10992144 (B.P.A.I. Jun. 28, 2012)

Ex Parte Schultz et al

Board of Patent Appeals and InterferencesJun 28, 2012

10992144 (B.P.A.I. Jun. 28, 2012)

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. 10/992,144 11/18/2004 Roger L. Schultz 1391-573.00 8451 36177 7590 06/29/2012 KRUEGER ISELIN LLP (1391) P O BOX 1906 CYPRESS, TX 77410-1906 EXAMINER HO, HOANG QUAN TRAN ART UNIT PAPER NUMBER 2818 MAIL DATE DELIVERY MODE 06/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROGER L. SCHULTZ and JAMES J. FREEMAN ____________ Appeal 2010-002151 Application 10/992,1441 Technology Center 2800 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ANDREW J. DILLON, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 48-60. Claims 1-47 and 61-66 were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). 1 Application filed November 18, 2004 claiming benefit of three provisional applications filed Nov. 18, 2003. The real party in interest is Halliburton Energy Services, Inc. (Br. 3.) Appeal 2010-002151 Application 10/992,144 2 We affirm. Invention Appellants’ invention relates to an integrated circuit. More particularly, the present invention is directed to a nonvolatile integrated circuit suitable for use at high temperatures. (Spec. ¶ [0006].)2 Representative Claim Independent claim 48, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 48. A high temperature nonvolatile integrated device that comprises: a sapphire or spinel substrate; and a plurality of memory cells disposed on the substrate, each memory cell including a fuse or antifuse element, wherein the device is operable in environmental temperatures greater than 200 degrees Celsius. Rejections on Appeal 1. The Examiner rejects claims 48 and 51 under 35 U.S.C. § 102(e) as being anticipated by Vyvoda (US Pat. Pub. 2004/0002186 A1 published Jan. 1, 2004 (filed June 27, 2002)). 2. The Examiner rejects claim 56 under 35 U.S.C. § 102(e) as being anticipated by Fricke (US Pat. Pub. 2003/0230770 A1 published Dec. 18, 2003 (filed June 13, 2002)). 2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”) filed June 18, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 18, 2009. Appeal 2010-002151 Application 10/992,144 3 3. The Examiner rejects claims 49 and 50 under 35 U.S.C. § 103(a) as being unpatentable over Vyvoda and Johnson (US Patent No. 6,034,882 Mar. 7, 2000). 4. The Examiner rejects claims 52 and 55 under 35 U.S.C. § 103(a) as being unpatentable over Vyvoda and Bertin (US Pat. Pub. 2003/0132504 A1 Jul. 17, 2003). 5. The Examiner rejects claims 53 and 54 under 35 U.S.C. § 103(a) as being unpatentable over Vyoda, Bertin and Johnson. 6. The Examiner rejects claims 57, 58, and 60 under 35 U.S.C. § 103(a) as being unpatentable over Fricke and Johnson. 7. The Examiner rejects claim 59 under 35 U.S.C. § 103(a) as being unpatentable over Fricke, Johnson, and Harrison (US Pat. Pub. 2006/0007727 A1 published Jan. 12, 2006 (filed Sept. 12, 2003)). . Grouping of Claims Based on Appellants’ arguments in the Brief, we will decide the appeal on the basis of representative claim 48. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE Under § 102, did the Examiner err in finding that Vyvoda and Fricke disclose “wherein the device is operable in environmental temperatures greater than 200 degrees Celsius” within the meaning of independent claims 48 and 56 (Vyvoda) and 52 (Fricke)? Appeal 2010-002151 Application 10/992,144 4 FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. ANALYSIS Anticipation Rejection of Claim 48 Appellants contend that Vyvoda fails to disclose a device that “is operable in environmental temperatures greater than 200 degrees Celsius.” (Br. 8-9.) Appellants contend, inter alia, “Vyvoda’s memory devices do not appear to have been designed for use at high environmental temperatures, nor is such operability an inherent property of Vyvoda’s devices.” (Br. 9.) We agree with the Examiner’s determination that the limitation at issue fails to distinguish the present invention over the cited reference. (Ans. 14-15.) The recited functionality of the device is merely a statement of intended use of the device, which in this instance does not further limit the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement of intended use “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates”). Appellants further contend that it is not an inherent property of the recited substrate and memory cells that make it operable at elevated environmental temperatures. Rather, the operability requirement specifies structural limitations on the apparatus that cannot be ignored by the Examiner. (Br. 8.) We observe that the “structural limitations” urged by Appeal 2010-002151 Application 10/992,144 5 Appellants are not recited in the present claims. We will not read these limitations into the present claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Further, we note that Appellants failed to file a Reply Brief to rebut the findings and responsive arguments made by the Examiner in the Answer. Anticipation Rejection of Claim 56 The Examiner rejects claim 56 as being anticipated by Fricke. (Ans. 5-6, 14-15.) Appellants present essentially the same arguments with respect to claim 56 and Fricke as those presented for claim 48 and Vyvoda discussed supra. (Br. 9-10.) We find Appellants’ arguments unpersuasive for the same reasons discussed supra with regards to independent claim 48. Based on this record, we conclude that Appellants have not shown the Examiner erred in determining that both Vyvoda and Fricke individually disclose “wherein the device is operable in environmental temperatures greater than 200 degrees Celsius.” Accordingly, we affirm the Examiner’s rejections of claims 48 and 56. Anticipation Rejection of Claim 51 and Obviousness Rejections of Dependent Claims 49, 50, and 57-60 Regarding dependent claims 49-51 and 57-60, we note that Appellants do not separately argue the limitations of the above-mentioned claims. (Br. 11 and 13.) Appellants urge patentability of these dependent claims based upon the arguments discussed above regarding claims 48 and 56, which we did not find persuasive. Accordingly, we affirm the Examiner’s obviousness rejections of claims 49-51 for the same reasons discussed supra. Appeal 2010-002151 Application 10/992,144 6 Obviousness Rejections of Independent Claim 52 and Dependent Claim 55 Appellants essentially repeat the arguments for the patentability of claims 52 and 55 that were made for independent claim 48. (Br. 11-12.) These arguments were fully discussed supra and were not found to be persuasive. Accordingly, we affirm the Examiner’s obviousness rejection of claims 52 and 55. CONCLUSIONS OF LAW Appellants have not shown that the Examiner erred in rejecting claims 48, 51, and 56 under 35 U.S.C. § 102(e). Appellants have not shown that the Examiner erred in rejecting claims 49, 50, 52-55, and 57-60 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 48, 51, and 56 under 35 U.S.C. § 102(e) We affirm the Examiner’s rejections of claims 49, 50, 52-55, and 57- 60 under 35 U.S.C. § 103(a). 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)(iv). AFFIRMED tkl