Ex Parte Mryasov et al

Patent Trial and Appeal Board

Dec 12, 2014

12881072 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte OLEG N. MRYASOV, THOMAS F. AMBROSE, and
WERNER SCHOLZ
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Appeal 2012-008705
Application 12/881,072
Technology Center 2800
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 1–
7, 10, 11, and 14–19 under 35 U.S.C. §102(b) as anticipated by Gill.1 We
have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
For the reasons provided by the Examiner in the Answer, we
AFFIRM. We add the following for emphasis.

1 Gill, US 6,473,275 B1, patented Oct. 29, 2002.
Appeal 2012-008705
Application 12/881,072
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The claims are directed to a magnetoresistive memory. Claim 1, with
disputed limitations italicized, is illustrative:
1. A magnetoresistive memory element, comprising:
a read module having a first pinned layer with a
magnetoresistance that is readable by a read current received
from an external circuit;
a write module having a nanocontact that receives a write
current from the external circuit and, in turn, imparts a spin
torque to a free layer that functions as a shared storage layer for
both the read module and the write module.
Claims Appendix at Br. 14 (emphasis added).
The dispositive issue on appeal for all the claims is: Have Appellants
identified a reversible error in the Examiner’s finding that Gill’s giant
magnetoresistive (GMR) stack 604 meets the structural requirements of the
claimed write module? Compare Ans. 4–5 and 6–10 with Appeal Br. 6–13
and Reply Br. 1–10.
The issue is the same for all the claims. See Appeal Br. 6–13. We
select claim 1 as representative for deciding the issue.

OPINION
As a first matter, we agree with Appellants’ characterization of Gill as
set forth on pages 1 to 4 of the Reply Brief. The GMR stack 604 is a portion
of the active region of a dual hybrid MTJ/GMR sensor 600 (also called a
SVT sensor), which Gill uses in the read head portion of a read/write head
421. Gill, col. 6, l. 66 to col. 7, l. 6; as informed by col. 3, ll. 38–43; col. 5,
ll. 45–48; and col. 6, ll. 28–33.
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Application 12/881,072
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But the difference between Gill’s sensor and the claimed
magnetoresistive memory element is a matter of intended use. The fact that
the sensor is used to read and not to write data does not provide evidence
that the structure of the GMR stack is different from the “write module”
required by the claims.
What Appellants claim is a magnetoresistive memory element. This
element includes a read module and a write module. The term “module”
does not itself provide much in terms of structure over a black box. The
terms “read” and “write” merely define how Appellants intend to use the
“modules.” The Examiner finds that “[i]t is well known in the art that GMR
devices can be used for both reading and writing data.” Ans. 6. Appellants
do not dispute that GMRs can be used to write data; Appellants’ argument is
that Gill does not so use the GMR. Appeal Br. and Reply Br. in their
entirety.
The way the device is used does not alone patentably distinguish a
device from devices in the prior art. It has long been held that “apparatus
claims cover what a device is, not what a device does.” Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). An
inventor of a structure (machine or article of manufacture) is entitled to
benefit from all of its uses, even those not described, Roberts v. Ryer, 91
U.S. 150, 157 (1875), and conversely, patentability of the structure cannot
turn on the use or function of the structure. In re Michlin, 256 F.2d 317, 320
(CCPA 1958) (“It is well settled that patentability of apparatus claims must
depend upon structural limitations and not upon statements of function.”); In
re Tuominen, 671 F.2d 1359, 1361 (CCPA 1982) (“The only distinction to
which Tuominen can aver is a difference in use, which cannot render the
claimed composition novel.”); In re Hack, 245 F.2d 246, 248 (CCPA 1957)
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Application 12/881,072
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(“These cases are merely expressive of the principle that the grant of a patent
on a composition or machine cannot be predicated on a new use of that
machine or composition.”).
Although Appellants contend that the “write module is a feature that
writes data to the memory element and the read module is a feature that
reads data from the memory element,” these statements only attempt to
define the modules in terms of their functions. Reply Br. 7. Appellants
point to no convincing evidence contradicting the Examiner’s evidence that
the structure of the GMR stack 604 is the same or substantially the same as a
structure encompassed by the claim. Compare Appeal Br. and Reply Br. 7
with Ans. 6–7.
Likewise, it is reasonable to believe that the strength of the current
one applies to the nanocontact of the GMR stack 604 does not structurally
differentiate the GMR stack 604 from the write module of the claim.
Where there is reason to believe that the structure of the prior art is
inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
Gill teaches applying a current. Thus, a structure is in place to allow
the nanocontact to receive a current. Although the current is described as a
sensing current, there is no convincing evidence that Gill’s GMR stack is
incapable of receiving a write current.
A preponderance of the evidence supports the Examiner’s finding that
Gill’s giant magnetoresistive (GMR) stack 604 meets the structural
requirements of the claimed write module.
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CONCLUSION
We sustain the Examiner’s rejection.

DECISION
The Examiner’s decision is affirmed.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED

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