Ex Parte Yi et al

Patent Trial and Appeal Board

Mar 14, 2016

12916414 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/916,414 10/29/2010 Wei Yi
56436 7590 03/16/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82264709 9551
EXAMINER
CAO,PHATX
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI YI, MATTHEW D. PICKETT, and
GILBERTO MEDEIROS RIBEIRO
Appeal2014-004355
Application 12/916,414
Technology Center 2800
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004355
Application 12/916,414
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
2-15 and 17-20. Claims 21 and 22 are pending but have been withdrawn by
the Examiner as directed to a non-elected and distinct invention (Final Act.
2). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention is directed to a semiconductor device that
functions as a memory device such as a memristor that provides heat
management of the device to tune the current-controlled (CC) negative
differential resistance (NDR) characteristics and obtain desired nonlinear
current-voltage (I-V) feature to block half-select current (Claim App'x claim
13; Spec. 5, 11. 17-32).
Claim 13 is illustrative:
13. A semiconductor device for providing heat management,
compnsmg:
a first electrode including a metal layer with high metal thermal
conductivity disposed on a conductive layer with low metal thermal
conductivity;
a second electrode including a metal layer with high metal thermal
conductivity disposed on a conductive layer with low metal thermal
conductivity;
a metal oxide structure including a transition metal oxide (TMO)
electrically coupled to the first electrode and second electrode, and the metal
oxide structure being disposed between the conductive layer of the first
electrode and the conductive layer of the second electrode, and the
conductive layers are in closer proximity to the metal oxide structure than
the metal layers; and
an electrically insulating sheath with low thermal conductivity
surrounding the metal oxide structure.
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Application 12/916,414
• 11 ' 1 ."1 ,.. 11 • • '. 1 Appeuams appeal me rouowmg reJecuons,:
1. Claim 14 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
3. Claims 2-15 and 17-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mitani (US 2011/0002154 Al published Jan. 6,
2011) in view ofNoshiro (US 2010/0252796 Al published Oct. 7,
2010).
Appellants argue separately claims 2, 3, 7, 8, 12, 13 and 14 (App. Br. 9-
11, 18-21). Any claims not argued separately with regard to rejection (3)
will stand or fall with our analysis regarding claim 13.
FINDINGS OF FACT & ANALYSIS
REJECTION (1 ): Claim 14, Written Description
Claim 14 depends from independent claim 13 and recites "wherein a
thermal conductivity (K) of the conductive layer of the first electrode and
the second electrode is less than 175 W/(m*K)."
The Examiner finds that the subject matter of claim 14 lacks written
descriptive support (Final Act. 3). The Examiner finds that Appellants'
Figure 7B and related text (Specification 13:13-16) provides written
1 The Examiner withdrew the 35 U.S.C. § 103(a) rejection of claims 2-8, 11-
13, 15, and 17-20 over Takano (US 2011/0193050) in view ofNoshiro (Ans.
2-3).
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Appeal2014-004355
Application 12/916,414
descnptlve support for a low metal thermal conductivity of the conductive
layer of the first electrode 602 and the second electrode 604 being less than
100 W/(m*K), but not less than 175 W/(m*K) as amended. Id.
Appellants argue that the two-layer electrode structure shown in
Figure 7B has a layer with a high K conductor (i.e., 608 and 606) and a layer
with a low K conductor (i.e., 602 and 604) (App. Br. 9). Appellants contend
that claim 14 finds support in the disclosure that the high K conductor
material has a thermal conductivity of greater than 175 W/(m*K) for a
temperature range between 25°C and 127°C as disclosed on page 14, lines
10-12 of the Specification. Id. Appellants contend that the thermal
conductivity of the low K conductor layer is defined as being low relative to
that of the metal layer, i.e., the thermal conductivity K is lower than that of
the metal layer, which is greater than 175 W/(m*K). (App. Br. 9-10).
Appellants argue that the Specification embodiment on page 13 cited by the
Examiner is directed to a different example than the one relied upon by
Appellants (Reply Br. 5).
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's Specification must "'convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention."' Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)). The claimed subject matter need not be described in haec verb a in
the Specification in order for that specification to satisfy the description
