NON-FINAL OFFICE ACTION
This Non-final office action addresses U.S. Application No. 18/533,672, which is a reissue application of U.S. Application No. 16/931,933 (the “933 Application”), entitled “METHOD OF CONTROLLING ON-DIE TERMINATION AND MEMORY SYSTEM PERFORMING THE SAME”, which issued as U.S. Patent No. 11,302,384 (the “384 Patent") on April 12,2022.
BRIEF SUMMARY OF THE PROCEEDING
Broadening: The instant reissue application is file within two years of issue of the 384 Patent.
Patent Term: Based upon and updated review of the file record Examiners find that the Patent term has not expired.
Litigation: Base upon Examiners review of the file itself, Examiners find that the 384 Patent is not involved in litigation.
AMENDMENT
Applicant filed the reissue application on December 8, 2023, which included a preliminary amendment (the "2023 Preliminary Amendment"). In the 2023 Preliminary Amendment, Patent claims 1, 6-14, 16-19 were amended, and claim 20 was added. The 2023 Preliminary Amendment has been considered and entered. This action is in response to the 2023 Preliminary Amendment.
STATUS OF CLAIMS
The 384 Patent issued with claims 1-19.
As of the date of this Office Action, the status of the claims is:
Patent claims 1, 6-14 and 16-19 were amended.
Patent claims 2-5 and 15 were original as in the 384 Patent.
New claim 20 was added.
Accordingly, claims 1-20 are subject to the examination of this instant reissue application. Of these, claims 1, 14 and 18 are independent claims.
PRIORITY
Examiners acknowledge that the present application is a reissue of the 384 Patent that issued from 933 Application. Examiners further acknowledge the claim of foreign priority to KR 10-2019-0160408, filed December 5, 2019.
CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
A. Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
B. Claim Interpretation Under 35 U.S.C. §112(f)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(f) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(f) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2) Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(f). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find herein that claims 14-19 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Each such limitation will be discussed in turn as follows.
B1. FL #1: “a memory controller…” (Claims 14-17)
A first means-plus-function phrase is recited in claims 14-17, which recites “a memory controller…” or hereinafter FL #1. Examiners determine herein that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #1 in claim 14 recites:
“a memory controller configured to control the plurality of memory ranks, the memory controller configured to:
enable on die termination (ODT) circuits of the plurality of memory ranks into an initial state;
set a resistance value of a first ODT circuit of a non-target memory rank among the plurality of memory ranks to a first resistance value in response to a write operation on a target memory rank among the plurality of memory ranks; and
set a resistance value of the first ODT circuit of the non-target memory rank among the plurality of memory ranks to a second resistance value in response to a read operation on a target memory rank among the plurality of memory ranks, wherein the first resistance value is configured to be different from the second resistance value”.
(B1)(a) Claim Phrase FL #1 Functional
Examiners find that FL #1 is functional. Examines find this limitation recites combination of generic structures of a controller along with special functions. Examiners find FL #1 is functional on the basis of the special functions being performed by the controller.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the function within FL #1 will have its ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. While the FL #1 uses the term controller, Examiners find this term is being used as a generic structure, but a controller itself is not a sufficient structure for performing the special functions. Thus, while FL #1 does recite some structure, i.e., a controller, this structure alone are not sufficient structures for performing the entire function of FL #1.
Controller: "A device that other devices rely on for access to a computer subsystem." Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994.
In view of the forgoing findings, Examiners find that while controller implies some structure, i.e., a generic controller, Examiners find nothing in the specification, prosecution history or the prior art to construe “controller…” in FL #1 as the name of a sufficient structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(f). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Specifically, Examiners are relying on WIT2 as discussed above. Rather Examiners find that controller merely used in a generic sense as a nonce term equivalent to means as a generic base structure in association with special functions. Accordingly, Examiners do not find that the simple use of controller is a sufficient structure for performing the claimed special functions recited in FL #1 and thus conclude FL #1 invokes interpretation under §112(f).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the entirety of FL #1, the corresponding structure for FL#1 is both hardware structure and algorithm structure. The hardware structure is: plurality of memory dies DRAM D11-D14 and the host die 730 (SoC, CPU, GPU). The Algorithm structure are shown in Figs. 5 and 15. Moreover, the corresponding algorithm structure for first and second resistance change is seen in col. 15, line 58 - col. 16, lines 10. See Figs. 5, 15 and 22 and the following paragraph from the specification:
“Referring to FIG. 22, a 2.5 D chip structure 700 may be a chip structure in which a high bandwidth memory (HBM) 740 and a host die 730 are connected using an interposer layer 720. The HBM 740 includes memory dies D11-D14 and the host die functions as a controller (e.g., a memory controller).” (col. 20, lines 60-65)
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Figs. 5, 15 and 22 of the 384 Patent.
