Ex Parte Ingvarsson et alDownload PDFPatent Trial and Appeal BoardApr 30, 201411738032 (P.T.A.B. Apr. 30, 2014) Copy Citation 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. 11/738,032 04/20/2007 Snorri Thorgeir Ingvarsson YOR920020372US2 6713 7590 04/30/2014 Ryan, Mason & Lewis, LLP Suite 205 1300 Post Road Fairfield, CT 06824 EXAMINER WARREN, MATTHEW E ART UNIT PAPER NUMBER 2815 MAIL DATE DELIVERY MODE 04/30/2014 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 SNORRI THORGEIR INGVARSSON, PHILIP LOUIS TROUILLOUD, SHOUHENG SUN, ROGER HILSEN KOCH and DAVID WILLIAM ABRAHAM ___________ Appeal 2011-011538 Application 11/738,032 Technology Center 2800 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011538 Application 11/738,032 2 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1 and 3-29. Claim 2 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention relates to a magnetic switching device including a barrier layer placed between two magnetic layers. (Spec. 6:20-21.) Superparamagnetic particles are coated on at least one surface of the two magnetic layers. (Spec. 6:21-23; Abstract.) Claims 1, 17, and 20 are exemplary, with disputed limitations in italics: 1. A magnetic film comprising superparamagnetic particles on at least one surface thereof configured to affect damping of the magnetic film, one or more of the superparamagnetic particles comprising a nanoparticle, wherein said magnetic film comprises a lithographic pattern. 17. A magnetic switching device comprising two magnetic layers with a barrier layer therebetween, wherein at least one of the magnetic layers comprises a magnetic film comprising superparamagnetic particles on at least one surface thereof and a lithographic pattern. 20. A magnetic random access memory (MRAM) comprising: a plurality of memory cells; and a plurality of word lines and a plurality of bit lines operatively coupled to the memory cells for selectively accessing the memory cells, wherein at least one of the memory cells comprises a magnetic switching device including a magnetic film comprising superparamagnetic particles on at least one surface thereof and a lithographic pattern. Appeal 2011-011538 Application 11/738,032 3 Claims 1 and 3-29 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 3-9, and 12-16 stand rejected under 35 U.S.C. § 103(a) as obvious over Daughton (US 7,054,118 B2; May 30, 2006).1 Claims 1, 3, 4-9, and 12-19 stand rejected under 35 U.S.C. § 103(a) as obvious over Richter (US 6,495,252 B1; Dec. 17, 2002). Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious over Richter and Rizzo (US 2004/0000415 Al; Jan. 1, 2004). Claims 17-24, 26, 27, and 29 stand rejected under 35 U.S.C. § 103(a) as obvious over Sun (US 6,256,223 B1; July 3, 2001) and Daughton. Claims 25 and 28 stand rejected under 35 U.S.C. § 103(a) as obvious over Sun, Daughton, and Rizzo. ANALYSIS § 112, First Paragraph Rejection With respect to independent claim 1, we are unpersuaded by Appellants’ arguments (App. Br. 4-5; see also Reply Br. 2-3) that the claim limitation “lithographic pattern” complies with the written description requirement under 35 U.S.C. § 112, first paragraph. The Examiner found that the newly added limitation “lithographic pattern” was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.” 1 Appellants do not present any arguments with respect to the rejection of claims 1, 3-9, and 12-16 under 35 U.S.C. § 103(a) over Daughton. Thus, any such arguments are deemed to be waived. Appeal 2011-011538 Application 11/738,032 4 (Ans. 5.) In particular, the Examiner found that Appellants’ “specification . . . only states that the magnetic film is patterned and the drawings only show that the magnetic film is formed as a typical layer on a substrate” and accordingly, “[i]t cannot be ascertained from the disclosure that the magnetic film is a lithographic pattern.” (Id.) Appellants’ Specification discloses that “[i]n accordance with the teachings of the present invention, magnetic film 100 may be patterned and may be employed in a small area structure, and as such, may also exhibit increased coercivity” (Spec. 18:1-3) and that “[t]he magnetic film may be employed, for example, in a magnetic random access memory (MRAM) device” (Spec. 18:10-11). Appellants’ Figure 6 illustrates “an exemplary self-assembly deposition technique.” (Spec. 8:10-11; figs. 6-7.) Although Appellants’ Specification discloses the general concept