Ex Parte Mao et al

Patent Trial and Appeal Board

Nov 25, 2013

11915039 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/915,039 11/20/2007 Chuanbin Mao 22084-P005WOUS 2855
61060 7590 11/26/2013
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
NGUYEN, DUY T V
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
11/26/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHUANBIN MAO,1
Shan Tang, and Sanjay Banerjee
________________

Appeal 2011-001152
Application 11/915,039
Technology Center 2800
________________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Chuanbin Mao, Shan Tang, and Sanjay Banerjee (“Mao”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-17.

1 The real party in interest is listed as the Board of Regents, The University
of Texas System. (Appeal Brief, filed 4 June 2010 (“Br.”), 1.)
2 Office action mailed 28 January 2010 (“Final Rejection”; cited as “FR”).
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Appeal 2011-001152
Application 11/915,039

3
In this embodiment, the flash memory further comprises two active
regions, the N+ source 102 and the N+ drain 104, embedded in a p-type
substrate 106.4
According to the Specification, in the prior art methods of aerosol
deposition, direct chemical vapor deposition, and precipitation methods,
“nanocrystal size and position distribution cannot be controlled.” (Spec. 2,
1st para.) As a result, device performance, scalability, and manufacture are
said to be limited. (Id.)
The crux of the claimed invention is said to be an improved method of
forming the floating gate by using chaperone molecules, such as chaperonin
proteins. The Specification teaches that chaperonin proteins assemble to
form structures 201 having a central cavity within which a protein substrate
may be bound. In the claimed method, the protein complexes without a
protein bound in the cavity are assembled in a substantially uniform ordered
array on a substrate, as shown in Figure 2, reproduced on the following
page. The array of empty chaperonin proteins is then exposed to a solution
containing semiconductor nanocrystals, which fill the cavities of the
proteins, forming an ordered array of nanocrystals in a protein lattice 202 on
the oxide layer of the substrate. The protein may then be removed (e.g., by
high temperature thermal annealing (Spec. 5, l. 1), or by oxidation at high
temperature (id. at 6, ll. 1-2), leaving the nanocrystals in an ordered
array 203 on the oxide layer of the substrate. Fabrication of the flash
memory continues by standard methods. (Id. at ll. 3-8.)

4 Throughout this Opinion, for clarity, labels to elements in figures are
shown in bold font, regardless of their presentation in the original document.
Appeal 2011-001152
Application 11/915,039

4
{Fig. 2 is shown below}

{Figure 2 shows steps to form an array of quantum dots (nanocrystals)}
Claim 1 is representative of the process claims, and reads:
A method for fabricating a flash memory device comprising
the steps of:
defining active areas in a substrate;
forming an oxide layer on said substrate;
forming a protein lattice on top of said oxide layer,
wherein said protein lattice comprises
a plurality of molecular chaperones;
trapping nanocrystals in said protein lattice; and
forming a substantially uniform distribution of
nanocrystals upon removal of said protein lattice.
(Claims App., Br. 27; some indentation and emphasis added.)
Independent claim 17 is a process claim that is somewhat broader than
claim 1.
Appeal 2011-001152
Application 11/915,039

5
Claim 9, which is representative of the device claims, is in product-
by-process form, and reads:
A memory device comprising:
a substrate;
a source and a drain region separated by a channel region
in said substrate;
a tunneling oxide layer formed on said substrate; and
a substantially uniform distribution of nanocrystals
formed on said tunneling oxide layer, wherein
said substantially uniform distribution of nanocrystals is
formed using a protein lattice comprising a plurality of
molecular chaperones configured to trap said nanocrystals.
(Claims App., Br. 28; indentation and emphasis added.)
Independent claim 16 is a product-by-process claim that is somewhat
broader than claim 9.
Appeal 2011-001152
Application 11/915,039

6
The Examiner maintains the following grounds of rejection:5
A. Claims 1-5, 7-13, 15, and 17 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Black6 and Trent.7
A1. Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Black, Trent, and
Nunoshita.8
B. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Black.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Mao presents substantially the same arguments
for patentability of the process claims and the product-by-process claims.

5 Examiner’s Answer mailed 25 August 2010 (“Ans.”).
6 Charles T. Black and Kathryn Wilder Guarini, Nonvolatile memory device
using semiconductor nanocrystals and method of forming same, U.S. Patent
Application Publication 2004/0256662 Al (2004).
7 Jonathan D. Trent et al., Ordered biological nanostructures formed from
chaperonin polypeptides, U.S. Patent Application Publication
2005/0130258 Al (16 June 2005), based on an international application
filed 8 November 2002.
8 Masahiro Nunoshita et al., Method of production of nano particle
dispersed composite material, U.S. Patent Application Publication
2005/0042386 Al (24 February 2005), based on an application
filed 10 June 2004.
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Appeal 2011-001152
Application 11/915,039

9
Mao argues that neither the teaching in Trent [0011] of forming
higher order structures nor the teachings at [0155]-[0159] (which describe
the steps illustrated in Fig. 14) suggest forming a substantially uniform
distribution of nanocrystals upon removal of the protein lattice. (Br. 4-10.)
This argument is not particularly germane to the Examiner’s rejection,
which relies on the combined teachings of Black and Trent; we therefore do
not find it persuasive of harmful error in the Examiner’s rejection.
Mao argues further that the proposed modifications to Black would
render Black unsuited for Black’s intended purpose of transferring a
nanoscale pattern into an oxide layer by an RIE (reactive ion etching)
process, and forming nanocrystals in the nanometer-scale holes. (Br. 11-12.)
We find this argument persuasive of harmful error as to the process
claims. The Examiner has not directed our attention to any disclosure in
Black suggesting that continuing with the process described by Trent, i.e.,
filling the cavities in the chaperonin proteins with nanocrystals, would serve
any useful purpose in a process taught by Black. That is, following the
formation of the ordered chaperonin lattice on the oxidized silicon substrate,
the artisan, following Black, would transfer the resulting pattern to the oxide
substrate by a process such as reactive ion etching. The artisan would
subsequently remove the chaperonins before forming the nanocrystals in the
wells in the silicon oxide layer. Thus, the Examiner has failed to show that
the required step in the appealed process claims of “trapping nanocrystals in
said protein lattice” would have been suggested or obvious in view of the
combined teachings of Black and Trent.
Appeal 2011-001152
Application 11/915,039

10
The Examiner’s analyses of the remaining process claims do not cure
this fundamental deficiency, and we therefore reverse all the rejections of
the process claims, namely claims 1-8 and 17.
Product-by-process claims
The remaining claims are claims to a product in which at least one
limitation is the presence of “a substantially uniform distribution of
nanocrystals formed on said tunneling oxide layer, wherein said
substantially uniform distribution of nanocrystals is formed using a protein
lattice.” (Claims App., Br. 28 (claim 9) and 28-29 (claim 16).) Claim 16
differs from claim 9 in that claim 16 does not require the presence of a
source and a drain, and by not requiring that the protein lattice comprise “a
plurality of molecular chaperones configured to trap said nanocrystals.”
It is well-settled that “[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317,
78 USPQ2d 1097, 1100 (Fed. Cir. 2006), quoting In re Thorpe, 777 F.2d
695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). Moreover, “when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990).
In the present case, comparison of the partial memory element shown
by Black in Figure 4I, reproduced by the Examiner (FR 6, rejecting claim 9;
Appeal 2011-001152
Application 11/915,039

11
FR 10, rejecting claim 16; Ans. 7, 11), or Black Figure 1(b), supra, with the
memory element shown in Figure 1 of the 039 Specification shows that all
of the elements recited in claims 9 and 16 are present. This impression is
strengthened by even a cursory review of Black, e.g., the array of holes
shown by Black in the exemplified version of the diblock copolymer film
shown in Figure 2A, and of the corresponding photomicrographs shown by
Trent of model systems, such as Trent Figure 8, (gold nanoparticles binding
to chaperonin arrays) and Trent Figure 9, (semiconductor nanoparticle
arrays). Although the method by which the nanocrystal floating gate is
prepared by Black differs from the method recited in claim 9 and in
claim 16, the method required by the appealed claims, “using a protein
lattice,” is so broad that, on the present record, it is fair to transfer the burden
to Mao to explain why the resulting structure is distinct from that described
by Black. In view of the Examiner’s citation and reproduction of
Black Figure 4I, which shows all the relevant structures, we consider the
Examiner’s further attempt to show that the recited process steps would have
been obvious to be harmless error.
In this regard, we find that the 039 Specification does not contain any
working examples or microphotographs of the chaperonin protein arrays or
the nanocrystal floating gates formed from the “substantially uniform
arrays” of nanocrystals formed using those chaperonins. Mao’s arguments
in the Brief and in the Reply,9 that the processes of forming the nanoparticle
floating gates differ, does not establish that the structures resulting from
Black’s process, modified by using chaperonin proteins in place of diblock

9 Reply Brief filed 8 October 2010 (“Reply”).
Appeal 2011-001152
Application 11/915,039

12
copolymers for the same ultimate purpose, differ in any patentably distinct
way from devices formed by the steps recited in the claims. Similarly,
Mao’s arguments regarding dependent product claims 11-14 focus on the
differences in the recited process limitations. Mao does not argue, let alone
establish, that the resulting structures are patentably distinct.
We conclude that Mao has not shown harmful error in the Examiner’s
rejection of the product claims.
C. Order
We reverse the rejection of claims 1-5, 7, 8, and 17 in view of the
combined teachings of Black and Trent.
We reverse the rejection of claim 6 in view of the combined teachings
of Black, Trent, and Nunoshita.
We affirm the rejection of claims 9-13 and 15 in view of the
combined teachings of Black and Trent.
We affirm the rejection of claim 14 in view of the combined teachings
of Black, Trent, and Nunoshita.
We affirm the rejection of claim 16 in view of Black.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

kmm