Ex Parte SHERWIN et al

Patent Trials and Appeals BoardAug 13, 2018

13803385 - (D) (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/803,385 03/14/2013 109501 7590 08/15/2018 Tarolli, Sundheim, Covell & Tummino FIRST NAMED INVENTOR MARC EISENZWEIG SHERWIN LLP and Northrop Grumman Systems Corporation 1300 East Ninth Street Suite 1700 Cleveland, OH 44114 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. NG(ES)022068 US PRI 9300 EXAMINER WONG,ALAN ART UNIT PAPER NUMBER 2842 NOTIFICATION DATE DELIVERY MODE 08/15/2018 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): rkline@tarolli.com docketing@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC EISENZWEIG SHERWIN, ROBERTS. HOWELL, PAVEL BO RO DULIN, HAROLD CLIFTON HEARNE III, NABIL ABDEL-MEGUID EL-HINNAWY, and ROBERT MILES YOUNG 1 Appeal2017-006870 Application 13/803 ,3 85 Technology Center 2800 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-18 and 21. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE, but we enter a NEW GROUND OF REJECTION for claim 1 pursuant to our authority under 37 C.F.R. Â§ 41.50(b ). 1 According to the Appellants, the real party in interest is NORTHROP GRUMMAN SYSTEMS CORPORATION. App. Br. 3. Appeal2017-006870 Application 13/803,385 BACKGROUND The subject matter on appeal relates to phase-change material reconfigurable circuits and associated methods. E.g., Spec. ,r 1; Claim 1. Claim 1 is reproduced below from page 17 (Claims Appendix) of the Appeal Brief ( emphasis and some formatting added): 1. A reconfigurable circuit comprising a phase-change material switch, the phase-change material switch comprising: an actuation portion configured to receive a control signal having one of a first state and a second state and to emit a first heat profile in response to the first state of the control signal and a second heat profile in response to the second state of the control signal, the control signal being provided as a pulsed signal having first pulse characteristics in the first state and second pulse characteristics in the second state, the first pulse characteristics corresponding to a signal pulse that is at least one of lower power and longer in duration relative to the second pulse characteristics; and a switch portion comprising a phase-change material in proximity with the actuation portion, the switch portion being selectable between a conducting state in response to the first heat profile to conduct an input signal from an input to an output of the phase-change material switch and a blocking state in response to the second heat profile to substantially block the input signal from the input to the output, the input, the phase-change material, and the output having an inline configuration. ANALYSIS Claims 1-18 and 21 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Breitwisch (US 7,880,194 B2, issued Feb. 1, 2011) and Wyeth (US 6,828,884 B2, issued Dec. 7, 2004). Claim 1. Claim 1 requires, inter alia, that "the input, the phase- change material, and the output hav[e] an inline configuration." With the 2 Appeal2017-006870 Application 13/803,385 exception of claims 17 and 18, all other claims on appeal include the same or essentially the same limitation, either directly or through claim dependency. Accordingly, the following analysis applies to claims 1-16 and 21. Claims 17 and 18 are addressed separately below. The Examiner finds that Breitwisch does not disclose the required inline configuration of the input, the phase-change material, and the output. Final Act. 3. The Examiner finds that Wyeth discloses a similar phase- change switch in which "the input, the phase change material, and the output hav[e] an inline configuration." Id. The Examiner determines that "it would have been obvious to one of ordinary skill in the art to have substitution [sic] the phase change switch structure in Breitwisch with the one in Wyeth ... because both are well known phase change switch structure, thus achievement [sic] the same predictable result ofbeing a switch." Id. That rationale is not persuasive. We agree with the Appellants that the proposed modification, as stated by the Examiner, has not been shown to be a routine substitution; rather, the Examiner proposes what appears to be a major rearrangement of the structure of Breitwisch to the structure of Wyeth. See App. Br. 8-9. In some cases, mere rearrangement of elements in a device may be prima facie obvious, particularly when the rearrangement does not produce a functional change in the device. See, e.g., MPEP Â§ 2144.04.VI.C (citing cases);InreJapikse, 181 F.2d 1019, 1023 (CCPA 1950). In other cases, however, "[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of the 3 Appeal2017-006870 Application 13/803,385 appellant's specification, to make the necessary changes in the reference device." E.g., Ex parte Chicago Rawhide Manuf Co., 223 USPQ 351,353, 1984 WL 63568, at *3 (BP AI 1984); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. . . . [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does."). In this case, the proposed modification, as stated by the Examiner, is a reconfiguration of the primary reference's structure, as opposed to, for example, a mere change in location of a single element in a known structure with no accompanying change in operation. Declarations filed in the case indicate that changing from the layered configuration of Breitwisch to the configuration of Wyeth would result in changes to capacitance between input and output electrodes. E.g., Hearne Declaration dated Jan. 21, 2016, ,r 10. The Examiner's finding that a person of ordinary skill in the art would have substituted Wyeth's configuration for Breitwisch's configuration simply because both were known structures is insufficient because it provides no reason that a person of ordinary skill would have made the modification. See KSR, 550 U.S. at 418; Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention." (emphases in original)). Accordingly, on this record, we are constrained to reverse the Examiner's stated rejection of claims 1-16 and 21. 