Ex Parte Yang et al

Patent Trial and Appeal Board

Jun 15, 2016

13383634 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/383,634 01112/2012 Jianhua Yang
56436 7590 06/17/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82924182 1319
EXAMINER
AHMED, SHARED
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
06/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANHUA YANG, JOHN PAUL STRACHAN,
MATTHEW D. PICKETT, and R. STANLEY WILLIAMS
Appeal2014-009879
Application 13/383,634
Technology Center 2800
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-13, 16, and 17. 2 We have jurisdiction under35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Co., LP (App. Br. 3).
2 Claims 14 and 15 were canceled.
Appeal2014-009879
Application 13/383,634
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to a memristor with controlled electrode
grain size (Spec. Title). Exemplary claim 1 under appeal reads as follows:
1. A memristor with a controlled electrode grain size, said
memristor comprising:
an adhesion layer;
a first electrode having a first surface contacting the
adhesion layer and a second surface opposite the first surface,
wherein the first electrode is formed of an alloy of a base
material and at least one second material, wherein the alloy has
a relatively smaller grain size than a grain size of the base
material;
a switching layer positioned adjacent to the second
surface of the first electrode; and
a second electrode positioned adjacent to the switching
layer.
The Examiner's Rejection
Claims 1-13, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Xia (US 8,093,575 B2; Jan. 10, 2012) and
Rodriguez (US 2010/0055570 Al; Mar. 4, 2010) (Final Act. 4--10).
Appellants ' Contentions
1. Appellants contend the Examiner erred in rejecting independent claim
1 over the combination of Xia and Rodriguez, because Rodriguez is non-
analogous art to Xia's memristor device and the claimed subject matter
(App. Br. 7-9; Reply Br. 4--5). Specifically, Appellants argue:
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Application 13/383,634
Rodriguez describes a power source of an implantable device
application, a bioelectric battery or biogalvanic cell for use as a
power source in an implantable device, an implantable
bioelectric battery, etc. See, e.g., Rodriguez, pars. [0004]-
[0006], [0019]. Clearly, therefore, Rodriguez is not generally
related to semiconductor devices. Instead, at best, Rodriguez is
generally related to implantable devices and in particular to a
bioelectric battery for implantable devices.
App. Br. 8
2. Appellants contend the Examiner erred in rejecting claim 1 because
the proposed modification of replacing the lower electrode of Xia with the
magnesium alloy of Rodriguez would render Xia's memristor unsatisfactory
for its intended purpose (App. Br. 9-11; Reply Br. 5-7). Appellants argue a
lower electrode comprising the reactive consumable metal (i.e., magnesium
alloy) of Rodriguez would react with the adhesion layer of Xia's memristor,
preventing the adhesion layer from diffusing into the lower electrode, which
is required for the memristor to fi.1nction as described by Xia (id.).
3. Appellants contend the Examiner's motivation to combine Xia and
Rodriguez, using an alloy with a smaller grain size to reduce corrosion, is
not sufficient to support the conclusion of obviousness (Reply Br. 4--7).
Appellants argue Xia' s memristor is not a device that would be implanted,
and thus is not likely to be subjected to the corrosion loss to which the
electrode of Rodriguez would be subjected (Reply Br. 4--5). Appellants
further contend the reduction in corrosion with smaller grain sizes only
occurs in a particular type of magnesium alloy, which is not suitable for use
in a memristor, and Rodriguez's teaching of a smaller grain size to reduce
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corrosion cannot be decoupled from the specific type of magnesium alloy
(Reply Br. 5-7). 3
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 6-11; Reply Br. 4--7) that the Examiner erred. We
disagree with Appellants' above contentions 1-3. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 4--10) and (2) the reasons set forth by the
Examiner in the Examiner's Answer (Ans. 3-5) in response to Appellants'
Appeal Brief. We concur with the conclusions reached by the Examiner.
We highlight and address specific findings and arguments for emphasis as
follows.
Appellants did not challenge the Examiner's factual findings with
respect to Xia, and thus we take those findings as being conceded by
Appellants.
Regarding Appellants' contention 1 that Rodriguez is non-analogous
art to Xia and the claimed subject matter, we are not persuaded of Examiner
error in the rejection. "Whether a reference in the prior art is 'analogous' is
a fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n. 9 (Fed. Cir.
1987)). Two criteria have evolved for answering the question: "(1) whether
3 Independent claims 9 and 13 are argued on the same basis as independent
claim 1 (App. Br. 11 ), and separate patentability is not argued for dependent
claims 2-8, 10-12, 16, and 17 (id.). Except for our ultimate decision, these
claims are not discussed further.
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Application 13/383,634
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Id. at 658-59 (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,
1036 (CCPA 1979)). Here, the Examiner cited Rodriguez to teach the
concept of using an equal channel angular pressing (ECAP) treatment to
produce an alloy with more uniform material microstructure and finer grain
size (Ans. 3--4 (citing Rodriguez i-fi-127-29)). We agree with the Examiner's
finding that, in the context of forming a metal alloy electrode of Xia (Final
Act. 4--8 (citing Xia col. 5, 11. 16-22 and col. 8, 11. 26-32: electrodes formed
of metal alloys and metal compounds, such as noble, less reactive platinum
and palladium alloys)), Rodriguez's ECAP treatment that results in a more
uniform alloy material micro structure would logically commend itself to an
inventor's attention with regard to eiectrode iayers and, therefore, Rodriguez
is properly combinable with Xia.
As to Appellants' contention 2 that using Rodriguez's magnesium
alloy as the lower electrode material of Xia would render Xia's memristor
unsatisfactory for its intended purpose, we disagree with Appellants'
contention because the Examiner's proffered combination does not replace
the material of Xia's lower electrode with magnesium alloy (Final Act. 4--5;
Ans. 3--4). Rather, the Examiner finds, and we agree, that it would have
been obvious to one of ordinary skill in the art use Rodriguez's ECAP metal
treatment process on the "relevant material composition" (e.g., less reactive
platinum alloys) of Xia's lower electrode to form an alloy with a more
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uniform microstructure (id.). Thus, we do not find Appellants' contention
persuasive of Examiner error.
Regarding Appellants' contention 3 that the Examiner has not
provided a proper motivation to combine Xia and Rodriguez, we are not
persuaded of error because the Examiner has provided "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness" based on factual findings supported by the record (see Final
Act. 4--5; Ans. 3-5). See KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). While the
memristor device resulting from the combination of Xia and Rodriguez may
not necessarily be implanted and subjected to the same type of corrosion as
discussed in Rodriguez, the electrodes of the device may still be subjected to
corrosion from moisture, heat, etc., in the surrounding environment (see
Xia's Fig. 2 and Appellants' Fig. 2, where the electrodes are exposed to the
environment in those embodiments). Therefore, we agree with the
Examiner's finding that an ordinary skilled artisan would recognize applying
Rodriguez's well-known ECAP metal treatment to the metal alloy electrode
material of Xia would yield an alloy with more uniform material distribution
(id.), resulting in improved material characteristics (e.g., more uniform
corrosion loss, more uniform resistivity, etc.) and improved service life of
the electrode.
Accordingly, we sustain the Examiner's rejection of independent
claim 1.
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DECISION
We affirm the decision of the Examiner to reject claims 1-13, 16, and
17 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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