11249171 (P.T.A.B. Oct. 31, 2012)

Ex Parte Browne

Patent Trial and Appeal BoardOct 31, 2012

11249171 (P.T.A.B. Oct. 31, 2012)

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. 11/249,171 10/12/2005 Alan L. Browne GP-305788-RD-MJL 2580 74829 7590 11/01/2012 Julia Church Dierker Dierker & Associates, P.C. 3331 W. Big Beaver Road Suite 109 Troy, MI 48084-2813 EXAMINER JETTON, CHRISTOPHER M ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 11/01/2012 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 ALAN L. BROWNE ____________________ Appeal 2010-009760 Application 11/249,171 Technology Center 3700 ____________________ Before: JOHN C. KERINS, KEN B. BARRETT, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009760 Application 11/249,171 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2- 3, 5-17, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus for erasing stored data and restoring data. Claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A method for at least one of selectively erasing information from and selectively restoring information to a shape memory material, the method comprising: establishing a predetermined area of the shape memory material adjacent to and other than between a junction formed by at least two crossing heating elements or cooling elements that directly contact one another; and at least one of selectively heating or cooling the at least two crossing heating or cooling elements such that a combined temperature at the junction is sufficient to at least one of erase information stored in and restore information to the shape memory material adjacent the junction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Moriguchi Hackleman Maynard Wong US 4,514,736 US 5,414,245 US 6,133,547 US 6,589,235 B2 Apr. 30, 1985 May 9, 1995 Oct. 17, 2000 Jul. 8, 2003 Rast US 2004/0260470 A1 Dec. 23, 2004 Appeal 2010-009760 Application 11/249,171 3 REJECTIONS Appellant seeks our review of the following rejections: Claims 2-3, 5-17, and 20 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3. Claims 2, 3, 5, 7, 9, 14, 16, 17, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, and Moriguchi. Ans. 4. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, Moriguchi, and Rast. Ans. 6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, Moriguchi, and Wong. Ans. 7. ANALYSIS 1. Written description The Examiner found that there was “no support” in the originally-filed disclosure for the shape memory material to be “other than between” a junction formed by crossing heating or cooling elements. Ans. 3-4. Appellant argues that the original drawings and related description adequately support this limitation. App. Br. 10-12. We will not sustain the rejection. We agree with Appellant that the application as filed discloses embodiments in which no shape memory material is positioned between a junction formed by crossing heating or cooling elements. Though the words “other than between” are not used in the original disclosure, we are satisfied that Appellant had possession of the claimed subject matter. Appeal 2010-009760 Application 11/249,171 4 2. Obviousness Appellant argues for patentability of claims 2, 3, 5, 7, 9, 14, 16, 17, and 20 as a group. App. Br. 13; id. at 14 (listing claim 20 under a separate subheading but offering no arguments separate from those offered as to claim 17). We select claim 17 as representative and decide the appeal with respect to all claims in this group on the basis of claim 17 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Maynard discloses all elements of claim 17 except “at least two crossing heating elements or cooling elements that directly contact one another” and “selectively heating or cooling the at least two crossing heating or cooling elements such that a combined temperature at the junction is sufficient to at least one of erase information stored in and restore information to the shape memory material adjacent the junction.” Ans. 5. The Examiner further found that Hackleman discloses a heater array having multiple row and column select lines spanned by resistors that are selectively energized by grounding a column line and applying a voltage to a row line. Id. The Examiner also found that Moriguchi discloses an array of upper and lower bar-shaped heating resistors having crossing points, in which the upper and lower resistors are selectively energized to generate heat such that only the additive heat at a crossing of two energized resistors is sufficient to permit recording. Id. at 5-6. The Examiner concluded that it would have been obvious to modify Maynard to include “the crossing, directly contacting heating elements taught by Hackleman and Moriguchi since doing so would allow the shape memory material to be selectively heated by the combined thermal output.” Id. at 6. Appeal 2010-009760 Application 11/249,171 5 Appellant argues that the Examiner erred in finding that Maynard, Hackleman, and Moriguchi “teach or suggest erasing information from a shape memory material or restoring information to a shape memory material (i.e., regenerating information previously stored on the shape memory material).” App. Br. 13. Appellant argues that Maynard is instead concerned with changing the shape of an entire sheet of shape memory alloy, not erasing or restoring information or even initially storing information (App. Br. 13-14), that Moriguchi discloses irreversibly recording data onto heat sensitive media and so does not contemplate erasing or re-storing information (id.), and that Hackleman does not teach or suggest erasing or storing of information from or to a shape memory material. Id. at 14. In response, the Examiner finds that Maynard discloses “altering the local shape … of a [shape memory alloy] sheet” such that Maynard does not merely impose an overall shape on a sheet. Ans. 12 (quoting Maynard, col. 1, ll.8-11). The Examiner finds also that Maynard’s “altering the local shape” corresponds to the recited “erasing information from or restoring information to” because Appellant’s own Specification explains at para. [0021] that information is “in the form of surface features, such as, for example, indents or bumps.” Id. (quoting Specification, para. [0021]). The Examiner further finds that Maynard discloses “restoring information” when explaining that “in response to an applied activation energy, the activated portion … assumes a predetermined shape” because that shape had been previously “‘trained’ into a [shape memory alloy]” and information is merely a change in shape. Id. (quoting Maynard, col. 3, ll. 35-37 and col. 1, ll. 32-33). The Examiner also noted that neither Moriguchi nor Hackleman were relied upon for disclosing the erasing or restoring of information from Appeal 2010-009760 Application 11/249,171 6 or to a shape memory material but rather simply for the crossing heating or cooling elements. Id. at 12-14. In reply, Appellant argues that the claim term “information” is not merely a change of shape but is instead used interchangeably with the term “data” and that “information and data include ‘messages, statistics, knowledge, facts, etc. that are manifested in the form of indents or bumps on the shape memory material.’ ” Reply Br. 6-7. We are not persuaded by Appellant’s arguments. The prior-art references combined in the manner the Examiner identified disclose physical structure and acts within the scope of claim 17. We agree with the Examiner that Appellant’s Specification at para. [0021] establishes that the changes in shape imposed on the shape memory material are the “information” stored therein. Regardless of whether those changes in shape might also be interpreted as conveying “messages” and the like in some context external to the claim, Appellant’s disclosure and the cited references involve the same physical acts carried out on the same structure. Appellant has identified no limitation in claim 17 that distinguishes Maynard in combination with Moriguchi and Hackleman. The recitation in the body that the combined temperature at the junction is “sufficient” to erase or restore information would be met by a reference that discloses the heating of shape memory material to a temperature sufficient to change its shape, regardless of the reason given in the reference for performing the heating. Maynard discloses such heating, as the Examiner found; Appellant has not explained why Maynard’s heating is insufficient for erasing or restoring information. Appeal 2010-009760 Application 11/249,171 7 We have considered Appellant’s remaining arguments, including those directed to the rejections of claims 6, 8, and 13, and find them unpersuasive. DECISION The rejection of claims 2-3, 5-17, and 20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is REVERSED. The rejection of claims 2, 3, 5, 7, 9, 14, 16, 17, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, and Moriguchi is AFFIRMED. The rejection of claims 6 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, Moriguchi, and Rast is AFFIRMED. The rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Maynard, Hackleman, Moriguchi, and Wong is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh