Sony Corporation

Patent Trials and Appeals Board

Nov 24, 2021

2022000305 (P.T.A.B. Nov. 24, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
16/568,321 09/12/2019 Takeyuki SONE 12492US04 9790
154930 7590 11/24/2021
XSENSUS LLP
100 Daingerfield Road
Suite 402
Alexandria, VA 22314
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/24/2021 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):
Faith.Baggett@xsensus.com
Sandy.Miles@Xsensus.com
anaquadocketing@Xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKEYUKI SONE, KAZUHIRO BESSHO,
MASANORI HOSOMI, TETSUYA MIZUGUCHI, KAZUHIRO OHBA,
TETSUYA YAMAMOTO, YUTAKA HIGO, and HIROSHI KANO
____________

Appeal 2022-000305
Application 16/568,321
Patent 6,879,473 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
ERIC B. CHEN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1, 3, 4, 6–8, 10, and 11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Sony Corporation. Appeal
Br. 2.
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Application 16/568,321
Patent US 6,879,473 B2

2

STATEMENT OF THE CASE
Appellant seeks to reissue U.S. Patent 6,879,473 (“’473 patent”)
directed to a magnetoresistive effect element used in a memory device. The
element includes two ferromagnetic layers, namely a magnetization fixed
layer and a magnetization free layer, opposed to each other through an
intermediate layer to produce a magnetoresistive change by a current
flowing in a perpendicular direction. See Abstract. Claim 1 is illustrative:
1. A magnetoresistive effect element comprising:

a pair of ferromagnetic layers opposed to each other
through an intem1ediate layer to produce a magnetoresistive
change by a current flowing in the direction perpendicular to a
film plane of one of the pair of ferromagnetic layers, wherein
one of said ferromagnetic layers is a magnetization fixed layer
and the other ferromagnetic layer is a magnetization free layer,

said magnetization free layer having a normalized
resistance ranging from 2000 Ωnm2 to 10000 Ωnm2 where a
product of a specific resistance obtained when a current flows
to the film thickness direction and a film thickness is defined as
said normalized resistance,

said magnetization free layer comprising laminated
layers that at least include a CoFeB layer, and

the film thickness of the magnetization free layer being a
maximum of 8nm,

wherein the specific resistance of the magnetization free
layer being at least 983 Ωnm, and

said magnetoresistive effect element is a tunnel
magnetoresistive effect element using a tunnel barrier layer
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made of an insulating material or a semiconductor material as
said intermediate layer.

THE REJECTIONS
The Examiner rejected claims 1, 3, 7, and 8 under 35 U.S.C. § 103(a)
as unpatentable over Hayashi (US 6,724,585 B2; issued Apr. 20, 2004) and
Nishimura (US 6,111,784; issued Aug. 29, 2000). Non-Final Act. 7–11.2
The Examiner rejected claims 4, 6, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Hayashi, Nishimura, and Gillies (US
2002/0034661; published Mar. 21, 2002). Non-Final Act. 11–15.

THE OBVIOUSNESS REJECTION OVER HAYASHI AND NISHIMURA
Regarding independent claim 1, the Examiner finds that Hayashi’s
magnetoresistive effect element includes (1) a magnetization fixed layer,
namely pinned layer 1230, and (2) a magnetization free layer, namely free
magnetic layer 1270, where the layers are opposed to each other though an
intermediate layer, namely non-conductive layer 1250. Non-Final Act. 8.
Although the Examiner acknowledges that Hayashi’s magnetization free
layer includes a CoFeB alloy, that layer is not disclosed as having the
magnetization free layer’s recited specific and normalized resistance
properties. Id. The Examiner, however, cites Nishimura as teaching this
feature in concluding that the claim would have been obvious. Id. at 9–10.

2 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
December 22, 2020 (“Non-Final Act.”); (2) the Appeal Brief filed July 15,
2021 (“Appeal Br.”); and (3) the Examiner’s Answer mailed August 23,
2021 (“Ans.”).
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Appellant argues that Hayashi and Nishimura do not teach or suggest
a magnetization free layer having a normalized resistance ranging from 2000
to 10000 Ωnm2 as claimed. Appeal Br. 6–9. According to Appellant, not
only does Nishimura fail to teach or suggest using a CoFeB alloy as the
magnetization free layer for a tunnel junction magnetoresistive (TMR)
effect, Nishimura teaches away from a free magnetization layer with a
thickness of 100 Å (10 nm) or less. Id.

