Ex Parte Nightingale et al

Board of Patent Appeals and Interferences

Apr 22, 2010

10142148 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW MARK NIGHTINGALE and TIMOTHY CHARLES
MACE
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Appeal 2009-014142
Application 10/142,148
Technology Center 2100
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Decided: April 22, 2010
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Before JOHN A. JEFFERY, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014142
Application 10/142,148

I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-18
under 35 U.S.C. § 134(a) (2002). We have jurisdiction under 35 U.S.C.
§ 6(b). An Oral Hearing regarding this appeal was conducted on April 13,
2010.

We reverse.

A. INVENTION
According to Appellants, the invention relates to the field of data
processing systems, and more particularly, to the testing of a design of a data
processing circuit having a plurality of bus masters connecting via a shared
bus to at least one bus slave (Spec. 1, ll. 4-6).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method of testing a design of a data processing circuit
having a plurality of bus masters connected via a shared bus to
at least one bus slave, said method comprising the steps of:

emulating by simulation with computer software a first
bus master issuing a first bus access request to make a data
transfer via said shared bus to a bus slave being emulated by
simulation with computer software;

emulating by simulation with computer software a
second bus master issuing a second bus access request to make
a data transfer via said shared bus to said bus slave;

detecting if said first bus master has blocked access to
said bus slave prior to said second emulating step, wherein, if
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said first bus master being emulated has blocked access to said
bus slave, then refusing said second bus access request and, if
said first bus master being emulated has not blocked access to
said bus slave, then granting said second bus access request;
and

generating test results indicative of expected operation of
said data processing circuit design in dependence upon whether
said second bus access request was refused or was granted.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Flynn, AMBA: Enabling Reusable On-Chip Designs, IEEE Micro,
July/August 1997, at 20-27.

ARM Limited, AMBA Specification, Rev. 2.0 (1999) (hereinafter
“AMBA”).

Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.1
Claims 1-3, 8, 10-12, and 17 stand rejected under 35 U.S.C. § 102(b)
over the teachings of Flynn.

1 Though the Examiner indicates that the 35 U.S.C. § 112 rejection of claims
1-18 has been withdrawn (see Ans 2 (indicating “the 35 U.S.C. 112 rejection
is withdrawn); see also Ans. 3-7 (omitting § 112 rejections from the
Grounds of Rejection section), the Examiner nevertheless continues to argue
why claims 1-18 lack the required written description (Ans. 9, 10).
Accordingly, we will address the rejection under 35 U.S.C. § 112, first
paragraph, as an outstanding rejection on appeal. However, we will consider
the rejection of claims 1-18 under 35 U.S.C. § 112, second paragraph, and
the rejection of claims 10-20 under 35 U.S.C. § 101 to be withdrawn on
appeal.
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Claims 4-7, 9, 13-16, and 18 stand rejected under 35 U.S.C. § 103(a)
over the teachings of Flynn in view of AMBA.

II. ISSUES
Has the Examiner erred in holding that:
A. Claims 1-18 fail to comply with the written description
requirement? In particular, the issue turns on whether a skilled artisan can
reasonably conclude Appellants had possession of how bus masters are
emulated “by simulation with computer software” (claim 1).
B. Flynn in view of AMBA would have taught or suggested
“emulating by simulation with computer software a first bus master issuing a
first bus access request to make a data transfer via said shared bus to a bus
slave being emulated by simulation with computer software” and “emulating
by simulation with computer software a second bus master issuing a second
bus access request to make a data transfer via said shared bus to said bus
slave” (claim 1)? In particular, the issue turns on whether Flynn would have
taught or suggested any simulation with computer software of a bus master
issuing a bus access request to a bus slave.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Declaration of Dr. Mudge on November 5, 2007 (Mudge I)
1. Mudge I declares that the specifics of how a bus master, bus slave,
access requests and detecting steps are emulated are set out in the
original filed specification (Mudge I at 5), wherein one of ordinary
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skill in the art, in view of the specification, would understand that the
specification contains a written description of “how bus master are
emulated by simulation with computer software” as claimed (id. at 6).
Flynn
2. Flynn discloses supporting on-chip test through a test interface
controller (TIC) module, an integrated bus master, wherein the TIC
provides a 32-bit parallel access port suitable for manufacturing and
on-circuit test by controlling the embedded system’s external memory
interface (p. 25; Fig. 3).
3. Prototyping platform, PID7T, permits the modeling of both on-chip
and off-chip memory subsystems, wherein the PID7T includes an
external static memory emulation bank that is user-programmable and
split into two banks of emulated SRAM or ROM, each with DIP
switch configuration of 32-, 16-, and 8-bit-wide memory with one to
four wait states (p. 26; Fig. 5).
4. The PID7T integrates seamlessly with software development toolkits
(id).

IV. PRINCIPLES OF LAW
35 U.S.C. § 112, 1st paragraph
“The specification shall contain a written description of the invention
… in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains … to make and use the same.” 35
U.S.C. § 112, first paragraph. To satisfy the written description requirement,
a patent specification must describe the claimed invention in sufficient detail
that a skilled artisan can reasonably conclude the inventor had possession of
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the claimed invention. See Moba, B.V. v. Diamond Automation, Inc., 325
F.3d 1306, 1319 (Fed. Cir. 2003).
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

V. ANALYSIS
35 U.S.C. § 112, first paragraph
Appellants contend that “paragraph 16 of the Mudge I Declaration
confirms that the specification as originally filed contains ‘the specifics of
how a bus master, bus slave, access requests and detecting steps are
emulated’ and where that information is located in figures 3-6 and in the
specification discussion of those figures” (App. Br. 15). In particular,
Appellants contend that “Dr Mudge confirms that one of ordinary skill in the
art ‘would understand that the specification contains a written description’”
(id.). Appellants further contend that “the Examiner does not dispute any
fact statement made by Dr. Mudge or does she dispute his expert
credentials” (App. Br. 9).
The Examiner responds that “Examiner has considered the opinion
presented in the aforementioned declarations and rebutted said opinion
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below” and thus “this argument is now moot” (Ans. 8). In particular, the
Examiner notes that “figure 3 and the accompanying description [of the
Specification] is a listing of files that are used in the simulation/emulation”
whereas “[d]escribing the input files does not sufficiently disclose how bus
masters are emulated by simulation with computer software” (Ans. 9).
Thus, we address on this appeal whether a skilled artisan can
reasonably conclude Appellants had possession of how bus masters are
emulated “by simulation with computer software” (claim 1).
To satisfy the written description requirement, Appellants’
Specification must describe how bus masters are emulated “by simulation
with computer software” in sufficient detail that a skilled artisan can
reasonably conclude the inventor had possession of the claimed invention.
See Moba, 325 F.3d at 1319.
As set forth in Mudge I Declaration, specifics of how a bus master,
bus slave, access requests and detecting steps are emulated are set out in the
original filed specification (FF 1). In view of Mudge I and Appellants’
Specification, we agree with Appellants that the Specification describes how
bus masters are emulated by simulation with computer software object in
sufficient detail, i.e., such that a skilled artisan can reasonably conclude the
inventor had possession of the claimed invention. That is, as declared by
Mudge I, “one of ordinary skill in the art, in view of the specification, would
understand that the specification contains a written description of ‘how bus
master are emulated by simulation with computer software’” (id).
As Appellants contend, “the Examiner does not dispute any fact
statement made by Dr. Mudge or does she dispute his expert credentials”
(App. Br. 9). Thus, we cannot uphold the Examiner’s finding of lack of
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written description where much of Appellants’ relied-upon evidence in
Mudge I was dismissed in a conclusory fashion by the Examiner. That is,
the Examiner dismisses Mudge I as “moot”, and merely addresses the
Specification by finding that “[d]escribing the input files [by the
Specification] does not sufficiently disclose how bus masters are emulated
by simulation with computer software” (Ans. 9). Where the evidence such
as a Declaration is insufficient to overcome the rejection, the examiner must
specifically explain why the evidence (i.e., the Declaration and not the
Specification) is insufficient. See M.P.E.P § 716.01(B) (8th ed., Rev. 6,
Sept. 2007).
Accordingly, Appellants have shown the Examiner erred in
concluding that claim 1, independent claim 10 falling with claim 1, and
claims 2-9 and 11-18 depending from claims 1 and 10 respectively, fail to
comply with the written description requirement. We therefore reverse the
rejection of claim 1-18 under 35 U.S.C. § 112, first paragraph.

