Ex Parte Blonkowski

Patent Trial and Appeal Board

Jun 29, 2016

13435304 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/435,304 03/30/2012
117574 7590 07/01/2016
ADDMG - ST (foreign-originated only)
255 S Orange Avenue, Suite 1401
Orlando, FL 32801
FIRST NAMED INVENTOR
Serge Blonkowski
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.
54701 (ll-GR3-0096US01) 3624
EXAMINER
HAGAN, CHRISTINE LAU
ART UNIT PAPER NUMBER
2897
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGE BLONKOWSKI 1
Appeal2015-001699
Application 13/435,304
Technology Center 2800
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 15--43. Claims 1-14 have been canceled. App. Br. 15. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies STMicroelectronics (Crolles 2) SAS as the real party
in interest. App. Br. 1.
Appeal2015-001699
Application 13/435,304
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to the use of an at least partially
ionic crystal between two electrically conductive portions. Abstract. "The
crystal may include at least one surface region coupled to the two
electrically conductive portions. The surface region is insulating under the
application of an electrical field to the surface region, and electrically
conductive in the absence of the electrical field." Abstract.
Claim 15 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
15. A method for controlling electrical conduction between
two electrically conductive portions, the method comprising:
selectively applying an electrical field to at least one
surface region of a partially ionic crystal positioned between and
coupled to the two electrically conductive portions, the at least
one swface region being insulating when an electrical field is
applied to the at least one suiface region and electrically
conductive in an absence of the electrical field, the electrical
field being selectively applied to control the electrical
conductivity thereof.
The Examiner's Rejections
1. Claims 15-19, 21-26, 29-34, and 36-41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hoffman et al.
(US 2005/0199879 Al; Sept. 15, 2005) ("Hoffman"). 2 Final Act. 2-9.
2 The Examiner alternatively rejects these claims under 35 U.S.C. § 102(b)
as anticipated by Hoffman. Final Act. 2.
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Application 13/435,304
2. Claims 20 and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoffman and Itai (US 2010/0059746 Al;
Mar. 11, 2010 (filed Aug. 24, 2009)). Final Act. 9-10.
3. Claims 27, 28, 42, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hoffman and Mikawa et al.
(US 2011/0114912 Al; May 19, 2011 (PCT filed Feb. 9, 2009))
("Mikawa"). Final Act. 10-12.
Issues on Appeal
1. Did the Examiner err in finding Hoffman teaches or suggests
the disputed limitation recited in claim 15?
2. Did the Examiner err in relying on the proposed combination of
Hoffman and Itai to teach or suggest "the at least partially ionic crystal
comprises an alkaline halide," as recited in claim 20?
3. Did the Examiner err in relying on the proposed combination of
Hoffman and Mikawa to teach or suggest "forming an interconnect layer
above the semiconductor substrate; and wherein forming the switching
device comprises forming the switching device in the interconnect layer," as
recited in claim 27?
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Appeal2015-001699
Application 13/435,304
ANALYSIS 3
Claims 15-19, 21-26, 29-34, and 36--41
Appellant contends the Examiner erred in finding Hoffman teaches or
suggests, inter alia, the disputed limitation ofclaim 15. App. Br. 7-12;
Reply Br. 2--4. As claimed, the application of an electrical field is used to
control the electrical conductivity of at least one surface region of an at least
partially ionic crystal. See, e.g., claim 15. When an electrical field is
applied, the at least one surface region is electrically insulative. Id. In the
absence of an electrical field being applied, the at least one surface region is
electrically conductive. Id.
The Examiner refers to Appellant's configuration as "normally on."
Final Act. 3; Adv. Act. 2; Ans. 3--4. In other words, a device manufactured
or operated as claimed would be conductive, i.e., "on," even when no
electrical field is applied and would be insulating, of "off," when an
electrical field is applied. This is consistent with Appellant's disclosure of
the device "is therefore like a switch making it possible to establish, or not,
an electrical link between these two electrically conductive portions." Spec.
i-f 20. Similarly, a device could be "normally off." A "normally off' device
would be insulating (i.e., "off') when no electrical field is applied and
electrically conductive (i.e., "on") when an electrical field is applied.
The Examiner finds, and we agree, "[b ]oth 'normally on' and
'normally off configurations of transistors are well known in the art and
3 Throughout this Decision, we have considered the Appeal Brief filed
June 6, 2014 ("App. Br."); the Reply Brief filed October 8, 2014 ("Reply
Br."); the Examiner's Answer mailed on August 15, 2014 ("Ans."); and the
Final Office Action mailed on December 24, 2013 ("Final Act."), from
which this Appeal is taken.
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Application 13/435,304
used for various applications." Adv. Act. 2. Appellant concedes these two
configurations, "normally on" and "normally off," may be known. App.
Br. 11. However, Appellant argues, although a transistor may be "on" or
"off," there are "an infinite number of ways to make a transistor operate as
either an 'on' or 'off."' Reply Br. 4.
The Examiner finds, and Appellant agrees, Hoffman "uses an applied
voltage to control conductivity of the channel [ (of the disclosed
semiconductor device)]." Reply Br. 2 (emphasis omitted); Final Act. 2-3
(citing Hoffman i-fi-16, 11, 35, 25, Fig. IF).
The Examiner finds "it would have been obvious to a person of
ordinary skill in the art to have the at least one surface region be 'normally