ISSUES
I. Under § 103(a), has the Examiner erred in rejecting claim 1 by
finding that Hayashi and Nishimura collectively would have taught or
suggested a magnetoresistive effect element with a magnetization free layer
having a normalized resistance ranging from 2000 to 10000 Ωnm2 (“the
normalized resistance limitation”).
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion? This issue turns on whether
Nishimura teaches away from the claimed invention.

ANALYSIS
As noted above, this appeal turns on whether the cited prior art
teaches or suggests the normalized resistance limitation, where normalized
resistance is defined in the claim as the product of (1) specific resistance
obtained when a current flows to the film thickness direction, and (2) a film
thickness.
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On this record, we see no error in the Examiner’s reliance on Hayashi
and Nishimura for collectively at least suggesting the normalized resistance
limitation. First, Hayashi’s free magnetic layer 1270, which the Examiner
maps to the recited magnetization free layer, can include a CoFeB alloy and
have a thickness of 8 nm as noted in Hayashi’s Examples 1 to 3. See
Hayashi col. 13, ll. 58–64; col. 14, ll. 46–47; col. 15, l. 7 (Table 1); col. 15,
ll. 30–31; col. 15, l. 61 (Table 2); col. 15, l. 67; col. 16, ll. 18–19; col. 16, l.
46 (Table 3); Non-Final Act. 8.
Although Hayashi does not say whether the free magnetic layer has
the recited normalized resistance, we nonetheless see no error in the
Examiner’s reliance on Nishimura in that regard, particularly given
Nishimura’s teaching of using CoFeB as the material in the first magnetic
layer 21 of a memory element. See Nishimura col. 12, ll. 49–67; col. 15, ll.
11–12, 22–24.
Nor do we see error in the Examiner’s finding that a Co72Fe8B20 alloy
inherently has a specific resistance of 1198 Ωnm given the statement to that
effect in connection with magnetization free layer in the experimental results
for Samples 3 to 8 in column 11, lines 48 to 55 of the ’473 patent. See Non-
Final Act. 9 (noting this inherent specific resistance); Ans. 5 (same).
Given this undisputed inherent specific resistance, a magnetization
free layer that is made of Co72Fe8B20 and is 8nm thick has a normalized
resistance of 1198 Ωnm x 8 nm, or 9584 Ωnm2—a value within the recited
range as the Examiner indicates. See Non-Final Act. 9; Ans. 5.
We find unavailing Appellant’s contention that, for a spin tunnel film
arrangement, Nishimura’s first magnetic layer does not include a CoFeB, let
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alone Co72Fe8B20, but rather uses a CoFeB alloy, such as Co84Fe9B7 or
Co71Fe8B20, in a spin scattering film arrangement. See Appeal Br. 7–8.
First, Nishimura does not refer to Co71Fe8B20 in connection with the spin
scattering film arrangement as Appellant contends, but rather Co72Fe8B20.
See Nishimura col. 17, l. 21. Second, Appellant does not persuasively rebut
the Examiner’s finding that the CoFeB alloys used for the first magnetic
layer in Nishimura’s column 15, lines 5 to 24 pertain to both the spin tunnel
and spin scattering arrangements. See Ans. 4 (noting this point).
Nevertheless, even assuming, without deciding, that the particular
CoFeB alloys in Nishimura’s column 17, lines 20 and 21 are limited solely
to the spin scattering film arrangement as Appellant seemingly suggests,
Nishimura nonetheless teaches elsewhere using CoFeB as the material for
the first magnetic layer. See Nishimura col. 15, ll. 11–12, 22–24. Given
Nishimura’s teachings of using CoFeB alloys in magnetic layers, using such
an alloy with the recited normalized resistance in connection with Hayashi’s
magnetization free layer, as the Examiner proposes, uses prior art elements
predictably according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
We reach this conclusion despite the Examiner’s inartful finding that
Co72Fe8B20 falls within the atomic weights specified in Nishimura’s column
15, lines 20 to 24 for CoFeB alloys. See Ans. 5. According to that passage,
CoFeB’s atomic composition is preferably (CoxFe100–x)100–yBy, where (1) x is
86 or more but 93 or less, and (2) y is 10 or more but 25 or less. Nishimura
col. 15, ll. 22–24. Therefore, the Examiner’s relied-upon alloy, namely
Co72Fe8B20, does not fall within Nishimura’s stated range because that
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alloy’s value of “x” in the above formula, namely 72, is less than the lower
end of the range, namely 86. Despite this inconsistency, we nonetheless see
no harmful error in the Examiner’s reliance on Nishimura in this regard, at
least to the extent that using a Co72Fe8B20 alloy in connection with Hayashi’s
magnetization free layer, as the Examiner proposes, would have been at least
an obvious variation to ordinarily skilled artisans.
