Ex Parte Rueping et al

Patent Trial and Appeal BoardApr 13, 2016

12356339 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/356,339 0112012009 38881 7590 Infineon Technologies AG c/o Schiff Hardin LLP 666 Fifth A venue Suite 1700 NEW YORK, NY 10103 04/15/2016 FIRST NAMED INVENTOR Stefan Rueping 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. 42792-0057 (I0046.0065) 8629 EXAMINER HUNNINGS, TRAVIS R ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 04/15/2016 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): lbrutman@schiffhardin.com patents-NY@schiffhardin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEP AN RUEPING, THOMAS NIRSCHL, RONALD KAKOSCHKE, FRANZ JOSEF BRUECKLMA YR, MARKUS GAIL, BERNDT GAMMEL, and GERD DIRSCHERL Appeal2014-004584 Application 12/356,339 1 Technology Center 2600 Before THU A. DANG, LARRY J. HUME, and JAMES W. DEJMEK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1---6, 8-19, and 22-25. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Infineon Technologies AG. App. Br. 1. Appeal2014-004584 Application 12/356,339 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed invention relates to "[a] security circuit [ ] including a sensor located remotely from a central alarm handler and configured to sense an attack, and a phase-change memory cell coupled to and located remotely with the sensor, and configured to store an alarm event when the attack is sensed." Abstract. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A security circuit comprising: a sensor located remotely from a central alarm handler and configured to sense an attack; and a phase-change memory cell coupled to and located rernotely with the sensor, and configured to store an alann event when the attack is sensed. 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Oct. 1, 2013); Reply Brief ("Reply Br.," filed Jan. 6, 2014); Examiner's Answer ("Ans.," mailed Nov. 7, 2013); Final Office Action ("Final Act.," mailed May 8, 2013); and the original Specification ("Spec.," filed Jan. 20, 2009). 2 Appeal2014-004584 Application 12/356,339 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Tershak et al. ("Tershak") us 4,566,285 Jan.28, 1986 Ciglenec et al. ("Ciglenec") US 2003/0058125 Al Mar. 27, 2003 Becksted et al. ("Becksted") US 2007 /0236343 Al Oct. 11, 2007 Vogedes et al. ("Vogedes") US 2008/0290985 Al Nov. 27, 2008 Bajpay et al. ("Bajpay") US 2010/0052924 Al Mar. 4, 2010 Re} ections on Appeal3 RI. Claims 1-3, 9-16, and 23-25 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination ofBecksted, Ciglenec, and Vogedes. Ans. 2--4. R2. Claims 4, 8, and 17 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Becksted, Ciglenec, Vogedes, and Bajpay. Ans. 5. R3. Claims 5, 6, 18, 19, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination ofBecksted, Ciglenec, Vogedes, Bajpay, and Tershak. Id. 3 The Examiner indicates dependent claims 7, 20, and 21 are objected to as being dependent upon a rejected base claim, but are otherwise drawn to allowable subject matter. Final Act. 8. 3 Appeal2014-004584 Application 12/356,339 CLAIM GROUPING Based on Appellants' arguments (App. Br. 3-5), we decide the appeal of obviousness Rejection RI of claims 1-3, 9-16, and 23-25 on the basis of representative claim 1. Remaining claims 4---6, 8, 17-19, and 22 in rejections R2 and R3, not argued separately, stand or fall with the respective independent claim from which they depend.4 ISSUE Appellants argue (App. Br. 3-5; Reply Br. 2) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Becksted, Ciglenec, and Vogedes is in error. These contentions present us with the following issue: Did the Examiner err in combining the cited prior art combination to teach or suggest a security circuit that includes; inter alia; "a phase-change memory cell coupled to and located remotely with the sensor, and configured to store an alarm event when the attack is sensed," as recited in claim 1, allegedly because a phase-change memory would not have been able to reliably retain its data retention characteristics in the environment of intended use of the claimed invention? 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 Appeal2014-004584 Application 12/356,339 ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claim 1, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. The totality of Appellants' argument is: There would have been no motivation to modify Ciglenec's memory 858 to be a phase-change memory as taught by V ogedes. As discussed above, the physical state of a phase- change memory cell is reversibly changed through the application of heat. A phase-change memory would therefore not have been able to retain its data retention characteristics reliably when subjected to the extreme temperatures provided by the oilfield production environments of Ciglenec, at least at the date of the present invention. The extreme temperatures would likely change the physical state of the chalcogenide, and therefore result in inaccurate and unreliable data storage. App. Br. 4. We disagree for the reasons set forth below. In response to Appellants' contentions, the Examiner finds, and we agree: 5 Appeal2014-004584 Application 12/356,339 Beckensted [sic.] discloses a remote sensing system that transmits information to a remote location . . . . Ciglenec teaches that sensed information may be stored locally as well as transmitted to a remote location ... [but] is not being used to modify Beckensted [sic.] to operate in an oilfield production environment, but is instead teaching that remote sensing systems may store sensed information locally at the sensed location as well as transmit that information to a remote location. Vogedes teaches that memory systems may use phase- change memory . . . and the combination of Beckensted [sic.] and Ciglenec would be modified by Vogedes to use phase- change memory to store the sensed information locally, as taught by Ciglenec. Ans. 7. We find Appellants' assertions and speculation regarding the effect of temperature on the memory cell's ability to properly function is unsupported by any evidence on this record and, therefore, amount to unsupported attorney argument, such that we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). In addition, Appellants' contentions do not persuade us of error on the part of the Examiner because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We specifically note Appellants' challenge to the references individually is not convincing of error in the Examiner's position because all of the features of the secondary reference need not be bodily incorporated into the primary reference, but 6 Appeal2014-004584 Application 12/356,339 consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). We further note Appellants' argument is not commensurate with the scope of the claim, because the features upon which Appellants rely upon to distinguish over the cited prior art combination are not recited in the claim, e.g., the environment of intended use, and desired temperature-dependent data retention characteristics of the phase-change memory. In the Reply Brief (2), Appellants' allege improper motivation to combine the references in the manner suggested, which is an argument that the system is rendered "unsuitable for its intended purpose," i.e., a "teach away" argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). The Federal Circuit has held "[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir.1994)). Contrary to Appellants' allegations (Reply Br. 2), we do not find any evidence on this record that a person of ordinary skill in the art would view the combination of references in the negative light advanced by Appellants, 7 Appeal2014-004584 Application 12/356,339 and particularly find no evidence on this record to support Appellants' speculation as to the technical performance and/or shortcomings of Vogedes' phase-change memory in a harsh oilfield production environment, especially in light of the lack of any such claimed restrictions on operating environment which would affect the claimed structure, and which are not recited in the claim. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the limitations of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2-3, 9- 16, and 23-25 which fall therewith. See Claim Grouping, supra. Â§ 103(a) Rejections R2 and R3 of Claims 4-6, 8, 17-19, and 22 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R2 and R3 of claims 4--6, 8, 17-19, and 22 under Â§ 103(a) (see App. Br. 5), we sustain the Examiner's rejections of these claims. We deem arguments not made waived. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 3 7 C.F .R. Â§ 41.41(b)(2)), which Appellants have not shown. 8 Appeal2014-004584 Application 12/356,339 CONCLUSIONS The Examiner did not err with respect to obviousness Rejections RI through R3 of claims 1---6, 8-19, and 22-25 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1---6, 8-19, and 22-25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9