Ex Parte Khitun et al

Patent Trial and Appeal Board

Sep 1, 2015

12049040 (P.T.A.B. Sep. 1, 2015)

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.
12/049,040 03/14/2008 Alexander Khitun 2007-221-2 6051
23410 7590 09/01/2015
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
SHERIF, FATUMA G
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
09/01/2015 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 ALEXANDER KHITUN, IGOR V. ROSHCHIN,
KOSMAS GALATSIS, MINGQIANG BAO, and
KANG L. WANG
____________________

Appeal 2013-003797
Application 12/049,040
Technology Center 2600
____________________

Before MICHAEL J. STRAUSS, LINZY T. McCARTNEY, and
ADAM J. PYONIN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/049,040
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a frequency mixer having a ferromagnetic
film. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A frequency conversion device comprising:
a substrate;
a plurality of ferromagnetic film segments disposed over
a surface of the substrate at different locations, each of the
plurality of ferromagnetic segments comprising a different
ferromagnetic material;
an insulator disposed over the plurality of ferromagnetic
film segments; and
at least one microstrip antenna disposed over the
insulator at a location above each of the plurality of
ferromagnetic film segments.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schiller
Smith
Noguchi
US 4,759,078
US 5,493,719
US 6,169,688 B1
July 19, 1988
Feb. 20, 1996
Jan. 2, 2001
Inomata
Kim
US 2006/0044703 A1
US 2007/0042730 A1
Mar. 2, 2006
Feb. 22, 2007
Khitun, Alexander, and Kang L. Wang, “Nano scale computational
architectures with Spin Wave Bus.” Superlattices and
Microstructures 38.3 (2005): 184–200.

Appeal 2013-003797
Application 12/049,040
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REJECTIONS
The Examiner made the following rejections:
Claims 1–3, 7–10, 13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kim, Khitun, and Inomata. Final Act.
5–9.
Claims 4–6 and 14–16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kim, Khitun, Inomata, and Noguchi. Final Act. 9–
11.
Claims 11 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Khitun, Inomata, and Schiller. Final Act. 11–12.
Claims 12 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Khitun, Inomata, and Smith. Final Act. 12–13.

APPELLANTS’ CONTENTION1
The combination of Khitun and Inomata is improper because
modifying the
single, uniform layer of ferromagnetic material that is used as a
conduit for the spin waves [as disclosed by Khitun to include]
multiple, separate ferromagnetic layers in this zone [as
disclosed by Inomata] would destroy its ability to act as a
conduit of spin waves [and] would render the Khitun et al.
device inoperable for its intended purpose.
App. Br. 7.

1 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 103(a).
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Application 12/049,040
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ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4–9)
and Reply Brief (Reply Br. 2–4), the dispositive issue presented on appeal is
whether the Examiner erred in combining Kim with Khitun and Inomata in
rejecting independent claims 1 and 13 under 35 U.S.C. § 103(a).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred in rejecting independent claims 1 and 13
under 35 U.S.C. § 103(a) as being unpatentable over Kim, Khitun, and
Inomata. We agree with Appellants’ conclusions as to this rejection of the
claims.
In rejecting claim 1 the Examiner finds it would have been obvious to
modify the single ferromagnetic film of Khitun to include a plurality of
ferromagnetic film segments at different locations as disclosed by Inomata
because it would “provide applications in multiple ferromagnetic materials
with smaller package size and at low power consumption as taught by
Inomata (paragraph [0167]). “ Final Act. 6. Appellants argue Inomata
“teaches a sandwiched structure that is part of a spin-injector based memory
device whereby spin injection is used to reverse the magnetization of a free
layer (3).” App. Br. 7. According to Appellants, modifying Khitun’s single,
uniform layer of ferromagnetic material into separate layers would destroy
the layer’s ability to act as a conduit of spin waves and render Khitun’s
device inoperative. Id.
We agree with Appellants that the Examiner has failed to provide
sufficient reasoning with rational underpinnings to justify the legal
Appeal 2013-003797
Application 12/049,040
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conclusion of obviousness. The Examiner’s stated reasoning for selectively
incorporating plural ferromagnetic film segments of different materials
according to Inomata into the structure of Khitun is based on Inomata’s
teaching of advantages of Inomata’s magnetoresistance effect devices in
general (see Inomata ¶ 167), not on any reasoning explaining why the
specific modification of ferromagnetic layering would have been obvious.
Instead, Khitun’s Figure 1(b) depicts “[s]pin waves propagate along the Y
axis” (Khitun, Fig. 1(b), caption) which is counter to the spin wave
propagation of at least some of the layers of Inomata (Inomata, Figs. 1–8),
thereby supporting Appellants’ argument that modifying Khitun’s single
ferromagnetic film layer to form a plurality of segments disposed over a
surface of the substrate at different locations would render Khitun’s device
inoperative. Therefore, we find Appellants’ argument persuasive of
Examiner error and do not sustain rejections based on the combination of
Kim and Khitun with Inomata.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Therefore, for the reasons supra, we do not sustain the rejection of
independent claim 1 under 35 U.S.C. § 103(a) and, for the same reason, we
do not sustain the rejection of independent claim 13 or the rejection of
dependent claims 2, 3, 7–10, 17, and 18. Furthermore, we do not sustain the
rejection of dependent claims 4–6, 11, 12, 14–16, 19, and 20 under 35
U.S.C. § 103(a), as the Examiner’s applications of the Noguchi, Schiller and
Smith references fail to cure the deficiency in the base rejection addressed
supra.

Appeal 2013-003797
Application 12/049,040
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DECISION
The Examiner’s decision to reject claims 1–20 is reversed.

REVERSED
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