Ex Parte Soundron

Board of Patent Appeals and Interferences

Oct 30, 2009

10402536 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AGNEL SOUNDRON
____________________

Appeal 2009-004522
Application 10/402,536
Technology Center 2100
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Decided: November 2, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14 and 17-24. Claims 15 and 16 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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A. INVENTION
According to Appellant, the invention is directed to an improvement
in test circuits for read-only memories in integrated circuits. Specifically,
the invention relates to a signature circuit of a read-only memory test circuit
that stores an expectant signature word while increasing semiconductor area
utilization and reducing manufacturing test time of integrated circuits (Spec.
1, ll. 4-8).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A circuit, comprising:

a built-in-self-test circuit having an address terminal, a data terminal,
and a resultant signature output terminal to provide a resultant signature;

a memory circuit having an address terminal and a data terminal
coupled to the address terminal and the data terminal of the built-in-self-test
circuit, respectively, and having a programmed state;

a compare circuit having a resultant signature input terminal coupled
to the resultant signature output terminal of the built-in-self-test circuit, an
expected signature input terminal and a status output terminal; and

a signature circuit, separate from the memory circuit, having an
expectant signature output terminal coupled to the expected signature input
terminal of the compare circuit such that an indication of validity of the
programmed state of the memory is present on the status output terminal of
the compare circuit, the signature circuit further having a set of conductive
lines and a selection of interconnects between the conductive lines to
provide an expected signature, the set of conductive lines and the selection
of interconnects also being separate from the memory circuit.

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C. PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Touron US 3,909,805 Sept. 30, 1975
Hsue US 5,318,921 June 7, 1994
Jamal US 5,572,712 Nov. 5, 1996

D. REJECTIONS
Claims 1-4, 6-14, and 17-24 stand rejected under 35 U.S.C. § 103(a)
over the teachings of Jamal in view of Touron.
Claim 5 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Jamal in view of Touron, and in further view of Hsue.

II. ISSUES
The issues are whether Appellant has shown that the Examiner erred
in concluding that the combination of Jamal and Touron teaches and/or
would have suggested:
1) “a signature circuit, separate from the memory circuit . . . having a
set of conductive lines and a selection of interconnects between the
conductive lines” (claim 1); and
2) “a compare circuit having a resultant signature input terminal . . . ,
an expected signature input terminal and a status output terminal” (claim 1).
In particular, the issues turn on whether Jamal in view of Touron
teaches or would have suggested a circuit “having a set of conductive lines
and a selection of interconnects between the conductive lines” that is
“separate from the memory circuit” as required by claim 1, or a “compare
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circuit” having an “expected signature input terminal” as required by claim
1.
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Jamal
1. Jamal discloses a built-in-self-test (BIST) circuitry 40 coupled to (and
separate from) a RAM circuit 42 (col. 4, ll. 33-39; Fig. 2), the BIST
circuitry 40 comprising a signature comparator that receives a
signature from MISR 50 and outputs test results (col. 5, ll. 59-65; Fig.
3).
2. The signature comparator 54 is fabricated with the expected signature
built-in, wherein subcomparators producing two test result signals are
within the signature comparator 54 (col. 6, ll. 4-6).
Touron
3. Touron discloses a memory made up of a network of work lines M1,
M2, … Mn and bit columns B1, B2, … Bp, each line communicating
with the columns via coupling, linking or memory elements (col. 2, ll.
60-64; Fig. 1).

IV. PRINCIPLES OF LAW
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
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1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id
at 416. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
The Court noted that “[c]ommon sense teaches . . . that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 420. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 421.
In affirming a determination of obviousness, the Federal Circuit has
relied, in part, on an applicant’s failure to present evidence that the
modification was “uniquely challenging or difficult for one of ordinary skill
in the art” or “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)(citing KSR, 550 U.S. at 418-19).
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One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

