Ex Parte Williams et alDownload PDFPatent Trial and Appeal BoardJan 31, 201311414578 (P.T.A.B. Jan. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte R. STANLEY WILLIAMS, ZHIYONG LI, DOUGLAS OHLBERG, PHILIP J. KUEKES, and DUNCAN STEWART ____________ Appeal 2010-007164 Application 11/414,578 Technology Center 2800 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007164 Application 11/414,578 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3 and 5-11. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellants’ claimed invention is directed to a molecular layer 16 facilitating a redox reaction between at least one bottom electrode 12 and at least one top electrode 14 (see Fig. 1A, Spec. 6:12-25). At least one metal nanoparticle 22 is formed in a portion of the junction as a result of the redox reaction, thereby reducing a tunneling gap GI between the at least one bottom electrode 12 and the at least one top electrode 14 (see Fig. 3A and Spec. 6: 22-25). Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A switching device, comprising: at least one bottom electrode; at least one top electrode, the at least one top electrode crossing the at least one bottom electrode at a non-zero angle, thereby forming a junction; a metal oxide layer established on at least one of the at least one bottom electrode or the at least one top electrode; a molecular layer established in the junction, the molecular layer including a monolayer of organic molecules and a source of water molecules, whereby upon introduction of a forward bias, the molecular layer facilitates a redox reaction between the at least one bottom electrode and the at least one top electrode; and at least one metal nanoparticle formed in a portion of the junction as a result of the redox reaction, thereby reducing a tunneling gap between the at least one bottom electrode and the at least one top electrode. Appeal 2010-007164 Application 11/414,578 3 REFERENCES and REJECTION 1. The Examiner rejected claims 1-3 and 5-11 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.1 2. The Examiner rejected claims 1-3, 5, and 7-11 under 35 U.S.C. § 102(b) as being anticipated by Richter (Electrical characterization of AI/AIOx/molecule/Ti/AI devices*). 3. The Examiner rejected claims 1-3 under 35 U.S.C. § 102(b) as being anticipated by Krieger (US 2004/0159835 A1; published Aug. 19, 2004). 4. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Krieger. 5. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Krieger in view of Richter. ISSUE The issue is whether the Examiner erred in finding that Richter or Krieger teaches “at least one metal nanoparticle formed in a portion of the junction as a result of the redox reaction, thereby reducing a tunneling gap between the at least one bottom electrode and the at least one top electrode” as recited in claim 1. 1 The Examiner withdrew this rejection (Ans. 3). Accordingly, the rejection is not before us for review. Appeal 2010-007164 Application 11/414,578 4 PRINCIPLE OF LAW To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). ANALYSIS Claims 1-3, 5, and 7-11rejected under 35 U.S.C. § 102(b) Appellants argue inter alia that neither Richter nor Krieger teaches “at least one metal nanoparticle formed in a portion of the junction as a result of the redox reaction, thereby reducing a tunneling gap between the at least one bottom electrode and the at least one top electrode” as recited in claim 1 (App. Br. 8, 10). The Examiner asserts Richter’s device inherently performs the function of forming one or more metal nanoparticles in a portion of the junction during its operation, thereby reducing a tunneling gap (Ans. 9). The Examiner explains that Richter teaches all the elements sufficient to form one or more metal nanoparticles in a portion of the junction because, similar to Appellants’ disclosed Equations 1 and 2 (Spec. 7) indicated to form the nanoparticles via a redox reaction, Richter teaches such a redox reaction (Ans. 10-11). In particular, the Examiner points to Richter’s device wherein electrons flow between the top and the bottom electrodes as a forward bias is applied, inherently resulting in the formation of one or more metal nanoparticles in a portion of the junction, thereby reducing a tunneling gap (Fig. 3, Ans. 9-10). The Examiner takes a similar position with respect to Krieger stating that Krieger’s device comprises all of the elements of a top electrode, a Appeal 2010-007164 Application 11/414,578 5 metal oxide layer on a bottom electrode, water molecules, and electrons sufficient for the redox reaction to occur (Ans. 11). Thus, the Examiner concludes that the redox reaction occurs when the Richter device is performing a normal operation (i.e., Fig. 10 showing electrons flow between the top and the bottom electrodes as a forward bias is applied) (Ans. 11). The Examiner finds that the redox reaction inherently results in the formation of one or more metal nanoparticles in a portion of the junction and reduces a tunneling gap (Ans. 11). The Examiner also notes, with respect to both references, that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (Ans. 10, 12). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants rebutted the Examiner’s assertions of inherency and the production of the same or identical product by substantially identical processes, by directing us to the Specification which requires not just the elements set forth and addressed by the Examiner, but also an appropriate forward bias (or voltage) applied across the electrodes (see Spec. 6:12-25).2 Thus, we agree with Appellants that the nanoparticle(s) would not necessarily form when any arbitrary forward bias is applied. To establish inherency, Richter or Krieger must have made clear that the nanoparticles 2 Appellants have not defined in the Specification the value of “an appropriate forward bias.” However, we leave this to the Examiner to consider the appropriateness of a 112, 1st paragraph rejection upon further prosecution. Appeal 2010-007164 Application 11/414,578 6 necessarily would have been present based on all the required conditions including an appropriate forward bias. See Robertson, 169 F.3d at 745. Accordingly, we reverse the Examiner’s rejection of claim 1 and for the same reasons the Examiner’s rejections of claims 2-3, 5, and 7-11. Claims 5 and 6 rejected under 35 U.S.C. § 103(a) We also reverse the Examiner’s rejection of claims 5 and 6 for the same reasons as those stated supra. CONCLUSION The Examiner erred in finding that Richter or Krieger teaches “at least one metal nanoparticle formed in a portion of the junction as a result of the redox reaction, thereby reducing a tunneling gap between the at least one bottom electrode and the at least one top electrode” as recited in claim 1. DECISION The Examiner’s decision rejecting claims 1-3 and 5-11 is reversed. REVERSED rwk Copy with citationCopy as parenthetical citation