Ruppalt, Laura et al.

Patent Trials and Appeals Board

Jan 31, 2020

15430725 - (D) (P.T.A.B. Jan. 31, 2020)

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.
15/430,725 02/13/2017 Laura Ruppalt 103849-US2 2669
26384 7590 01/31/2020
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
AHMED, SHAMIM
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
01/31/2020 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 LAURA RUPPALT, WOO K. LEE, PAUL E. SHEEHAN, and
ADRIAN PODPIRKA
Appeal 2019–004733
Application 15/430,725
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 19–23. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “The Government
of the United States of America as represented by the Secretary of the
Navy”. Appeal Br. 2.
Appeal 2019-004733
Application 15/430,725

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A method for nanopatterning phase change materials,
comprising:
heating a probe;
contacting the heated probe with a surface of a phase
change material thereby inducing a local phase change at the
contacted surface; and
moving the heated probe across the surface of the phase
change material resulting in a patterned region.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chen US 2008/0246076 A1 Oct. 9, 2008
William P. King, Heated Atomic Force Microscope Cantilevers and their
Applications, Annual Review of Heat Transfer (2013), Vol. XVI, pp.
287–326)

REJECTIONS
1. Claims 1–4 and 8–9 are rejected under 35 U.S.C. §103 as being
unpatentable over William P. King (hereafter “William”).
2. Claims 5–7 and 19–23 are rejected under 35 U.S.C. § 103 as being
unpatentable over William as applied above, and further in view of Chen.

Appeal 2019-004733
Application 15/430,725

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OPINION
For purposes of this appeal, we address separately argued claims (we
select claims 1 and 5 as representative), and the remaining claims stand or
fall with the argued claims, consistent with 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, and affirm,
and add the following for emphasis.
Rejection 1
The Examiner relies upon William for teaching a process of
contacting a heated probe with a surface of a phase change material thereby
inducing a local phase change at the contacted surface (the cantilever tip is
in contact with a polymer substrate; William, p. 291); and moving the heated
probe across the surface of the phase change material resulting in a
nano patterned region (nanostructures patterning a wide variety of materials
with heated AFM cantilever tips; William, p. 311). Ans. 3. The Examiner
states that William may not explicitly teach the patterning may be performed
on a phase change material surface; however, William teaches that the
heated atomic force microscopy (AFM) cantilever tip can be used for
thermomechanical writing on polymer and phase-change material. William,
[2.1] at p. 291. Ans. 3.
Appeal 2019-004733
Application 15/430,725

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Appellant argues that William does not disclose the limitation in claim
1 of moving a heated probe across the surface of a phase change material
resulting in a patterned region. Appeal Br. 3. Appellant also argues that the
Examiner has not provided any motivation to combine the teachings of
William. Appeal Br. 3–4.
In response, the Examiner states that William discloses a process of
nanofabrication on a wide variety of materials using a heated AFM
cantilever probe tips. William, p. 311; Ans. 5. The Examiner states that
William also discloses that heat is generated within the cantilever, and that
the heated cantilever tip is in contact with a polymer substrate, and the hot
tip would cause indentations into the polymer surface, and also can be used
for thermomechanical writing on polymer and phase change material (see
paragraph under the heading 2.1 at page 291 of William). Ans. 5.
The Examiner states that the aforementioned heated nanofabrication
reads on the limitation of patterning on a phase-change material because the
heated cantilever tip is in contact with the polymer and the phase-change
material as disclosed by William, and such applied heat would cause change
in the physical properties, or, indentations may formed onto the phase
change material as it forms on the polymer substrate as suggested by
William on page 291, at [2.1]. The Examiner concludes that therefore it is
expected to have the same effect (patterns or indentations) as is formed on
the polymer substrate, as on the phase change material, when the heated tip
is in contact with the phase change material. We agree as Appellant has not
persuaded us otherwise.
In view of the above, we affirm Rejection 1.
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Rejection 2
With regard to the rejection over William in view of Chen, Appellant
argues that the Examiner has provided no specific understanding or
technological principle within the knowledge of one skilled in the art that
would have suggested the combination. Appeal Br. 4. Appellant submits
that it would not be obvious to one of ordinary skill in the art to combine
these references, and refers to paragraph [0007] of the Specification which
discloses: “[t]hough nanoscale patterning of chalcogenide-based PCMS has
previously been demonstrated, the reported means and modalities for
patterning differ significantly from the present invention. Conductive AFM
and NFM both use similar AFM probes, but have significant disadvantages
in terms of limiting the material stacks that can be used and inducing probe
damage.” Appeal Br. 4–5. Appellant submits that thus it would not be
obvious to expect that a chalcogenide phase change material could
be substituted for a non-chalcogenide phase change material with any
likelihood of success. The prior art can be modified or combined to reject
claims as prima facie obvious as long as there is a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). While
obviousness does not require absolute predictability, at least some degree of
predictability is required. In the instant case, it cannot be said that associated
disadvantages leads to a determination of no reasonable expectation of
success.
Appellant further argues that Chen discloses using a phase change
material electrically connected to an electrical contact (FIG. 10C and
paragraph [0116]). Appeal Br. 5. Appellant states that the claimed subject
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matter contacts the heated probe with the phase change material to transfer
heat to the PCM surface. Appellant submits that this is a significant
difference because “[electrically biased tips use an electrical current to
induce a transformation, requiring an electrically conducting buried layer or
substrate.” (Spec. ¶ 4). Appellant submits that using Chen’s phase change
material with just a heated probe would not produce the present invention.
Appellant states that in order for Chen’s phase change material to work, it
has to be electrically connected to an electrical contact. Appellant states that
heat transferred to its surface would not result in a phase change. Id.
The Examiner responds by stating that the argument is not persuasive
because Chen discloses that a commonly known phase change material is
chalcogenide (Chen, [0114]), and one of ordinary skill in the art would have
been motivated to use it because it exhibits a high resistance property
(undergoes rapid heating and cooling) that is beneficial for the lifetime of
the device to be formed as taught by Chen, para. [0114]. Ans. 6. Paragraph
[0113] of Chen teaches that the phase change material or PCM (phase
change memory) material refers to a material that is capable of being
converted from a crystalline to an amorphous state via the application of
external energy, suitably in the form of heat. Hence, while paragraph [0116]
of Chen’s teaches an embodiment wherein the form of heat involves
electrical contact and electrical connection, paragraph [0113] is broader by
indicating that the external energy is suitably in the form of heat. Hence, we
agree with the Examiner’s position in the record and are unpersuaded by
Appellant’s arguments in this regard.
In view of the above, we affirm Rejection 2.
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CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8–9 103 King 1–4, 8–9
5–7, 19–23 103 King, William 5–7, 19–23
Overall
Outcome
1–9 and 19–
23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED