Ex Parte Anemikos et al

Patent Trial and Appeal Board

Mar 29, 2018

13294243 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/294,243 1111112011 Theodoros Anemikos
30449 7590 04/02/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
BUR9201101l7US 1 7657
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEO DO ROS ANEMIKOS,
JEANNE BICKFORD, NAZMUL HABIB,
and SUSANK. LICHTENSTEIGER
Appeal2017-008069
Application 13/294,243
Technology Center 2800
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-14, 16-23 and 25. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method, system and computer program
product for voltage binning integrated circuit chips. Claim 1 is illustrative:
1. A method, comprising:
(a) selecting a voltage bin of a set of voltage bins, each
voltage bin having a different range of frequencies based on the
highest operating frequency and the lowest operating frequency
Appeal2017-008069
Application 13/294,243
specified for an integrated circuit chip and setting a voltage
supply of said integrated circuit chip to an initial supply voltage
value associated with said selected voltage bin and setting a
current supply voltage value to said initial supply voltage value;
(b) selecting a path of a set of testable data paths of said
integrated circuit chip not previously tested;
( c) performing a functional path test on said selected
path, said functional path test based on applying test patterns to
said selected path at said current supply voltage value;
( d) if said integrated circuit chip fails said functional path
test, then changing said current supply voltage value to a
voltage value associated with a not previously selected voltage
bin·
'
( e) selecting a not previously tested path of said set of
testable paths, wherein said set of voltages bins sequentially
increment from a bin with a lowest voltage supply value
associated with a highest frequency range specification to a bin
with a highest voltage supply value associated with a lowest
frequency range specification and wherein said not previously
selected voltage bin is a next highest voltage bin, and repeating
( c) and ( e) until every path of said set of testable paths has been
tested; and
(f) setting a path voltage bin for the integrated circuit chip to a
voltage bin of said set of voltage bins corresponding to said current
supply voltage value.
The Rejections
Claims 1, 3-14, 16-23 and 25 stand rejected under 35 U.S.C. § 112,
frrst paragraph as failing to comply with the written description requirement
and under 35 U.S. C. § 112, second paragraph as being indefmite for failing
to particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
OPINION
We reverse the rejections. We need address only the independent
claims (1, 14 and 23). Those claims require "each voltage bin having a
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Application 13/294,243
different range of frequencies based on the highest operating frequency and
the lowest operating frequency specified for an integrated circuit chip" and
"said set of voltages [sic, voltage] bins sequentially increment from a bin
with a lowest voltage supply value associated with a highest frequency range
specification to a bin with a highest voltage supply value associated with a
lowest frequency range specification."
Rejection under 35 U.S. C. § 112, second paragraph
"[T]he indefmiteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity.'"
Marley Mouldings Ltd. v. Mikronlndustrieslnc.,4l7F.3d 1356, 1359(Fed.
Cir. 2005) (quoting Jn re Moore, 439F.2d1232, 1235(CCPA1971)).
The Examiner's reason for rejecting the claims under 35 U.S.C. § 112,
second paragraph is (Final Act. 3--4):
The terms "highest operating frequency", "lowest operating
frequency", "highest frequency range", "lowest frequency
range", "highest voltage supply", "lowest voltage supply" in
claims 1, 14, and 23 are relative terms which render the claims
indefmite. The terms are not defmed by the claim, the
specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not
be reasonably apprised of the scope of the invention. There are
no disclosed values associated with the above terms.
The Examiner does not provide evidence that the Appellants' claim
terms "highest" and "lowest" are indefmite merely because they are relative
terms or that the Specification must disclose operating frequency, frequency
range or supply voltage values or "provide a standard for ascertaining the
requisite degree" for one of ordinary skill in the art to have understood the
meaning of "highest" and "lowest" in the context of the disclosed method.
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Appeal2017-008069
Application 13/294,243
Thus, the Examiner has not established that the Appellants' claims fail
to circumscribe a particular area with a reasonable degree of precision and
particularity. Wethereforereversetherejection under35U.S.C.§112,
second paragraph.
Rejection under 35 US. C. § 112,first paragraph,
written description requirement
For an applicant to comply with the 35 U.S.C. § 112, frrst paragraph,
written description requirement the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cathlnc. v. Mahurkar, 935F.2d1555, 1563---64 (Fed. Cir.
1991)).
The Examiner's reason for rejecting the claims under 35 U.S.C. § 112,
frrst paragraph, written description requirement is:
Claims 1, 14, and 23, the terms "highest operating frequency",
"lowest operating frequency", "highest frequency range",
"lowest frequency range", "highest voltage supply", "lowest
voltage supply" are not defmed or specified in the specification.
There are no disclosed values associated with the above terms.
[(Final Act. 3)]
By not showing actual test values associated with the
parameters in Table 1 and in the disclosure, the written
description does not show actual reduction to practice by
describing testing of the claimed invention and accordingly,
does not show the inventor had possession of the claimed
invention. [(Ans. 3)]
"It is well settled that an invention may be patented before it is
reduced to practice." Pfaffv. Wells Electronics Inc., 525 U.S. 55, 61 (1998).
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Application 13/294,243
Possession of a claimed invention is shown "by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the
claimed invention." Lockwoodv. American Airlines Inc., 107F.3d1565,
1572 (Fed. Cir. 1997). The Examiner does not establish that the Appellants'
Specification's description of the claims' recited method which uses, instead
of specific values, values between highest and lowest specified or allowed
values for a given integrated circuit chip (see, e.g., Spec. iii! 59---64), fails to
fully set forth the method.
Hence, the Examiner has not established that the Appellants'
Specification would have failed to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, the Appellants were in
possession of the invention. Accordingly, we reverse the rejection under
35 U.S.C. § 112, frrst paragraph.
DECISION/ORDER
The rejections of claims 1, 3-14, 16-23 and 25 under
35 U.S. C. § 112, frrst paragraph, written description requirement and
35 U.S. C. § 112, second paragraph are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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