Ex Parte Baumann et al

Patent Trial and Appeal Board

Mar 22, 2018

14555552 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/555,552 11/26/2014
23494 7590 03/26/2018
TEXAS INSTRUMENTS IN CORPORA TED
P 0 BOX 655474, MIS 3999
DALLAS, TX 75265
FIRST NAMED INVENTOR
Adolf Baumann
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.
TI-75056 4355
EXAMINER
MACKALL, LARRY T
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADOLF BAUMANN and MARK JUNG
Appeal2017-010933
Application 14/555,552 1
Technology Center 2100
Before CARL W. WHITEHEAD JR., KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("Br.") identifies Texas Instruments Incorporated as the
real party in interest. Br. 1.
Appeal2017-010933
Application 14/555,552
CLAIMED SUBJECT MATTER
The claims are directed to a computing register with non-volatile-
logic data storage. Spec. i-f 2. Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A digital system comprising:
a calculating register having a plurality of latches
configured to perform a calculation;
a plurality of non-volatile storage cells coupled to the
plurality of latches;
access detection logic coupled to the calculating register,
wherein the access detection logic is operable to initiate a
calculation of a next value by the calculating register each time
the calculating register is accessed by an accessing module; and
wherein the access detection logic is operable to cause the
next value to be stored in the plurality of non-volatile storage
cells at the completion of the calculation as an atomic
transaction.
Br. 6 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gudesen et al.
(hereafter "Gudesen")
Factor et al.
(hereafter "Factor")
Engels et al.
(hereafter "Engels")
Kovacic et al.
(hereafter "Kovacic")
US 2003/0151940 Al Aug. 14, 2003
US 2005/0097266 Al May 5, 2005
US 2011/0066853 Al Mar. 17, 2011
US 2011/0241842 Al Oct. 6, 2011
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Application 14/555,552
REJECTIONS
Claims 1-3, 5, 6, 8-13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Engels and Factor. Final Act. 2-7.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engels, Factor, and Kovacic. Final Act. 7-8.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engels, Factor, and Gudesen. Final Act. 8-9.
ISSUE
Has the Examiner erred by providing an inadequate explanation of
how and why it would have been obvious to combine the teachings of
Engels and Factor to achieve the invention recited in the independent
claims?
ANALYSIS
The Examiner rejects the independent claims as being unpatentable
over the combined teachings of Engels and Factor. Final Act. 2-3 (rejecting
claim 1 ), 5 (rejecting claim 10). More specifically, the Examiner finds
Engels teaches all of the recited limitations except for the use of an "atomic
transaction." Final Act. 3. The Examiner relies on Factor to teach an atomic
transaction, finding that it "disclose[s] performing atomic writes." Final
Act. 3 (citing Factor i-fi-f 11-12). Finding that a person of skill in the art
would have modified the invention of Engels to include atomic writes in
order to maintain consistent data as taught by Factor, the Examiner
concludes the independent claims are would have been obvious at the time
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Appeal2017-010933
Application 14/555,552
of Appellants' invention. Final Act. 3, 5 (citing Factor i-fi-f 11, 12). In the
Answer, the Examiner further finds that an ordinarily skilled artisan would
have known how to implement Factor's atomic writes into Engels because
atomic writes were a well-known data operation. Ans. 3. The Examiner
concludes that "those of ordinary skill in the art would be motivated to
include atomic writes, as suggested by Factor et al., in order to preserve data
consistency, even in the event of a malfunction event." Id.
Appellants contend the Examiner erred because "[t]he circuits of
Engels and Factor have different modes of operation and it is, thus, not clear
how Engels would be modified based on Factor as alleged in the Office
Action." Br. 3. Appellants further argue "the Office Action fails to provide
any explanation as to how atomic writes identified in Factor ... might be
incorporated into the write operations described in Engles [sic]." Id.
We are not persuaded by Appellants' argument. Appellants'
argument is, in essence, an argument based upon the bodily incorporation of
Factor's circuitry into the device of Engels. However, "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981) (internal citations omitted) see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.") (internal citations omitted).
The Examiner explains that his conclusion of obviousness is not based
on the physical incorporation of Factor's atomic write circuitry into the
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Application 14/555,552
system of Engels. Ans. 3. Rather, the Examiner finds that Factor
demonstrates that the use of atomic writes was well known, and that it was
well within the ability of an ordinarily skilled artisan to deploy the hardware
and/or logic needed to apply the teachings of Factor in the context of Engels'
system. 2 Id; see KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("a
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results"). The
Examiner further explains that an ordinarily skilled artisan would have
sought to improve Engels' system by supplementing it with atomic writes as
taught by Factor, "in order to preserve data consistency, even in the event of
a malfunction event." Id. We agree with these findings of the Examiner,
and find the Examiner has articulated how the claimed features are met by
the proposed combination of the reference teachings with some rational
underpinning, consistent with the holding of KSR. Moreover, Appellants
have not shown that combining the prior art was "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we are not persuaded the Examiner erred in concluding
independent claims 1 and 10 are unpatentable under 35 U.S.C. § 103(a), and
we sustain the rejection of these claims. Because Appellants present no
separate arguments for patentability of any dependent claims, the remaining
claims 2-9 and 11-16 fall with their respective independent claims.
2 This finding, presented in the Answer, stands unrebutted in this record, as
Appellants did not file a Reply Brief.
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Application 14/555,552
DECISION
We affirm the Examiner's rejection of claims 1-16.
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.
§ 1.136(a)(l )(iv).
AFFIRMED
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