Ex Parte Rajagopalan et al

Patent Trial and Appeal BoardDec 16, 2012

10828023 (P.T.A.B. Dec. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/828,023 04/19/2004 Nagarajan Rajagopalan AMAT/8583/DSM/LOW K/JW 4576 7590 12/17/2012 Applied Materials Patent Counsel - Legal Affairs Department P.O. Box 450A Santa Clara, CA 95052 EXAMINER BURKHART, ELIZABETH A ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 12/17/2012 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 NAGARAJAN RAJAGOPALAN, MEIYEE SHEK, ALBERT LEE, ANNAMALAI LAKSHMANAN, LI-QUN XIA, and ZHENJIANG CUI ____________ Appeal 2012-012091 Application 10/828,023 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-012091 Application 10/828,023 2 This is in response to a Request for Rehearing (filed 12/6/2012) of our Decision (mailed 10/24/2012) wherein we affirmed the Examiner's rejections of the appealed claims under 35 U.S.C. § 103(a). In our Decision, we determined that it would have been prima facie obvious to combine the applied references in the manner proposed by the Examiner and that the Examiner had established a reasonable basis for believing that the resulting process would inherently form a nitrosilicide layer as required by the appealed claims (Dec. 4-5). In their Request, Appellants argue that [i]n order for the Examiner's inherency argument to be legitimate, the person of ordinary skill in the art would have to have the knowledge that a nitrosilicide layer is formed by reacting a silicon based compound and a nitrogen-containing reducing compound with a conductive material by a plasma- free, thermally enhanced process. (Req. 2). Appellants are incorrect. Inherency does not require recognition by a person of ordinary skill in the art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Furthermore, merely discovering and claiming a new benefit of an old process cannot render the process again patentable. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011). Appellants further argue: Therefore, the Examiner's argument that ammonia plasma containing silane of Ngo would inherently incorporate nitrogen into the silicide layer is an exercise of impermissible hindsight for an obviousness rejection since such assumption is based on Appeal 2012-012091 Application 10/828,023 3 Appellants' own specification, rather than the facts or teachings gleaned from the applied prior art. See MPEP §2112. (Req. 2). Appellants' argument is unpersuasive. The Examiner's inherency finding is properly based on Appellants' Specification which confirms that a nitrosilicide layer would be inherently formed by the modified process of the applied prior art. See Kao at 1070 ("Substantial evidence supports the Board's finding, based upon the specification, which confirms that the claimed 'food effect' is an inherent property of oxymorphone itself"). This is not a case where the Examiner relied on an unknown property of the prior art for a teaching in support of an obviousness conclusion. Id. Rather, the express teachings of the applied prior art render the claimed process obvious, and the claimed formation of a nitrosilicide layer adds nothing of patentable consequence since the layer would be inherently formed in the modified process suggested by the applied references. Id.;see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.") Appeal 2012-012091 Application 10/828,023 4 Appellants' request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. DENIED bar