Ex Parte Rajagopalan et al

Patent Trial and Appeal Board

Dec 16, 2012

10828023 (P.T.A.B. Dec. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/828,023 04/19/2004 Nagarajan Rajagopalan AMAT/8583/DSM/LOW
K/JW
4576
7590 12/17/2012
Applied Materials
Patent Counsel - Legal Affairs Department
P.O. Box 450A
Santa Clara, CA 95052
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
12/17/2012 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 NAGARAJAN RAJAGOPALAN, MEIYEE SHEK,
ALBERT LEE, ANNAMALAI LAKSHMANAN,
LI-QUN XIA, and ZHENJIANG CUI
____________

Appeal 2012-012091
Application 10/828,023
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2012-012091
Application 10/828,023

2
This is in response to a Request for Rehearing (filed 12/6/2012) of our
Decision (mailed 10/24/2012) wherein we affirmed the Examiner's
rejections of the appealed claims under 35 U.S.C. § 103(a).

In our Decision, we determined that it would have been prima facie
obvious to combine the applied references in the manner proposed by the
Examiner and that the Examiner had established a reasonable basis for
believing that the resulting process would inherently form a nitrosilicide
layer as required by the appealed claims (Dec. 4-5).
In their Request, Appellants argue that
[i]n order for the Examiner's inherency argument to be
legitimate, the person of ordinary skill in the art would have to
have the knowledge that a nitrosilicide layer is formed by
reacting a silicon based compound and a nitrogen-containing
reducing compound with a conductive material by a plasma-
free, thermally enhanced process.
(Req. 2).
Appellants are incorrect. Inherency does not require recognition by a
person of ordinary skill in the art. Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377 (Fed. Cir. 2003); In re Cruciferous Sprout Litig., 301
F.3d 1343, 1349 (Fed. Cir. 2002). Furthermore, merely discovering and
claiming a new benefit of an old process cannot render the process again
patentable. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011).
Appellants further argue:
Therefore, the Examiner's argument that ammonia plasma
containing silane of Ngo would inherently incorporate nitrogen
into the silicide layer is an exercise of impermissible hindsight
for an obviousness rejection since such assumption is based on
Appeal 2012-012091
Application 10/828,023

3
Appellants' own specification, rather than the facts or teachings
gleaned from the applied prior art. See MPEP §2112.
(Req. 2).
Appellants' argument is unpersuasive. The Examiner's inherency
finding is properly based on Appellants' Specification which confirms that a
nitrosilicide layer would be inherently formed by the modified process of the
applied prior art. See Kao at 1070 ("Substantial evidence supports the
Board's finding, based upon the specification, which confirms that the
claimed 'food effect' is an inherent property of oxymorphone itself"). This is
not a case where the Examiner relied on an unknown property of the prior
art for a teaching in support of an obviousness conclusion. Id. Rather, the
express teachings of the applied prior art render the claimed process
obvious, and the claimed formation of a nitrosilicide layer adds nothing of
patentable consequence since the layer would be inherently formed in the
modified process suggested by the applied references. Id.;see also In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the [limitation], [applicants’] application itself instructs
that [the limitation] is not an additional requirement imposed by the claims
on the [claimed invention], but rather a property necessarily present in [the
claimed invention]”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)("The
fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise have been obvious.")

Appeal 2012-012091
Application 10/828,023

4
Appellants' request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

DENIED
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