Ex Parte Horak et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10732580 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID V. HORAK, CHUNG H. LAM and HON-SUM P. WONG
_____________

Appeal 2009-008420
Application 10/732,580
Technology Center 2800

_______________

Before, ROBERT E. NAPPI, KENNETH W. HAIRSTON, and JOHN C.
MARTIN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008420
Application 10/732,580

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-8, 10-18, 20, and 31-32.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm the Examiner’s rejections of these claims.

INVENTION
The invention is directed to a storage cell that includes a stylus which
has a tip made of phase change material. See Spec: 1-3. Claim 1 is
representative of the invention and reproduced below:
1. A storage device comprising:
a first electrode;
a needle shaped stylus disposed above said first
electrode, said needle shaped stylus having a phase
change tip comprised of a phase change material, said
phase change material being completely contained in said
phase change tip;
an apex of said phase change tip disposed on said first
electrode; and
a second electrode in contact with said needle shaped
stylus.

REFERENCES
Lowrey US 6,908,812 B2 Jun. 21, 2005
(filed Apr. 30, 2003)

Chen US 6,937,507 B2 Aug. 30, 2005
(filed Dec. 5, 2003)

2 Claims 9 and 19 were cancelled in an Amendment After Non-Final, filed
October 21, 2005. Claims 21-30 were cancelled in an Amendment After
Final, filed March 6, 2006.
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Application 10/732,580

Chen US 7,012,273 B2 Mar. 14, 2006
(filed Aug. 14, 2003)

REJECTIONS AT ISSUE
Claims 1-6, 10-14, 16-18, and 20 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lowrey. Ans. 3-7.
Claims 1 and 13 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Chen U.S. Patent No. 7,012,273 (hereinafter referred to as
Chen I). Ans. 7-8.
Claims 1-4, 7, 8, 11-13, 16-18, 20, and 31-32 are rejected under 35
U.S.C. § 102(e) as being anticipated by Chen U.S. Patent No. 6,937,507
(hereinafter referred to as Chen II). Ans. 8-12.
Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lowrey. Ans. 12-13.

ISSUES
Rejections over Lowrey3
Appellants argue on pages 7-8 of the Appeal Brief and pages 1-5 of
the Reply Brief that the Examiner’s rejection of claims 1-6, 8, 10-18, and 20
is in error. We select independent claim 1 as representative of the group
comprising claims 1-6, 10-18, and 20 since Appellants do not separately
argue these claims with particularity. See 37 C.F.R. § 41.37(c)(1)(vii).

3 The rejection of claims 8 and 15 under 35 U.S.C. § 103(a) over Lowrey has
been included with the rejection of claims 1-6, 10-14, 16-18, and 20 under
35 U.S.C. § 102(e) as being anticipated by Lowrey since Appellants have
indicated that all of these claims either stand or fall together based upon
independent claims 1 and 13. App. Br. 10-11.
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Application 10/732,580

Appellants argue that Lowrey does not disclose phase change material
contained completely in the phase change tip. App. Br. 8. Appellants
further argue that Lowrey does not disclose an arrowhead shaped, soldering
pencil like phase change tip, as required by dependent claim 12. App. Br. 8
and n.15.
Thus, with respect to claims 1 and 12, Appellants’ contentions
present us with two issues: Did the Examiner err in finding that Lowrey
discloses (1) phase change material contained completely in the phase
change tip; and (2) an arrowhead shaped, soldering pencil like phase change
tip?
Rejections over Chen I
Appellants argue on pages 8-9 of the Appeal Brief and pages 5-6 of
the Reply Brief that the Examiner’s rejection of claims 1 and 13 is in error.
We select claim 1 as representative of the group comprising claims 1 and 13.
Appellants argue that Chen I does not disclose phase change material
contained completely in the phase change tip. App. Br. 8.
Thus, with respect to claim 1, Appellants’ contention presents us with
the issue: Did the Examiner err in finding that Chen I discloses phase change
material contained completely in the phase change tip?
Rejections over Chen II
Appellants argue on pages 9-10 of the Appeal Brief and pages 5-6 of
the Reply Brief that the Examiner’s rejection of claims 1-4, 7-8, 11-13, 16-
18, 20, and 31-32 is in error. We select claim 1 as representative of the
group comprising claims 1-4, 7-8, 11-13, 16-18, 20, and 31-32. Appellants
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argue that Chen II does not disclose phase change material contained
completely in the phase change tip. App. Br. 9.
Thus, with respect to claim 1, Appellants’ contention presents us with
the issue: Did the Examiner err in finding that Chen II discloses phase
change material contained completely in the phase change tip?

ANALYSIS
Rejections over Lowrey
Appellants’ arguments have not persuaded us of error regarding the
Examiner’s rejection of claim 1. Claim 1 recites “said phase change
material being completely contained in said phase change tip.” The
Examiner interpreted the “phase change tip” as broad enough to read on
phase change material that extends along the entire height of the needle
shaped stylus and explained how Appellants’ Specification is consistent with
this interpretation. Ans. 13-14. Specifically, the Examiner concluded that
“regardless of whether the phase change material 222 is located as shown in
fig. 6 of the [Appellants’] instant drawing or if it is extended all the way to
the top surface of the mold 202/206', it still satisfies the language of the
pending claims 1, 13, 31; that is, it is still completely contained in the phase
change tip.” (Ans. 13.) Conversely, Appellants, addressing Lowrey, argue
that “the ‘phase change material 18’ is a ‘cup-shaped’ layer that extends the
entire height of the cup-shaped Lowrey cell. Therefore, much of the Lowrey
phase change material layer is not contained in what could be termed the tip,
i.e., the lower end of the cup shaped layer.” App. Br. 8 (footnotes omitted).
Appellants also argue that the Specification precludes the tip of the stylus
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from being the whole stylus. Reply Br. 5. However, Appellants’ arguments
are not commensurate with the scope of the claim. Appellants have not
pointed to a specific definition anywhere in the Specification for interpreting
the term “tip” as limited to the lower end portion of the stylus. Nor have
Appellants shown that the Examiner’s broader definition is inconsistent with
Appellants’ Specification. Thus, although each of Appellants’ Figures 4G
and 6 shows the phase change material located at only the lower end portion
of the stylus, we will not import this limitation into the claim and we find the
Examiner’s interpretation to be reasonable and consistent with Appellants’
Specification. As such, the Examiner’s finding that the claimed phase
change tip reads on Lowrey’s cup-shaped phase change material 18 even
though it is not located solely in the bottom portion of the needle shaped
stylus (Ans. 3) is reasonable. Therefore, we do not find Appellants’
arguments to be persuasive.
Additionally, Appellants argue that Lowrey fails to disclose a
soldering pencil like phase change tip that has an arrowhead shaped cross
section, as required by dependent claim 12. App. Br. 8. The Examiner
responds to Appellants’ arguments on page 15 of the Answer, identifying
how Lowrey teaches this feature. We are not persuaded by Appellants’
arguments, as they are conclusory and Appellants do not address the
findings by the Examiner in either the Appeal Brief or the Reply Brief.
As a result, we do not find Appellants’ argument to be persuasive and
we sustain the Examiner’s rejection of claim 1 and claims 1-6, 8, 10-18, and
20 that have been grouped with claim 1.

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Application 10/732,580

Rejections over Chen I
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 1 over Chen I. Appellants argue that Chen I
does not disclose phase change material contained completely in the tip
since the phase change material extends beyond indentation 52 and the
narrow column 44b of Figures 5 and 6. App. Br. 8-9; Reply Br. 5-6.
However, as noted above in the rejections over Lowrey, we find reasonable
the Examiner’s interpretation of the phase change tip to read on phase
change material that is limited to the bottom end of the needle shaped stylus
and a tip or on phase change material that is located at the bottom end and
extends all of the way up the sides of the needle shaped stylus. Thus, the
Examiner’s finding that the claimed “phase change tip “ reads on Chen I’s
memory material 44 even though the material runs up the side of the needle
shaped stylus is also reasonable. Ans. 7. Therefore, we do not find
Appellants’ arguments to be persuasive and we sustain the Examiner’s
rejection of claim 1 and claim 13, which has been grouped with claim 1.
Rejections over Chen II
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 1 over Chen II. Appellants argue that Chen II
does not disclose phase change material contained completely in the tip
since the phase change material extends beyond indentation 38 and the
narrow column 28a of Figure 6. App. Br. 10; Reply Br. 5-6. However, as
noted above in the rejections over Lowrey and Chen I, we find reasonable
the Examiner’s interpretation of the phase change tip to read on phase
change material that is limited to the bottom end of the needle shaped stylus
or on phase change material that is located at the bottom end and extends all
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of the way up the sides of the needle shaped stylus. Thus, the Examiner’s
finding that the recited “phase change tip” reads on Chen II’s memory
material in column 28 even though the material runs up the side of the
needle shaped stylus is also reasonable Ans. 8. Therefore, we do not find
Appellants’ arguments to be persuasive and we sustain the Examiner’s
rejection of claim 1 and claims 2-4, 7-8, 11-13, 16-18, 20, and 31-32, which
have been grouped with claim 1.

CONCLUSION
The Examiner did not err in finding that Lowrey discloses phase
change material contained completely in the phase change tip.
The Examiner did not err in finding that Lowrey discloses an
arrowhead shaped, soldering pencil like phase change tip.
The Examiner did not err in finding that Chen I discloses phase
change material contained completely in the phase change tip.
The Examiner did not err in finding that Chen II discloses phase
change material contained completely in the phase change tip.

SUMMARY
The Examiner’s decision to reject claims 1-8, 10-18, 20, and 31-32 is
affirmed.
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)(v).
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AFFIRMED

ELD

LAW OFFICE OF CHARLES W. PETERSON, JR. YORKTOWN
12793 THACKER HILL CT.
SUITE 1B
OAK HILL, VA 20171

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