Ex parte GIJS et al.

Board of Patent Appeals and Interferences

Sep 25, 2000

08649909 (B.P.A.I. Sep. 25, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARTINUS A. M. GIJS, and PAUL J. KELLY
________________
Appeal No. 1998-0880
Application No. 08/649,909
________________
ON BRIEF
________________
Before KRASS, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-0880
Application No. 08/649,909
We note that claim 16 submitted in the appendix to the1
brief is incorrect. The words "essentially only", added by
amendment c, are not recited.
2
This is a decision on appeal from the final rejection of
claims 2 through 4, 8, 12 through 14, 16 and 18, all claims1
pending in this application.
The invention relates to a magneto-resistance (MR) device
having two layers of half-metallic ferromagnetic material,
separated by an electrically insulating layer of non-
ferromagnetic material.
Independent claim 16 is reproduced as follows:
16. A magneto-resistive device comprising two layers
of ferromagnetic material mutually separated essentially only
by at least one layer of a non-ferromagnetic material,
characterized in that said at least one layer of non-
ferromagnetic material is electrically insulating and is in
contact with one of said layers of ferromagnetic material and
at least one of the layers of ferromagnetic material comprises
a half-metallic material.
The references relied on by the Examiner are as follows:
Kamiguchi et al. 5,416,353 May 16, 1995
(filed Sep. 10, 1993)
Nakatani et al., “Changes in the electrical resistivity of Fe-
C/Al O /Fe-Ru multilayered films due to a magnetic field”,2 3
Journal of Materials Science Letters, Vol. 10, 1991, pp. 827-
828.
Appeal No. 1998-0880
Application No. 08/649,909
3
Claims 2 through 4, 8, 12 through 14, 16 and 18 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nakatani in view of Kamiguchi.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we will
not sustain the rejection of claims 2 through 4, 8, 12 through
14, 16 and 18 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
Appeal No. 1998-0880
Application No. 08/649,909
4
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984)).
The Examiner reasons that Nakatani discloses the
multilayered MR device but does not show the ferromagnetic
layers being made out of half metals. The Examiner notes that
Kamiguchi shows a MR device that includes two layers of half
metallic ferromagnetic material separated by at least one
layer of a non-magnetic, electrically insulating material
(answer-pages 3 and 4), and concludes:
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention
was made to replace the ferromagnetic layers of the
Nakatani and Kitada article with the half metallic
ferromagnetic layers as taught by Kamiguchi et al.
The rational is as follows: one of ordinary skill in
the art would have been motivated to use a half
metallic ferromagnetic layer because half metallic
materials exhibit excellent magnetic properties that
amplify the magnetoresistive effect, thereby
increasing the sensitivity of the MR device.
[Answer-page 4.]
Looking at Kamiguchi, we see nothing that suggests half
metallic materials exhibit properties that amplify the MR
Appeal No. 1998-0880
Application No. 08/649,909
5
effect. At most, the cited passage of Kamiguchi (column 4,
lines 54-59) indicates ferromagnetic metals and half metals
are interchangeable. Thus, we see no evidence of half metals
amplifying the MR effect, and thus no basis for the Examiner’s
expressed motivation.
Appellants argue that since the semiconductor layer in
Kamiguchi is an essential feature of the Kamiguchi device, and
since the combination of Kamiguchi and Nakatani would not have
the semiconductor layer, one would not be motivated to make
the combination. (Brief-pages 5 and 6.)
We agree with Appellants, there is a lack of motivation
to make the combination put forward by the Examiner.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
Appeal No. 1998-0880
Application No. 08/649,909
6
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
Accordingly, we will not sustain the Examiner’s 35 U.S.C.
§ 103 rejection of claims 2 through 4, 8, 12 through 14, 16
and 18.
REVERSED
Appeal No. 1998-0880
Application No. 08/649,909
7
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
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