Ex Parte Jones

Patent Trial and Appeal Board

Sep 19, 2014

11119379 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/119,379 04/29/2005 Christopher Croft Jones CJO-001 6609
7590 09/19/2014
Christopher Croft Jones
37 Cabot Street
Winchester, MA 01890
EXAMINER
ARMAND, MARC ANTHONY
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
09/19/2014 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 CHRISTOPHER CROFT JONES
____________

Appeal 2011-007751
Application 11/119,3791
Technology Center 2800
____________

Before MAHSHID D. SAADAT, KEN B. BARRETT, and
BRUCE R. WINSOR, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 38–43.2 We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is the inventor,
Christopher Croft Jones (App. Br. 2, filed Sept. 21, 2009).

2 Claims 12 and 20–23 have been previously cancelled and claims 1–11, 13–
19, and 24–37 have been cancelled by Appellant in a communication (filed
Feb. 13, 2010) in response to the “Notification of Non-Compliant Appeal
Brief” (mailed Jan. 15, 2010) requiring cancellation of the non-appealed
claims. See also App. Br. 3.
Appeal 2011-007751
Application 11/119,379

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STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to devices and methods for
controlling the movement of charge carriers and altering their electrical
properties by applying a potential across a nanochannel (Spec. ¶ 2).
Independent claim 38, reproduced below, is representative of the
subject matter on appeal.
38. A device for creating a thermal gradient
comprising:
a plurality of conducting layers,
each conducting layer comprising a first conductor,
each conducting layer separated from a neighboring
conducting layer by an insulating layer,
each conductive layer in electrical communication with
the neighboring conductive layer through a plurality of
perforations in the insulating layer,
the perforations filled with a second conductor, the
second conductor having a cross-sectional dimension of the
order of, or less than the mean free path of an electron in the
second conductor; and
a potential difference source having a positive terminal
and a negative terminal, the positive terminal in conductive
contact with a first outer conducting layer, the negative
conducting terminal in conductive contact with a second outer
conducting layer, the conductive and insulating layers arranged
such that the thermal gradient is perpendicular to the plurality
of conducting layers.

The References
Monty US 6,849,911 B2 Feb. 1, 2005
Huai US 2005/0136600 A1 June 23, 2005
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Application 11/119,379

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The Examiner’s Rejections
Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Monty and Huai (Ans. 4–6).
Claims 38–41 stand rejected under 35 U.S.C. § 102(e) as anticipated
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Huai
(Ans. 7–9).
Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Huai (Ans. 10).
In rejecting claims 38 and 39 over the combination of Monty and
Huai, the Examiner finds Monty discloses all the claimed features except for
the cross sectional dimension of the second conductor for which the
Examiner relies on Huai (Ans. 4–5). The Examiner concludes that the
combination would have been obvious to one of ordinary skill in the art
because, as explained in paragraph 15 of Huai, improved performance is
achieved when the length of conductive channels in an insulating matrix
(i.e., nanochannels) are sufficiently small and preferably, less than the mean
free path of electrons in the conductive channels (see also Huai, ¶¶ 16 and
33). The Examiner further finds the limitation of “a potential difference
source having a positive terminal and a negative terminal . . . the conductive
and insulating layers arranged such that the thermal gradient is perpendicular
to the plurality of conducting layers” of claim 38 and the limitation of “the
insulator having a thickness selected to not incur tunneling or breakdown
effects between the first conductor and the second conductor” of claim 39
are met by the prior art structure, which “is substantially identical to that of
the claimed structure which can function in the same manner . . . or be used
in the same manner” (Ans. 5–6).
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Application 11/119,379

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In rejecting claims 38–41 under 35 U.S.C. § 102(e) as anticipated or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Huai, the
Examiner finds Huai discloses all the recited features. The Examiner
specifically explains “‘a potential difference source having a positive
terminal and a negative terminal . . . the conductive and insulating layers
arranged such that the thermal gradient is perpendicular to the plurality of
conducting layers’” in claim 38 is a functional limitation that does not
structurally distinguish the claims over the prior art (Ans. 7–8). Similarly,
the Examiner finds the limitations related to “a thickness selected to not
incur tunneling or breakdown” in claim 39 and “a thermal gradient between
the first conductor and the second conductor” in claim 40 are functional
limitations that are met by the prior art disclosing structures identical to the
claimed structure for performing the recited functions (Ans. 8–9).

ISSUES
Appellant’s contentions present the following issues:
1. Did the Examiner err in rejecting claims 38 and 39 over the
combination of Monty and Huai?
2. Did the Examiner err in rejecting claims 38–41 as anticipated
or, in the alternative, as unpatentable over Huai?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusion. The Examiner has provided a comprehensive response,
supported by sufficient evidence based on the teachings of Huai and Monty
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Application 11/119,379

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to each of the above-noted contentions raised by Appellant. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief (see
Ans. 10–14). We concur with the conclusions reached by the Examiner.
With respect to claims 38 and 39, Appellant contends that the recited
functional language is not improper because the claimed function
“illuminates the new and non obvious nature of such devices” (App. Br. 7–
8). Appellant describes such benefits as “a cooling or heating device as
described in claim 38” and “taking advantage of the inverse effect for energy
detection and/or collection as in claim 39, e.g.[,] a solar panel” (App. Br. 8).
The Examiner, however, correctly points out that the limitations “‘the
conductive and insulating layers arranged such that the thermal gradient is
perpendicular to the plurality of conducting layers’” of claim 38 and “the
insulator having a thickness selected to not incur tunneling or breakdown
effects” of claim 39 are functional limitations that do not structurally
distinguish the claims over the prior art because the structure disclosed in the
prior art is substantially identical to the claimed structure (Ans. 11–12).
Furthermore, “[t]he fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). We agree
with the Examiner that if the prior art discloses the recited structure, absent
any other disclosure in Appellant’s Specification explaining other elements
needed for achieving the recited function, the claimed limitation is met.
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Application 11/119,379

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It is well settled that if a prior art device inherently possesses the
capability of functioning in the manner claimed, anticipation exists
regardless of whether there was recognition that it could be used to perform
the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Com’n, 958
F.2d 1066, 1075 (Fed. Cir. 1992) (in quoting with approval from Dwight &
Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823, 828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was intended is
irrelevant, if it could be employed without change for the
purposes of the patent; the statute authorizes the patenting of
machines, not of their uses.
LaBounty at 1075. In other words, if the only requirement the Specification
describes for performing the recited function is the claimed structure, a
similar structure disclosed in the prior art meets the functional limitation
because it also is capable of performing the recited function.
Here, Appellant has not identified, nor do we find, any description of
how the recited function or property may be achieved other than by the
claimed structure, which is met by the structure disclosed in the prior art.
For example, paragraphs 34–53 of Appellant’s Specification discus the
behavior of electron gas in nanochannels while paragraphs 54–62 describe
the structure as a plurality of nanochannels separated by an insulating
material and positioned between two conducting electrodes. In other words,
the disclosed arrangement of nanochannels, which is also taught by the prior
art, inherently produces the claimed results related to thermal gradient or
tunneling breakdown.
Appellant further argues the device disclosed in Huai is not applicable
to Appellant’s claimed device because the prior art device is suitable for
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Application 11/119,379

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magnetic applications and requires a substructure of nanoscale proportions
using ferromagnetic materials (App. Br. 8). However, as explained by the
Examiner (Ans. 7–8), Figure 3 of Huai shows nano-conductive channels 124
formed of metals such as nickel, iron, cobalt, or their alloys are arranged in
an insulating matrix 122 and positioned between conducting layers to be
biased as a memory element (see Huai, ¶¶ 16, 32–34). We agree with the
Examiner’s finding that the structure disclosed in Huai meets the claimed
arrangement of conducting layers, insulating layer, and second conductors
forming the nanochannels. Therefore, we are not persuaded by Appellant’s
contentions that the Examiner erred in rejecting the claims over Huai
because the reference provides the claimed nanochannel structure as a
magnetic memory element. Similar to the discussion of the functional
limitations above, we agree with the Examiner that, although additional
functions or properties may be identified for the prior art structure, the
structure described by Appellant for achieving the claimed functional
limitations is disclosed in Huai (Ans. 14). We also observe that the broadest
reasonable interpretation of the claims does not preclude using nanochannels
including magnetic conductive materials.
Lastly, Appellant asserts that the Examiner’s stated rationale of “‘high
density, low power consumption, high reliability and low cross talk’” to
support the combination of Huai and Monty is not related to the instant
claims (App. Br. 9). Appellant further points out that the Examiner’s
discussion of a semiconductor device, Monty’s limited flow of “charge
carriers,” or “the magneto-resistive devices of Huai” are unrelated to
Appellant’s claimed devices, which “are designed to generate a flow of
electrons and are not resistive devices” (id.). We disagree with Appellant.
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Application 11/119,379

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As explained by the Examiner (Ans. 14), the stated rationale for one of
ordinary skill to combine Huai with Monty does not need to be identical to
the purpose described for Appellant’s invention. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). The Examiner relied on paragraph
33 of Huai for teaching a plurality of nanochannels positioned between two
conductive layers and having a cross-sectional dimension less than the mean
free path of the charge carriers (Ans. 5). The Examiner further pointed out
(id.) that the benefits of using a structure including the conductive
nanochannels include improved characteristics of a high density memory
array, such as lowering power consumption and cross talk while the device
becomes more reliable (see Huai, 15).
For the reasons set forth above, we sustain the Examiner’s rejections
of claims 38–43 over Huai or Huai in combination with Monty.

DECISION
The decision of the Examiner rejecting claims 38–43 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

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