Ex Parte Baumgartner et alDownload PDFBoard of Patent Appeals and InterferencesMay 4, 201211866110 (B.P.A.I. May. 4, 2012) Copy Citation 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. 11/866,110 10/02/2007 Steven J. Baumgartner ROC920060091US2 6539 55992 7590 05/04/2012 IBM CORPORATION 3605 HIGHWAY 52 NORTH DEPT. 917 ROCHESTER, MN 55901-7829 EXAMINER ENGLUND, TERRY LEE ART UNIT PAPER NUMBER 2816 MAIL DATE DELIVERY MODE 05/04/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVEN J. BAUMGARTNER, PATRICK L. ROSNO, and DANA M. WOESTE ____________ Appeal 2009-015143 Application 11/866,110 Technology Center 2800 ____________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015143 Application 11/866,110 2 I. STATEMENT OF THE CASE Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-18. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a machine readable medium that stores a design structure used in a design process. According to Appellants, the design structure is directed to a current mirror circuit that includes a reference current source, a reference transistor, at least one mirror transistor, and a ratioed body bias feedback unit. See Spec. ¶¶ [0002] and [0012]. Illustrative Claim 1. A design structure embodied in a machine readable medium used in a design process, the design structure comprising a current mirror circuit, that includes: a. a reference current source, having an output, that generates a reference current; b. a reference transistor, having a first node having a first node voltage that is coupled to the output of the reference current source, a gate that is coupled to the first node, a second node coupled to a common voltage and a body; c. at least one mirror transistor, having a gate coupled to the first node, a source, a drain and a body; and d. a ratioed body bias feedback unit, responsive to the first node voltage, that generates a body bias voltage coupled to the body of the reference transistor and the body of the at least one mirror transistor, the ratioed body bias feedback unit configured to adjust the body bias voltage in relationship to the common voltage so that the reference transistor and the at least one mirror transistor each have a threshold voltage within a predefined range. Appeal 2009-015143 Application 11/866,110 3 Prior Art Relied Upon McGowan US 2003/0030474 A1 Feb. 13, 2003 Rejections on Appeal Claims 1-18 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ans. 3. Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by McGowan. Ans. 3-4. Examiner’s Findings and Conclusions The Examiner finds that the claimed machine readable medium only stores data representing the current mirror circuit. Ans. 3. To support this finding, the Examiner references multiple disclosures in the present Specification, including: 1) the design structure comprises a circuit in the form of schematics or HDL, a hardware descriptive language; 2) the design structure may be a text file or a graphical representation of the circuit; and 3) the design structure may comprise information. Ans. 5. Moreover, the Examiner acknowledges that while the circuit itself might have functionality, the data representing the circuit does not. Ans. 3. The Examiner also finds that dependent claims 3 and 12 refer to the data stored on the claimed machine readable medium as a “data format.” Id. Consequently, the Examiner finds that the data representing the current mirror circuit amounts to non-functional descriptive material and, therefore, is directed to non-statutory subject matter under 35 U.S.C. § 101. Ans. 3 and 5. Further, the Examiner finds that Appellants’ reference to three U.S. patents, each of which recite a “design structure” in the claims, are unrelated to the present patent application. Ans. 5. Appeal 2009-015143 Application 11/866,110 4 Appellants’ Contentions Appellants contend that the “play back” of a design structure results in the creation of a specific circuit having specific functionality. App. Br. 7. Consequently, Appellants argue that when the claimed “design structure” is played back on a fabrication facility computer, it will permit the functionality of the data structure to be realized—which in turn indicates that the claims recite functional descriptive material. App. Br. 8. As such, Appellants allege that the present claims are directed to statutory subject matter under 35 U.S.C. § 101. Id. Further, Appellants contend that the U.S. Patent and Trademark Office (“USPTO”) has issued patents that use the “design structure” language as claimed and, therefore, it would be consistent for the Board to decide that the present claims are statutory as well. App. Br. 8-9. In response to the Answer, Appellants argue that the Examiner fails to respond substantively to the arguments set forth in the Appeal Brief. Reply Br. 1-2. II. ISSUE Did the Examiner err in finding that claims 1-18 are directed to non- statutory subject matter under 35 U.S.C. § 101? In particular, the issue turns on whether “a design structure” is merely a compilation or arrangement of data that is only nominally tied to an article of manufacture. III. ANALYSIS Claim Construction It is well settled that claim construction is a question of law that we review de novo. In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994) Appeal 2009-015143 Application 11/866,110 5 (en banc). Consequently, we begin our analysis by considering the scope and meaning of the claim term “a design structure,” which must be given its broadest reasonable interpretation consistent with Appellants’ disclosure. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that during examination “claims must be interpreted as broadly as their terms reasonably allow”). Appellants’ Specification states that “[d]esign structure 320 may be contained on one or more machine readable medium. For example, design structure 320 may be a text file or a graphical representation of circuit 100.” Spec. ¶ [0023]. Further, Appellants’ Specification states that: [d]esign structure 390 resides on a storage medium in a data format used for the exchange of layout data of integrated circuits…. Design structure 390 may comprise information such as, for example, test data files, design content files, manufacturing data, layout parameters, wires, levels of metal, vias, shapes, data for routing through the manufacturing line, and any other data required by a semiconductor manufacturer to produce an embodiment of the invention as shown in FIG. 2. Spec. ¶ [0025]. Upon reviewing Appellants’ Specification for context, we find that the claim term “a design structure” may be broadly, but reasonably construed as merely a text file, an image, or simply data. With this claim construction in mind, we turn to the merits of the Examiner’s rejections under §§ 101 and 102(b). 35 U.S.C. § 101 Rejection We do not find error in the Examiner’s rejection of claims 1-18 as being directed to non-statutory subject matter. At the outset, we note that Appellants’ Specification is silent with respect to what constitutes “a Appeal 2009-015143 Application 11/866,110 6 machine readable medium.” Therefore, since the broadest reasonable interpretation of “a machine readable medium” encompasses a transitory, propagating signal, the claims are directed to non-statutory subject matter.1 Notwithstanding that the present claims cover a signal per se, we find that in light of our claim construction supra, the claimed “design structure embodied in a machine readable medium” is not capable of causing functional change to a computer because the design structure amounts to nothing more than a compilation or arrangement of data (i.e., a text file or simply data). See Manual of Patent Examining Procedure § 2106.01(I) (Rev. 8, July 2010); see also In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed. Cir. 1994). Moreover, we note that the nominal recitation to “a machine readable medium” in the preamble does not limit the body of independent claim 1 as it only states the claimed invention’s purpose or intended use. See Catalina Marketing Int'l, Inc., v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).2 Additionally, even if the “machine readable medium” in the 1 The U.S. Patent and Trademark Office has issued the following guidance: The broadest reasonable interpretation of a claim drawn to a computer readable medium … typically covers forms of nontransitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 OFF. GAZ. U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010) (citation omitted). 2 See also Am. Med. Sys., Inc. v. Biolitec, 618 F.3d 1354, 1358 (Fed. Cir. 2010) (citations omitted) (noting that a preamble that “merely gives a Appeal 2009-015143 Application 11/866,110 7 preamble were given weight and thus literally fit within the article of manufacture category set forth in 35 U.S.C. § 101, that alone is not sufficient to determine if the claims are directed to statutory subject matter. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009). The claims must be construed in their entirety and, as discussed supra, each claim recites “a design structure” which is nothing more than a compilation or arrangement of data. Appellants’ contention that the USPTO has previously issued patents that use the “design structure” language (see App. Br. 8-9) presents us with arguments regarding the impact of other patents with respect to the § 101 rejection of the present claims. The Court of Customs and Patent Appeals, predecessor court to the Court of Appeals for the Federal Circuit, held that “[e]ach case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018 n. 15 (CCPA 1979) (citations omitted). As our reviewing court directs, we will not consider the allowed claims in other patents when determining whether the present claims are directed to non-statutory subject matter. It follows that the Examiner has not erred in finding that claims 1-18 are directed to non-statutory subject matter under 35 U.S.C. § 101. descriptive name to the set of limitations in the body of the claim that has completely set forth the invention” has no separate limiting effect). Appeal 2009-015143 Application 11/866,110 8 35 U.S.C. § 102(b) Rejection—McGowan We do not find error in the Examiner’s anticipation rejection of claims 1-18. In light of our claim construction supra, we agree with the Examiner that the claimed “design structure embodied in a machine readable media” simply amounts to design related data stored on an article of manufacture. See Ans. 3-4. We also agree with the Examiner that Appellants cannot rely solely upon the content or type of data stored on the claimed “machine readable medium” to patentably distinguish these claims over the prior art of record. See id. The content or type of such data is non-functional descriptive material. Case law dictates that the Examiner does not need to give any patentable weight to this non-functional descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material). Since each claim merely recites design related data—non-functional descriptive material— these claims fail to distinguish patentably over McGowan. It follows that the Examiner has not erred in finding that McGowan anticipates claims 1- 18. V. CONCLUSIONS 1. The Examiner has not erred in rejecting claims 1-18 as being directed to non-statutory subject matter under 35 U.S.C. § 101. 2. The Examiner has not erred in rejecting claims 1-18 as being anticipated under 35 U.S.C. § 102(b). Appeal 2009-015143 Application 11/866,110 9 VI. DECISION We affirm the Examiner’s decision to reject claims 1-18. 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)(iv). AFFIRMED tj Copy with citationCopy as parenthetical citation