V. ANALYSIS
Though Appellant admits that “Jamal’s Figure 3 shows BIST circuitry
. . . and a signature comparator” (App. Br. 9), Appellant argues that “Jamal
does not show a signature circuit [having a set of conductive lines and a
selection of interconnects]” (Id.). Further, though Appellant admits that
Touron “does indeed comprise/include the conductive lines and
interconnects” (App. Br. 10), Appellant argues that “claim 1 makes it
abundantly clear that the recited conductive lines and selection of
interconnects (which are missing in Jamal) do not form part of the memory
circuit – rather, the recited conductive lines and selection of interconnects
are ‘separate from’ the memory circuit” while “the conductive lines and
interconnects of Touron . . . are indeed part of his ROM” (App. Br. 12).
The Examiner finds that “[a]n expected signature is explicitly stated to
be stored in signature comparator 54 [of Jamal], which is clearly seen to be
separate from memory 42” (Ans. 17), and that “it is impossible for the
expected signature to be a part of memory 42” (Id.). The Examiner
concludes that “‘it would have been obvious to use Touron’s ROM
comprising a set of conductive lines and selection of interconnects to store
the expected signature on [sic] in the signature comparator 54 of Jamal”
(Id.).
Thus, an issue we address on appeal is whether Appellant has shown
that the Examiner erred in concluding that the combination of Jamal and
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Touron teaches and/or would have suggested “a signature circuit, separate
from the memory circuit . . . having a set of conductive lines and a selection
of interconnects between the conductive lines” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the Specification. See In re
Van Geuns, 988 F.2d at 1184.
Claim 1 simply does not place any limitation on what the term
“signature circuit” is to be, to represent, or to mean, other than that the
“signature circuit” is “separate from the memory circuit” and “having a set
of conductive lines and a selection of interconnects to provide an expected
signature.” Thus, we broadly but reasonably construe a “signature circuit”
as any circuit that comprises conductive lines and interconnects that is
separate from a memory circuit.
Though Appellant argues that “Jamal does not show a signature
circuit [having a set of conductive lines and a selection of interconnects]”
(App. Br. 9), and that Touron does not disclose conductive lines and
selection of interconnects that are “separate from the memory circuit” (App.
Br. 12), Appellant appears to be arguing that Jamal and Touron do not
individually disclose the claimed invention. However, the Examiner has
rejected the claims based on the combination of Jamal and Touron, and
nonobviousness cannot be shown by attacking the references individually.
See In re Merck at 1097.
Jamal discloses a circuit that comprises a signature comparator and is
separate from a memory circuit (FF 1). Given our aforementioned claim
construction, we find an artisan would have understood such circuit
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comprising the signature comparator to be a signature circuit that is separate
from the memory circuit.
Further, the expected signature is stored (built-in) in the signature
comparator of Jamal (FF 2). We find the artisan would also have understood
such circuit that is separate from the memory circuit to comprise a
supplemental memory for storing the expected signature that is also separate
from the memory circuit. That is, since Jamal’s signature circuit is separate
from the memory circuit, the supplemental memory comprised therein is
also separate from the memory circuit.
As admitted by Appellant, Touron discloses a memory comprising
conductive lines and interconnects (App. Br. 10). Thus, we conclude the
artisan would have found it obvious that Jamal in view of Touron teaches or
would have suggested a signature circuit that is separate from the memory
circuit, wherein the signature circuit comprises conductive lines and
interconnects for storing the expected signature, as required by claim 1.
Though Appellant contends that if Jamal is combined with Touron,
the resulting combined device would yield interconnects and conductive
lines of Touron that would be part of the RAM 42 of Jamal (rather than
being separate from the RAM 42)” (App. Br. 12), Appellant appears to be
arguing that Touron’s memory can only be applied as Jamal’s memory
circuit, not as Jamal’s supplemental memory. However, we agree with the
Examiner that “‘it would have been obvious to use Touron’s ROM
comprising a set of conductive lines and selection of interconnects to store
the expected signature on [sic] in the signature comparator 54 of Jamal”
(Ans. 17).
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Appellant further argues that “there is no motivation to combine Jamal
and Touron” (App. Br. 13). However, the Examiner concludes that it would
have been obvious “because one of ordinary skill in the art would have
recognized that the expected signature is built-in to the signature comparator
of Jamal . . . and that the circuit structure of Touron would have provided a
way to implement a storage for the expected signature” (Ans. 10).
We agree with the Examiner that, since Jamal teaches storing the
expected signature, substitution of one known element (the memory of
Touron) for another (the supplemental memory of Jamal for storing the
expected signature) would have yielded predictable results to one of
ordinary skill in the art at the time of the invention.
That is, we find that providing a memory comprising conductive lines
and interconnects as taught by Touron to the supplemental memory of Jamal
is no more than a simple arrangement of old elements, with each performing
the same function it had been known to perform, yielding no more than one
would expect from such an arrangement. See KSR, 550 U.S. at 417.
Appellant has presented no evidence that adding the teachings of
Touron of conductive lines and interconnect to Jamal was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog, 485 F.3d at 1162 (citing KSR,
550 U.S. at 418-19). Rather, Appellant’s invention is simply an arrangement
of the well-known teaching of a memory having conductive lines and
interconnects, with the well-known teaching of a memory. Thus, the
combined teachings of the references represent merely a combination of
familiar elements according to known methods and do no more than yield
predictable results. See KSR, 550 U.S. at 416.
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Appellant also contends that “it is abundantly clear that the signature
comparator 54 of Jamal does not need to use (and therefore does not
provide) the ‘expected signature input terminal’ recited in claim 1, since the
expected signature is already built-in to the signature comparator 54 at the
time of manufacture” (App. Br. 14). In particular, Appellant argues that
“Figure 3 of Jamal shows only two (2) terminals for his signature
comparator 54” and that “[t]here is an output terminal” and “an input
terminal” that “is the one and only input terminal into the signature
comparator 54 shown in Figure 3 of Jamal.” (Id.).
However, Jamal discloses that the signature comparator comprises
subcomparators which produce test result signals by comparing the expected
signature with the input signature (FF 1-2). An artisan would have found it
obvious that the signature comparator also comprises an “expected signature
input terminal” to input the expected signature for comparison with the input
signature. That is, contrary to Appellant’s apparent argument that Jamal
discloses only one input terminal for the signature comparator, i.e. only one
input, the artisan would have understood that, to provide a comparison
result, the comparison would be between two inputs not just one input.
Although Appellant argues that the “expected signature input
terminal” is not needed in the signature comparator because “the expected
signature is already built-in,” we find that a skilled artisan would have
understood that the built-in expected signature would still be required to be
input for comparison to the input signature. Thus, we find that the expected
signature input terminal is taught, or at the least, would have been strongly
suggested by Jamal.
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Thus, Appellant has neither shown that the Examiner failed to make a
prima facie case of obviousness nor persuasively rebutted the Examiner’s
prima facie case. Accordingly, we find that the Appellant has not shown
that the Examiner erred in rejecting independent claim 1 under 35 U.S.C.
§ 103(a).