on' because a person of ordinary skill would be compelled to try either
on/off configuration." Appellant contends Hoffman is the "exact opposite of
the claimed invention" and the Examiner fails "to articulate a reasoning as to
why a person skilled in the art would be compelled to 'try either on/ off
configuration."' App. Br. 8-10.
We find Appellant's arguments unpersuasive of Examiner error.
Contrary to Appellant's assertions, Hoffman is not the "exact opposite" of
the claimed invention. Rather, Hoffman teaches "[ t ]he voltage applied at the
gate electrode 104 can vary the ability of the channel 108 to conduct the
electrical charge and thus, the electrical properties of the channel 108 can be
controlled, at least in part, through the application of a voltage at the gate
electrode 104." Hoffman i-f 12. We find this is consistent with Appellant's
claimed invention. See Spec. i1 3 ("controlling the electrical conduction
between two electrically conductive portions ... application of an electrical
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Application 13/435,304
field to the at least one surface region may reduce or establish the electrical
conduction").
Further, although there may be many ways to make a transistor
operate as either on or off, that does not change the Examiner's finding that
a transistor may be either normally on (i.e., electrically conductive in the
absence of the application of an electrical field) or normally off (electrically
insulative in the absence of the application of an electrical field). Ans. 3--4.
Additionally, Hoffman teaches the semiconductor devices (i.e., transistors)
may be used in a variety of applications. See, e.g., Hoffman i-fi-128, 52.
Thus, we agree with the Examiner that normally on and normally off
configurations constitute a finite number of identified predictable potential
solutions to be used, as appropriate, in the different applications taught or
suggested by Hoffman. See Ans. 4; see also KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 421 (2007). We find, in accordance with the holdings in KSR,
it would be obvious to the skilled artisan "to try either on/off configuration."
Ans. 4.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 15, and,
for similar reasons, the rejection of independent claims 21, 29, and 36,
which contain similar limitations and were not argued separately.
App. Br. 12. Further we sustain the rejection of dependent claims 16-19,
22-26, 30-34, and 37--41, which were not argued separately.
Claims 20 and 35
In relevant part, claim 20 recites "wherein the at least partially ionic
crystal comprises an alkaline halide." Appellant argues "[t]he Examiner
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Application 13/435,304
failed to articulate why a person having ordinary skill in the art would tum
to Itai' s alkaline halide (over all other materials) or what the results of the
combination would be." App. Br. 12-13.
We are unpersuaded of Examiner error because, as the Examiner
explains:
In the relevant portions of Itai, Itai provides a list of various
materials which may be used to transport electrons. Itai recites,
"Preferable examples of the material used in this layer include
alkali metal salts such as lithium fluoride, lithium chloride,
lithium bromide, other lithium salts, sodium fluoride, sodium
chloride and cesium fluoride, and insulating metal oxides such
as lithium oxide, aluminum oxide, indium oxide and magnesium
oxide." Hoffman et al. is directed towards semiconductor
devices having a channel that includes at least one of MgO and
CdO. As can be seen, MgO is listed as one of the exemplary
insulating metal oxide materials recited by Itai. It is clear in this
context that alkali metal salts and insulating metal oxides, such
as those listed by Itai, have similar electrical properties that
would allow them both to transport charge from one location to
another. Thus, at the time of the invention, it \~1ould have been
obvious to a person of ordinary skill in the art to use any of
materials listed by Itai as a part of the channel 108 taught by
Hoffman.
Ans. 7.
We agree with the Examiner's finding that "[a]t the time of the
invention, it would have been obvious to a person of ordinary skill in the art
to have the at least partially ionic crystal comprise an alkaline halide as this
constitutes simple substitution of one known element for another to obtain
predictable results." Final Act. 10. Thus, we find no error in the Examiner's
rejection of claim 20. Accordingly, we sustain the Examiner's rejection of
claim 20 together with the rejection of dependent claim 35, which was not
argued separately. App. Br. 13.
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Application 13/435,304
Claims 27, 28, 42, and 43
Claim 27 recites, in relevant part, "forming an interconnect layer
above the semiconductor substrate; and wherein forming the switching
device comprises forming the switching device in the interconnect layer."
Appellant argues "the Examiner's combination of references is improper as
a person having ordinary skill in the art would not tum to a nonvolatile
semiconductor memory device [(as taught by Mikawa)] to combine with a
thin-film transistor for use in LCD screens [(as taught by Hoffman)]." App.
Br. 13.
The Examiner finds, and we agree, "[t]he devices disclosed by
Hoffman et al. are clearly pertinent to transistor switches." Ans. 8 (citing
Hoffman i-f 28). The Examiner finds that transistor switches are equally
applicable in both display device and memory devices. Ans. 8.
Appellant does not persuasively rebut the Examiner's finding.
Accordingly, we sustain the Examiner's rejection of claim 27 together with
the rejection of dependent claims 28, 42, and 43, which were not argued
separately. App. Br. 14.
DECISION
We affirm the Examiner's decision to reject claims 15--43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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