requirement. In re Smith, 481F.2d910, 914 (CCPA 1973). That is, a claim
need not use the same words as the specification, it is enough that one of
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Appeal2014-004355
Application 12/916,414
ordinary skill in the art would recognize that the inventor invented what is
claimed. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997
(Fed. Cir. 2000).
Appellants have not persuaded us that the page 14 disclosure in the
Specification demonstrates that the Appellants were in possession of the
thermal conductivity of the conductive layer of the first and second electrode
is less than 175 W/(m*K). Rather, the Specification disclosure at page 14
merely discloses that the metal layer (i.e., High K layer 606 or 608 has a
thermal conductivity greater than 175 W/(m*K). The Specification at page
13, lines 15-16 discloses the thermal conductivity for the low K materials
(i.e., conductive layers 602 and 604) is less than 100 W/(m*K) for
temperature range between 25°C and 127°C. The Specification does not
disclose any explicit or implicit relationship between the high K conductor
layers 606 and 608 and low K conductor layers 602 and 604 as argued by
Appellants. Rather, the Specification disclosure at page 13 relied upon the
Examiner makes clear that Appellants were only in possession of using a
conductive layer 602 and 604 on the first and second electrode with a
thermal conductivity of less than 100 W/(m*K).
On this record, we affirm the Examiner's 35 U.S.C. § 112, first
paragraph, lack of written description rejection.
REJECTION (2): Claim 7, Indefiniteness
Claim 7 depends from claim 13 and recites "wherein a thermal
conductivity (K) of the first electrode and the second electrode is less than
100 W/(m*K)."
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Application 12/916,414
The Examiner concludes that claim 7 is indefinite because 1t 1s not
clear if the claim is referring to the thermal conductivity of the metal layer
with high metal thermal conductivity, or the conductive layer with low metal
thermal conductivity (Final Act. 4).
Appellants argue that the Specification at page 13, lines 13-27 makes
clear that the claim refers to the low thermal metal conductivity component
in each of the two electrodes (App. Br. 10).
A claim is indefinite under 35 U.S.C. § 112, second paragraph, if one
of ordinary skill in the art would not understand what is claimed when the
claim is read in light of the Specification. Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Appellants'
claim 7 does not satisfy this standard. Rather, claim 7 is unclear as to
whether the entire first or second electrode, the conductive layer, or the high
metal thermal conductivity has the thermal conductivity of 100 W/(m*K).
While the Specification at page 13 discloses that the low thermal metal
conductivity has a thermal conductivity of less than 100 W/(m*K), the claim
does not recite that the conductive layer has a thermal conductivity of less
100 W/(m*K). In other words, Appellants would have us read limitations
into the claims. We decline their invitation to do so.
On this record, we affirm the Examiner's§ 112, second paragraph,
rejection of claim 7.
REJECTION (3): Claims 13, 2, 3, 8 and 12.
The Examiner finds that Mitani teaches all the limitations of claim 13,
except for "an electrically insulating sheath with low thermal conductivity
surrounding the metal oxide structure" (Final Act. 9). The Examiner finds
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Application 12/916,414
that Noshiro teaches using an insulating sheath 72 surrounding a metal oxide
structure formed between two electrodes (Final Act. 9-10). The Examiner
concludes that it would have been obvious to form an electrically insulating
sheath with low thermal conductivity surrounding the metal oxide structure
of Mitani because such a sheath is well known and commonly used to
provide the electrical isolation between the metal oxide structure and the
adjacent electronic elements as taught by Noshiro (Final Act. 10).
Appellants argue that Mitani fails to teach first and second electrodes
each having two different material layers as required by claim 13 (App. Br.
19). Appellants do not contest specifically the Examiner's combination of
Noshiro's teachings with Mitani. Id.
The Examiner finds that Mitani' s Figure 14d shows an embodiment
where the electrodes have a two-layer structure with a metal layer having
high thermal conductivity and a conductive layer with a low k metal thermal
conductivity (i.e., TiN or TaN) (Ans. 6). The Examiner's annotated Figure
14d from Mitani is shown below:
I Second electrode
A metal layer of Cu,
[0174]
I First electrode
2l 1 ~ A metal layer of Cu, [0174]
(d)
A conductive layer of TiN
or TaN. f00751
Transition metal o: