Ex Parte 7402855 et alDownload PDFPatent Trials and Appeals BoardMay 30, 201995001359 - (D) (P.T.A.B. May. 30, 2019) Copy Citation 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. 95/001,359 05/21/2010 7402855 22524-40024/US 9398 95671 7590 05/31/2019 Synopsys/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/31/2019 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 ____________ KILOPASS TECHNOLOGY, INC., Requester, v. SIDENSE CORPORATION, Patent Owner. ____________ Appeal 2018-003271 Reexamination Control 95/001,359 Patent 7,402,855 B2 Technology Center 3900 ____________ Before KARL D. EASTHOM, KEVIN F. TURNER, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION Appeal 2018-003271 Reexamination Control 95/001,359 2 In an earlier Decision, Appeal No. 2014-001851, mailed July 16, 2015 (“Decision”), we determined that claims 1–5 and 9–11 are unpatentable under 35 U.S.C. § 103(a) over various combinations of references. Decision 10, 11. This determination was designated as a new ground of rejection pursuant to 37 C.F.R. § 41.77(b). Id. Patent Owner elected to reopen prosecution under 37 C.F.R. § 41.77(b)(1) (“Request to Reopen Prosecution under 37 C.F.R. § 41.77(B)(1),” filed August 17, 2015, “PO Request”) in which Patent Owner cancelled claims 5 and 11 and proposed claim amendments to claims 1 and 9. PO Request 2–5. Requester did not file comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner's request to reopen prosecution. In the Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner, dated October 30, 2015 (“Remand”) at 2, the matter was remanded to the Examiner for consideration of Patent Owner's amendments and any associated documentation as they pertain to grounds of rejection. Remand 2. In accordance with 37 C.F.R. § 41.77(e), the Examiner rejects claims 1–4, 9, and 10 for improperly broadening the scope of the claimed invention (Examiner’s Determination 11); under 35 U.S.C. § 112, second paragraph as failing the written description requirement (Examiner’s Determination 8-12); and under 35 U.S.C. § 103(a) as unpatentable over any one of the following combinations of references: Peng, Curd, and any one of Oh or APA; Peng, Curd, Oh, and APA; Peng, Nguyen, and any one of Oh or APA; Peng, Nguyen, Oh, and APA; Peng and Kim; or Peng, Kim, and APA. Examiner’s Determination, dated March 2, 2016, (“Examiner’s Determination”) 13–34. Appeal 2018-003271 Reexamination Control 95/001,359 3 In response to the Examiner’s Determination, Patent Owner filed “Patent Owner Comments Under 37 C.F.R. § 41.77(E)” on April 4, 2016 (“PO Comments on Exr’s Determ.” or “PO Comments”). Requester did not provide comments. Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision. Claim amendments The Examiner previously confirmed patentability of claims 1–11 based on the Examiner’s finding that “the terms ‘bitline’ and ‘wordline’ are not interchangeable” and that “Peng alone, or in view of the other references, fails to teach” bitlines or wordlines, as recited in claims 1 and 9. Examiner’s Determination, dated February 6, 2013 (“First Examiner’s Determination”) 7. In the Decision dated July 16, 2015, we determined that the Examiner erred in not adopting the rejection of claims 1–11 because Peng discloses “bitlines” and “wordlines,” as recited in claims 1 and 9. See generally Decision dated July 16, 2015, 6–10. In response to the Decision dated July 16, 2015, Patent Owner reopens prosecution pursuant to 37 C.F.R. § 41.77(b) and amends claim 1 to further recite “using a standard CMOS process.” Patent Owner does not provide amendments pertaining to either “bitlines” or “wordlines” in the proposed claim amendments, for example, so as to narrow or clarify “bitlines” or “wordlines.” PO Request 2–4. Under 37 C.F.R. § 41.77(b), Patent Owner may “request[] reopening of prosecution before the examiner” and that the response “must be either an Appeal 2018-003271 Reexamination Control 95/001,359 4 amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.” 37 C.F.R. § 41.77(b)(1). In other words, either claim amendments or evidence (or both) must pertain to the specific new grounds of rejection (i.e., the “claims so rejected”). In the present case, Patent Owner’s proposed claim amendments do not pertain to the new grounds of rejection (i.e., “bitlines” and “wordlines”). Instead, Patent Owner’s proposed claim amendments pertain to forming gate oxide portions using a standard CMOS process. Patent Owner does not explain sufficiently how using (or not using) a standard CMOS process pertains to whether the cited prior art references disclose “bitlines” or “wordlines,” as recited in claim 1, for example. Hence, the proposed claim amendments are separate and distinct from the new grounds of rejection as discussed in the Decision dated July 16, 2015 and do not pertain to the claims “so rejected.” As such, Patent Owner’s proposed claim amendments are improper under 37 C.F.R. § 41.77(b)(1) and are not entered. 35 U.S.C. § 112, second paragraph The Examiner states that Patent Owner’s proposed claim amendments render claims 1–4, 9, and 10 indefinite. Examiner’s Determination dated March 2, 2016, 9–12. As discussed above, Patent Owner’s proposed claim amendments are not entered. Therefore, the Examiner’s rejection of claims 1–4, 9, and 10 is moot. Broadening of claim scope Appeal 2018-003271 Reexamination Control 95/001,359 5 The Examiner rejects claims 1–4, 9, and 10 because Patent Owner’s proposed claim amendments to claims 1–4, 9, and 10 impermissibly broaden the scope of the claims. Examiner’s Determination dated March 2, 2016, 12. “No amendment may enlarge the scope of the claims of the patent or introduce new matter.” 37 C.F.R. § 1.530(j). As discussed above, Patent Owner’s proposed claim amendments are not entered. Therefore, the Examiner’s rejection of claims 1–4, 9, and 10 is moot. Obviousness Patent Owner presents previously presented arguments that were previously addressed. PO Request 9–25. For example, Patent Owner argues that Peng fails to disclose or suggest “CMOS processes” and “fails to disclose use of thick and thin gate oxides of high and low voltage transistors under one gate electrode.” See e.g., PO Request 9–12. These arguments, for example, were previously raised and addressed. See, e.g., Decision dated October 12, 2012 10–11 (citing Peng 5:53–57, 7:23–33, accord Van Buskirk ¶ Declaration 8); PO Req. 12, PO Resp. to Exr’s Determination 12, Decision dated July 16, 2015, 5. Patent Owner does not assert or argue persuasively that Peng fails to disclose “bitlines” and “wordlines,” as recited in claims 1–11 (i.e., the claims “so rejected”). See, e.g., Examiner’s Determination, dated February 6, 2013 (“First Examiner’s Determination”) 7. The Examiner did not err in rejecting claims 1–11 under 35 U.S.C. 103(a). Appeal 2018-003271 Reexamination Control 95/001,359 6 DECISION We affirm the Examiner’s rejection of claims 1–11 under 35 U.S.C. § 103(a) as unpatentable over Peng, Curd, and any one of Oh or APA; Peng, Curd, Oh, and APA; Peng, Nguyen, and any one of Oh or APA; Peng, Nguyen, Oh, and APA; Peng and Kim; and Peng, Kim, and APA. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 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 Copy with citationCopy as parenthetical citation