35 U.S.C. § 102(b)
Claims 1, 2, 3, 8, 10-12, and 17
Appellants contend that, as established by the Mudge II Declaration,
Flynn “does not relate to ‘simulation with computer softrware’ as required
by claim 1” but instead describes “the use of a prototyping platform PID7T
for design evaluation” which “in teaching ‘hardware’ has nothing to do with
‘simulation with computer software’ as required by independent claims 1
and 10” (App. Br. 19-20). In particular, Appellants contend that, as testified
by the Mudge II Declaration, Flynn contains “no description or suggestion
of ‘emulating’ either first or second ‘bus masters’ and their ‘issuing’ of
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first/second ‘bus access requests,’ because the only emulation described in
Flynn is the ‘external static memory emulation bank’ which comprises two
banks of ‘emulated SRAM or ROM’” (App. Br. 20).
In response, the Examiner finds that “[t]he Flynn reference teaches a
prototyping platform PID7T for design evaluation and ‘software and
hardware development’” wherein “[t]he reference explicitly states ‘The
PID7T also integrates seamlessly with the ARM software development
toolkits’” (Ans. 12). According to the Examiner, “designers can use the
software development toolkits to implement their design, and validate said
software using the provided hardware” (id.).
Accordingly, an issue we address on appeal is whether Flynn in view
of AMBA teaches or would have suggested “emulating by simulation with
computer software a first bus master issuing a first bus access request to
make a data transfer via said shared bus to a bus slave being emulated by
simulation with computer software” and “emulating by simulation with
computer software a second bus master issuing a second bus access request
to make a data transfer via said shared bus to said bus slave” (claim 1). In
particular, we address whether Flynn teaches or would have suggested any
simulation with computer software of a bus master issuing a bus access
request to a bus slave.
After reviewing the record on appeal, we agree with Appellants. In
particular, though Flynn discloses testing through a test interface controller
(TIC) module, such testing is through controlling the memory interface (FF
2), wherein Prototyping platform, PID7T, includes an external static
memory emulation bank that is user-programmable and split into two banks
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of emulated SRAM or ROM (FF 3). That is, in Flynn, it is the SRAM or
ROM that is emulated (id.).
Although we agree with the Examiner that Flynn’s PID7T integrates
seamlessly with software development toolkits (FF 4), we cannot find any
teaching of emulating by simulation with computer software a bus master
issuing a bus access request to make a data transfer via the shared bus to the
bus slave, as required by claim 1, in the sections referenced by the
Examiner. In fact, the emulation in Flynn is of an SRAM or ROM (FF 3),
and there is no teaching in the sections pointed out by the Examiner of any
emulation of a bus master issuing a bus access request to make a data
transfer, contrary to the Examiner finding.
As such, we will reverse the rejection of representative claim 1,
independent claim 10 standing therewith, and claims 2, 3, 8, 11, 12, and 17
depending respectively therefrom over Flynn.

Claims 4-7, 9, and 13-16
We also find that AMBA does not cure these deficiencies of Flynn.
As such, we will reverse the rejection of claims 4-7, 9, and 13-16 over Flynn
in view of AMBA.

VI. CONCLUSION
Appellants have shown that the Examiner erred in finding claims 1-18
as failing to comply with the written description requirement under 35
U.S.C. § 112, first paragraph, in holding claims 1, 2, 3, 8, 10-12, and 17
unpatentable over the teachings of Flynn under 35 U.S.C. § 102(b), and in
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holding claims 4-7, 9, 13-16 and 18 unpatentable over the teachings of Flynn
in view of AMBA under 35 U.S.C. § 103(a).

VII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1-18 is
reversed.

REVERSED

peb

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