Ex Parte Brown et al

Board of Patent Appeals and Interferences

Sep 23, 2002

08798679 (B.P.A.I. Sep. 23, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ADAM R. BROWN, DAGOBERT M. DE LEEUW,
EDSKO E. HAVINGA, and COLIN P. JARRETT
____________
Appeal No. 2000-0834
Application No. 08/798,679
____________
ON BRIEF
____________
Before FLEMING, GROSS, and SAADAT, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 4 and 6 through 9, which are all of
the claims pending in this application.
Appellants' invention relates to an electrical memory
element which has between two electrodes a layer of an organic
conjugated compound formed of a soluble polymer or oligomer and a
dopant that is capable by a redox reaction of changing the
oxidation state of the organic compound. Claim 9 is illustrative
of the claimed invention, and it reads as follows:
9. A write once-read many electrical memory element which
comprises two electrodes between which electrodes a layer of a
material containing an organic conjugated compound is sandwiched,
Appeal No. 2000-0834
Application No. 08/798,679
2
characterized in that the layer comprises a dopant capable, by a
redox reaction of changing the oxidation state of the organic
conjugated compound, the material is soluble, the organic
conjugated compound is a polymer or an oligomer, and the
electroconductivity of the layer in a written state is
permanently lower than in an unwritten state.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Marrocco, III (Marrocco) 4,945,257 Jul. 31, 1990
Atkins EP 0,115,191 Aug. 08, 1984
Claims 2 through 4 and 6 through 9 stand rejected under
35 U.S.C. § 103 as being unpatentable over Marrocco in view of
Atkins.
Reference is made to the Examiner's Answer (Paper No. 23,
mailed January 11, 2000) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper No.
22, filed November 18, 1999) and Reply Brief (Paper No. 24, filed
March 13, 2000) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 2 through 4 and
6 through 9.
Regarding sole independent claim 9, the examiner asserts
(Answer, page 3) that "Marrocco teaches an organic material based
Appeal No. 2000-0834
Application No. 08/798,679
3
memory element wherein the material switches like a 'fuse' from a
low resistance to a high resistance to form a ROM type device."
The examiner further states that "Atkins teaches an organic based
conjugated material including a dopant which similarly switches
from a low resistance to a high resistance to form a 'fuse'."
The examiner concludes that it would have been obvious to "apply
the doped conjugated organic 'fuse' material of Atkins in a
memory array as Marrocco to form a desireable [sic] ROM 'fuse'
type memory device," since a ROM is "an obvious application of a
known 'fuse' material."
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is required to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). Such determinations include the scope and content of the
prior art and differences between the prior art and the claims at
issue. Further, under Graham the examiner must provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
Appeal No. 2000-0834
Application No. 08/798,679
4
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988), cert. denied, 488 U.S. 825 (1988). These
showings by the examiner are an essential part of complying with
the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Furthermore, "[t]hat knowledge can not come from the
applicant's invention itself." Oetiker, 977 F.2d at 1447, 24
USPQ2d at 1446.
The examiner has provided no evidence that a ROM is an
obvious application of a fuse material, nor any teaching or
suggestion in the prior art why the skilled artisan would have
been motivated to substitute materials of Atkins' fuse for the
electrolyte layer of Marrocco's memory element. Thus, the
examiner has failed to establish a prima facie case of
obviousness. Consequently, we cannot sustain the rejection of
claim 9 or its dependents, claims 2 through 4 and 6 through 8.
Appeal No. 2000-0834
Application No. 08/798,679
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CONCLUSION
The decision of the examiner rejecting claims 2 through 4
and 6 through 9 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
apj/vsh
Appeal No. 2000-0834
Application No. 08/798,679
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JACK E HAKEN
US PHILIPS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
580 WHITE PLAINS ROAD
TARRYTOWN, NY 10591