11168783 (B.P.A.I. Feb. 27, 2012)

Ex Parte Dodge

Board of Patent Appeals and InterferencesFeb 27, 2012

11168783 (B.P.A.I. Feb. 27, 2012)

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. 11/168,783 06/28/2005 Richard Dodge ITO.0609US (P21862) 9424 21906 7590 02/28/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER SEFER, AHMED N ART UNIT PAPER NUMBER 2893 MAIL DATE DELIVERY MODE 02/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte RICHARD DODGE1 ________________ Appeal 2009-014384 Application 11/168,783 Technology Center 2800 ________________ Before JEFFREY S. SMITH, JASON V. MORGAN, and MICHAEL R. ZECHER, Administrative Patent Judges. Opinion for the Board filed by MORGAN, Administrative Patent Judge. Opinion Concurring-in-the-result filed by SMITH, Administrative Patent Judge. DECISION ON APPEAL 1 The attorneys of record requested correction of the named inventors in a 37 C.F.R. § 1.48(a) petition, filed on November 20, 2007. This correction has not yet been entered, thus Richard Dodge is the only named Appellant. However, the Examiner has acknowledged the correction and indicated that Tyler Lowrey has been entered as an inventor (Ans. 4). Therefore, for purposes of this decision on appeal, we refer to both Richard Dodge and Tyler Lowrey as “Appellants.” Appeal 2009-014384 Application 11/168,783 2 STATEMENT OF THE CASE Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 6 – 9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim 6. A method comprising: reducing a set state resistance of a semiconductor phase change memory using titanium; and programming the memory to a reset state within about 10 nanoseconds. Evidence and Rejection2 The Examiner rejects claims 6 – 9 under 35 U.S.C. § 102(e) as being anticipated by Hudgens (US 2005/0029502 A1, Feb. 10, 2005; filed Aug. 4, 2003) (Ans. 3). ISSUE Appellants do not dispute that Hudgens discloses the claimed invention. Instead, Appellants contend that the claimed subject matter was not invented by another (App. Br. 9). Appellants submit that Mr. Lowrey was added as an inventor to both the Hudgens reference and the present patent application (id.). Appellants also provide a declaration by Mr. Hudgens (App. Br. 13; “Hudgens Decl.”). Appellants contend that the rejection under 35 U.S.C. § 102(e) is no longer appropriate because the 2 The Examiner withdrew the rejection of claims 6 – 9 under 35 U.S.C. § 112, second paragraph (Ans. 2). Appeal 2009-014384 Application 11/168,783 3 Hudgens Decl. establishes that “Hudgens derived the pertinent material claimed here from Lowrey, an inventor of this case” (App. Br. 9). The “Examiner acknowledges that this application has been corrected in compliance with 37 CFR 1.48(a)” to add Mr. Lowrey as an inventor (Ans. 4). However, the Examiner finds that because “there is a difference in the inventive entity, the reference is still by ‘another’” (id.). Thus, we are presented with the following issue: Did the Examiner err in finding that the method of claim 6 was disclosed by a different inventive entity? ANALYSIS To traverse a finding that a claimed invention was disclosed by a different inventive entity, “in addition to establishing derivation of the relevant disclosure from himself, appellant [must] also [have] clearly established the fact that he invented the relevant subject matter disclosed in the patent.” In re Facius, 408 F.2d 1396, 1407 (CCPA 1969). That is, Appellants must submit evidence establishing two facts: (1) that the prior art patentee derived the knowledge of the relevant subject matter from Appellants and (2) that Appellants made the invention upon which the relevant disclosure in the prior art patent is based. Here, with respect to the second fact that must be established, the evidence does not show that Mr. Lowrey invented the pertinent material in the Hudgens reference. To the contrary, the evidence merely shows that Mr. Hudgens “obtained Figure 4” from Mr. Lowrey and used the Figure for a purpose not evident from the Figure itself (Hudgens Decl. #3 and #4). However, Mr. Hudgens fails to declare whether Mr. Lowrey invented anything found in Figure 4 or in the description related to Figure 4. Mr. Appeal 2009-014384 Application 11/168,783 4 Lowrey also has not provided his own declaration or affidavit asserting what portions of the Hudgens reference he supposably invented. Therefore, since the evidence presented does not delineate who invented what in the Hudgens reference, the evidence does not demonstrate that Mr. Lowrey invented the method steps recited in independent claim 6. Moreover, since the inventors of the Hudgens reference are Mr. Hudgens and Mr. Lowrey, while the inventors of the present application are Mr. Dodge and Mr. Lowrey, the material in the Hudgens reference that the Examiner relies on is by another inventive entity (i.e., Mr. Hudgens and Mr. Lowrey as opposed to Mr. Dodge and Mr. Lowrey), and thus prior art under 35 U.S.C. § 102(e). Accordingly, we sustain the Examiner’s rejection of independent claim 6 under 35 U.S.C. § 102(e) as being anticipated by the Hudgens reference. Appellants do not make additional arguments with respect to dependent claims 7 – 9. Therefore, for the same reasons discussed above, we sustain the Examiner’s rejection of dependent claims 7 – 9 under 35 U.S.C. § 102(e) as being anticipated by the Hudgens reference. In the event of further prosecution, we note that even if Mr. Lowrey is shown to be the sole inventor of the pertinent materials in the Hudgens reference, the Hudgens reference still qualifies as prior art under 35 U.S.C. § 102(e). The present application does not include Mr. Lowrey as the sole inventor, but rather both Mr. Dodge and Mr. Lowrey as co-inventors. Thus, the pertinent materials in the Hudgens reference would still be by another inventive entity (i.e., Mr. Lowrey as opposed to Mr. Dodge and Mr. Lowrey). Appeal 2009-014384 Application 11/168,783 5 DECISION We affirm the Examiner’s decision rejecting claims 6 – 9. 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)(iv). AFFIRMED ke