Ex Parte Yi et alDownload PDFPatent Trial and Appeal BoardMar 14, 201612916414 (P.T.A.B. Mar. 14, 2016) Copy Citation 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 Claims 21 and 22 are pending but have been withdrawn by the Examiner as directed to a non-elected and distinct invention (Final Act. 2).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. 2 Appeal2014-004355 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). 3 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 4 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)." 5 Appeal2014-004355 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 6 Appeal2014-004355 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:Copy with citationCopy as parenthetical citation