Ex Parte Rueping et al

Patent Trial and Appeal Board

Apr 13, 2016

12356339 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/356,339 0112012009
38881 7590
Infineon Technologies AG
c/o Schiff Hardin LLP
666 Fifth A venue
Suite 1700
NEW YORK, NY 10103
04/15/2016
FIRST NAMED INVENTOR
Stefan Rueping
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.
42792-0057 (I0046.0065) 8629
EXAMINER
HUNNINGS, TRAVIS R
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
lbrutman@schiffhardin.com
patents-NY@schiffhardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN RUEPING, THOMAS NIRSCHL,
RONALD KAKOSCHKE, FRANZ JOSEF BRUECKLMA YR,
MARKUS GAIL, BERNDT GAMMEL, and
GERD DIRSCHERL
Appeal2014-004584
Application 12/356,339 1
Technology Center 2600
Before THU A. DANG, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1---6, 8-19, and 22-25. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Infineon Technologies
AG. App. Br. 1.
Appeal2014-004584
Application 12/356,339
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to "[a] security
circuit [ ] including a sensor located remotely from a central alarm handler
and configured to sense an attack, and a phase-change memory cell coupled
to and located remotely with the sensor, and configured to store an alarm
event when the attack is sensed." Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A security circuit comprising:
a sensor located remotely from a central alarm handler
and configured to sense an attack; and
a phase-change memory cell coupled to and located
rernotely with the sensor, and configured to store an alann
event when the attack is sensed.
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 1, 2013); Reply Brief ("Reply Br.," filed Jan. 6, 2014); Examiner's
Answer ("Ans.," mailed Nov. 7, 2013); Final Office Action ("Final Act.,"
mailed May 8, 2013); and the original Specification ("Spec.," filed
Jan. 20, 2009).
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Application 12/356,339
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Tershak et al. ("Tershak") us 4,566,285 Jan.28, 1986
Ciglenec et al. ("Ciglenec") US 2003/0058125 Al Mar. 27, 2003
Becksted et al. ("Becksted") US 2007 /0236343 Al Oct. 11, 2007
Vogedes et al. ("Vogedes") US 2008/0290985 Al Nov. 27, 2008
Bajpay et al. ("Bajpay") US 2010/0052924 Al Mar. 4, 2010
Re} ections on Appeal3
RI. Claims 1-3, 9-16, and 23-25 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination ofBecksted, Ciglenec, and
Vogedes. Ans. 2--4.
R2. Claims 4, 8, and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Becksted, Ciglenec, Vogedes, and
Bajpay. Ans. 5.
R3. Claims 5, 6, 18, 19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination ofBecksted, Ciglenec,
Vogedes, Bajpay, and Tershak. Id.
3 The Examiner indicates dependent claims 7, 20, and 21 are objected to as
being dependent upon a rejected base claim, but are otherwise drawn to
allowable subject matter. Final Act. 8.
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Application 12/356,339
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 3-5), we decide the appeal
of obviousness Rejection RI of claims 1-3, 9-16, and 23-25 on the basis of
representative claim 1.
Remaining claims 4---6, 8, 17-19, and 22 in rejections R2 and R3, not
argued separately, stand or fall with the respective independent claim from
which they depend.4
ISSUE
Appellants argue (App. Br. 3-5; Reply Br. 2) the Examiner's rejection
of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination
of Becksted, Ciglenec, and Vogedes is in error. These contentions present
us with the following issue:
Did the Examiner err in combining the cited prior art combination to
teach or suggest a security circuit that includes; inter alia; "a phase-change
memory cell coupled to and located remotely with the sensor, and
configured to store an alarm event when the attack is sensed," as recited in
claim 1, allegedly because a phase-change memory would not have been
able to reliably retain its data retention characteristics in the environment of
intended use of the claimed invention?
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the Action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
The totality of Appellants' argument is:
There would have been no motivation to modify
Ciglenec's memory 858 to be a phase-change memory as taught
by V ogedes. As discussed above, the physical state of a phase-
change memory cell is reversibly changed through the
application of heat. A phase-change memory would therefore
not have been able to retain its data retention characteristics
reliably when subjected to the extreme temperatures provided
by the oilfield production environments of Ciglenec, at least at
the date of the present invention. The extreme temperatures
would likely change the physical state of the chalcogenide, and
therefore result in inaccurate and unreliable data storage.
App. Br. 4. We disagree for the reasons set forth below.
In response to Appellants' contentions, the Examiner finds, and we
agree:
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Beckensted [sic.] discloses a remote sensing system that
transmits information to a remote location . . . . Ciglenec
teaches that sensed information may be stored locally as well as
transmitted to a remote location ... [but] is not being used to
modify Beckensted [sic.] to operate in an oilfield production
environment, but is instead teaching that remote sensing
systems may store sensed information locally at the sensed
location as well as transmit that information to a remote
location. Vogedes teaches that memory systems may use phase-
change memory . . . and the combination of Beckensted [sic.]
and Ciglenec would be modified by Vogedes to use phase-
change memory to store the sensed information locally, as
taught by Ciglenec.
Ans. 7.
We find Appellants' assertions and speculation regarding the effect of
temperature on the memory cell's ability to properly function is unsupported
by any evidence on this record and, therefore, amount to unsupported
attorney argument, such that we give them little weight. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135,
139--40 (Fed. Cir. 1996).
In addition, Appellants' contentions do not persuade us of error on the
part of the Examiner because Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We specifically note
Appellants' challenge to the references individually is not convincing of
error in the Examiner's position because all of the features of the secondary
reference need not be bodily incorporated into the primary reference, but
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consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art (see In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment (see Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)).
We further note Appellants' argument is not commensurate with the
scope of the claim, because the features upon which Appellants rely upon to
distinguish over the cited prior art combination are not recited in the claim,
e.g., the environment of intended use, and desired temperature-dependent
data retention characteristics of the phase-change memory.
In the Reply Brief (2), Appellants' allege improper motivation to
combine the references in the manner suggested, which is an argument that
the system is rendered "unsuitable for its intended purpose," i.e., a "teach
away" argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). The
Federal Circuit has held "[a] reference may be said to teach away when a
person of ordinary skill, upon reading 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." In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir.1994)).
Contrary to Appellants' allegations (Reply Br. 2), we do not find any
evidence on this record that a person of ordinary skill in the art would view
the combination of references in the negative light advanced by Appellants,
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and particularly find no evidence on this record to support Appellants'
speculation as to the technical performance and/or shortcomings of Vogedes'
phase-change memory in a harsh oilfield production environment, especially
in light of the lack of any such claimed restrictions on operating
environment which would affect the claimed structure, and which are not
recited in the claim.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
limitations of claim 1, nor do we find error in the Examiner's resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 1, and grouped claims 2-3, 9-
16, and 23-25 which fall therewith. See Claim Grouping, supra.
§ 103(a) Rejections R2 and R3 of Claims 4-6, 8, 17-19, and 22
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 and R3 of claims 4--6, 8, 17-19, and 22 under
§ 103(a) (see App. Br. 5), we sustain the Examiner's rejections of these
claims. We deem arguments not made waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2) not in response to a shift in the Examiner's position in the
Answer, we note arguments raised in a Reply Brief that were not raised in
the Appeal Brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause (see 3 7 C.F .R.
§ 41.41(b)(2)), which Appellants have not shown.
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CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections RI
through R3 of claims 1---6, 8-19, and 22-25 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1---6, 8-19,
and 22-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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