and passing data for
configuring memory elements (i.e., setting configuration data) during
decomposition and the seemingly identical claim feature of decomposing
based on “configuration data” in which a portion of the “configuration data”
is “set” during decomposing. In both cases, data is used to configure
elements and at least a portion of the data is “set” (or generated) during
decomposing.
Claim 9 recites “different in hardware.” Patent Owner argues
“Nadeau discloses a single instance of a single circuit” but “[n]othing in
Nadeau discloses multiple instances of a configurable hardware system.”
PO Request 14, see also PO Comments on Exr’s Determ. 10–11. We are not
persuaded by Patent Owner’s arguments for at least the reasons set forth by
the Examiner and Requester. 3PR Comments 10–11; see also 3PR Reply to
PO Comments 12–13; Examiner’s Determination 14–15.
For example, Nadeau discloses a circuit with “[t]wo hierarchical
blocks,” but “the circuit may have any arbitrary number of hierarchical
blocks and levels.” Nadeau 4:37–40. In addition, Nadeau discloses “various
[adaptations], modifications and alterations may be accomplished,” and the
disclosure is “not intended to limit the breadth of the present invention” and
does not disclose that the invention is limited to only one circuit. Nadeau
16:18–22. In other words, Nadeau discloses one circuit with “two
hierarchical blocks” and at least one other circuit with “any arbitrary number
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of hierarchical blocks and levels.” Patent Owner does not explain a
difference between Nadeau’s disclosure of different circuits (i.e., multiple
circuits) and the claim feature of “multiple instances of” a system.
Patent Owner does not provide additional arguments with respect to
Bortfeld or Bollano. PO Request 15; PO Comments on Exr’s Determ. 11.

DECISION
Claims 1, 4–6, 8, 9, 13, and 18 are anticipated by Nadeau under
35 U.S.C. §§ 102(a) and/or 102(e), and are unpatentable under 35 U.S.C.
§ 103(a) over Nadeau. Claims 2, 3, 7, and 15 are unpatentable under
35 U.S.C. § 103(a) over Nadeau and any one of Bortfeld or Bollano.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–44 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties’ rights to request
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rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb

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PATENT OWNER:

MORRISON & FOERSTER LLP
755 Page Mill Rd
Palo Alto, CA 94304-1018

THIRD PARTY REQUESTER:

PATENT GROUP
C/O DLA PIPER US LLP
203 N. LaSalle St., Suite 1900
Chicago, IL 60601