of patterning a magnetic film, the Specification provides no express disclosure of “lithographic patterning,” as recited in independent claim 1. Appellants argue that [a]s would be apparent to a person of ordinary skill in the art, magnetic switching devices and magnetic random access memory (MRAM) devices are created by forming a lithographic pattern on the magnetic field, i.e., a magnetic film that comprises a lithographic pattern is an inherent feature of a magnetic film contained in a magnetic switching device or magnetic random access memory (MRAM) device. (App. Br. 5; see also Reply Br. 3.) However, Appellants have provided insufficient evidence to support the argument that “a lithographic pattern is an inherent feature” of a magnetic switching device or an MRAM device. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Appeal 2011-011538 Application 11/738,032 5 Thus, we agree with the Examiner that the Specification does not provide written description support for the limitation “lithographic pattern.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 112, first paragraph. Claims 3-16 depend from claim 1, and Appellants have not presented any substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 3-16 under 35 U.S.C. § 112, first paragraph, for the same reasons discussed with respect to independent claim 1. Independent claims 17, 20, 23, 27, and 29, recite limitations similar to those discussed with respect to independent claim 1. We sustain the rejection of claims 17, 20, 23, 27, and 29, as well as dependent claims 18, 19, 21, 22, 24-26, and 28, for the same reasons discussed with respect to claim 1. § 103 Rejection – Richter Claims 1, 3, 4-9, and 12-16 We are persuaded by Appellants’ arguments (App. Br. 6-7) that Richter would not have rendered obvious independent claim 1, which includes the limitation “wherein said magnetic film comprises a lithographic pattern.” The Examiner interpreted claim 1 as a product-by-process claim and accordingly, found that Richter teaches the limitation “wherein said magnetic film comprises a lithographic pattern.” (Ans. 7.) We do not agree. Richter relates to “magnetic information/data recording, storage, and retrieval media.” (Col. 1, ll. 13-14.) Figure 2 of Richter illustrates a cross- sectional view of a perpendicular-type magnetic recording medium (col. 4, Appeal 2011-011538 Application 11/738,032 6 ll. 13-16), including a magnetic layer 4, a superparamagnetic layer 8A, an exchange de-coupling layer 8B, and an underlayer 3 (col. 5, ll. 28-34). However, Richter does not provide an express teaching that such magnetic layer 4 is “patterned.” Accordingly, we are persuaded by Appellants’ arguments that “Richter does not disclose or suggest wherein said magnetic film has a lithographic pattern.” (App. Br. 6.) Thus, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 3, 4-9, and 12-16 depend from independent claim 1. We do not sustain the rejection of claims 3, 4-9, and 12-16 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to independent claim 1. Claims 17-19 We are persuaded by Appellants’ arguments (App. Br. 6-7; see also Reply Br. 4) that Richter would not have rendered obvious independent claim 17, which includes the recitation of “[a] magnetic switching device.” The Examiner found that Richter teaches the recitation of “[a] magnetic switching device” in the preamble of claim 17. (Ans. 8.) In particular, the Examiner found that “Richter inherently discloses such a [magnetic switching] device” and “Richter’s magnetic media can encompass any information storage format such as magnetic disk or in this case a magnetic switching device.” (Ans. 16.) We do not agree. As discussed previously, Richter relates to a “magnetic information/data recording, storage, and retrieval media” (col. 1, ll. 13-15) and Figure 2 of Richter illustrates a cross-sectional view of a perpendicular- type magnetic recording medium (col. 4, ll. 13-16) having a magnetic Appeal 2011-011538 Application 11/738,032 7 layer 4, a layer pair 8, and an underlayer 3 (col. 5, ll. 28-34). Although Figure 2 of Richter illustrates a magnetic layer 4, a layer pair 8, and an underlayer 3 (i.e., the claimed “two magnetic layers with a barrier layer therebetween”), the Examiner has not established that such a structure necessarily forms a magnetic switching device. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Furthermore, because every structure having two magnetic layers with a barrier layer in between is not necessarily a “magnetic switching device,” the recitation in the preamble serves to further define the structure for the “magnetic switching device.” See Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951) (“Every union of substances capable . . . of use as abrasive grains and a binder is not an ‘abrasive article’ [as recited in the preamble].”). Accordingly, we are persuaded by Appellants’ argument that there is “no disclosure or suggestion in Richter of a magnetic switching device and . . . the device disclosed by Richter is not configured to be a magnetic switching device.” (App. Br. 7; see also Reply Br. 4.) Thus, we do not sustain the rejection of independent claim 17 under 35 U.S.C. § 103(a). Claims 18 and 19 depend from independent claim 17. We do not sustain the rejection of claims 18 and 19 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to independent claim 17. § 103 Rejection – Richter and Rizzo Claims 10 and 11 depend from independent claim 1. The Examiner relied upon Rizzo for teaching the additional features of claims 10 and 11. (Ans. 9-10.) However, the Examiner’s application of Rizzo does not cure the above noted deficiencies of Richter. Appeal 2011-011538 Application 11/738,032 8 § 103 Rejection – Sun and Daughton Claims 17-19 We are persuaded by Appellants’ arguments (App. Br. 8-9) that the Examiner improperly combined Sun and Daughton to reject independent claim 17 under 35 U.S.C. § 103(a). The Examiner acknowledged that Sun does not disclose the limitations “a barrier layer” and “superparamagnetic particles,” and therefore, relied on Daughton for teaching a barrier layer and superparamagnetic particles, respectively. (Ans. 10.) The Examiner concluded that “it would have been obvious . . . to modify the switching device of Sun by forming a barrier and superparamagnetic particles on a surface of the magnetic layers as taught by Daughton to form the device having high sensitivity and zero hysteresis.” (Ans. 10-11.) We do not agree. Sun relates to “a current-induced magnetic switching device for use with a nonvolatile memory array that uses magnetic memory elements as the individual memory cells.” (Col. 1, ll. 11-15.) One objective of Sun is to provide a small magnetic memory structure that features a high packing density without cross-talk. (Col. 2, ll. 52-59.) A current-driven magnetic switch 100 (col. 4, ll. 22-24; fig. 1) includes a first electrode 101, a second electrode 102, and a magnetic nanoparticle 103 electrically connected to both electrodes (col. 4, ll. 41-46). A current is applied to the magnetic nanoparticle 103 to change its orientation, thus changing the resistance of the device. (Col. 5, ll. 11-16.) Daughton relates to “memory cells and sensors . . . fabricated using ferromagnetic thin-film materials.” (Col. 1, ll. 34-35.) Daughton describes a “sandwich” structure for a spin-dependent tunneling sensor, including an Appeal 2011-011538 Application 11/738,032 9 intermediate thin layer of a nonmagnetic, dielectric placed between two anisotropic ferromagnetic thin-films. (Col. 4, ll. 23-28.) A typical barrier material is composed of aluminum oxide. (Col. 5, ll. 3-4.) In one embodiment for a superparamagnetic spin-dependent tunneling sensor (col. 15, ll. 11-12; fig. 5A), an Al2O3 tunnel barrier layer 14 (col. 16, ll. 17- 18) is formed between a superparamagnetic platelet layer 12’ (col. 15, ll. 45- 46) and a ferromagnetic layer 15 (col. 16, ll. 38-40). Properties of superparamagnetic materials include zero magnetic hysteresis and high sensitivity to externally applied magnetic fields. (Col. 9, ll. 20-22; col. 20, ll. 48-50.) However, the Examiner has not articulated reasoning with some rational underpinning as to why one of ordinary skill in the art would have modified the magnetic switch 100 of Sun to incorporate the Al2O3 tunnel barrier layer 14 of Daughton between the first electrode 101 and the second electrode 102 of Sun. The magnetic switch 100 of Sun improves upon the prior art MTJ device by providing the ability to produce high density memory structures without cross-talk. Although the Examiner articulated that it would have been obvious to combine Sun and Daughton “to form the device having high sensitivity and zero hysteresis” (Ans. 11), these characteristics are associated with superparamagnetic materials, rather than the Al2O3 tunnel barrier layer 14 of