Ex Parte Karpov

Board of Patent Appeals and Interferences

May 6, 2009

10634141 (B.P.A.I. May. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ILYA V. KARPOV
____________

Appeal 2009-0098
Application 10/634,141
Technology Center 2800
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Decided:1 May 7, 2009
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
CARLA M. KRIVAK, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0098
Application 10/634,141

2
In a decision dated December 30, 2008, the Board affirmed the
Examiner’s indefiniteness rejection of claims 32 to 37, and affirmed the
Examiner’s obviousness rejection of claims 1, 4, 8, 10, and 32 to 37.
Appellant has requested a rehearing of our decision to affirm the
obviousness rejection.
In the decision, we agreed with Appellant’s argument that Chiang
does not form the heater material 22 in the pore 31 to the upper surface of
the insulator material 14, and then remove an upper portion of the heater
material 22 in the pore 31, as set forth in the claims on appeal (Decision 7).
Although Chiang does not fill the pore with metal and then remove some of
the metal, we held:
By skipping the claimed step of removing an upper
portion of the heater material, Chiang saves not
only processing time but material that is wasted by
the removal of the heater material. In other words,
by filling the heater material below the upper level
of the insulating material, Chiang can avoid the
claimed step of removing the upper portion of the
heater material, and in the process avoid the
problem created when the heater material is too
high in the insulator material (Findings of Fact 2 to
4). Thus, for the advantages of time and material
savings, we find that it would have been
manifestly obvious to the skilled artisan to perform
the method steps of claim 1 according to Chiang,
but without the step of removing the upper portion
of the heater. After all, the artisan is presumed to
possess both skill and common sense. KSR
International Co. v. Teleflex, Inc., 127 S. Ct.
[1727,] 1742 [(2007)]. If additional heater
material is required to be removed from the heater
material in Chiang, then it would have been
obvious to the skilled artisan to remove the heater
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Application 10/634,141

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material as taught by Harshfield (Finding of Fact
7).
(Decision 7).
In response, Appellant argues:
The problem with the Chiang approach is that he
has a very small heater and a very long
chalcogenide material. Thus, he saves the trouble
of removing the chalcogenide material, at the
expense of poor operating characteristics of his
memory cell. His poor operating characteristics
would be due to the extra energy needed to heat all
the extra chalcogenide. Generally, what happens
is a conductive filament forms through the
chalcogenide upon heating. In the claimed
invention, a short filament would be all that would
be needed. In Chiang, the filament that forms in
phase change would have to extend almost the
entire length of the pore. This requires extra
programming energy and greater power
consumption of the resulting memory.
(Request 2).
Appellant’s arguments are not convincing of the nonobviousness of
the claimed invention because the claims on appeal do not recite the size of
the heater and the chalcogenide material nor the amount of energy needed to
heat the chalcogenide material. To be more exact, the claims on appeal do
not specifically recite a chalcogenide material or the formation of a
conductive filament through the chalcogenide material during heating.
Appellant’s argument (Request 2) that Harshfield forms the heater
before forming the sidewall spacers is also not convincing of the
nonobviousness of the claimed invention because we relied on Chiang, as
opposed to Harshfield, for the teaching of forming sidewall spacers prior to
forming the heater. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We
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still maintain that it would have been obvious to the skilled artisan to remove
additional material from the heater in Chiang, as taught by Harshfield, if
additional heater material has to be removed from Chiang. With respect to
Appellant’s argument (Request 3) concerning the technique used by
Harshfield to remove heater material, we note that the test for obviousness
does not mandate bodily incorporation of the teachings of Harshfield into the
teachings of Chiang. Keller, 642 F.2d at 425.
In summary, the applied references teach or would have suggested to
the skilled artisan all of the method steps set forth in claims 1, 4, 8, 10, and
32 to 37, and Appellant’s arguments are not convincing of the
nonobviousness of the claimed subject matter.
Appellant’s request for rehearing has been granted to the extent that
our decision has been reconsidered, but such request is denied with respect
to making any modifications to the decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

REHEARING DENIED

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