Ex Parte Ahner et al

Patent Trials and Appeals BoardMar 27, 2019

15277924 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/277,924 09/27/2016 105639 7590 Rimon Law - SEA GA TE 2479 E. Bayshore Road Suite 210 Palo Alto, CA 94303 03/29/2019 FIRST NAMED INVENTOR Joachim Walter Ahner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. R2463-00836 1926 EXAMINER BUTCHER, BRIAN M ART UNIT PAPER NUMBER 2688 NOTIFICATION DATE DELIVERY MODE 03/29/2019 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): S VDocketing@Rimonlaw.com J ustin.Zahrt@Rimonlaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOACHIM WALTER AHNER and DAVID MARCUS TUNG Appeal 2018-007 623 Application 15/277,924 Technology Center 2600 Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-10 and 12-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal 2018-007 623 Application 15/277,924 BACKGROUND This patent application concerns using lasers to write information to, and read information from, three-dimensional storage cells. See, e.g., Specification ,r 13, filed September 27, 2016 ("Spec."). Claims 1, 8, and 15 are independent. Claim 15 illustrates the claimed invention: 15. An apparatus comprising: a first location configured to change a first characteristic in response to a first energy, without heating the first location; a second location over the first location in a z-axis configured to change a second characteristic in response to the first energy; and a third location adjacent to the first location in an x-axis configured to change a third characteristic in response to the first energy; and a detector configured to detect a second energy from the first location, the second location, or the third location, wherein the first location, the second location, and the third location are configured to remain unchanged in response to the second energy. Appeal Brief 21, filed January 8, 2018 ("App. Br."). 2 Appeal 2018-007 623 Application 15/277,924 15 and 16 1-10, 12-14, and 17- 20 REJECTIONS Â§ 102 Watanabe 1 Â§ 103 Watanabe DISCUSSION Claim 15 recites "a first location configured to change a first characteristic in response to a first energy, without heating the first location." App. Br. 21. The Examiner found that Watanabe discloses this limitation because Watanabe teaches that a femtosecond laser can write data to memory and that memory can consist of aluminum oxide. See Final Office Action 2, mailed August 8, 201 7 ("Final Act.") ( citing Watanabe i-fi-f45, 47, Fig. IA). In support of this finding, the Examiner observed that Appellants' written description teaches that a femtosecond laser can focus on a target cell of a storage device without heating the cell and that a storage device may consist of aluminum oxide. See Final Act. 2-3 ( citing Spec. ,r 17). Appellants assert that Watanabe discloses that writing data with a femtosecond laser causes "thermal modification" of the target and argue that Watanabe thus teaches that writing data with a femtosecond laser heats the target. See App. Br. 12-13. We find Appellants' arguments persuasive. Even if Appellants' written description teaches that a femtosecond laser can focus on a target cell of a storage device made of aluminum oxide without heating the cell, this fact does not establish that Watanabe discloses doing so. As argued by 1 Watanabe et al. (US 2011/0158062 Al; June 30, 2011). 3 Appeal 2018-007 623 Application 15/277,924 Appellants, Watanabe states that using a femtosecond laser to write data to memory causes "thermal modification" of the memory. See Watanabe ,r 99; see also id. ,r,r 95, 97-98. Although the Examiner found that "[t]hermal modification includes absorption of energy in a reaction within the medium such that no heat is released during the reaction," the Examiner provided no evidence to support this finding. See Answer 4, mailed May 30, 2018. We agree with Appellants that a person of ordinary skill in the art would understand that, in the context of using a laser to write data to memory, "thermal modification" involves heating the memory. See Reply Brief 2, filed July 16, 2018. The Examiner has therefore not shown that Watanabe discloses "a first location configured to change a first characteristic in response to a first energy, without heating the first location" as required by claim 15. For the above reasons, on this record, we do not sustain the Examiner's rejection of claim 15 and its dependent claims underÂ§ 102. Because the Examiner relies on the same findings and reasoning to address similar limitations in independent claims 1 and 8, we also do no sustain the Examiner's rejections of claims 1 and 8 and their respective dependent claims underÂ§ 103. 4 Appeal 2018-007 623 Application 15/277,924 15 and 16 1-10 12-, 14, and 17- 20 Summary Â§ 102 Â§ 103 DECISION Watanabe Watanabe REVERSED 5 15 and 16 1-10 12-, 14, and 17- 20 1-10 and 12-20