Daughton. Accordingly, we are persuaded by Appellants’ arguments that a person of ordinary skill in the art would not look to combine the barrier layer 14 disclosed in Daughton for implementing a sensor device between the first and second electrodes 101, 102 of Sun in order to improve the switching device, and would have no reasonable anticipation of success in doing so. (App. Br. 9.) Appeal 2011-011538 Application 11/738,032 10 Therefore, the Examiner has improperly combined Sun and Daughton to reject independent claim 17 under 35 U.S.C. § 103(a). Accordingly, we do not sustain the rejection of claim 17 under 35 U.S.C. § 103(a). Claims 18 and 19 depend from independent claim 17. We do not sustain the rejection of claims 18 and 19 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to independent claim 17. Claims 20-24, 26, 27, and 29 We are persuaded by Appellants’ argument (App. Br. 11-12; see also Reply Br. 8-9) that the combination of Sun and Daughton would not have rendered obvious independent claim 20, which includes the limitation “magnetic film comprising superparamagnetic particles on at least one surface thereof and a lithographic pattern.” The Examiner found that the magnetic nanoparticle 103 of Sun corresponds to the claimed “magnetic film comprising superparamagnetic particles on at least one surface thereof.” (Ans. 11-12, 21.) Alternatively, the Examiner found that “[e]ven if one of ordinary skill in the art does not agree that Sun discloses a plurality of nanoparticles, Daughton discloses a plurality of superparamagnetic particles.” (Ans. 21.) We do not agree. As discussed previously, the current-driven magnetic switch 100 of Sun (col. 4, ll. 22-24; fig. 1) includes a first electrode 101, a second electrode 102, and a magnetic nanoparticle 103 electrically connected to both electrodes (col. 4, ll. 41-46). Sun consistently refers to the magnetic nanoparticle 103 as either a “nanoparticle” or “nanocluster” in the singular form. (See, e.g., Abstract; col. 2, l. 65 to col. 3, l. 7; col. 8, ll. 15-19.) Because the current-driven magnetic switch 100 of Sun only includes a Appeal 2011-011538 Application 11/738,032 11 single nanoparticle or a single nanocluster, the Examiner has provided insufficient evidence to support a finding that Sun teaches the limitation “magnetic film comprising superparamagnetic particles on at least one surface thereof.” Accordingly, we are persuaded by Appellants’ arguments that “[n]othing in the teachings of Sun in any way indicates that employing more than a single nanoparticle would be desirable, or even possible.” (App. Br. 12; see also Reply Br. 8-9.) Additionally, the Examiner has not articulated reasoning with some rational underpinning as to why one of ordinary skill in the art would “pattern” a single nanoparticle or a single nanocluster. Moreover, the Examiner has not articulated reasoning with some rational underpinning as to why one of ordinary skill in the art would substitute the superparamagnetic platelet layer 12’ of Daughton for the single nanoparticle or the single nanocluster of Sun, and that such a substitution would result in a reasonable expectation of success. Accordingly, we do not sustain the rejection of independent claim 20 under 35 U.S.C. § 103(a). Claims 21 and 22 depend from independent claim 20. We do not sustain the rejection of claims 21 and 22 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to independent claim 20. Independent claims 23, 27, and 29 recite limitations similar to those discussed with respect to independent claim 20. We do not sustain the rejection of claims 23, 27, and 29, as well as dependent claims 24 and 26, for the same reasons discussed with respect to claim 20. Appeal 2011-011538 Application 11/738,032 12 § 103 Rejection – Sun, Daughton, and Rizzo Claims 25 and 28 depend from independent claims 23 and 27, respectively. The Examiner relied upon Rizzo for teaching the additional features of claims 23 and 27. (Ans. 13-14.) However, the Examiner’s application of Rizzo does not cure the above noted deficiencies of Sun and Daughton. DECISION The Examiner’s decision to reject claims 1 and 3-29 under 35 U.S.C. § 112, first paragraph, is affirmed. The Examiner’s decision to reject claims 1, 3-9, and 12-16 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s decision to reject claims 10, 11, and 17-29 under 35 U.S.C. § 103(a) 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation