Ex Parte Chilcote et al

Patent Trials and Appeals Board

Jun 24, 2019

14819320 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/819,320 08/05/2015 Jason Chilcote
110044 7590 06/26/2019
HONEYWELL/THOMPSON
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
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.
H0037032 (71-26-1) 3852
EXAMINER
RHODES, JUANITA B
ART UNIT PAPER NUMBER
2818
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
patentservices-us@honeywell.com
honeywell@thompsonpatentlaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON CHILCOTE and RICHARD ALAN DA VIS
Appeal2019-000098
Application 14/819 ,320
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals2 under 35 U.S.C. § 134(a) from the Examiner's
November 2, 2017 decision finally rejecting claims 21-40 ("Final Act.").
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Honeywell International, Inc. who is also
identified as the real party in interest (Appeal Br. 2).
2 Appellant did not number the pages of either its Appeal Brief or its Reply
Brief. We refer to sections of the briefs as though the pages were numbered.
We suggest that, in the future, Appellant number the pages of its briefs for
the convenience of the parties and the Board.
Appeal2019-000098
Application 14/819 ,320
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to magneto-resistive sensing devices
(MRSD's) (Abstract). The claimed MRSD's comprise three regions: (1) a
first region comprising semiconductor devices on a substrate; (2) a second
region disposed on the first region containing first and second conductive
layers; and (3) a third region disposed on the second region and comprising a
magneto-resistive material (Spec. 3-4). The first and second regions are
separated by a first dielectric layer, and the second and third regions are
separated by a second dielectric layer. Importantly, for purposes of this
appeal, the first region, the second region, and the first dielectric layer are
free of any material containing a measurable amount of iron. Independent
claim 21 is representative of the claimed invention, and is reproduced below
from the Claims Appendix to the Appeal Brief ( emphasis added):
21. A magnetic-field sensing device, comprising:
a first region, comprising semiconductor devices on a
substrate;
a second region disposed on the first region, comprising a
first conductive layer and a second conductive layer, wherein
the first conductive layer and the second conductive layer are
vertically stacked forming interconnecting electrical paths; and
a third region disposed on the second region and
comprising a magneto-resistive material disposed to vertically
overlap and arranged in electrical communication with the
semiconductor devices in the first region via the interconnecting
electrical paths in the second region, wherein the first and
second regions are separated by a first dielectric layer and the
second and third regions are separated by a second dielectric
layer, wherein the first region, the second region, and the first
dielectric layer are free of any material containing a
measurable amount of iron, and wherein the magneto-resistive
material comprises a magnetic-sensing layer disposed between
2
Appeal2019-000098
Application 14/819 ,320
two adjacent cladding layers, wherein the magnetic-sensing
layer is the only layer in the magnetic-field sensing device
containing a measurable amount of iron;
wherein the magneto-resistive material is disposed
directly on the second dielectric layer, and electrical
communication between the magneto-resistive material and the
semiconductor devices in the first region is made through one
or more vias in the second dielectric layer that are filled with a
non-magneto-resistive metal material.
REJECTIONS
1. Claims 21-25, 27, 28, 30-34, 36, 37, 39, and 40 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Kolb3 in view of Mather. 4
2. Claims 26 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kolb in view of Mather, as evidenced by Stenson. 5
3. Claims 29 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kolb in view of Mather. 6
DISCUSSION
Appellant bases its arguments on limitations which are common to each
of independent claims 21, 30, and 39 (Appeal Br. 8). Accordingly, our
analysis will focus on the rejection of claim 21 over Kolb in view of Mather.
The Examiner finds that Kolb discloses each element of claim 21,
except for the limitations (a) wherein the magneto-resistive material
3 Kolb et al., US 2006/0202291 Al, published September 14, 2006.
4 Mather, US 2011/0169488 Al, published July 14, 2011.
5 Stenson et al., US 2013/00241543 Al, published September 19, 2013.
6 This rejection indicates further reliance on Kolb, in particular, on FIG. 4. It
is believed that this is the reason that this is listed by the Examiner as a
separate rejection, although it relies on the same art as Rejection (1 ).
3
Appeal2019-000098
Application 14/819 ,320
comprises a magnetic-sensing layer disposed between two adjacent cladding
layers; and (b) wherein the magnetic-sensing layer is the only layer in the
magnetic field sensing device containing a measurable amount of iron (Final
Act. 4-6).
The Examiner finds that Kolb discloses a system in which the
components corresponding to the claimed first region, second region, and first
dielectric layer which are free from any material containing a measureable
amount of iron (Final Act. 5). This finding is premised on a subsidiary
finding that Kolb, and in particular at least one of its disclosed embodiments,
does not disclose that any of the components corresponding to those
limitations contain iron (id.). Appellant does not dispute this subsidiary
finding.
The Examiner further finds that Mather is in a similar field of endeavor,
and discloses (a) a magnetic sensing layer disposed between two adjacent
cladding layers, and (b) a magnetic sensing layer is the only layer containing a
measureable amount of iron (Final Act. 6). Appellant does not dispute either
of these findings.
The Examiner determines that it would have been obvious to modify
the magnetic-field sensing device as disclosed by Kolb by substituting the
magneto-resistive material as disclosed by Mather because one of skill in the
art would have recognized that cladding layers surrounding magneto-resistive
material help control the effective field applied for a given current as
disclosed by Mather (Final Act. 7).
Appellant's argument focuses on the following limitations from
claim 21: ( 1) "wherein the first region, the second region, and the first
dielectric layer are free of any material containing a measurable amount of
4
Appeal2019-000098
Application 14/819 ,320
iron;" and (2) "wherein the magnetic-sensing layer is the only layer in the
magnetic-field sensing device containing a measurable amount of iron." The
Examiner determines that these limitations are suggested by the presence of
embodiments in the references which describe the claimed elements without
stating that they contain iron. According to Appellant, the Examiner's
determination that these embodiments teach the claimed absences of iron are
premised on the inherency doctrine, because the references do not explicitly
state that iron is not present (Appeal Br. 11 ). Appellant argues that the
Examiner erroneously focuses on what the references do not teach ( the
presence of iron), rather than what they do teach (the references are silent on
the presence of iron in the components at issue) (Appeal Br. 12).
Appellant's argument is not persuasive. First, the rejection is not based
on a theory of inherency. That is, the rejection does not rely on a finding that
either Kolb or Mather necessarily and inevitably does not contain iron in the
components at issue. Rather, the rejection relies on a finding that the
references disclose embodiments which are not said to contain iron at issue ( a
finding which Appellant does not dispute). This finding is sufficient to
suggest that a person of skill in the art would have understood, for example,
that Kolb teaches an embodiment in which the first region, the second region,
and the first dielectric layer are free of any material containing a measurable
amount of iron. Similar reasoning supports the finding that Mather suggests
"wherein the magnetic-sensing layer is the only layer in the magnetic-field
sensing device containing a measurable amount of iron."
Accordingly, following our review of the evidence of record, as well as
the arguments and contentions set forth in the Appeal Brief and the Reply
5
Appeal2019-000098
Application 14/819 ,320
Brief, we determine that the preponderance of the evidence of record does not
demonstrate reversible error in the obviousness rejection on appeal.
CONCLUSION
We AFFIRM the rejection of claims 21-25, 27, 28, 30-34, 36, 37, 39,
and 40 under 35 U.S.C. § 103(a) as unpatentable over Kolb in view of
Mather.
We AFFIRM the rejection of claims 26 and 35 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kolb in view of Mather, as
evidenced by Stenson.
We AFFIRM the rejection of claims 29 and 38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kolb in view of Mather.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
6