Ex Parte Janzen

Board of Patent Appeals and Interferences

Oct 29, 2009

11417389 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFERY W. JANZEN
____________

Appeal 2009-002090
Application 11/417,3891
Technology Center 2100
____________

Decided: October 30, 2009
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 31-51 mailed December 12, 2006, which are all the claims

1 Application filed May 3, 2006. The real party in interest is Micron
Technology, Inc.
Appeal 2009-002090
Application 11/417,389

2
remaining in the application, as claims 1-30 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, and also enter new grounds of rejection as to
claims 44-46.

A. INVENTION
Appellant invented a system and method for coupling memory
devices in a memory module to a memory hub on the module such that
signals traveling from the hub to the devices have approximately the same
propagation time regardless of which device is involved. Specifically, the
devices are arranged around the hub in pairs, with each pair of devices being
oriented such that a functional group of signals for each device in the pair,
such as the data bus signals, are positioned adjacent to each other on a circuit
board module. (Spec. 21, Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 31-51. Claims 31, 37, 44, and 47 are
independent claims. Claim 31 is illustrative:
31. A memory module, comprising:
a memory hub attached to a circuit board;
a plurality of memory devices attached to the circuit
board and arranged in pairs positioned around the memory hub, each
memory device in a respective pair being physically rotated 180
Appeal 2009-002090
Application 11/417,389

3
degrees in the plane of the circuit board relative to each the other
device in the pair; and
a connector electrically coupled to the memory hub and
configured to couple at least one of command, address, and data
signals to the memory hub.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Schumacher US 5,502,621 Mar. 26, 1996

Ryan US 2004/0044833 A1 Mar. 4, 2004

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 31-51 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ryan in view of Schumacher.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Claim Construction
1a. Adjacent may or may not imply contact but always implies
absence of anything of the same kind in between . Merriam-Webster’s Collegiate Dictionary, p. 14 (10th Edition
1997).

Ryan
2a. Ryan discloses that “[t]he memory hub is preferably positioned at
the center of the memory module and the memory devices positioned around
the memory hub to facilitate a direct electrical connection between the hub
and the memory devices.” (¶ [0013]; Fig. 2.)
2b. In Ryan, “the memory hub 208 is placed in the interior of the
module 201 such that the individual memory devices 212-226 may be placed
along a perimeter of the memory hub 208. . . . makes it easier for each
individual bus in the bus system 230-244 coupling each memory device 212-
226 to the memory hub 208 to be substantially the same length.” (¶ [0025].)
2c. Ryan discloses that “[t]he bus system 230-244 coupling the
memory devices 216-226 to the memory module 201 may include, for
example, separate command, address and data buses, although it may
alternatively include a greater or lesser number of buses running from each
memory device 212-226 to the memory hub. . . . a single bus may be used . .
.” (¶ [0024].)

Schumacher
3a. Schumacher discloses that “memory controller chip 415 is rotated
180 degrees in relationship to memory controller chip 410.” (Col. 4, ll. 7-9.)
Appeal 2009-002090
Application 11/417,389

5
3b. Schumacher discloses “IC’s having pin assignments arranged as a
mirror image of each other along a centerline through the IC package in the
X or Y axis, . . . will ensure that the pin assignments of the same type will be
directly opposite each other” (Abstract.)

III. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one cannot
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. In re Kahn, 441 F.3d. 977, 985-986 (Fed. Cir. 2006).
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
Appeal 2009-002090
Application 11/417,389

6
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical
Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the
language employed must be analyzed — not in a vacuum, but always in light
of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

IV. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellant argues claims 31-36 as a group (App. Br. 17;19).
For claims 32-36, Appellants repeat the same argument made for claim 31.
We will, therefore, treat claims 32-36 as standing or falling with claim 31.
Group II: Appellant argues claims 37-43 as a group (App. Br. 17-
19). For claims 38-43, Appellant repeats the same argument made for claim
37. We will, therefore, treat claims 38-43 as standing or falling with claim
37.
Appeal 2009-002090
Application 11/417,389

7
Group III: Appellant argues claims 44-46 as a group (App. Br. 17-
19). For claims 45 and 46, Appellant repeats the same argument made for
claim 44. We will, therefore, treat claims 45 and 46 as standing or falling
with claim 44.
Group IV: Appellant argues claims 47-51 as a group (App. Br. 17-
19). For claims 48-51, Appellant repeats the same argument made for claim
47. We will, therefore, treat claims 48-51 as standing or falling with claim
47.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).

Group I
Claims 31-36
Appellant contends that “Schumacher does not disclose pairs of
memory devices disposed around a memory hub as claimed. . . . Ryan does
not teach disposing the chips ‘physically rotated 180 degrees’ relative to one
another.” (App. Br. 17.)
Appeal 2009-002090
Application 11/417,389

8
The Examiner found “Schumacher however teaches arranging ICs in a
pair configured such that one device is rotated 180 degrees with respect to
the board.” (Ans. 4.)

