Ex Parte Kodihalli et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10981219 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AMAR GUETTAF and HIMAKIRAN KODIHALLI
____________________

Appeal 2009-012464
Application No. 10/981,2191
Technology Center 2800
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Before MAHSHID D. SAADAT, MARC S. HOFF, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 4-6.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Broadcom Corporation.
2 Claims 1-3 and 7-12 stand withdrawn from consideration as being drawn to
a non-elected invention.
Appeal 2009-012464
Application 10/981,219

2
Appellants’ invention concerns a circuit comprising a shared resource,
a plurality of clients, and a testing circuit. The plurality of clients are
connected to the shared resource. The testing circuit disables all but one of
the clients while inputting a test pattern into the circuit (Spec. ¶ [0011]).
Claim 4 is exemplary of the claims on appeal:
4. A circuit for performing a function, said circuit comprising:
a shared resource;
a plurality of clients connected to the shared resource; and
a testing circuit operably configured to disable all but one of the
clients while inputting a test pattern into the circuit.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Nadeau-Dostie US 6,487,688 B1 Nov. 26,
2002Claims 4-6 stand rejected under 35 U.S.C. § 102(a) as being anticipated
by Nadeau-Dostie.
Throughout this decision, we make reference to the Substitute Appeal
Brief (“App. Br.,” filed Oct. 20, 2008), the Reply Brief (“Reply Br.,” filed
March 16, 2009), and the Examiner’s Answer (“Ans.,” mailed Jan. 21, 2009)
for their respective details.
ISSUE
Appellants argue, inter alia, that Nadeau-Dostie does not teach a
testing circuit operably configured to disable all but one of the clients while
inputting a test pattern into the circuit. Specifically, Appellants contend that
Nadeau-Dostie teaches “disabling all of the drivers . . . when the plurality
of memory elements are configured in scan mode” (App. Br. 6).
Appellants’ contentions, and the Examiner’s findings, present us with
the following issue:
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Application 10/981,219

3
Does Nadeau-Dostie teach disabling all but one of the clients (i.e.,
drivers) while inputting a test pattern into the testing circuit?
FINDINGS OF FACT
Nadeau-Dostie
1. Nadeau-Dostie teaches a DecoderEnable signal that is inactive
“when data is being shifted in or out of the scan chains, i.e., when the shift
enable signal is active” (col. 5, ll. 45-47).
2. Nadeau-Dostie further teaches that “when the DecoderEnable
signal is inactive, the control circuit disables all of the tri-state drivers” (col.
5, ll. 43-45).
PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
ANALYSIS
The Examiner finds that Nadeau-Dostie teaches “a testing circuit
operably configured to disable all but one of the clients while inputting a test
pattern into the circuit,” as independent claim 4 requires (Ans. 3). We do not
agree with the Examiner’s finding.
Nadeau-Dostie teaches a testing circuit with tri-state drivers (50), and
a shift register “scan chain” (22, 24, 26, 28, 30), just as Appellants do (Fig.
1). Nadeau-Dostie teaches a DecoderEnable signal that is inactive “when
data is being shifted in or out of the scan chains, i.e., when the shift enable
signal is active” (FF 1). Nadeau-Dostie further teaches that “when the
DecoderEnable signal is inactive, the control circuit disables all of the tri-
Appeal 2009-012464
Application 10/981,219

4
state drivers” (FF 2, emphasis added). Therefore, we find that Nadeau-
Dostie teaches disabling all of the tri-state drivers (“clients” in the appealed
claims) while data is being shifted in or out of the scan chains (“while
inputting a test pattern”). This means that Nadeau-Dostie fails to teach
disabling all but one of the clients while inputting a test pattern into the
circuit, as claim 4 requires.
We therefore find that the Examiner erred in rejecting claims 4-6 as
being anticipated by Nadeau-Dostie. We will not sustain the § 102 rejection.
CONCLUSION
Nadeau-Dostie does not teach disabling all but one of the clients (i.e.,
drivers) while inputting a test pattern into the testing circuit.
ORDER
The Examiner’s rejection of claims 4-6 is reversed.
REVERSED

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