Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Oct 30, 2009

10962889 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM P. TAYLOR
and MICHAEL C. DOOGUE
____________

Appeal 2009-003839
Application 10/962,889
Technology Center 2800
____________

Decided: October 30, 2009
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6.1

1 In rendering this decision, we have considered the Appellants’ arguments
presented in the Appeal Brief dated March 17, 2008.
Appeal 2009-003839
Application 10/962,889

2
Appellants’ invention relates to a material stack forming a resistor
having a temperature coefficient the same as, or similar to, the temperature
coefficient of a magnetoresistance element. (Spec. 1). Claim 1 is
illustrative:
1. A material stack comprising:
an antiferromagnetic layer;
a first pinned layer disposed over the antiferromagnetic layer;
a non-magnetic layer disposed over the pinned layer; and
a second pinned layer disposed over the non-magnetic layer,
wherein the material stack has an electrical resistance
substantially the same in the presence of any magnetic field in
any direction relative to the material stack and in the presence of
no magnetic field, and wherein the electrical resistance has a
temperature coefficient about the same as a temperature
coefficient of a magnetoresistance element.
The Examiner rejected the claims on appeal as follows:
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as anticipated
by the admitted prior art described in conjunction with Figure 1 of the
Specification. (Particularly, pages 1-3).
The issue before us is whether Appellants have shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. § 102(b).
We answer this question in the affirmative. Therefore, we REVERSE.2
The issue turns on whether the admitted prior art depicted by Figure 1
describes expressly or inherently the material stack has an electrical
resistance substantially the same in the presence of any magnetic field in

2 We select independent claim 1 as representative of the rejected subject
matter.
Appeal 2009-003839
Application 10/962,889

3
any direction relative to the material stack and in the presence of no
magnetic field, as required by independent claims 1 and 4.
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element
as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999).
Figure 1 from the Specification, relied upon by the Examiner in
rejecting the claimed subject matter, is reproduced below:

Figure 1 is directed to a prior art giant magnetoresistance (GMR)
element 10 having a plurality of layers, including an antiferromagnetic
layer 12 comprised of PtMn, a first pinned layer 14, a first non-magnetic
Appeal 2009-003839
Application 10/962,889

4
layer 16, a second pinned layer 18, a second non-magnetic layer 20, and a
free layer 22. The first and second pinned layers 14 and 18 are comprised
of CoFe. The non-magnetic layers 16 and 20 are comprised of Ir or Ru and
the free layer 22 is comprised of NiFe.
Figure 2 from the Specification, which is representative of the
claimed invention, is reproduced below:

Figure 2 is directed to a GMR element 50, representative of the
claimed invention, having a plurality of layers, including an
antiferromagnetic layer 52 comprised of PtMn, a first pinned layer 54, a
first non-magnetic layer 56, a second pinned layer 58. The first and second
pinned layers 54 and 58 are comprised of CoFe and the non-magnetic layer
56 is comprised of Ir or Ru.
Appellants contend that the GMR element of Figure 1 has high
resistance that changes greatly in response to a magnetic field. (App. Br.
5). In support of this position, Appellants point to the Specification, page
2 lines 11-12, which state: “[t]he magnetoresistance element has an
electrical resistance that changes generally in proportion to a magnetic
Appeal 2009-003839
Application 10/962,889

5
field in a direction of a maximum response axis of the magnetoresistance
element.” Appellants further state that the change of resistance in response
to a magnetic field in the GMR element of Figure 1 is due to at least the
inclusion of the nonmagnetic layer 20 and the free layer 22 shown in
Figure 1. (App. Br. 6).
The Examiner recognizes the GMR element of Figure 1 differs from
that of Figure 2 in the presence of the first non-magnetic layer 20
comprised of Ir or Ru, and the free layer 22 comprised of NiFe. However,
the Examiner contends that the transitional phrase “comprising” utilized in
the independent claims allows the GMR element to include additional
layers. (Ans. 3-4). The Examiner has not explained what interpretation of
the prior art is being relied upon to establish that the GMR element of
Figure 1 necessarily has a material stack that has an electrical resistance
substantially the same in the presence of any magnetic field in any
direction relative to the material stack and in the presence of no magnetic
field. While the transitional phrase “comprising” allows the GMR element
to include additional layers, the additional layers must allow the GMR
element to have an electrical resistance substantially the same in the
presence of any magnetic field in any direction relative to the material
stack and in the presence of no magnetic field, as required by independent
claims 1 and 4.
The Examiner does not address the Appellants’ position regarding
the inclusion of the nonmagnetic layer 20 and the free layer 22 shown in
the GMR element of Figure 1. That is, the Examiner does not refute
Appellants’ position that the GMR element of Figure 1 has high resistance
that changes greatly in response to a magnetic field. (See Ans. generally).
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Application 10/962,889

6
Anticipation cannot be established by probabilities or possibilities. See
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). As stated in In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Under these circumstances,
we cannot conclude that the Examiner has met the minimum threshold of
establishing anticipation under 35 U.S.C. § 102. Therefore, the rejection
of claims 1-12 under § 102 is reversed.
ORDER
The decision of the Examiner rejecting claims 1-12 under 35 U.S.C.
§ 102(b) is reversed.

REVERSED

cam

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