Issue: Has Appellant shown that the Examiner erred in finding that
Ryan and Schumacher discloses “each memory device in a respective pair
being physically rotated 180 degrees in the plane of the circuit board relative
to each the other device in the pair”?

Here, the Examiner relies upon Ryan to disclose a memory hub and a
plurality of memory devices arranged in pairs positioned around the memory
hub, and relies upon Schumacher to disclose ICs in pairs rotated 180 degrees
(Ans. 3-4). Appellant’s arguments appear to be attacking each reference
individually. The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d at
426.
Consistent with the Examiner’s findings, we find that Ryan discloses
a memory hub with memory devices positioned around the memory hub (FF
2a), and Schumacher discloses pairs of ICs rotated 180 degrees in
relationship to each other (FF 3a). Since the Examiner is relying on the
combination to disclose the argued limitations, and Appellant has not
Appeal 2009-002090
Application 11/417,389

9
demonstrated that the Examiner used impermissible hindsight in combining
Ryan and Schumacher, or that the obviousness rejection is otherwise in
error, Appellant has not persuaded us of error in the Examiner’s conclusion
of obviousness for representative claim 31.
Therefore, we affirm the Examiner’s § 103 rejection of independent
claim 31 and of claims 32-36, which fall therewith.

Group II
Claims 37-43
Appellant contends that “Ryan does not teach grouping different types
of terminals at different ends of a memory device and Schumacher does not
teach arranging the edges of multiple pairs adjacent one another as recited in
the claim.” (App. Br. 18.)
The Examiner found that Ryan teaches “a plurality of memory devices
positioned around the memory hub” and that Schumacher discloses “Fig. 4,
devices 410 and 415 are ICs with the same pinout, just mirrored with respect
to the vertical axis.” (Ans. 4).

Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Ryan and Schumacher discloses “having a same
arrangement of electrical terminals relative to the first and second edges, . . .
the second edge of each device in a pair positioned adjacent a second edge
of a memory device in one of the other pairs”?
Appeal 2009-002090
Application 11/417,389

10
Again, Appellant’s arguments appear to be attacking the references
individually whereas the Examiner is relying on the combination of
teachings. The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. In the instant case,
Appellant’s arguments are not persuasive because the Examiner relies upon
Ryan for teaching arranging the edges of multiple pairs of memory devices
adjacent one another and relies upon Schumacher to disclose a same
arrangement of electrical terminals relative to a first and second edge (Ans.
4).
For instance, Ryan discloses that a memory hub is placed in the
interior of the module with memory devices placed along a perimeter of the
memory hub (2a-2b). In other words, in Fig. 2 of Ryan the memory devices
212-226 are grouped as adjacent pairs on each side of the memory hub 208.
Adjacent may or may not imply contact but always implies absence of
anything of the same kind in between .
Merriam-Webster’s Collegiate Dictionary, p. 14 (10th Edition 1997). (FF
1a). Here, we find that the pairs are adjacent because there is no other
devices in between the pairs. In addition, Schumacher discloses mirrored
imaged pin assignments for its ICs which are rotated 180 degrees in
relationship to each other (FF 3a-3b).
The Examiner reasoned that “the combination of Ryan and
Schumacher provides multiple memory modules arranged around a hub with
mirrored configuration” (Ans. 12).
Appeal 2009-002090
Application 11/417,389

11
Since the Examiner is relying on the combination to disclose the
argued limitations, and Appellant has not demonstrated that the Examiner
used impermissible hindsight in combining Ryan and Schumacher, or that
the obviousness rejection is otherwise in error, Appellant has not persuaded
us of error in the Examiner’s conclusion of obviousness for representative
claim 37.
Therefore, we affirm the Examiner’s § 103 rejection of independent
claim 37 and of claims 38-43, which fall therewith.

Group III
Claims 44-46
Appellant contends that “neither Schumacher nor Ryan teach
arranging control-address lines at an angle relative to data lines.” (App. Br.
16.) Appellant further contends that “Ryan further teaches only a single bus
extending to each memory device, not separate data and command-address
busses at different orientations relative to one another.” (App. Br. 18.)
The Examiner found that “[t]he bus lines must inherently be routed at
some angle relative to each other (e.g., 0, 180 or 360 degrees), perpendicular
(e.g., 90, 270 degrees), or anywhere in between).” (Ans. 14.)

Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Ryan and Schumacher discloses that “each command-
Appeal 2009-002090
Application 11/417,389

12
address bus having a common portion routed at an angle relative to the data
busses”?

The Examiner reasoned that “Ryan in view of Schumacher inherently
teach routing the busses at ‘an angle’ since ‘an angle’ may be broadly
construed as any angle.” (Ans. 16.) We agree that the term “an angle” can
be read on any angle.
Claim 44 also requires that each command-address bus has
“a common portion” routed at an angle relative to the data busses, however,
neither Appellant nor the Examiner has identified what is being associated
with the claimed “common portion.” It is unclear to us what the claimed
“common portion” is actually common to.
As such, we note that where a claim (and its terms) are so indefinite
that “considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims” is needed, it would be
imprudent for us to pass judgment on such a rejection (under
§ 103). See In re Steele, 305 F.2d at 862 (holding that the Examiner and the
board were wrong in relying on what at best were speculative assumptions
as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.). In the instant appealed claim 44, we find that we need to
speculate as to the meaning the phrase “a common portion routed at an
angle” in order to reach a decision on the patentability of the claimed
subject matter in view of the applied art.
Appeal 2009-002090
Application 11/417,389

13
Accordingly, we are constrained to reverse, pro forma, the Examiner’s
rejection of claims 44-46 under 35 U.S.C. § 103. We hasten to add that this
is a procedural reversal rather than one based upon the merits of and the
section 103 rejection.

Group IV
Claims 47-51
Appellant contends that “[n]either Ryan nor Schumacher teach a
command-address bus that couples two adjacent memory devices to a
memory hub that are different than two adjacent memory devices coupled to
data buses that are parallel to one another.” (App. Br. 18.)
The Examiner found that “Ryan fails to teach each command-address
bus as connecting two adjacent memory devices[,] Schumacher however
teaches arranging ICs in a paired configuration to help simplify lead routing
scheme.” (Ans. 7.)

Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Ryan and Schumacher discloses “each of the command-
address busses coupling two adjacent memory devices to the memory hub”
and “the two adjacent memory devices coupled to a command-address bus
being different than the two adjacent memory devices coupled to data busses
routed parallel to one another”?

Appeal 2009-002090
Application 11/417,389

14
Here, the Examiner reason that if Schumacher mirrored pin
assignment arrangement was used in Ryan, Ryan would be able to connect
the memory devices with a more simplified lead routing scheme (Ans. 7).
We disagree. While a mirrored pin arrangement may or may not lead to a
simplified device routing scheme, the question still remains - - Does the
combination of Ryan and Schumacher disclose command-addresses bus that
couples two adjacent memory devices? The Examiner has not shown and
we do not readily find such a feature in the cited art.
The difficulty, however, that we have with the rejection before us is
that there is no certainty from the Ryan and Schumacher references
themselves as to what specific routing is being used to carry out the
aforementioned connection between the memory devices and the hub. Ryan
merely discloses that separate command, address, and data buses or a single
bus may be used. However, there is no clear indication in Ryan that a
command-address bus is being used to couple two adjacent memory devices
to the hub, as required by claim 47.
Therefore, we cannot sustain this rejection because it would again
require too much speculation on our part. Thus, Appellant has persuaded us
of error in the Examiner’s conclusion of obviousness for representative
claim 47. Therefore, we reverse the Examiner’s § 103 rejection of
independent claim 47 and of claims 48-51, which stand therewith.

Appeal 2009-002090
Application 11/417,389

15
V. NEW GROUND OF REJECTION
We enter the following new ground of rejection:
Claims 44-46 are rejected under 35 U.S.C. § 112, second
paragraph.

Claims 44-46
As noted supra, Claim 44 recites in relevant part, “each command-
address bus having a common portion routed at an angle relative to the data
busses.” It is unclear from the aforementioned claim language how or what
the “common portion” is common to. For this reason, our analysis of this
claim leaves us in a quandary as to what it is specifying. Speculations and
assumptions would be required to decide the meaning of the terms employed
therein and the scope of claim 44. Therefore, it is our view that claim 44 is
indefinite because if fails to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
Dependent claims 45 and 46 are rejected for incorporating the same
deficiency as claim 44.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
Appeal 2009-002090
Application 11/417,389

16
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

VI. CONCLUSIONS
We conclude:
(1) Appellant has not shown that the Examiner erred in rejecting
claims 31-43;
(2) Appellant has shown that the Examiner erred in rejecting claims
44-51; and
(3) Since we have entered a new ground of rejection against claims
44-46, our decision is not a final agency action.

VII. DECISIONS
In view of the foregoing discussion,
(1) We affirm the Examiner’s rejection of claims 31-43 under
35 U.S.C. § 103(a);
(2) We reverse the Examiner’s rejection of claims 44-51 under
35 U.S.C. § 103(a); and
Appeal 2009-002090
Application 11/417,389

17
(3) We have entered a new ground of rejection against claims 44-46
under 37 C.F.R. § 41.50 (b).

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)(1)(iv) (2009).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

rwk

DORSEY & WHITNEY LLP
INTELLECTUAL PROPERTY DEPARTMENT
Columbia Center
701 Fifth Avenue, Suite 6100
SEATTLE WA 98104-7043