Ex Parte Ng et al

Patent Trial and Appeal Board

Aug 15, 2016

12818999 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/818,999 06/18/2010
81941 7590 08/16/2016
PARC-XEROX/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Tse Nga Ng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20090694-US-NP/8538P021 9037
EXAMINER
CHIN, EDWARD
ART UNIT PAPER NUMBER
2813
MAILDATE DELIVERY MODE
08/16/2016 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 TSE NGA NG, RENE JAN PETER KIST, and
SANJIV SAMBANDAN1
Appeal2015-002434
Application 12/818,999
Technology Center 2800
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-3, 5-13, and 15-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the Real Party in Interest is Palo Alto
Research Center Incorporated. Br. 3.
Appeal2015-002434
Application 12/818,999
BACKGROUND
The subject matter on appeal relates to sensors that use ferroelectric
field effect transistors. E.g., Spec. i-f 4; Claim 1. Claim 1 is reproduced
below from page 16 (Claims Appendix) of the Appeal Brief:
1. An apparatus comprising:
a semiconductor layer; and
a ferroelectric dielectric layer formed together with the
semiconductor layer into a ferroelectric field effect transistor
(feFET) structure capable of sensing strain or pressure, wherein
the ferroelectric dielectric layer comprises a polymer or an
inorganic ferroelectric composite or a composite of organic and
inorganic materials.
REJECTIONS ON APPEAL
1. Claims 1 and 12 stand rejected under 35 U.S.C. § 112, i-f 1, for
failure to comply with the written description requirement.
2. Claims 1-3, 5, 6, 8-13, 15, 18, and 19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Sung et al. (US 2009/0199648 Al,
published Aug. 13, 2009) in view of Paterson (US 4,888,630, issued Dec.
19, 1989).
3. Claims 7, 16, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sung in view of Paterson, further in view of Takimiya et
al. (US 2010/0032655 Al, published Feb. 11, 2010).
ANALYSIS
Rejection 1
On two occasions, the originally filed Specification lists "lead
zirconate titanate (PZT)" as an example of "an inorganic ferroelectric
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composite." See Spec. iii! 35, 37. In an Otlice Action dated January 14,
2013, the Examiner rejected certain claims, including claim 1, over Sung in
view of Paterson, relying on Paterson for its teaching that lead zirconium
titanate (PZT) is a dielectric, ferroelectric material. January 14, 2013 Office
Action at 3. In an Appeal Brief filed on June 28, 2013, the Appellants
argued that PZT is a "compound," not a "composite," and that PZT therefore
does not constitute an "inorganic ferroelectric composite" as recited by
claim 1. June 28, 2013 Appeal Brief at 10. In an Answer filed on
September 11, 2013, the Examiner maintained the rejection, pointing out
that the Appellants' own Specification identifies PZT as "an inorganic
ferroelectric composite." September 11, 2013 Answer at 8-9 (citing Spec.
ir 37).
In response, on September 27, 2013, the Appellants filed a Request
for Continued Examination and amended the Specification to delete the
references to PZT. The amendment modified if 35 and if 37 of the
Specification as follows:
The ferroelectric dielectric layer [ 420/520] comprises a polymer
or an inorganic ferroelectric composite such as lead zirconate
titanate (PZT) thin film . . . .
Amendment dated September 27, 2013, at 2. The Appellants explained:
Applicant submits that the recitations in the Specification, par.
[0035] and [0037], stating "an inorganic ferroelectric composite
such as lead zirconate titanate (PZT) thin-film" were inconsistent
with the plain meaning of the terms "inorganic ferroelectric
composite" and "lead zirconate titanate (PZT)." Applicant
submits that the recitations were typographical errors and were
not meant to alter the plain meaning of the term "inorganic
ferroelectric composite." Accordingly, Applicant has amended
the Specification, par. [0035] and [0037] to correct this minor
inconsistency.
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Id. at 6. They again argued that PZT is a compound, not a composite, and
therefore does not constitute an "inorganic ferroelectric composite" as
claimed. Id. at 8-9; see also Appeal Brief dated July 21, 2014 ("Br."), at
11-14 (raising same argument in this appeal).
The Examiner objects to the proposed amendment to the Specification
under 35 U.S.C. § 132(a) as "introduc[ing] new matter into the disclosure."
Final Act. 2. The Examiner reasons:
35 U.S.C. 132(a) states that no amendment shall introduce new
matter into the disclosure of the invention. The added material
which is not supported by the original disclosure is as follows:
The original disclosure specifically states that PZT is an
inorganic ferroelectric composite. Applicants assert that PZT is
not an inorganic ferroelectric composite. However, the
specification, as originally filed, directly contradicts applicant's
assertion. Also, [ o ]ne having ordinary skill in the art knows PZT
to be an inorganic ferroelectric composite. Now Applicants have
amended the specification to exclude the phrase, "such as lead
zirconate titanate (PZT)" in paras [0035] and [0037] of the
specification in attempt to exclude PZT from applicant's
definition of applicant's "inorganic ferroelectric composite."
