Ex Parte Horak et al

Board of Patent Appeals and Interferences

Mar 1, 2007

10732580 (B.P.A.I. Mar. 1, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID V. HORAK, CHUNG H. LAM
and HON-SUM P. WONG
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Appeal 2007-0970
Application 10/732,580
Technology Center 2800
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Decided: March 1, 2007
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-8, 10-18, and 20.
Claims 21-30 are withdrawn from consideration as being directed to a non-
elected invention. Claim 1 is illustrative:
1. A storage device comprising:
a first electrode;
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Application 10/732,580

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a stylus disposed above said first electrode, said stylus having a phase
change tip comprised of a phase change material;
an apex of said phase change tip disposed on said first electrode; and
a second electrode in contact with said stylus.
The Examiner relies upon the following references in the rejection of
the appealed claims:
Hudgens US 6,507,061 B1 Jan. 14, 2003
Lowrey US 6,908,812 B2 Jun. 21, 2005
Appellants’ claimed invention is directed to a storage device
comprising a stylus having an apex that is disposed on a first electrode. The
apex or tip of the stylus is formed of a phase change material.
Appealed claims 1-6, 10-14, 16-18, and 20 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Lowrey. Claims 1, 7, and 13
stand rejected under 35 U.S.C. § 102(e) as being anticipated by Hudgens.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lowrey.
With the exception of claim 12, Appellants do not present separate
arguments for any particular claim on appeal. Accordingly, with the
exception of claim 12, the three groups of claims separately rejected by the
Examiner stand or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we find that the Examiner’s rejections are well
founded and supported by the prior art evidence relied upon. Accordingly,
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we will sustain the Examiner’s rejections for essentially those reasons
expressed in the Answer.
The principal argument advanced by Appellants is that neither of the
applied references, Lowrey nor Hudgens, discloses the presently claimed
stylus having a phase change tip. Appellants emphasize that the phase
change material of Lowrey and Hudgens is described as cup-shaped and,
therefore, cannot constitute a phase change tip having an apex, as presently
claimed. However, as pointed out by the Examiner, figures 4G and 6 of
Appellants’ Specification depict the apex of the stylus as having a flat lower
end in contact with the first electrode. Hence, we agree with the Examiner
that there is a general correspondence between the shape of Appellants’
phase change material in contact with the first electrode and the shapes of
the phase change materials of Lowrey and Hudgens that are in contact with
the electrode. Consequently, to the extent the shape of Appellants’ phase
change material in contact with the first electrode is defined as a stylus
having a tip or apex, we agree with the Examiner that Lowrey and Hudgens
fairly describe such a stylus of phase change material within the meaning of
§ 102. Stated otherwise, what’s sauce for the goose is sauce for the gander.
In re Myers, 410 F.2d 420, 161 USPQ 668 (CCPA 1969). Significantly,
Appellants have chosen not to define the dimensions of the claimed stylus
tip in such a way that it distinguishes over the dimensions of the phase
change material described by Lowrey and Hudgens.
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Application 10/732,580

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In conclusion, based on the foregoing and the reasons set forth by the
Examiner, the Examiner’s decision rejecting the appealed claims 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) (2006).
AFFIRMED

clj

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