Ex Parte 6349053 et al

Patent Trial and Appeal BoardJan 31, 2014

95001981 (P.T.A.B. Jan. 31, 2014)

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. 95/001,981 04/27/2012 6349053 11919.0002 8915 164 7590 02/03/2014 KINNEY & LANGE, P.A. THE KINNEY & LANGE BUILDING 312 SOUTH THIRD STREET MINNEAPOLIS, MN 55415-1002 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/03/2014 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 ____________ EVERSPIN TECHNOLOGIES, INC. Requester and Respondent v. NVE CORPORATION Patent Owner and Appellant ____________ Appeal 2013-010842 Reexamination Control 95/001,981 Technology Center 3900 Patent No. 6,349,053 ____________ Before RICHARD M. LEBOVITZ, BRADLEY W. BAUMEISTER, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 2 Patent Owner NVE Corporation, appeals under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) the Examiner’s final decision to reject claims 1-18. Newly added claims 19-31 have been cancelled. Third-Party Requester Everspin Technologies, Inc. urges that the Examiner’s decision must be affirmed. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. STATEMENT OF THE CASE A request for inter partes reexamination of U.S. Patent No. 6,349,053 B1 (the ’053 patent), assigned Reexamination Control No. 95/001,981, was filed on April 27, 2012, by Third-Party Requester Everspin Technologies, Inc. The ’053 patent, entitled “Spin Dependent Tunneling Memory,” issued February 19, 2002, to James M. Daughton, Brenda A. Everitt, and Arthur V. Pohm, based on Application No. 09/891,619, filed June 26, 2001, based on provisional Application No. 60/030,236, filed on November 8, 1996. The ’053 patent is also a continuation and a continuation-in-part of several issued patents, from which it claims priority, listed on the face of the ’053 patent. Claims 1-18 are pending. The ’053 patent is assigned to NVE Corporation, who is said to be the real party in interest. The Claimed Invention Patent Owner’s invention relates to a digital data memory having a bit structure in a memory cell based on a dielectric intermediate separating layer with two major, opposing surfaces. An anisotropic ferromagnetic thin-film Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 3 is formed on each surface of the dielectric intermediate separating layer. The two ferromagnetic thin-films are of differing thicknesses and have respective switching thresholds for magnetizations that differ in value. This configuration allows for a switching of the relative magnetization directions of these ferromagnetic thin-films. A corresponding conductive word line structure adjacent to the memory cells is used for selecting or operating the memory cell. (Abstract; claim 1.) Related Litigation The ’053 patent has been asserted in a patent infringement suit, NVE Corp. v. Everspin Technologies, Inc., No. 0:12-v-00006 (D. Minn. Jan. 3, 2012). (PO App. Br. 2.) The case has been stayed. (Id.) The Claims Independent claim 1 is exemplary: 1. A ferromagnetic thin-film based digital memory, said memory comprising: a plurality of bit structures interconnected with information retrieval circuitry having a plurality of transistors so that each said bit structure has a said transistor electrically coupled thereto that selectively substantially prevents current in at least one direction along a current path through that bit structure, each said bit structure comprising: an electrically insulative intermediate layer, said intermediate layer having two major surfaces on opposite sides thereof; and a memory film of an anisotropic ferromagnetic material on each of said intermediate layer major surfaces having switching thresholds for magnetizations of said film adjacent each of said intermediate layer major surfaces that differ in value for a switching of these Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 4 magnetizations from both being directed initially at least in part in substantially a common direction to being directed at least in part in substantially opposite directions versus a switching from being directed initially at least in part in substantially opposite directions to both being directed at least in part in substantially a common direction; and a plurality of word line structures each having a pair of word line end terminal regions adapted to conduct electrical current in at least one direction therethrough, each of said pairs of word line end terminal regions having an electrical conductor electrically connected therebetween which is located across an electrical insulating layer from said memory film on one of said major surfaces of said intermediate layer of a corresponding one of said bit structures. The Rejections Patent Owner appeals the Examiner’s decision to reject all the pending claims as follows: 1. Claims 1, 2, 4-11, and 13-18 stand rejected under 35 U.S.C. § 102(e) as anticipated by Zhu (US 5,734,605; Mar. 31, 1998, filed Sept. 10, 1996). 2. Claims 6-8 and 15-17 stand rejected under 35 U.S.C. § 103(a) as obvious over Zhu. 3. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as obvious over Zhu and Daughton ’757 (US 4,731,757; Mar. 15, 1988). 4. Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Zhu and Gallagher (US 5,650,958; July 22, 1997). 5. Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as obvious over Gallagher and Daughton ’757. Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 5 6. Claims 1, 2, and 4-9 stand rejected under 35 U.S.C. § 103(a) as obvious over Daughton ’848 (US 4,780,848; Oct. 25, 1988) and Gallagher. 7. Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over Daughton ’848, Gallagher, and Daughton ’757. Patent Owner relied upon the following declaration in rebuttal to the Examiner’s proposed rejection: Declaration under 37 C.F.R. § 1.131 of Daniel Baker, dated July 16, 2012 (“Baker Declaration” or “Baker Decl.”), accompanied by Exhibits 1-7. 1 ANALYSIS I. As an initial matter, Patent Owner takes issue (PO App. Br. 8) with the Examiner’s refusal to enter a Declaration under 37 C.F.R. § 1.131 of James M. Daughton, Brenda A. Everitt, and Arthur V. Pohm, filed January 7, 2013 (“Daughton Declaration”), accompanied by Exhibits 1-15, filed after the Action Closing Prosecution. The Examiner refused entry because Patent Owner has not presented “a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented” pursuant to 37 C.F.R. § 1.116 (e). (RAN 3-4.) In particular, Patent Owner argues that “[t]he non-entry of the Daughton Declaration and supporting exhibits was in error, and forms a basis for reversal of the Right 1 This opinion only addresses arguments made by Patent Owner. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(iv). We have considered the Baker Declaration evidence to the extent raised by Patent Owner’s arguments. Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 6 of Appeal Notice and the rejections therein, and/or a remand to the Examiner” and that “[t]he Daughton Declaration and the supporting exhibits, and the arguments contained in the Remarks should be fully considered in this Appeal.” (PO App. Br. 8.) Decisions within the Examiner’s discretion, such as whether or not to enter an amendment after final rejection, are reviewed only by way of petition, not appeal. The decision to enter a declaration after the close of prosecution is also within the Examiner’s discretion. See Ex parte Searles, Jr., 422 F.2d 431, 435 (CCPA 1970) (holding that “an examiner’s refusal to . . . consider an affidavit under Rule [1.]131, which might also clearly be ‘determinative of the rejection’ is reviewable only be petition and will not be considered by the Board of Appeals.”). See also, MPEP § 715.08 (setting forth that the “[r]eview of questions of formal sufficiency and propriety [of affidavits under 37 C.F.R. § 1.131] are by petition filed under 37 C.F.R. § 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)[3(d)]).”). Because the Examiner’s refusal to enter additional evidence after the Action Closing Prosecution is a petitionable matter, rather than an appealable matter, this issue is not before us, and we express no opinion as to its propriety. II. The Examiner’ rejection of: (i) claims 1, 2, 4-11, and 13-18 as anticipated by Zhu; (ii) claims 6-8 and 15-17 as obvious over Zhu; (iii) claims 3 and 12 as obvious over Zhu and Daughton ’757; and (iv) claims 8 and 17 as obvious over Zhu and Gallagher each involves Zhu. Patent Owner Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 7 attempts to antedate Zhu by relying upon the Baker Declaration, accompanied by Exhibits 3 and 4, to establish diligence from the time period prior to September 10, 1996, the filing date of Zhu, until November 8, 1996, the filing date of Patent Owner’s provisional application. In particular, Patent Owner argues that “[a]s shown by the Baker Declaration, paragraphs 20-30, NVE diligently and continuously pursued SDT technology needed for the one transistor – one SDT bit cell architecture of claim 1 . . . through the filing of provisional application on November 8, 1996” (PO App. Br. 25) and that “[t]he documents presented with the Baker Declaration (Exhibits 1- 7) show activity by NVE throughout the entire period of interest in developing spin dependent tunneling (SDT) structures” (PO Reb. Br. 6). The Examiner adopted the Requester’s argument that the Baker Declaration and accompanying exhibits were insufficient to establish due diligence by the Patent Owner from a date prior to the effective date of Zhu to a subsequent filing of a provisional patent application. (ACP 13-14.) In particular, the Examiner found that “these exhibits are general in nature as to what occurred, and do not establish the dates of any specific acts performed by the inventors” because “[t]here is simply no explanation whatsoever as to what was actually done, by whom, on what particular date.” (ACP 13.) We agree with the Examiner. Title 37 of the Code of Federal Regulations, Section 1.131(b), states that: The showing of facts shall be such, in character and weight, as to establish . . . conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date . . . to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 8 accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. During the period in which reasonable diligence must be shown, there must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire period during which diligence is required. Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Furthermore, a party alleging diligence must provide corroboration with evidence that is specific to both facts and dates. Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). Vague and general statements in broad terms about what the exhibits describe, along with a general assertion that the exhibits describe a reduction to practice, “amounts essentially to mere pleading, unsupported by proof or a showing of facts” and, thus, does not satisfy the requirements of 37 C.F.R. § 1.131(b). In re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920, 923 (CCPA 1964). We thus turn to the Baker declaration. Paragraph 24 of the Baker Declaration states that: Exhibit 3 is a Sixth Quarterly Report to Defense Advanced Research Projects Agency (DARPA) for a program entitled Giant Magneto Resistance Device Development – Memory and Sensors. The Report is dated October 15, 1996. As stated in the MRAM materials and devices section of the report written by Russ Beech and Brenda Everitt: “During the last quarter we continued to work on materials, devices, and test capability for new modes and on material improvements for making a conventional mode GMR cell. Material improvement centered on increasing effective Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 9 anisotropy and % GMR. Other work included fabrication and testing of X-mode cells and spin dependent tunneling (SDT) materials and layout of a 2k bit test chip.” The authors went on to state “recently fabricated SDT devices gave over 11% GMR with saturation fields of only 20 Oe and high uniformity across a wafer.” Furthermore, paragraph 26 of the Baker Declaration states that: Exhibit 4 is a Progress Report entitled “Giant Magnetoresistive Sensors A Phase II SBIR Contract N00012-96C-0342”. The Progress Report was addressed to Dr. Larry Cooper of the Office of Naval Research from NVE Corporation. The Principal Investigator was James M. Daughton. The Report covered the period from August 15, 1996 through November 15, 1996. The Report describes the work in developing SDT materials. On page 2, the Progress Report begins with an overview stating: “This report covers the period from August 15, 1996 to November 15, 1996 – the first three months of the program. This initial period has been predominantly devoted to developing spin dependent tunneling for an (SDT) materials . . .” Although this program related to sensors, the basic issues of how to make SDT devices, including the magnetic layers and the insulating barrier layer, were of importance in developing SDT structures for MRAM. However, paragraphs 24 and 26 of the Baker Declaration do not provide adequate corroborating evidence that is specific to both facts and dates. Nor do these paragraphs or the Baker Declaration as a whole correlate what was done by the inventors to what is recited in each of the limitations of the pending claims. Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 10 With respect to Exhibit 3, a quarterly report dated October 15, 1996, the Baker Declaration states that “we continued to work on materials, devices, and test capability for new modes and on material improvements for making a conventional mode GMR cell.” (Baker Decl. ¶ 24.) With respect to Exhibit 4, a progress report which includes a time period of August 15, 1996 to November 15, 1996, the Baker Declaration states that “[t]he Report describes the work in developing SDT materials” and “[t]his initial period has been predominantly devoted to developing spin dependent tunneling for an (SDT) materials.” (Baker Decl. ¶ 26.) In general, while the Baker Declaration shows activity in working on technology that pertains to the claimed subject matter, Mr. Baker did not show that the inventors continuously exercised reasonable diligence to reduce the claimed subject matter to practice. For example, Mr. Baker did not document the specific facts and dates pertaining to on what days work was performed, or the nature of the work and who performed it. See, e.g., Scott v. Koyama, 281 F.3d 1243, 1249 (Fed. Cir. 2002) (providing evidence of daily activity to establish reasonable diligence). Rather than provide specific facts and dates establishing a continuous exercise of reasonable diligence, the Baker Declaration merely provides vague and general statements in broad terms about what the exhibits describe (e.g., “we continued to work on materials, devices, and test capability” (Baker Decl. ¶ 24) and “[t]he Report describes the work in developing SDT materials” (Baker Decl. ¶ 26)). Therefore, we agree with the Examiner that the Baker Declaration was insufficient to establish a continuous exercise of reasonable Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 11 diligence by the Patent Owner, from a date prior to the effective date of Zhu to a subsequent filing of a provisional patent application. In the Appeal Brief, Patent Owner identifies exhibits that support conception of the limitations of claim 1. (PO App. Br. 14-23.) Even assuming, solely for the sake of argument, that such discussion were sufficient to establish conception of the claimed subject matter, for the reasons already discussed, Patent Owner has not adequately described or documented diligence to reduction to practice or filing of a patent application of the claimed subject matter. Accordingly, we sustain the following rejections: (i) claims 1, 2, 4- 11, and 13-18 under 35 U.S.C. § 102(e) as anticipated by Zhu; (ii) claims 6- 8 and 15-17 under 35 U.S.C. § 103(a) as obvious over Zhu; (iii) claims 3 and 12 under 35 U.S.C. § 103(a) as obvious over Zhu and Daughton ’757; and (iv) claims 8 and 17 under 35 U.S.C. § 103(a) as obvious over Zhu and Gallagher. We do not reach the rejections: (v) claims 1-9 under 35 U.S.C. § 103(a) as obvious over Gallagher and Daughton ’757; (vi) claims 1, 2 and 4-9 under 35 U.S.C. § 103(a) as obvious over Daughton ’848 and Gallagher; and (vii) claim 3 under 35 U.S.C. § 103(a) as obvious over Daughton ’848, Gallagher, and Daughton ’757. Affirmance of the anticipation and obviousness based rejections discussed previously renders it unnecessary to reach the remaining obviousness rejections as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). Appeal 2013-010842 Reexamination Control 95/001,981 Patent No. 6,349,053 12 DECISION The Examiner’s decision to reject claims 1-18 under U.S.C. § 103(a) is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED ak Kinney & Lange, P.A. The Kinney & Lange Building 312 South Third Street Minneapolis, MN 55415-1002 Third Party Requester : Finnegan Henderson & Farabow 901 New York Ave., NW Washington, DC 20001-4413