Ex Parte Song et al

Patent Trial and Appeal Board

Jun 22, 2016

12778544 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121778,544 05/12/2010
49267 7590 06/24/2016
TUTUNJIAN & BITETTO, P,C
401 Broadhollow Road, Suite 402
Melville, NY 11747
FIRST NAMED INVENTOR
Peilin Song
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
ATTORNEY DOCKET NO.
YOR920100109US1
(163-334)
CONFIRMATION NO.
6619
EXAMINER
RACIC, MILENA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEILIN SONG and FRANCO STELLAR!
Appeal2014-004181 1
Application 12/778,5442
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-12, 14--16, and 18-27. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
July 16, 2013), the Examiner's Answer ("Ans.," mailed Dec. 17, 2013), the
Final Office Action ("Final Act.," mailed Feb. 27, 2013), and the
Specification ("Spec.," filed May 12, 2010).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 3.
Appeal2014-004181
Application 12/778,544
STATEMENT OF THE CASE
The Appellants' invention is directed to "a system and method for
localization and resolvability of an integrated circuit using a set of stimuli to
provide varying images for analyzing of the circuit." Spec. i-f 1.
Claims 1, 10, 11, and 20 are the independent claims on appeal. Claim
1 (Claims App.) is exemplary of the subject matter on appeal and is
reproduced below (bracketing added for reference):
1. A method for localization and resolvability of an
integrated circuit comprising:
[a] selecting one or more electrical stimuli to be applied to
a device under test such that the electrical stimuli are chosen to
provide a baseline image and a distinguishing image effect as a
result of the chosen stimuli when applied to the device under test;
[b] applying the one or more electrical stimuli to the
device under test;
[ c] measuring emissions from the device under test to
provide a measurement data set from the one or more electrical
stimuli using one or more measurement tools for collecting the
baseline image and the distinguishing image effect; and
[ d] analyzing the measurement data set using a processor
to localize and evaluate circuit structures by comparing the
baseline image and the distinguishing image effect.
REJECTIONS
Claim 27 stands rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Claims 1-12, 14--16, and 18-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stellari et al., "High-Speed CMOS
Circuit Testing by 50 ps Time- Resolved Luminescence Measurements,"
IEEE Transactions on Electron Devices, vol. 48, no. 12, Dec. 2003
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Application 12/778,544
("Stellari") and Comelli et al., "Analyzing Integrated Circuit at Work With a
Picosecond Time-Gated Imager," Optics Express, vol. 13, no. 25, Dec. 2005
("Comelli").
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Written Description Requirement
The Examiner concludes that claim 27 fails to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph, because the
limitation "figure of merit that exceeds a predetermined threshold" is not
described in the Specification so as to reasonably convey to one of skill in
the relevant art that the inventors had possession of the invention. See Final
Act. 2-3. The Examiner finds that the Specification "show[s] variations
(could be high or low) and calculating some 'higher FOM' where the
measurements are not taken in the regions where there is no switching
activity." Ans. 2. The Examiner further finds that "[t]hreshold is defined as
the point that must be exceeded to begin producing a given effect or result or
to elicit a response, which means there must be a value that the analysing
points are compared to in order to determine if its exceeded or not," which
the Specification does not describe. Ans. 3.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/778,544
The Appellants argue that there is no in haec verba requirement and
that the Specification inherently discloses a predetermined threshold of zero.
See Appeal Br. 10. The Appellants direct attention to paragraph 51 4 of the
Specification that recites
[b ]y refining the analysis in the ROI with higher FOM, a plot can
be obtained with higher resolution showing that, e.g., actually
two gates are switching instead of just one. By focusing only in
these smaller areas, one can avoid wasting time in calculating
FOM in a region with no switching activity to start.
Id. Thus, the Appellants argue, the Specification inherently discloses a
threshold because "[ o ]ne cannot refine analysis in regions with higher
figures of merit if one does not have some threshold to be 'higher' than."
Id; see also id. at 11.
We find unpersuasive the Appellants' argument that refining the
analysis with "higher FOM" inherently discloses a "predetermined
threshold" as recited in claim 27. The term "higher" is a comparative term,
and, thus, the "higher FOM" can be based on changing criteria, for example,
the top 10%, or top 5 values, and may not necessarily be a based on a
"predetermined threshold."
Therefore, we are not persuaded of error on the part of the Examiner
in the rejection of claim 27 under 35 U.S.C. § 112.
4 The Appellants rely on paragraph 53 of the Specification (Appeal Br. 10),
but the quoted sentence is recited in paragraph 51 on page 1 7 of the
Specification. Thus, we address the argument as referring to paragraph 51
of the Specification.
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Appeal2014-004181
Application 12/778,544
Obviousness
Claims 1-12, 14--16, and 18-25
The Appellants contend the rejection of independent claims 1, 10, 11,
and 20 is in error because the combination of Stellari and Comelli does not
teach "the comparison of two images to localize and evaluate circuit