4 Appeal2017-006870 Application 13/803,385 Claim 17. Claim 1 7 is a method claim that includes elements similar to those of claim 1, with two notable changes: (1) Claim 17 does not require an inline configuration of the input, output, and phase-change material; and (2) Claim 17 requires the input signal to be a radio-frequency signal. Claims 18 and 21 depend from claim 1 7. The Examiner acknowledges that Breitwisch does not teach a method involving the use of a radio-frequency input signal. Final Act. 10. The Examiner finds that Wyeth discloses a phase-change switch similar to that of Breitwisch, but having an inline configuration, that is used to route an RF signal. Id. The Examiner determines that "it would have been obvious ... to have substitution [sic] the phase change switch structure in Breitwisch with the one in Wyeth .... because both are well known phase change switch structure, thus achievement [sic] the same predictable result of being a switch." Id. at 10-11. For reasons similar to those described above, that rationale is not persuasive. The rejection proposes not only the use of an RF input signal with Breitwisch's structure, but, as with claim 1, proposes the restructuring of Breitwisch's circuit with the configuration of Wyeth. Id. As set forth above, the Examiner's analysis does not adequately explain why a person of ordinary skill would have had reason to make the proposed modification. On this record, we are constrained to reverse the Examiner's stated rejection of claims 17, 18, and 21. 5 Appeal2017-006870 Application 13/803,385 New Ground of Re} ection Claim 1 is rejected under 35 U.S.C. Â§ 102(b) as anticipated by Breitwisch. Consistent with the Examiner's findings, Breitwisch discloses: a reconfigurable circuit (Figs. 1-4.; Col. 2 line 10) comprising a phase-change material switch (Col. 4 line 2), the phase-change material switch comprising: an actuation portion (heating circuit 142 provides actuation) configured to receive a control signal (input to 126, 128, 130, 132, 134) having one of a first state and a second state and to emit a first heat profile in response to the first state of the control signal and a second heat profile in response to the second state of the control signal (Col. 4 line 58 - Col. 5 line 3, 52, Col. 6 line 23; i.e. two states of heating to melting point temperature for amorphous phase or to crystallization point temperature for crystallization phase); the control signal being provided as a pulsed signal having first pulse characteristics (Col. 6 line 19; the pulse being 2.5V) in the first state and second pulse characteristics (Col. 5 line 49; the pulse being 5V) in the second state, the first pulse characteristics corresponding to a signal pulse that is at least one of lower power (2.5V < 5V, hence lower power) and longer in duration relative to the second pulse characteristics; and a switch portion (140) comprising a phase-change material (110, 112, 114, 116; Col. 7 lines 34-35: GST) in proximity with the actuation portion, the switch portion being selectable between a conducting state in response to the first heat profile to conduct an input signal from an input to an output of the phase-change material switch and a blocking state in response to the second heat profile to substantially block the input signal from the input to the output (Fig. 2; Col. 5 lines 65-66, Col. 6 lines 36-37; i.e. amorphous phase for block, crystallization for conductive)[.] Final Act. 2-3. Contrary to the Examiner's findings, however, we find that Breitwisch also discloses the input, phase-change material, and the output having an 6 Appeal2017-006870 Application 13/803,385 inline configuration. Figure 1 of Breitwisch, with annotations added by the Board, appears below. 102 104 106 108 116 114 ~r ) 1.24 ,, output l42 138 123 "-,.. -1 Flg.1 146 Figure 1, above, "illustrates a schematic for a phase change cross-point switch." Breitwisch at 3:26-27. Breitwisch discloses that phase change switches 110 and 112 allow a signal to flow from terminal node 102 to terminal block 104. Id. at 6:37-39. As shown above, the input to phase-change switch 110, the phase-change switch 110 itself, and the output from phase-change switch 110, have an inline configuration. That configuration meets the requirement of claim 1 7 140 Appeal2017-006870 Application 13/803,385 that "the input, the phase-change material, and the output hav[ e] an inline configuration." Compare Breitwisch Fig. 1, with Drawings Fig. 3. We recognize that Figure 1 of Breitwisch includes multiple phase- change switches, and that, at least based on visual appearance, those switches may be described as appearing in a "layered" arrangement. See Hearne Deel. ,r 7. Claim 1, however, does not preclude multiple phase- change switches. Nor does it preclude the so-called "layered" configuration of Breitwisch Figure 1. The preamble to claim 1 uses the word "comprising," indicating that additional elements (such as additional phase- change switches) beyond those expressly recited are not precluded. The word "comprising" also appears in the "switch portion" paragraph of claim 1. Thus, the fact that Breitwisch Figure 1 shows multiple phase- change switches, and the fact that those switches might be described as layered, does not remove Breitwisch's disclosure from the scope of claim 1. As shown in annotated Figure 1 above, we find that Breitwisch discloses the claimed inline configuration. In view of that finding and the additional findings concerning claim 1, block-quoted above from the Final Action, we determine that Breitwisch anticipates claim 1. We leave to the Examiner consideration of the patentability of the remaining pending claims. CONCLUSION We REVERSE the Examiner's stated rejections of claims 1-18 and 21, but we enter a NEW GROUND OF REJECTION as set forth above for claim 1. 8 Appeal2017-006870 Application 13/803,385 37 C.F.R. Â§ 4I.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... REVERSED 37 C.F.R. Â§ 4I.50(b) 9