Ex Parte Kuo et al

Board of Patent Appeals and Interferences

Nov 15, 2010

11127482 (B.P.A.I. Nov. 15, 2010)

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.
11/127,482 05/12/2005 Charles C. Kuo ITO.0595US (P21212) 6246
21906 7590 11/15/2010
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
VALENTINE, JAMI M
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
11/15/2010 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 CHARLES C. KUO and ILYA V. KARPOV
____________________

Appeal 2009-009081
Application 11/127,482
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MacDONALD, 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 for 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 2009-009081
Application 11/127,482

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11-18. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 11 under appeal reads as follows:
11. A phase change memory comprising:
a substrate;
a dielectric layer over said substrate;
a pore extending completely through said dielectric layer;
a non-conductive sidewall spacer in said pore;
a heater formed in said pore over said substrate; and
a phase change material formed entirely within said pore over
said heater.

Rejections
1. The Examiner rejected claims 11, 12, 14, and 16-18 under
35 U.S.C. § 102(b) as being anticipated by Matsuoka, U.S. Patent
Application Publication 2003/0146469 A1.
2. The Examiner rejected dependent claims 13 and 15 as being
unpatentable under 35 U.S.C. § 103(a) over Matsuoka.2
Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claims 11-18
because “[t]he claim calls for the pore to extend completely through the
dielectric layer. This does not happen in the cited reference” (App. Br. 9).

2 The rejections of dependent claims under 103(a) are not separately argued
from the rejection of the independent claims under 102(b).
Appeal 2009-009081
Application 11/127,482

3
Issue on Appeal
Whether the Examiner has erred in rejecting claims 11, 12, 14, and
16-18 as being anticipated because Matsuoka fails to disclose the claim
limitation of “a pore extending completely through said dielectric layer.”

ANALYSIS
We agree with Appellants’ contention above.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 11, 12, 14, and 16-18 as being anticipated under 35 U.S.C. § 102(b).
(2) Appellants have established that the Examiner erred in rejecting
claims 13 and 15 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 11-18 have not been shown to be
unpatentable.

DECISION3
The Examiner’s rejections of claims 11-18 are reversed.

REVERSED

3 We recommend that the Examiner review the prosecution history of U.S.
Patent Application 10/634,139 which issued as U.S. Patent 7,211,819 to
Karpov (one of the inventors herein) to determine if any judicial obviousness
double patenting rejections or any statutory rejections are appropriate with
respect to the current application on appeal.
Appeal 2009-009081
Application 11/127,482

4

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TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631