Ex Parte Bainbridge et al

Patent Trial and Appeal Board

Jul 26, 2017

13490729 (P.T.A.B. Jul. 26, 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.
13/490,729 06/07/2012 William John Bainbridge 026517-0069P 9659
34284 7590
Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
CADEAU, WEDNEL
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM JOHN BAINBRIDGE,
STEPHEN W. HAMILTON, and
NEAL T. WINGEN
Appeal 2016-006826
Application 13/490,7291
Technology Center 2600
Before JASON V. MORGAN, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13 and 20. The Examiner indicates that claims 1—12, 14—
19, 21, and 22 are allowable. Final Act. 4. We have jurisdiction over the
rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Sonics, Inc., as the real party in interest. App. Br. 3.
Appeal 2016-006826
Application 13/490,729
Invention
Appellants disclose passing a data payload over a boundary from a
sender module on one side of the boundary to a receiver module on the other
side of the boundary. Abstract.
Exemplary Claims
Claim 13, reproduced below with key limitations emphasized, is
representative:
13. A non transitory machine-readable medium having data
and instructions stored thereon, which, when executed by a
machine, cause the machine to generate a representation of the
apparatus of claim 4, wherein the machine-readable medium
stores an Electronic Design Automation (EDA) toolset used in a
System-on-a-Chip design process that has data and instructions
to generate the representations of the apparatus.
Rejection
The Examiner rejects claims 13 and 20 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Final Act. 4
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants’ arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
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Application 13/490,729
Claim 13
The Examiner concludes claim 13 is indefinite because the recitation
of causing the machine to generate a representation of the apparatus of
claim 4 “implies that the representation can be a drawing representation, a
picture representation, a software representation, a hardware representation,
a combin[ation] software [and] hardware representation, and so on.” Final
Act. 4; see also Ans. 8.
Appellants contend the Examiner erred because claim 13’s
“‘representation’ of the apparatus of Claim 4 ... is clearly defined in the
Specification.” App. Br. 6. In particular, Appellants point to teachings
related to “creating an abstract executable representation for each IP sub
component making up the IP block design” (App. Br. 6; see also Spec.
178), storing “data representing the interconnect and logical circuitry”
(App. Br. 7; see also Spec. 173), “use of a ‘representation’ of the apparatus
in any of ‘simulations and lithographic masks’ . . . , ‘software coded models’
. . ., ‘a tailor-made representation’ . . ., and ‘high-level. . . or top-down
views’” (App. Br. 7; see also Spec. H 71, 82). Appellants contend that the
various examples of a “representation” provided in the Specification ensures
that “a person of ordinary skill would clearly understand the term
‘representation’ . . . [and thus] the claims particularly point out and distinctly
define the metes and bounds of the subject matter to be protected.” Reply
Br. 8. In other words, Appellants argue that the claimed subject matter is
merely broad, but not indefinite. See, e.g., In re Gardner, 427 F.2d 786, 788
(CCPA 1970) (“Breadth is not indefmiteness.”).
Appellants’ arguments are unpersuasive because one of the examples
Appellants cite shows that the metes and bounds of the disputed recitation
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Application 13/490,729
are unclear. In particular, the Specification notes that many of the
“representations can be high-level (abstracted and with less details) or top-
down views.” Spec. 1 82 (cited by Reply Br. 8); see also App. Br. 7. There
is no indication in the cited portions of the Specification as to what level of
abstraction is encompassed by the claimed representation of the apparatus.
An artisan of ordinary skill would, for example, be unclear as to whether a
diagram of the apparatus, such as the one in Figure 2 of the Specification
below, falls within the claimed representation.
Figure 2 of the Specification is reproduced below.
^Boundary
The Specification’s “Figure 2 illustrates a diagram of an embodiment
of a payload crossing synchronizer that has an internal communications path
that crosses a boundary between the sender module and the receiver
module.” Spec. 1 5. This block diagram represents, at a high level, the
apparatus of claim 4 because the diagram illustrates a payload crossing
synchronizer with a sender module on one side of a clock boundary (i.e., the
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Application 13/490,729
boundary between a domain’s write clock and a domain’s read clock) and a
receiver module on the other side of the clock boundary.
An artisan of ordinary skill would be unable to determine, from the
language of claim 13 and from the cited portions of the Specification,
whether an act as innocuous as placing this block diagram on a machine-
readable medium (e.g., by storing a copy of the published application itself)
with data and instructions that would reproduce the block diagram, along
with an Electronic Design Automation toolset used in a System-on-a-Chip
design process, falls within the scope of claim 13. As such, the scope of
claim 13 is ambiguous, and therefore claim 13 is indefinite. See Ans. 6—7.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claim 13.
Claim 20
Claim 20 recites a machine-readable medium that includes data and
instructions that, “when executed by a machine, cause the machine to
generate an apparatus to perform the method of claim 14.” Appellants
contend that an artisan of ordinary skill would “understand^ that the words
of this claim reasonably convey[] how an example apparatus to perform the
method of claim 14 may be generated using the System-on-a-Chip design
process by an Electronic Design Automation (EDA) toolset.” App. Br. 25.
However, claim 14 recites a single-step method comprising “passing the data
payload over the boundary from a sender module on one side of the
boundary to a receiver module on the other side of the boundary ...”
without making it clear what constitutes an apparatus to perform this step.
For example, it is unclear whether an apparatus that performs this step must
include the sender module and receiver module, or whether the apparatus
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can simply be a component that acts as or controls a bridge between the two
modules for “passing the data payload over the boundary.” As such, we
agree with the Examiner that claim 20, like claim 13, is ambiguous and
therefore indefinite. See, e.g., Final Act. 4.
Accordingly, we sustain the Examiner’s 35U.S.C. § 112, second
paragraph, rejection of claim 20.
POTENTIAL ISSUES
In the event of further prosecution of claims 13 and 20, we direct
Appellants’ and the Examiner’s attention to additional issues that may need
to be resolved with respect to these claims.
Neither claim 13 nor claim 20 appear to be proper claims under 35
U.S.C. § 112, fourth paragraph. Claim 13 is a dependent claim that recites a
“non transitory machine-readable medium having data and instructions
stored thereon, which, when executed by a machine, cause the machine to
generate a representation of the apparatus of claim 4 However, such a
medium does not appear to include the apparatus itself and thus claim 13
does not seem to further limit the apparatus of claim 4, as required by § 112,
fourth paragraph. See MPEP § 608.0l(n), subsection II.
Similarly, claim 20 recites a “non transitory machine-readable
medium having data and instructions stored thereon, which, when executed
by a machine, cause the machine to generate an apparatus to perform the
method of claim 14.” However, such a medium does not appear to perform
the method of claim 14. For example, using the medium to generate an
apparatus to perform the method of claim 14 does not seem to necessarily
perform the method itself—it seems like the method would not be performed
unless the generated apparatus itself was operated, which is not required by
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Application 13/490,729
claim 20 as presently written. Thus, claim 20 does not seem to further limit
the method of claim 14, as required by § 112, fourth paragraph.
Furthermore, claim 13 appears to have a small but noticeable
antecedent issue with its inconsistent recitations directed to both
“representation” singular and “representations” plural.
DECISION
We affirm the Examiner’s decision rejecting claims 13 and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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