Such an amendment changes the scope of the claims and thus is
objected to.
Final Act. 2-3.
In connection with the Objection to the Specification, the Examiner
also rejects claims 1 and 12 for failure to comply with the written description
requirement of 35 U.S.C. § 112, i-f 1. The Examiner finds that, because the
Specification as amended fails to list PZT as an example of an "inorganic
ferroelectric composite,""[ o ]ne having ordinary skill in the art would not be
able to construct, formulate or manufacture an inorganic ferroelectric
dielectric composite that is dissimilar to PZT because PZT is, by definition,
and inorganic ferroelectric dielectric material that is formed by mixing
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materials, hence a mixture/compound .... Further, applicant has failed to
give an example of a material that applicant defines as a ferroelectric
dielectric composite." Final Act. 3--4.
In opposition to the Objection to the Specification, the Appellants
argue that the amendment is proper because it "is made to correct an
inconsistency that created confusion rather than to expand the scope of the
disclosure." Br. 9-10. In opposition to the§ 112 rejection, the Appellants
argue that "the term 'inorganic ferroelectric composite' is readily understood
by one having ordinary skill in the art," that "composites (also known as
mixtures) and compounds are different," and that "the lack of an example
being recited in the Specification does not render the Specification deficient
for the purposes of the written description requirement. The terms
themselves 'inorganic ferroelectric composite' are well known and
understood by those skilled in the art." Id. at 8-9.
Amendments are permissible to correct obvious errors where one
skilled in the art would recognize not only the existence of the error in the
Specification, but also recognize the appropriate correction. See In re Oda,
443 F.2d 1200, 1205---06 (CCPA 1971). We do not agree with the
Appellants that the amendment to the Specification in this case was an
obvious correction to an obvious error. See Br. 8-10. Rather, as explained
below, it appears that PZT reasonably could be described as a "composite."
Nevertheless, we agree with the Appellants that the amendment does not
constitute new matter. Despite the Appellants' apparent intention of
changing the scope of claim 1 by amending the Specification to delete the
phrase "such as lead zirconate titanate (PZT)," the deletion fails to affect a
change in claim scope. The statement in the original Specification that PZT
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is a composite is an admission of record that remains an admission of record
notwithstanding the amendment. Moreover, the deletion has no impact on
whether or not a person of ordinary skill in the art would have considered
PZT to be a composite, and, for reasons set forth below, there is no
persuasive evidence in this case that a person of ordinary skill in the art
would not have considered PZT to be a composite. Thus, notwithstanding
the apparent intentions of the Appellants, the deletion from the Specification
does not change the scope of the claim, nor does it constitute new matter.
Accordingly, we overrule the Examiner's Objection to the Specification.
We also reverse the§ 112, i-f 1 rejection of claims 1 and 12 entered by
the Examiner in connection with the new matter Objection. "[T]he test for
[compliance with the written description requirement] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010). Claims 1and12 recite "wherein the ferroelectric
dielectric layer comprises ... an inorganic ferroelectric composite."
Paragraphs 35 and 37 of the originally filed Specification provide written
description support for that limitation, regardless of whether the proposed
amendment to the Specification is considered or not. See, e.g., Spec. i-f 35
("The ferroelectric dielectric layer 420 comprises a polymer or an inorganic
ferroelectric composite ... or a composite of organic and inorganic
materials.").
While the amended Specification removes one example of "an
inorganic ferroelectric composite," that does not establish that the inventors
were not in possession of the disputed subject matter as of the filing date.
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The concerns raised by the Examiner, such as whether a person of ordinary
skill would "be able to construct, formulate or manufacture an inorganic
ferroelectric dielectric composite that is dissimilar to PZT," Final Act. 4,
appear to be more relevant to the enablement requirement than to the written
description requirement.
We are not persuaded that a preponderance of the evidence supports
the Examiner's written description rejection. We therefore reverse the
rejection.
Re} ections 2 and 3
The Appellants present arguments concerning only claim 1. The
remaining claims on appeal will stand or fall with claim 1.
The Examiner finds that Sung teaches a sensor comprising each
element of claim 1 except that Sung's dielectric layer is not "a ferroelectric
dielectric layer" comprising "a polymer or an inorganic ferroelectric
composite or a composite of organic and inorganic materials," as recited by
claim 1. Final Act. 5. The Examiner finds that Paterson teaches the use of
PZT as a ferroelectric dielectric layer and that PZT constitutes an inorganic
ferroelectric composite. Id. The Examiner concludes it would have been
obvious simply to substitute the ferroelectric dielectric layer of Paterson's
transistor for the dielectric layer in Sung's transistor to "achieve the desired
capacitance characteristics of a transistor." Id.
The Appellants first state that "Sung uses geometry change, where
pressure changes the width/length ratio of the channel layer. In contrast, the
mechanism of the present invention uses the piezoelectric dipole moment
change in ferroelectric dielectric." Br. 12. The Appellants have repeatedly
included those statements in their responses to the Examiner's rejections.
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E.g., Office Action Response dated April 18, 2012, at 7. However, as the
Examiner pointed out during prosecution, "Applicants have merely
mentioned that there is a difference between a 'strain or pressure' and a
'piezoelectric dipole moment change' without articulating the difference."
Office Action dated May 22, 2012, at 7. The Appellants have never
responded to that point, and they continue to fail to articulate how or why
the alleged difference shows reversible error in the Examiner's proposed
combination. Accordingly, to the extent that the Appellants' statements
constitute arguments, they do not apprise us of reversible error in the
Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(even if the examiner failed to make a prima facie case, the Board would not
have erred in framing the issue as one of reversible error because "it has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections").
As noted above, the Appellants also argue that PZT is a compound,
not a composite, and therefore does not constitute "an inorganic ferroelectric
composite" as recited by claim 1. Br. 12-14.
On this record, the Appellants have not identified reversible error in
the Examiner's finding that PZT constitutes "an inorganic ferroelectric
composite" under the broadest reasonable interpretation of that term
consistent with the Specification. As the Examiner notes, PZT is sometimes
described as a "compound," but certain "[i]ntermetallic compounds are
defined to be mixtures." Ans. 3. The Examiner further explains that some
mixtures are difficult to distinguish from compounds because they "are so
intimately combined." Id. The Examiner explains that PZT is "made by
heating and mixing," typical of a process for preparing mixtures, and "that
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there are no chemical bonds between the lead (pb2) and the
titanium/zirconium-oxide." Id. at 3--4. Relying on those findings, the
Examiner determines that PZT is a mixture.2 Id.
The Appellants do not persuasively refute the Examiner's analysis.
The Appellants simply provide definitions, describe properties of mixtures
and compounds, state that the Examiner admits that PZT is a compound, and
conclude that PZT is not a composite. E.g., Br. 12-14. However, the
Appellants state that "[a] compound results from a chemical reaction
between components," id. at 12, but they admit that PZT lacks chemical
bonds indicative of a compound, id. at 14. They also fail to refute the
Examiner's finding that PZT is made by a process typical for mixtures, Ans.
3, and they fail to identify any chemical reaction (which they state is
necessary to form a compound) that occurs in the PZT mixing process.
Moreover, their arguments fail to provide any persuasive argument or
evidence, in view of the recited definitions and properties, that a person of
ordinary skill in the art would not have considered PZT to be a composite.
The Appellants' arguments fail to show reversible error in the Examiner's
finding that a person of ordinary skill in the art would have considered PZT
to be a composite, which is also supported by the Appellants' previous
admission that PZT is a composite.
Even if we were to agree with the Appellants that PZT is not a
composite, we would nevertheless conclude that the Examiner's § 103
rejection is supported by a preponderance of the evidence. The Examiner
finds that Sung teaches the use of a dielectric material, and that Paterson
2 The Appellants appear to agree with the Examiner that the terms
"composite" and "mixture" are interchangeable. See Br. 8.
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teaches ferroelectric dielectric materials. See Final Act. 5. Specifically,
Paterson teaches a transistor comprising ferroelectric dielectric "material
such as lead zirconium titanate." Paterson at 4:58---61 (emphasis added).
Thus, Paterson's disclosure is not limited to ferroelectric "compounds," nor
is it limited to PZT. Rather, it broadly teaches the use of "ferroelectric
material" "as dielectric." Patterson at 4:59---61.
The Appellants admit that "[t]he terms themselves 'inorganic
ferroelectric composite' are well known and understood by those skilled in
the art." Br. 8-9. In view of that, while Paterson provides PZT as a specific
example of a ferroelectric dielectric material, it would have been within the
ordinary level of skill in the art simply to substitute other known
ferroelectric dielectric materials, including known inorganic ferroelectric
composites, for the PZT of Sung as modified by Paterson. The use of
known elements (inorganic ferroelectric composites) according to their
established function (ferroelectric dielectric material) typically does not
result in nonobvious subject matter. See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416-21 (2007) ("The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results."); see also id. at 416 ("[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.").
In view of the arguments and evidence before us, we affirm the
Examiner's rejection of claim 1.
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CONCLUSION
We REVERSE the Examiner's§ 112, i-f 1 rejection of claims 1 and 12.
We AFFIRM the Examiner's§ 103(a) rejections of claims 1-3, 5-13,
and 15-20.
Because the rejection of every claim on appeal is affirmed under at
least one of the Examiner's stated grounds of rejection, the Examiner's
rejection of claims 1-3, 5-13, and 15-20 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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