Claims 2-14 and 17-24
Appellant does not provide separate arguments for claims 2-14 and
17-24 from the rejection of claim 1 but repeats the arguments that “Touron’s
conductive lines and interconnects are part of his ROM” (App. Br. 16, 20,
and 23), “the elements of Touron relied upon by the Examiner form part of
his ROM” (App. Br. 17, 18, 21, and 24), that “the expected signature is
built-in to Jamal’s signature comparator” (App. Br. 19 and 22), that
“nowhere does Jamal disclose, teach, or suggest the claimed conductive
paths and interconnects” (App. Br. 24), and that “there is no motivation to
combine Jamal and Touron” (App. Br. 21 and 24). In fact, Appellant’s
Reply Brief does not even address claims 2-14 and 17-24 (Reply Br. 1-3).
As discussed above, we find no deficiency regarding Jamal in view of
Touron in the rejection of claim 1. Since Appellant has not provided
separate arguments, we conclude that the Appellant has not shown that the
Examiner erred in rejecting 1) claims 1-4, 6-14, and 17-24 over the
teachings of Jamal in view of Touron; and 2) claim 5 over the teachings of
Jamal in view of Touron and further in view of Hsue, under 35 U.S.C.
§ 103(a).

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VI. CONCLUSION OF LAW
(1) Appellant has not shown that the Examiner erred in finding that
claims 1-14, and 17-24 are unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-14 and 17-24 are not patentable over the prior art of
record.
VII. DECISION
We affirm the Examiner’s rejections of claims 1-14 and 17-24 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

erc

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