Ex Parte Kiss

Board of Patent Appeals and Interferences

Feb 4, 2005

10017031 (B.P.A.I. Feb. 4, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. KISS
____________
Appeal No. 2004-2296
Application No. 10/017,031
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1-24, which are all the claims in the application.
We affirm.
Appeal No. 2004-2296
Application No. 10/017,031
-2-
BACKGROUND
The invention relates to packaging together a processor and different types of
memory. A “cross-point” memory may include a recently developed type of high
capacity memory known as a polymer memory. (Spec. at 2-3.) Claim 1 is reproduced
below.
1. A packaged integrated circuit comprising:
a processor;
a volatile memory; and
a cross-point memory.
The examiner relies on the following references:
Mauritz et al. (Mauritz) 5,276,834 Jan. 4, 1994
Kim et al. (Kim) 6,225,688 B1 May 1, 2001
(filed Feb. 4, 1999)
Hsuan et al. (Hsuan) 6,236,109 B1 May 22, 2001
(filed Feb. 1, 1999)
Haba et al. (Haba) 6,376,904 B1 Apr. 23, 2002
(filed Oct. 10, 2000)
Claims 1 and 18 stand rejected under 35 U.S.C. § 102 as being anticipated by
Mauritz.
Claims 1-24 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Haba, Mauritz, Hsuan, and Kim.
Appeal No. 2004-2296
Application No. 10/017,031
-3-
We refer to the Final Rejection (Paper No. 4) and the Examiner’s Answer (Paper
No. 7) for a statement of the examiner’s position and to the Brief (Paper No. 6) for
appellant’s position with respect to the claims which stand rejected.
OPINION
Appellant’s Brief does not address the § 102 rejection of claims 1 and 18 over
Mauritz. In the arguments submitted for instant claim 1 in response to the § 103
rejection, however, appellant contends that Mauritz does not teach a packaged
structure. Mauritz is explicit, according to appellant, that different chips are used.
The examiner acknowledges that Mauritz discloses a plurality of chips, as set
forth in the rejection at page 4 of the Answer. However, the examiner notes that claim 1
does not specify the type or extent of “packaging,” and finds that the chips in the
reference are inherently “packaged.” The examiner further addresses, in § 11 of the
Answer, the deemed lack of limiting factors associated with the term “packaged” as
used in the instant claims.
Instant claim 1 purports, in the preamble, a “packaged integrated circuit
comprising....” The language suggests a monolithic (i.e., single integrated circuit or IC)
structure. The specification (e.g., bottom of page 4), however, refers to the disclosed
structure as a packaged integrated circuit device. In any event, the preamble of instant
claim 1 appears to set forth an intended use for the elements recited in the body of the
claim, as there is nothing specifically related to structure of the “packaging” in the
Appeal No. 2004-2296
Application No. 10/017,031
-4-
remainder of the claim. The preamble of a claim does not limit the scope of the claim
when it merely states a purpose or intended use of the invention. In re Paulsen, 30
F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
To the extent that the term “packaged” may limit the scope of instant claim 1,
appellant has not shown that the examiner’s position with respect to the breadth of the
term is erroneous. We agree with the examiner that the chips described by Mauritz are
necessarily, in normal use, enclosed within a structure, and thus may fairly be
considered “packaged” within the meaning of instant claim 1. Appellant has not shown
otherwise, either by probative evidence or persuasive argument as to why the
examiner’s position might be thought incorrect.
We thus sustain the § 102 rejection of claim 1 over Mauritz. We also sustain the
§ 102 rejection of claim 18, as appellant has neglected to explain why the examiner
should be deemed as having erred in the finding of anticipation with respect to Mauritz.
Claims 1-24 are rejected under 35 U.S.C. § 103 as being unpatentable over
Haba, Mauritz, Hsuan, and Kim. Appellant groups the claims into three separate groups
represented by independent claims 1, 10, and 18, respectively, which we also select as
representative in this appeal. See 37 CFR § 1.192(c)(7) (1997).
The § 103 rejection of claims 1 and 18 could be sustained in view of Mauritz
alone, as appellant has not shown error in the rejection for anticipation. A claim that is
anticipated is also obvious under 35 U.S.C. § 103; anticipation is the epitome of
obviousness. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
Appeal No. 2004-2296
Application No. 10/017,031
-5-
USPQ 193, 198 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569,
571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974).
Appellant submits that Mauritz “teaches away” from putting the relevant
components in one package. “A reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553,
31 USPQ2d 1130, 1131 (Fed. Cir. 1994)). Appellant does not point out where Mauritz
might warn the artisan against “packaged” components, and we do not find such a
teaching. Cf. Para-Ordnance, 73 F.3d at 1090, 37 USPQ2d at 1241: “That the
Browning Hi-Power does not have a converging frame does not require a finding that it
‘teaches away.’ While it does not teach convergence, there is nothing about the
Browning Hi-Power to warn a person of ordinary skill against using convergence.”
Moreover, appellant’s arguments alleging a “teaching away” are not persuasive with
respect to claims 1 and 18 because appellant has not shown that the preamble
recitation of “packaged” represents a limitation that requires something different from
the teachings of Mauritz.
We find the remainder of appellant’s arguments to allege deficiencies in
individual references that have been applied, rather than addressing their combined
Appeal No. 2004-2296
Application No. 10/017,031
-6-
teachings. Nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).
Hsuan teaches the advantages of multi-chip packages (col. 1, ll. 18-34),
containing chips that may include processors and volatile memory (id. at ll. 34-40; col. 3,
ll. 41-42). Hsuan thus teaches a “packaged” device, as recited in the preamble of
instant claim 1, and two of the three elements recited in the body of the claim. Mauritz
teaches the advantages of a cross-point memory; namely, the capability of replacing a
defective memory chip in situ, obviating physical removal and replacement of the
defective chip. Col. 1, ll. 33-43; col. 3, ll. 51-62. The artisan would thus have found it
obvious to provide the “packaged” device taught by Hsuan with a cross-point memory
as taught by Mauritz. The teachings of these two references alone demonstrate the
prima facie obviousness of the subject matter as a whole of instant claim 1.
With respect to the subject matter of claims 10 and 18, Haba teaches all that is
recited in the claims except for a cross-point memory on a separate die. The reference
teaches incorporating several IC die into a single package (col. 1, ll. 14-19), which IC
die may comprise one or more types of diverse IC devices such as a processor and
memory (col. 13, ll. 33-36). In view of the afore-noted advantages of cross-point
memories revealed by Mauritz, the artisan would have found it obvious to place a cross-
point memory on a die within a packaged device as taught by Haba. Thus, the
Appeal No. 2004-2296
Application No. 10/017,031
-7-
teachings of these two references alone demonstrate the prima facie obviousness of the
subject matter as a whole of instant claims 10 and 18.
We therefore sustain the rejection of claims 1-24 under 35 U.S.C. § 103 as being
unpatentable over Haba, Mauritz, Hsuan, and Kim. For the subject matter of the
representative independent claims, we consider the Kim reference to be merely
cumulative in its teachings.
CONCLUSION
The rejection of claims 1 and 18 under 35 U.S.C. § 102 and the rejection of
claims 1-24 under 35 U.S.C. § 103 are affirmed.
Appeal No. 2004-2296
Application No. 10/017,031
-8-
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2004-2296
Application No. 10/017,031
-9-
Timothy N. Trop
TROP, PRUNER & HU, P.C.
8554 KATY FWY., STE. 100
HOUSTON , TX 77024-1805