Ex Parte Mohler

Patent Trial and Appeal Board

Jul 21, 2017

11998908 (P.T.A.B. Jul. 21, 2017)

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.
11/998,908 12/03/2007 Jonathan Mohler 135839-00016 7116
73440 7590
William F. Lang IV
Lang Patent Law LLC
309 College Ave., Suite B
Beaver, PA 15009
07/25/2017 EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
07/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bill@langpatentlaw.com
US PTO @ dockettrak. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN MOHLER
Appeal 2016-001217
Application 11/998,908
Technology Center 3600
Before LYNNE H. BROWNE, NATHAN A. ENGELS, and
GORDON D. KINDER, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 12, 16, 35, 36, 39, 44, and 45. Claims 3—8, 10, 11, 15, 17—19,
21—28, 30-32, 34, and 40 have been withdrawn. Claims 37 and 41 have
been allowed. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-001217
Application 11/998,908
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A destruction system for destroying the functionality of a
functional layer, the destruction system comprising:
a functional layer which contains data in said functional
layer;
fuel and oxidizer reactants deposited upon said functional
layer, at least one of said fuel and oxidizer reactants being in
direct contact with and adhered to said functional layer;
said fuel and oxidizer reactants are structured to be ignited
to generate an elevated temperature in order to destroy the
functionality of said functional layer or to protect said functional
layer from theft by direct reading or reverse engineering.
THE REJECTIONS
Claims 1, 2, 12, 16, 36, 39, 44, and 45 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Smolker (US 3,882,323; issued May 6,
1975) (“Smolker ’323”).
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Smolker ’323 and Smolker et al.
(US 3,882,324; issued May 6, 1975) (“Smolker ’324”).
ANALYSIS
Claim 1
In rejecting claim 1 as anticipated by Smolker ’323, the Examiner
interprets the claimed “functional layer” to include both Smolker ’323’s
resistive circuit 14 and the insulation 19 on which the circuit is formed.
Final Act. 2—3 (citing Smolker ’323 Figs. 2, 3, 5, col. 3,11. 7—13, col. 4,11
15—21). Figure 2 of Smolker ’323 is reproduced below:
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Appeal 2016-001217
Application 11/998,908
Figure 2 depicts a MOS circuit representative of the MOS circuit
illustrated in Smolker’s Figure 1, including resistive circuit 14, insulation 19,
and self-destruct films 17 and 18. Smolker 2:33—34.
Appellant argues Smolker ’323’s insulation 19 separates the self-
destruct films 17 and 18 from the circuit to be destroyed (resistive circuit 14)
such that Smolker ’323 does not disclose fuel and oxidizer reactants in direct
contact with and adhered to the functional layer, as required by claim 1.
Appeal Br. 8—12. In other words, Appellant argues Smolker ’323’s
insulation layer is not part of the claimed “functional layer” and Smolker
’323 only discloses that its destructive films 17 and 18 are in direct contact
with insulation 19.
Regarding the scope of the claimed “functional layer,” Appellant
acknowledges that the “functional layer” of claim 1 can be an integrated
circuit. Reply Br. 7; accord Appeal Br. 19—20 (dependent claim 35 reciting
that the functional layer of claim 1 “comprises an integrated circuit”).
Appellant also acknowledges that an integrated circuit includes multiple sub­
layers, including a silicon substrate and a silicon oxide (or silicon dioxide)
insulator. Reply Br. 5 (“Silicon oxide (or likely more correctly, silicon
dioxide) is certainly a common insulator used within electrical circuits
. . . .”); accord Reply Br. 5—7.
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Appeal 2016-001217
Application 11/998,908
Just as a functional layer in the form of an integrated circuit includes
multiple sub-layers, we agree with the Examiner that a person of ordinary
skill would have understood the claimed functional layer to include Smolker
’323 ’s “thin layer 19 of silicon oxide . . . and resistive circuit 14 formed on
the insulation layer.” Smolker ’323 col. 3,11. 7—13. Indeed, analogous to
Appellant’s evidence regarding the manufacture of an integrated circuit (see
Appeal Br. 12—13, App’x B; Reply Br. 5—8), Smolker ’323 states that
“[s]ilicon oxide layer 19 is deposited in the conventional manner to a