As provided above, a limitation that invokes 35 U.S.C. §112(f) is limited to the corresponding structure as described in the specification. Thus, FL #1 will be limited to those structures disclosed above.
B2. FL #2: “a memory controller…” (Claims 18-19)
FL #2 recites “a memory controller” similar to FL #1, thus, FL #2 also invokes 35 U.S.C. §112(f) in the same manner as FL #1.
C. Conclusion of Claim Interpretation
FL #1 and FL #2 will be interpreted under 35 U.S.C. §112(f) as provided above. Because the remaining limitations in claims 14-19 do not invoke 35 U.S.C. §112(f) and are not lexicographically defined, they will be interpreted using the broadest reasonable interpretation.
OBJECTION TO SPECIFICATION
The specification is objected to because it does not provide cross-reference to related application. Applicant is required to amend the specification to provide cross-reference to related application: for example and as a matter of suggestion only, amend the specification to read as follows would overcome this rejection “This application is a reissue of U.S. Application Ser. No. 16/931,933”. Appropriate correction is required.
REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The reissue declaration filed December 8, 2023 ("2023 Reissue Declaration”) is acknowledged. However, Examiners object to this error statement on therein on the basis that Examiners find that the 2023 Reissue Declaration fails to state a proper error in the claims on which to base this reissue.
A proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the 384 Patent, and how it renders the original patent wholly or partly inoperative or invalid. See MPEP §1414(II).
Examiners find that the error statement merely states:
“The original patent (U.S. Patent No. ) 11,302,384 is believed to be wholly or partly inoperative or invalid, by reason of the patentee claiming less than he had the right to claim in the patent, such as amended claims 1, 6-14, 16-19; and added claim 20.”
Examiners do not find this error statement sufficient under the rules. Examiners find this statement does not specify any language in the original claims in error, which is being corrected by the presentation of the amended claims 1, 6-14, 16-19 and new added claim 20.
Therefore, in accordance with 35 U.S.C. §251 and 37 C.F.R. §1.175, Applicant is required to provide a new declaration with a statement of error with respect to 384 Patent identifying a claim Applicant seeks to broaden, and identifying “a single word, phrase, or expression” from the patent claims that is in error and stating how this error renders the 384 Patent partially or wholly inoperative or invalid.
Moreover, Applicant should complete Reissue Application Declaration by checking what boxes (in the bottom of page 1) that apply for error statement.
REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251(a):
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-20 and this reissue application as a whole are rejected as being based upon a defective reissue declaration under 35 U.S.C. §251 as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2023 Reissue Declaration is set forth in the discussion above in this Office action.
RECAPTURE REJECTION
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-17 and 20 are rejected under 35 U.S.C. §251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. §251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Below are the pertinent Examiners’ findings of fact relevant to this rejection:
07/17/2020 The 933 Application was filed and contained original claims 1-23. Preliminary Amendment was filed the same day, canceled claims 21-23. Of these, original claims 1, 15 and 19 were independent claims.
04/26/2021 The Office mailed a Non-Final Action (the “2021 NF Action”), which rejected claims 9-10 under 35 U.S.C 112(b) as being indefinite, rejected claims 1-6, 8-10, 13-16 over Son et al (US 2018/0342274 A1), indicated claims 19-20 allowable over the prior art of records and objected to claims 7, 11-12, 17-18.
09/10/2021 Applicant filed an amendment in response to the 2021 NF Action (the “2021 Amendment”). In the 2021 Amendment, original claims 1, 7, 9-11, 15, 17-19 were amended, original claims 2-6, 12-14, 16, 20 were unchanged, and original claim 8 was cancelled. Original independent claims 1 and 15 were amended as follows:
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Furthermore, Applicant provided the following arguments:
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12/06/2021 The Office issued a Notice of Allowability, which allowed claims 1-7 and 9-20. Examiners provided statement of reasons for allowance:
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04/12/2022 The 384 Patent issued. Original claims 1-7 and 9-20 were renumbered patent claims 1-19. Original independent claims 1 and 15 were renumbered patent claims 1 and 14, respectively.
