Ex parte KOENEMANN

Board of Patent Appeals and Interferences

Jun 23, 1998

08101641 (B.P.A.I. Jun. 23, 1998)

Attorney docket no. P0989020X1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERND K.F. KOENEMANN
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Appeal No. 95-4603
Application 08/101,6411
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ON BRIEF
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Before FLEMING, TORCZON, and CARMICHAEL, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
BACKGROUND
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-4, all of the pending claims. We
reverse.
The application is entitled "System for test data storage
reduction". The subject matter of the invention is directed
to a reduced set of test-related data for automatic test
Appeal No. 95-4603 Page 2
Application 08/101,641
equipment for logical circuitry. Claim 4 (emphasis added) is
representative of the claims on appeal:
4. A method for testing a digital circuit
device, said method comprising the steps of:
simulating test results, for a model of a
digital circuit to be tested, using simulated
test pattern bit streams generated in accordance
with a weighted, pseudo-random process having
selectable seed values;
determining from said simulating step which
seed values from a sequence of seed values
produce test results which are effective for
detecting error conditions in said digital
circuit;
storing, in a memory element, values which
are indicative of which seed values in said
sequence are to be skipped as a result of said
effectiveness determining step; and
applying a weighted, pseudo-random test
pattern bit stream to an actual digital circuit
device, said test pattern being generated using
a reduce seed sequence based upon said skipping
indicators in said memory element.
The examiner relied on the following references in
combination to reject all of all the pending claims under
35 U.S.C. § 103:
Jacobson 4,715,034 22 Dec. 1987
Eichelberger et al. (Eichelberger) 4,801,870 31 Jan. 1989
According to the examiner, Eichelberger teaches the subject
matter of the invention except for the seed-skipping function.
(Paper 4 at 4.) We take this finding as a given in reaching
our decision. The examiner finds that Jacobson inherently
teaches skipping ineffective seeds. (Paper 14 at 5.)
Appeal No. 95-4603 Page 3
Application 08/101,641
DISCUSSION
The combination of Jacobson and Eichelberger would not
have led a person having ordinary skill in the art to the
claimed subject matter. Jacobson teaches the virtue of
better-quality seeds, but he also teaches generating these
seeds by masking a random source for seed values. (10:9-38.)
This teaching is inimical to the claimed invention, which
identifies useful seeds from an existing sequence. Assuming,
arguendo, that a person having ordinary skill in the art would
have combined the references, the combination suggested by the
references would not have included seed skipping in the sense
taught in the specification and set forth in the claims.
Although we are to read claims broadly during prosecution, our
reading must be reasonable in light of the claim as a whole
and in light of the specification.
Appeal No. 95-4603 Page 4
Application 08/101,641
DECISION
The examiner's rejection of all of the claims on appeal
is
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-4603 Page 5
Application 08/101,641
INTERNATIONAL BUSINESS MACHINES CORPORATION
ATTN: LAWRENCE D. CUTTER, ATTORNEY
LARGE SCALE COMPUTING DIV.
INTELLECTUAL PROPERTY LAW (MS-P903)
522 S RD
POUGHKEEPSIE NY 12601-5400