thickness of approximately 10,000 angstroms” and “[t]o form resistive
circuit 14, a nichrome microfilm first is deposited on the insulation layer and
the microfilm then photoetched in conventional manner to produce the
desired resistor design” (Smolker ’323 col. 4,11. 43—52).
Appellant presents no persuasive evidence that a person of ordinary
skill would have understood the claimed functional layer to exclude the “thin
layer of silicon oxide” on which the microfilm resistive circuit is deposited
and etched, even if, as Appellant argues, the silicon oxide layer of Smolker
’323 serves a function of thermal insulation. Accordingly, having
considered the Examiner’s rejection of claim 1 in light of each of
Appellant’s arguments and the evidence of record, we disagree with
Appellant and agree with the Examiner’s findings, conclusions, and reasons,
which we adopt as our own to the extent consistent with this Decision. We
sustain the Examiner’s rejection of independent claim 1, as well as the
Examiner’s rejection of dependent claims 2, 12, 16, 36, 39, 44, and 45,
which Appellant does not argue individually.
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Appeal 2016-001217
Application 11/998,908
Claim 35
Appellant additionally argues the combination of Smolker ’323 and
Smolker ’324 in the rejection of claim 35 is improper. Appeal Br. 13—14;
Reply Br. Specifically, Appellant argues the silicon oxide insulation in
Smolker ’323 performs a critical thermal-insulation function to prevent
thermal quenching.1 Appellant argues that because the integrated circuit
disclosed in Smolker ’324 has a silicon substrate with a thermal conductivity
that is two orders of magnitude higher than that of silicon oxide, it would not
have been obvious to substitute an integrated circuit for the insulator 19 and
resistive circuit 14 of Smolker ’323. Appellant argues Smolker ’323’s
disclosures of the importance of thermal insulation teach away from the use
of an integrated circuit having a silicon substrate and that using such an
integrated circuit would have rendered Smolker ’323 unsatisfactory for its
intended purpose of preventing thermal quenching. Appeal Br. 14.
We disagree. Among other things, although Appellant argues that the
silicon oxide layer in Smolker ’323 performs the function of thermal
insulation, the integrated circuit disclosed in Smolker ’324 also includes a
layer of silicon oxide. Notwithstanding Smolker ’324’s disclosure of a
silicon substrate, Appellant presents no evidence that the integrated circuit of
Smolker ’324 would have caused a thermal quenching problem or that a
person of ordinary skill could not have successfully combined a known
integrated circuit with the teachings of Smolker ’323. See KSR Int 7 Co. v.
1 Smolker ’323 describes thermal quenching as follows: “if the rate of heat
loss in the destruct path is more rapid than the propagation of a chemical
reaction heat a so-called thermal quenching results or, in other words, the
temperature of the film is reduced below its auto-ignition temperature and
the film cannot then destruct.” Smolker ’323 col. 3,11. 58—64.
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Appeal 2016-001217
Application 11/998,908
Teleflex Inc., 550 U.S. 398, 421 (2007) (rejecting an argument that a person
of ordinary skill would have ignored prior art designed to solve a different
problem, stating “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton”). Contrary to Appellant’s arguments, Smolker
’323 describes thermal quenching as a possibility while also recognizing that
a person of ordinary skill could implement different designs and materials to
successfully practice the invention. See Smolker ’323 col. 3,1. 42—col. 5,1.
12 (recognizing that different destructive films can be used to prevent
thermal quenching, in addition to different insulation materials).
Accordingly, having considered the Examiner’s rejection of claim 35
in light of each of Appellant’s arguments and the evidence of record, we
disagree with Appellant and agree with the Examiner’s findings,
conclusions, and reasons, which we adopt as our own to the extent consistent
with this Decision. We sustain the Examiner’s rejection of claim 35.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1,2, 12, 16,35,36, 39, 44, and 45.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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