ANNA HERR et al.

Patent Trials and Appeals Board

Feb 1, 2022

2021002943 (P.T.A.B. Feb. 1, 2022)

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. 16/296,007 03/07/2019 ANNA Y. HERR NG(ES)027753 US PRI 1087 109501 7590 02/01/2022 Tarolli, Sundheim, Covell & Tummino LLP and Northrop Grumman Systems Corporation 1300 East Ninth Street Suite 1700 Cleveland, OH 44114 EXAMINER SAWYER, STEVEN T ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): docketing@tarolli.com rkline@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANNA Y. HERR, VLADIMIR V. TALANOV, and QUENTIN P. HERR Appeal 2021-002943 Application 16/296,007 Technology Center 2800 Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and DEBRA L. DENNETT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 6, and 15. The Examiner has allowed the subject matter of claims 18-20 and has objected to claims 4, 5, 7-14, 16, and 17 as being dependent upon a rejected base claim, but would 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Northrop Grumman Systems Corporation. (Appeal Br. 2). Appeal 2021-002943 Application 16/296,007 2 be allowable if rewritten in independent form. (Final Act. 10.) We have jurisdiction under 35 U.S.C. § 6(b). We Reverse. CLAIMED SUBJECT MATTER The claims on appeal generally relate to superconducting circuits having superconductor ground plane patterning geometries that attract magnetic flux, and related superconducting circuit fabrication methods. The problem of stray magnetic flux invading superconducting circuitry during cool down of the circuitry to cryogenic temperatures can cause anomalous circuit operation and has stymied the development of very large digital superconducting circuits. (Spec ¶¶ 1-4.) Claim 1 reproduced below, is illustrative of the claimed subject matter: 1. A superconducting digital integrated circuit (IC) comprising: a ground plane fabricated at least in part as a blanket deposition of a superconducting metal, the ground plane being patterned with a regular grid of dielectric-filled flux-trapping voids, each void in the grid being generally radially symmetrical in shape; and discrete circuit devices interconnected by superconducting wires fabricated on one or more device layers above the ground plane, the devices being placed and wires being routed between individual voids in the regular grid, such that the devices and wires do not intersect any of the voids and maintain at least a predetermined distance away from any of the voids, the devices and wires forming at least one active digital circuit; wherein the voids are configured to protect the at least one active digital circuit from parasitic flux bias by attracting and sequestering stray flux such that it cannot couple flux to the devices or wires. Appeal 2021-002943 Application 16/296,007 3 The following rejections are presented for our review: I. Claims 1, 3, and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Kunimoto (US 2015/0053460 A1, pub. Feb. 26, 2015) in view of Simon (US 6,117,824, iss. Sept. 12, 2000). (Final Act. 2-7.) II. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Kunimoto, Simon in view of Wu (US 2012/0115077 A1, pub. May 10, 2012). (Final Act. 8.) III. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Kunimoto, Simon in view of Tanahashi (US 6,184,477 B1, iss. Feb. 6, 2001). (Final Act. 8-9.) OPINION The dispositive issue on appeal is whether the Examiner has established that the prior art suggests a superconducting integrated circuit comprising a ground plane patterned with a regular grid of dielectric-filled flux-trapping voids as required by independent claims 1 and 15. Because the Examiner failed to do so on this record, we do not sustain the appealed rejections. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, Appeal 2021-002943 Application 16/296,007 4 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’ refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.”). The Examiner finds, inter alia, that Kunimoto discloses an integrated circuit comprising a ground plane patterned with a regular grid of dielectric- filled flux-trapping voids (74X.) (Final Act. 2; Kunimoto ¶ 45.) The Examiner finds Kunimoto discloses the voids (74X) are configured to protect the at least one active digital circuit from parasitic flux bias by attracting and sequestering stray flux such that it cannot couple flux to the devices or wires. (Final Act. 3; Kunimoto ¶ 81.) The Examiner cites Simon to address Kunimoto’s failure to specifically teach a superconducting digital integrated circuit (IC) comprising wherein the plane is a ground plane and being made of a superconducting metal, and wherein the wires are superconducting wires as required by the claimed invention. (Final Act. 3-4; Simon 4: 34-36.) As correctly argued by Appellant, and contrary to the Examiner’s position, there is no evidence that through-holes 74X in Kunimoto are capable of flux-trapping. (Appeal Br. 6-8.) The evidence of record shows that Kunimoto’s through-holes 74X are adhesion holes placed where the plane 74 can be held together by the insulating layers (82 and 83) on either side of it with identical insulating material passing through it. (Kunimoto ¶¶ 80-82.) Simon does not remedy the differences between Kunimoto and the claimed invention. Simon does not recognize or describe the problem of parasitic flux bias and does not provide a solution for flux trapping. Appeal 2021-002943 Application 16/296,007 5 Appellant has persuasively argued that the Examiner’s proposed motivation for combining the applied prior art is not supported by the evidence of record. For the foregoing reasons we do not sustain the Examiner’s obviousness rejections of claims 1-3, 6, and 15. The additional references cited in Rejections II and III, in addition to Kunimoto and Simon do not address the deficiency in the rejection of the independent claims 1 and 15 discussed above. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 15 103 Kunimoto, Simon 1, 3, 15 2 103 Kunimoto, Simon, Wu 2 6 103 Kunimoto, Simon, Tanahashi 6 Overall Outcome 1-3, 6, 15 REVERSED