Based on these findings of fact, Examiners find that Applicant specifically amended original claims 1 and 15 to achieve allowance of Patent claims 1 and 14 to recited features “the first and second resistance values are the same when a current mode of the memory system is a first mode, and the first and second resistance values are different when the current mode is a second other mode”. Furthermore, Examiners find that Applicant also specifically argued the patentability of the claims based on this same feature.
Therefore, based on the above findings of fact and conclusions, Examiners herein determine the following surrender-generating limitations (i.e., limitations that were presented, argued or stated to make the claims patentable and thus generate surrender of the claimed subject matter):
SGL “the first and second resistance values are the same when a current mode of the memory system is a first mode, and the first and second resistance values are different when the current mode is a second other mode” as recited in Patent claims 1 and 14 which were added to independent claims 1 and 15 (renumbered as 1 and 14), and argued by Applicant to overcome a prior art rejection.
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” See MPEP §1412.02(I).
Recapture in Claims 1-17 related to SGL
Regarding step 1, upon review of claims 1-17 of the present reissue application in comparison to Patent claims 1-17 of the 384 Patent, Examiners find that Applicant through the 2023 Preliminary Amendment has broadened the scope of claims by deleting most of the phrase “the first and second resistance values are the same when a current mode of the memory system is a first mode, and the first and second resistance values are different when the current mode is a second other mode” i.e., SGL, which substantially broadens the scope of the claims 1-17 as compared to the claims 1-17 as patented.
Regarding step 2, Examiners find that the feature that has been deleted from claims 1-17 in the 2023 Preliminary Amendment is directly related to the surrendered subject matter. Specifically, Examiners find Applicant has deleted precisely SGL from the claims.
Regarding step 3, Examiners determine that the claims 1-17 have not been materially narrowed in other respects to overcome the broadening aspect to avoid recapture. The recapture rule is violated when a limitation added during prosecution is eliminated, even if other narrowing limitations are added to the claim. See MPEP 1412.02 II. B. Examiners find Applicant has specifically deleted part of SGL from the patent claims which was precisely the phrase that was added to achieve allowance. Furthermore, Examiners find the claims have not been materially narrowed in any aspects related to SGL, i.e., “the first and second resistance values are the same when a current mode of the memory system is a first mode, and the first and second resistance values are different when the current mode is a second other mode”. See MPEP 1412.02 II. C. Accordingly, Examiners do not find that claims 1-17 are materially narrowed in any substantial respects related to SGL.
In view of the forgoing, since Applicant specifically amended the scope of claims 1-17 in the 2023 Preliminary Amendment to remove most of SGL which was added to the claims to achieve allowance during prosecution of the 933 Application, Examiners conclude Applicant is attempting to improperly recapture surrendered subject matter given up in SGL, which requires the “the first and second resistance values are the same when a current mode of the memory system is a first mode, and the first and second resistance values are different when the current mode is a second other mode”.
PRIOR ART CITED IN PTO-892
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Kim et al (US Pub. No. 2017/0069369) is an exemplary reference representative of the prior art. Kim discloses the hardware structure for FL #1: plurality of memory dies DRAM D11-D14 and the host die 100 (SoC, CPU, GPU). See Fig. 8 of Kim. However, Kim does not specifically discloses the Algorithm structure for FL #1, i.e., “the first resistance value is configured to be different from the second resistance”.
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Fig. 8 of Kim.
INFORMATION DISCLOSURE STATEMENT
The Information Disclosure Statements filed December 8, 2023, September 3, 2024, January 9, 2025 and February 20, 2025 have been considered. In accordance with MPEP § 1406, Examiners have reviewed and considered the prior art of record in the original prosecution of the 384 Patent. Applicant(s) are reminded that a listing of the information of record in the original prosecution of the 384 Patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation to apprise the Office of any prior or concurrent proceedings in which the 384 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
INFORMATION MATERIAL TO PATENTABILITY
Applicant(s) are reminded that they “have a continuing duty under 37 CFR §1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP §1418.” - MPEP § 1406.
CONCLUSION
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed MY TRANG TON whose telephone number is (571) 272-1754. The Examiner can normally be reached on 7:00am - 6:00pm, Monday - Thursday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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Signed:
/MY TRANG TON/ Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/ Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights