Ex Parte Wicker et al

Patent Trial and Appeal Board

Sep 17, 2012

11103188 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GUY C. WICKER, FABIO PELLIZZER, ENRICO VARESI, and
AGOSTINO PIROVANO
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Appeal 2010-005618
Application 11/103,188
Technology Center 2800
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005618
Application 11/103,188

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 42-49 and 51-53. Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to semiconductor devices and more particularly
to phase change memories. (Spec. 1). Claim 42, reproduced below, is
illustrative of the claimed subject matter:
42. A phase change memory comprising:
a first chalcogenide material;
a second chalcogenide material, said first and second
chalcogenide materials being spaced from one another by an
intervening layer; and
an opening through said intervening layer so that said
first and second chalcogenide materials are in contact at said
opening.
(Disputed limitation emphasized).

REJECTIONS
R1. Claims 42-45, 48, 49, 51, and 53 stand rejected as being
anticipated under 35 U.S.C. § 102(b) by Troltzsch (DD 251225 A1).
R2. Claims 46 and 47 stand rejected as being unpatentable under 35
U.S.C. § 103(a) over Troltzsch and Byun (KR 626388 B1).
R3. Claim 52 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Troltzsch and Hudgens (US 2003/0071289 A1).

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GROUPING OF CLAIMS
Based on Appellants' arguments, we will decide the appeal of the
anticipation rejection of claims 42-45, 48-49, 51, and 53 on the basis of
claim 42. See 37 C.F.R. § 41.37(c)(1)(vii). We address claims 46, 47 and
52 separately, infra.
CONTENTIONS
Appellants argue that "in contact" means "to touch" in the following
argument:
The specification explains with reference to Figure 2 that "[t]he
material 22 may fill the opening 28 and contact the material 18
in one embodiment." Specification at p. 5, lines 21-22. Thus,
"in contact" in the claim requires that the layers be contacting.
Similarly, with respect to Figure 3 it is explained that dielectric
breakdown "reduces the area of contact between the
chalcogenide materials 18 and 22. . ." Again it is clear that
"contact" means "to touch".
(App. Br. 9).
The Examiner disagrees:
[T]he language "in contact" is broad enough to be anticipated
by any type of contact, i.e. physical, electrical, etc. Layers 4
and 7 are in electrical contact through the conductive material
of layer 5.
The Appellant cites the Specification at page 5, lines 21-
22 for the definition of "in contact": "[t]he material 22 may fill
the opening 28 and contact the material 18 in one embodiment".
However, this does not define "in contact" as "to touch", as the
phrase "to touch" does not appear. The plain meaning
"contact" is interpreted as "a connection between two
conductors (i.e., the Page 7 intervening layer between layers 4
and 7) that permits flow of current" (per the cited American
Heritage Dictionary definition of "contact", Noun, definition
#4a). The word "contact" can also be defined as "to
communicate with" (American Heritage Dictionary definition
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Application 11/103,188

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of "contact", Transitive Verb, definition #2). Both definitions
provided are consistent with the broad description in the
Specification of "the material 22 may fill the opening 28 and
contact the material 18". Therefore, the limitation "in contact"
is anticipated by Troltzsch's disclosure of layers 4 and 7 being
in electrical communication or "in electrical contact" with each
other.
(Ans. 6-7).
Appellants further respond in the Reply Brief:
The Examiner relies on not the first, second, or third
definition of contact, but the fourth definition of contact cited in
the dictionary he cited in the advisory action for the first time.
However, even that definition, 4a, does not help his cause: "A
connection between two conductors that permits a flow of
current or heat."
(Reply Br. 1).

ANALYSIS
Issue: Under §102, did the Examiner err in finding that the cited
Troltzsch reference discloses "an opening through said intervening layer so
that said first and second chalcogenide materials are in contact at said
opening," within the meaning of claim 42? (emphasis added).
The only dispute in this case is the meaning of the term "in contact."
(Claim 42). The Examiner concludes that the scope of "in contact" broadly
covers any type of contact, including a physical, electrical, and heat contact.
(Ans. 4, 6-7).
Notwithstanding Appellants' arguments (App. Br. 9), claim 42 is
silent regarding the argued physical contact between the first and second
chalcogenide materials. Given that the plain language of claim 42 does not
preclude the Examiner’s broader reading, we are not persuaded that the
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Examiner's claim construction of "in contact" is overly broad, unreasonable,
or inconsistent with the Specification. Nor have Appellants provided an
artisan with notice of a definition of "in contact" in the Specification.1
Moreover, Appellants had the opportunity to amend the claims to limit the
"contact" to a physical contact. Because "applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
For these reasons, on this record we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 42 and of
claims 43-45, 48, 49, 51, and 53, which fall with claim 42.
Regarding the remaining dependent claims, Appellants contend that
claims 46, 47, and 52 are allowable based on similar reasons to those set
forth with respect to claim 42. (App. Br. 9). We do not find these
arguments persuasive for the reasons discussed above regarding claim 42.
Therefore, we sustain the Examiner's obviousness rejections of claims 46,
47, and 52, for the same reasons discussed above regarding claim 42.

1 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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DECISION
We affirm the Examiner's rejection of claims 42-45, 48, 49, 51, and 53
under § 102(b).
We affirm the Examiner's rejections of claims 46, 47 and 52 under
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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