Rambus Inc.

Patent Trials and Appeals Board

Aug 31, 2020

2019005861 (P.T.A.B. Aug. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/143,299 04/29/2016 Jared Zerbe 2016023/
RA208CIPC2C1C1B74
1257
78408 7590 08/31/2020
MARC P. SCHUYLER / Rambus
P.O. BOX 2535
SARATOGA, CA 95070
EXAMINER
HOSSAIN, SAZZAD
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
08/31/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JARED ZERBE, PAK SHING CHAU, and
WILLIAM\ FRANKLIN STONECYPHER
____________________

Appeal 2019-005861
Application 15/143,2991
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF, and
IRVIN E. BRANCH, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2–6, 8–16, and 18–21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention is a method and apparatus for evaluating and
optimizing a signaling system. A pattern of test information is generated in a
transmit circuit, produced by a linear feedback shift register (LFSR). Spec.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states the real party in interest is Rambus Inc.
Appeal Br. 1.
2 Claim 1 has been cancelled. Claims 7 and 17 do not stand rejected.
Appeal 2019-005861
Application 15/143,299

2
6. A similar pattern of information is generated in a receive circuit and is
used as a reference. Id. The transmit circuit can operate in a normal mode or
a test mode. In the normal mode, a shift register receives data via a data
input, and shifts the bits of data to the right, providing each bit as an output.
Spec. 9. In the test mode, the shift register and a test loop function to
generate a test pattern for transmission. Id.
Claim 2 is exemplary of the claims on appeal:
2. An integrated circuit to communicate with a receive circuit via
a conductive medium which is external to the integrated circuit,
the integrated circuit comprising:
a connection to electrically connect to the conductive medium;
an output driver to transmit a serial output signal via the
connection; and
a shift register to receive a data word and to serially output bits
of data to the output driver dependent on the data word, the
output driver to transmit the serial output signal dependent on the
bits of data;
wherein the shift register is part of a linear feedback shift register
circuit of the integrated circuit, the shift register is operable in a
first mode, in which the data word is serially output by the shift
register to form the bits of data, and
the shift register is operable in a second mode, in which the linear
feedback shift register circuit deterministically generates the bits
of data in dependence on combining the data word with feedback
bits generated by the linear feedback shift register circuit.

Appeal 2019-005861
Application 15/143,299

3
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
NAME REFERENCE DATE
Thomas et al.
“Thomas”
US 4,586,159 Apr. 29, 1986
Lee et al. “Lee” US 5,029,171 July 2, 1991
Bhawmik US 5,680,543 Oct. 21, 1997

Claims 2–6, 8, 10,3 11, 13–16, 18, 20, and 21 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Lee.
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Bhawmik.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Thomas.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Feb. 28, 2019), the Reply Brief (“Reply Br.,” filed July
31, 2019), and the Examiner’s Answer (“Ans.,” mailed June 30, 2019) for
their respective details.
ISSUES
Appellant’s arguments present us with the following issues:
1. Does Lee teach the claimed integrated circuit?
2. Does Lee teach a shift register that is part of a linear feedback shift
register circuit?
3. Does Lee teach a shift register operable in a first mode, in which a
data word is serially output by the shift register to form bits of data, and

3 Claim 10 is not included in the Examiner’s statement of rejection, but is
discussed in the body of the rejection. Final Act. 16.
Appeal 2019-005861
Application 15/143,299

4
operable in a second mode in which a linear feedback shift register circuit
deterministically generates the bits of data in dependence on combining the
data word with feedback bits generated by the linear feedback shift register
circuit?
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)).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).
ANALYSIS
Claims 2–6, 8, 10, 11, 13–16, 18, 20, and 21
Independent claims 2 and 13 recite “[a]n integrated circuit to
communicate with a receive circuit via a conductive medium [conductive
media] which is [are] external to the integrated circuit.” Independent claims
2 and 13 further recite a shift register which “is part of a linear feedback
shift register circuit.” Independent claims 2 and 13 further recite that the
shift register “is operable in a first mode, in which the data word is serially
output by the shift register to form the bits of data,” and “is operable in a
second mode, in which the linear feedback shift register circuit
deterministically generates the bits of data in dependence on combining the
Appeal 2019-005861
Application 15/143,299

5
data word with feedback bits generated by the linear feedback shift register
circuit.”
Appellant argues that Lee does not teach an integrated circuit. Appeal
Br. 5. An “integrated circuit” is defined as “[a] complete circuit, including
active and passive electronic devices and their interconnections, that is made
on a single substrate.” A “monolithic integrated circuit” has all the circuit
components made into or on top of a single chip of semiconductor.” Oxford
Dictionary of Electronics and Electrical Engineering (5th Edition), 2018.
https://www.oxfordreference.com/view/10.1093/acref/9780198725725.001.0
001/acref-9780198725725-e-2377?rskey=AaYpKa&result=2384. Retrieved
August 10, 2020. We agree with Appellant that Lee teaches several discrete
electronic components, rather than a complete circuit made on a single
substrate or on top of a single semiconductor chip. Thus, we find that Lee
does not teach an “integrated circuit” as required by the claims.
The Examiner finds that Lee’s four bit shift registers 156, 158
correspond to the claimed shift register. Final Act. 12. Lee teaches that shift
registers 156 and 158 are part of Application Interface Unit 20, portrayed at
the bottom right of Figure 1 and illustrated in detail in Figure 5. Appellant’s
claims also recite that the claimed shift register is part of a linear feedback
shift register circuit. The Examiner finds that Lee’s LFSR 16 and shift
registers 156 and 158 are connected together to form a serial scan register
chain. Final Act. 13; Lee, col. 8:36–38. Lee, however, discloses here only
that shift registers 156 and 158 form such a serial scan register chain. Lee
Appeal 2019-005861
Application 15/143,299

6
does not teach that shift registers 156, 158 are part of a linear feedback shift
register circuit, as the claims require.
Appellant further argues that Lee does not teach a shift register
operable in a first mode in which a data word is serially output by the shift
register to form bits of data, and operable in a second mode in which the
LFSR deterministically generates the bits of data in dependence on
combining the data word (received by the shift register) with feedback bits
generated by the LFSR, as required in claim 2. Appeal Br. 7-9.
We agree with Appellant’s contention that Lee does not teach
structure in which a data word is processed in two different ways according
to the mode of the shift register. Appeal Br. 8. We further find that the linear
feedback shift register 16 of Lee, identified by the Examiner as
corresponding to the LFSR of the claim, does not operate to
deterministically generate the bits of data in dependence on combining the
data word with feedback bits generated by the LFSR. We agree with
Appellant that Lee teaches a structure where Application Interface Unit 20
effectively has a multiplexer that either selects an output of Lee’s LFSR 16,
or selects a signal from combinatorial logic system 164. Appeal Br. 7.
As a consequence of the deficiencies we find in Lee, we find that Lee
does not teach all the limitations of independent claims 2 and 13. We do not
sustain the § 102(b) rejection of claims 2–6, 8, 10, 11, 13–16, 18, 20, and 21
as being anticipated by Lee.
Claims 9 and 19
Claim 9 depends from independent claim 2, and claim 19 depends
from independent claim 13.
Appeal 2019-005861
Application 15/143,299

7
We do not sustain the rejection of claims 2 and 13, supra. We have
reviewed Bhawmik, and we find that Bhawmik does not remedy the
deficiencies of Lee, described supra. Accordingly, we do not sustain the
§ 103(a) rejection of claims 9 and 19 over Lee and Bhawmik, for the reasons
expressed supra with respect to the rejection over Lee alone.
Claim 12
Claim 12 depends from independent claim 2.
We do not sustain the rejection of claims 2 and 13, supra. We have
reviewed Thomas, and we find that Thomas does not remedy the
deficiencies of Lee, described supra. Accordingly, we do not sustain the
§ 103(a) rejection of claim 12 over Lee and Thomas, for the reasons
expressed supra with respect to the rejection over Lee alone.
CONCLUSION
1. Lee does not teach the claimed integrated circuit.
2. Lee does not teach a shift register that is part of a linear feedback
shift register circuit.
3. Lee does not teach a shift register operable in a first mode, in which
a data word is serially output by the shift register to form bits of data, and
operable in a second mode in which a linear feedback shift register circuit
deterministically generates the bits of data in dependence on combining the
data word with feedback bits generated by the linear feedback shift register
circuit.
The Examiner’s decision to reject claims 2–6, 8–16, and 18–21 is
reversed.

Appeal 2019-005861
Application 15/143,299

8
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–6, 8, 10,
11, 13–16,
18, 20, 21
102 Lee 2–6, 8, 10,
11, 13–16,
18, 20, 21
9, 19 103 Lee, Bhawmik 9, 19
12 103 Lee, Thomas 12
Overall
Outcome
2–6, 8–16,
18–21

REVERSED