That Nishimura’s stated range in column 15, lines 22 to 24 merely
reflects preferred atomic compositions weighs in favor of the Examiner in
this regard. That is, even assuming, without deciding, that Co72Fe8B20 is
inferior to those compositions falling within Nishimura’s stated range under
the Examiner’s proposed combination, that alone is not dispositive to
obviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.”). Moreover, to the extent Appellant contends that using a
Co72Fe8B20 alloy in connection with Hayashi’s magnetization free layer as
the Examiner proposes would somehow yield an unpredictable result or
otherwise render Hayashi’s system unsuitable for its intended purpose, there
is no persuasive evidence on this record to substantiate such a contention.
We also find unavailing Appellant’s contention that Nishimura
teaches away from magnetic layers with a thickness of 100 Å (10 nm) or
less. See Appeal Br. 8–9. First, the Examiner cites Hayashi—not
Nishimura—for teaching the recited magnetization free layer with an 8nm
maximum thickness. See Non-Final Act. 8; Ans. 6–7 (noting this point).
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Despite this reliance on Hayashi for teaching this particular thickness
of the magnetization free layer, we nonetheless recognize that, when
assessing obviousness, prior art references must be considered in their
entirety, namely as a whole, including portions that could lead away from
the claimed invention. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1568 (Fed. Cir. 1987); see also Manual of Patent Examining
Procedure (MPEP) § 2141.02(VI) (9th ed. rev. 10.2019, June 2020).
Therefore, it is improper to ignore parts of a prior art reference that teach
away from the claimed invention, despite other relevant disclosure in that
reference or other cited references. See Panduit, 810 F.2d at 1568. In other
words, merely relying on only certain portions of a prior art reference is not
a license to ignore other portions of that reference or other cited references
that could teach away from the claimed invention. See id.
We emphasize this point, particularly given the Examiner’s
acknowledgment that Nishimura teaches away from the thickness of the
CoFeB layer being 8 nm or less in the particular disclosed embodiment. See
Ans. 7 (“The fact that Nishimura teaches away from the thickness of the
CoFeB layer being 8nm or less is immaterial because Hayashi-585 expressly
discloses a CoFeB magnetization free layer of a TMR effect being 8nm
. . . .”) (emphases added). Despite the Examiner’s inartful articulation, we
nonetheless see no harmful error in the Examiner’s finding in this regard, at
least to the extent that Nishimura’s acknowledged teaching away pertains to
a particular deleterious situation where aluminum remains following
oxidation when forming a non-magnetic layer. See Nishimura col. 16, ll.
17–22. That is, Nishimura notes that when an aluminum oxide non-
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magnetic layer is formed by forming a film of Al, and then introducing
oxygen for oxidation, aluminum remains in a dimension of several tens of
angstroms. See Nishimura col. 16, ll. 17–19. Nishimura cautions that this
effect becomes significant when the magnetic layer is 100 Å or less, such
that suitable memory characteristics are unobtainable. Nishimura col. 16,
ll. 20–22.
Although Nishimura certainly discourages using a magnetic layer that
is 10 nm or less in this particular situation where residual aluminum exists
following oxidation when forming a non-magnetic layer, we fail to see—nor
has Appellant shown—that Nishimura similarly criticizes, discredits, or
otherwise discourages using magnetic layers with similar thicknesses in
other situations, such as those in Hayashi, to teach away from such layers.
See Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir.
2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). To the
extent Appellant contends otherwise, there is no persuasive evidence on this
record to substantiate such a contention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 7, and 8 not argued separately with particularity.

THE OTHER OBVIOUSNESS REJECTION
Despite nominally arguing claims 4, 6, 10, and 11 separately,
Appellant reiterate similar arguments made in connection with claim 1, and
allege that Gillies fails to cure those purported deficiencies. See Appeal
Br. 10. We are not persuaded by these arguments for the reasons previously
discussed.
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Patent US 6,879,473 B2

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 7, 8 103(a) Hayashi,
Nishimura
1, 3, 7, 8
4, 6, 10,
11
103(a) Hayashi,
Nishimura, Gillies
4, 6, 10,
11

Overall
Outcome
1, 3, 4, 6–
8, 10, 11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED