Ex Parte Mryasov et al

Patent Trial and Appeal Board

Mar 18, 2015

12881072 (P.T.A.B. Mar. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte OLEG N. MRYASOV, THOMAS F. AMBROSE, and
WERNER SCHOLZ
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Appeal 2012-008705
Application 12/881,072
Technology Center 2800
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
Appellants request rehearing of our Decision of December 16, 2014.
In that Decision, we affirmed the Examiner’s decision to reject claims 1–7,
10, 11, and 14–19 under 35 U.S.C. §102(b) as anticipated by Gill.
1

1
Gill, US 6,473,275 B1, patented Oct. 29, 2002.
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Application 12/881,072

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Appellants contend that we (1) misapprehended Appellants’ briefed
position; (2) misapprehended the law on burden shifting as to inherency; and
(3) made a new ground of rejection.
For the reasons that follow, Appellants have not persuaded us that we
misapprehended or overlooked a point that would change the overcome of
our decision on appeal.

Issue (1)
Appellants contend we misapprehended their predominant briefed
position. Request 1. According to Appellants, we interpreted their position
to be “that Gill does not use its GMR stack 604 to write data.” Id.
Appellants counter that their “predominant point is that the Office failed to
factually substantiate the requisite prima facie case in support of its Section
102 rejection.” Id.
We agree with Appellants that their ultimate position was that the
Office, i.e., the Examiner, failed to establish anticipation. Appeal Br. 5,
heading under “VII. Argument.” That does not convince us that we
reversibly erred by focusing on the specific underlying dispute between the
Appellants and the Examiner. The burden fell to Appellants to identify
specific errors in the Examiner’s findings. See In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). We addressed Appellants’ arguments directed to
such errors. To explain our position in this way was not reversible error.
Continuing under the heading, “The Board misapprehended
Appellant’s predominant briefed position,” Appellants state that they find
“three evidentiary arguments set forth by the Office on [pages 6–7] of the
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Answer in support of the rejections of independent claims 1 and 5.” Request
2. Appellants contend that:
Where the Board relies on the Office's evidence, two of the
Office's points are clear error by the Board's own determination
and the third is outweighed by Appellant's factual showing in
the record; that is, the skilled artisan knows that a write current
is not the same as a read current.

Request 4.
On the first two points, Appellants have not stated with particularity
the points believed to have been misapprehended or overlooked by us in
rendering the Decision. Nor are we persuaded that our findings and
conclusions conflict with the Examiner’s findings and conclusions.
The first “evidentiary argument” mentioned by Appellants, is the
Examiner’s statement that “[t]he Office never characterized the device of
Gill as a dual read sensor.” Ans. 6.
We find no conflict between the Examiner’s statement and our finding
that Gill’s “GMR stack 604 is a portion of the active region of a dual hybrid
MTJ/GMR sensor 600 (also called a SVT sensor), which Gill uses in the
read head portion of a read/write head 421,” Decision 2. The Examiner
correctly found that Gill’s device is a magnetoresistive memory device
including two Giant Magnetoresistance (GMR) sensor devices. Ans. 6.
The second evidentiary argument (Request 2) refers to the Examiner’s
determination that “there is no commonly accepted definition of ‘write
module.’” Ans. 7. Appellants contend “[t]hat evidence is similarly rendered
to be clear error by the Board's stated understanding that Gill in FIG. 5a, for
example, discloses a read head 504 (which includes MTJ/GMR sensor 506,
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and is analogous to the claimed read module feature) and a write head 502
(analogous to the claimed write module feature).” Request 2–3.
Appellants’ argument is not understood. The Examiner relied upon
the device of Gill’s Figure 6 to reject the claims. Neither we nor the
Examiner discuss the structure of Gill’s Figure 5a. Appellants have not
persuaded us that the Examiner’s finding “[t]here are no commonly accepted
definitions of ‘write module’ or ‘write current’ in the art,” Ans. 7, conflicts
with our discussion.
On the third point, Appellants contend that “the Office discards claim
adjectives as merely functional labels to conclude ‘[s]imply put--a current is
a current ... A current of 5 Amperes can be labeled as a read current, a write
current or a blue current,’” Request 3, citing Ans. 7, and “Appellant has
repeatedly rebutted that argument by showing that the claim adjective write
and read are more than merely functional labels.” Request 3. As we
explained in our Decision, “it is reasonable to believe that the strength of the
current one applies to the nanocontact of the GMR stack 604 does not
structurally differentiate the GMR stack 604 from the write module of the
claim.” Decision 4. The key is the reasonable nature of the finding that the
structures are the same or substantially the same. The question is not
whether the currents are the same; it is whether the electrical structures are
the same or substantially the same such that it is reasonable to believe the
prior art and claimed structures are not patentably distinct. Appellants have
not convinced us we misapprehended or overlooked any points in this
regard.
Even if, as argued by Appellants, “read” and “write” modify the claim
term current because they quantify the current, the quantity of current within
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the electrical structure does not modify the electrical structure. The quantity
of current flowing in the electrical structure is like the quantity of water
flowing in a pipe. Just as the amount of water pumped through the pipe does
not change the structure of the pipe, the amount of current flowing through
an electrical system does not change the structure of the electrical system.

Issue (2)
Based upon the above arguments, Appellants contend that we
misapprehended that the burden had not shifted to them to show that the
prior art does not inherently disclose the claimed invention, citing In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Request 4.
We are not convinced we erred in determining that the burden had
shifted. The Examiner provided a reasonable basis to believe that Gill’s
GMR stack 604 has the structure required by the write sensor of the claim.
The burden to overcome this reasonable finding passed to Appellants, and
Appellants did not provide convincing evidence to show that the structure
would, in fact, be different. Appellants have not persuaded us that we
misapprehended or overlooked a point that would have altered our Decision
on this point.

Issue (3)
Appellants contend that our analysis of the difference between Gill’s
sensor and the claimed sensor as a matter of intended use, Decision 3,
amounted to a new ground of rejection. Request 4–5. We disagree.
We stated:
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But the difference between Gill's sensor and the claimed
magnetoresistive memory element is a matter of intended use.
The fact that the sensor is used to read and not to write data
does not provide evidence that the structure of the GMR stack
is different from the “write module” required by the claims.
Decision 3.
This position is substantially the same as the Examiner’s position.
The Examiner stated in the Answer that “[i]t is well known in the art that
GMR devices can be used for both reading and writing data.” Ans. 6
(emphasis added). The Examiner also stated that “the limitations ‘imparts a
spin torque’ in claim 1 and ‘write data’ in claim 5 are functional limitations
that refer to the intended use of the devices.” Ans. 8 (emphasis added). The
Examiner characterized reading and writing as intended uses. “[T]he
ultimate criterion of whether a rejection is considered ‘new’ in a decision by
the [B]oard is whether appellants have had fair opportunity to react to the
thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302–03
(CCPA1976). Appellants had a fair opportunity to react to the finding and
analysis we presented on page 3 of the Decision as it was substantially
parallel to the Examiner’s findings and analysis.
As we found in the Decision, “[a] preponderance of the evidence
supports the Examiner’s finding that Gill’s giant magnetoresistive (GMR)
stack 604 meets the structural requirements of the claimed write module.”
Decision 4. That was the aspect of the rejection Appellants disputed. Thus,
we affirmed the rejection of the Examiner, Appellants having failed to
identify a reversible error in the rejection.

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CONCLUSION
The subject Request has been granted to the extent that the Decision
has been reconsidered, but denied with respect to making any changes
therein.

DENIED
kmm