components" as required by each of the independent claims. Appeal Br. 13-
14. Specifically, the Appellants argue that Comelli's "'comparison' cited by
the Examiner is wholly unrelated to the two different 'images,"' because the
comparison described in Comelli is for comparing plots of emissions at
different time intervals and is "used for the sole purpose of showing the
temporal evolution of the circuit." Appeal Br. 15.
The Examiner finds, in relevant part, that Stellari discloses analyzing
the measurement data set to localize and evaluate structures, as partially
recited in limitation [ d], but does not explicitly disclose analyzing by
comparing a baseline image and distinguishing image effect, as partially
recited in limitations [c] and [d]. Final Act. 4--5. The Examiner cites to
Comelli for those features. Id. at 5. The Examiner determines it would have
been obvious to one of ordinary skill in the art to modify the method of
Stellari to include providing and comparing a baseline image and a
distinguishing image effect, as taught by Comelli, "in order to detect
switching of the many ports that makes it suitable to detect simultaneous
effect." Id. (citing Comelli 3).
The Appellants' arguments are unpersuasive at least because they are
arguments against the art individually when the Examiner relies on the
combination of Stellari and Comelli to teach the limitation. The Appellants
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Application 12/778,544
do not present persuasive evidence why the Examiner's findings or
. .
reasonmg are m error.
For example, the Appellants do not present persuasive evidence why
the Examiner's finding that Stellari discloses analyzing the measurement
data set to localize and evaluate the circuit structures (Final Act. 4) is in
error. The Appellants further do not present persuasive evidence why the
Examiner's finding that Comelli teaches providing and comparing a baseline
image and a distinguishing image effect is in error. Rather, the Appellants
argue that Comelli does not "teach or suggest localization by the comparison
of two images." Appeal Br. 15. We find this unpersuasive at least because,
as noted above, the Examiner relies on the combination of Stellari and
Comelli to teach analyzing data by comparing images to localize and
evaluate, and not Comelli alone. Further, Comelli discloses that the data
shown in Figure 3 "can be analyzed in both the spatial and temporal
domains," as shown in Figures 4(a) and 4(b). Comelli 10080. Thus, we
disagree that there is no connection between the localization and comparison
of Comelli (see Appeal Br. 14), but determine that the Examiner's finding
that Comelli teaches analyzing data by comparison of the images for the
intended use of localization (see Final Act. 5, Ans. 3--4) is adequately
supported. We also find unpersuasive the Appellants' argument that "the
sole purpose of [the comparison of Comelli is for] showing the temporal
evolution of the circuit." Appeal Br. 15. Both observing a single frame to
observe the position of switching transistors in one time slice and comparing
two frames to reconstruct a temporal profile can be performed for the
intended use of localizing and evaluation of circuit structures. See Comelli
10077 (disclosing that a feature of the device is to detect simultaneous
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Application 12/778,544
events by viewing and comparing images). The Appellants also do not
present persuasive evidence why the Examiner's reasoning for combining
Stellari and Comelli is in error.
Thus, we are not persuaded of error on the part of the Examiner in
rejecting claims 1, 10, 11, and 20 as unpatentable over Stellari and Comelli.
Therefore, we sustain the rejection of independent claims 1, 10, 11, and 20.
We also sustain the rejection of dependent claims 2-9, 12, 14--16, 18, 19,
and 21-25 that the Appellants do not separately argue. See Appeal Br. 16.
Claims 26 and 27
The Appellants' argument that the rejection of claim 26 is in error for
the same reasons as for claim 1, from which it depends (Appeal Br. 16), is
unpersuasive for the reasons discussed above.
However, we do find persuasive the Appellants' further argument that
Stellari, upon which the Examiner relies, does not disclose that the
"analyzing comprises calculating a figure of merit for each region of interest
that represents a degree of switching activity in the respective region of
interest," as recited in the claim. Appeal Br. 16. The Examiner finds that
Stellari discloses the limitation "by taking measurements different optical
efficiencies are calculated (values are taken when NAND are switching)"
and that "Stellari's different optical efficiencies are some values/quantities
that characterize the switching activity of the NAND chip." Ans. 5---6.
Although Stellari discloses a figure of merit such as optical efficiency, we
find persuasive the Appellants' argument that Stellari' s disclosure of
detecting and measuring optical efficiencies does not meet the claimed
calculation of a figure of merit. See Appeal Br. 17.
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Therefore, we do not sustain the rejection of dependent claim 26. We
thus also do not sustain the rejection of claim 27 that depends from claim 26.
Cf In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
DECISION
The rejection of claim 27 under 35 U.S.C. § 112 is AFFIRMED.
The rejection of claims 1-12, 14--16, and 18-25 under 35 U.S.C.
§ 103(a) is AFFIRMED.
The rejection of claims 26 and 27 under 35 U.S.C. § 103(a) is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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