Ex Parte Symanczyk et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11133716 (B.P.A.I. Jan. 18, 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.
11/133,716 05/20/2005 Ralf Symanczyk A1183.102.101 9588
25281 7590 01/19/2012
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
CYGIEL, GARY W
ART UNIT PAPER NUMBER
2187
MAIL DATE DELIVERY MODE
01/19/2012 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 RALF SYMANCZYK and CORVIN LIAW
____________

Appeal 2009-013064
Application 11/133,716
Technology Center 2100
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
DAVID M. KOHUT, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-5, 7-13, 15-20 and 22-24.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
Appellants’ invention relates to methods for operating programmable
metallization cells, or resistive memory cells that include an electrolyte
material between two electrodes. Spec. ¶ 0001-2; Abs. An applied electrical
field changes the degree of conductivity/resistivity in the electrolyte between
the two electrodes, allowing multiple memory states to be registered in one
of the resistive memory cells. Spec. ¶ 0002. The resistivity of the memory
cell’s electrolyte can drift over time from an initially programmed resistivity
value to an undesired resistivity value which can corrupt data stored in the
memory cell. Spec. ¶ 0004.
Appellants’ invention includes a mechanism for refreshing the state of
the resistive memory cell to correct for any drift in the resistive memory cell,
effectively enhancing data retention within a given resistive memory cell.
Spec. ¶¶ 0007-10. The application of a refresh voltage to a resistive memory
cell can occur: (1) on a periodic basis; (2) every time before the resistive
memory cell is read; and (3) every time before the resistive memory cell is
written. Spec. ¶ 0016.
Claim 1 is illustrative and is reproduced below:
1. A method for operating an integrated circuit having a
resistivity changing memory, comprising:

1 Claims 6, 14 and 21 are cancelled.
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applying a refresh voltage to the resistivity changing
memory cell for maintaining the programmed state of the
resistivity changing memory cell;
applying the refresh voltage to the resistivity changing
memory cell in response to a write instruction to place the
resistivity changing memory cell in the programmed state;
reading-out the resistivity changing memory cell utilizing
the applied refresh voltage;
determining whether the resistivity changing memory
cell is in the programmed state; and
applying a programming voltage to the resistivity
changing memory cell if the resistivity changing memory cell is
not in the programmed state.

Claims 1-3, 5, 7-13, 15-20 and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ovshinsky (U.S. RE 37,259 E), Gilton (U.S.
2004/0071012 A1) and Sinning (EPO 0 455 238 A2).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ovshinsky, Gilton, Sinning and IEEE (IEEE 100: The Authoritative
Dictionary of IEEE Standards Terms (7th Ed., 2000)).
ISSUE
Did the Examiner err in determining that the claimed invention would
have been obvious to one with ordinary skill in the art at the time of the
invention on the bases of: (1) there is no motivation to modify Ovshinsky
and no reasonable expectation of success in making such a modification; (2)
Sinning is non-analogous art; (3) Ovshinsky teaches away from the
modification in view of Sinning; and (4) the modification of Ovshinsky in
view of Sinning would change the principle of operation and would render
Ovshinsky unfit for its intended purpose?
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”) and the arguments in the Reply Brief presented in response
to the Answer. Appellants argue claims 1-5, 7-13, 15-20 and 22-24 together
as a group, asserting that all the claims are allowable because the claims
either depend from independent claim 1 or include limitations similar to
claim 1. App. Br. 4-9. Claim 1 is representative of the group. 37 C.F.R.
§ 41.37 (c)(vii).
Ovshinsky describes a solid-state memory element 30 whose electrical
resistance can be set among several levels, effectively registering multiple
bits of information. Ovshinsky col. 8, l. 34 to col. 9, l. 15; Fig.1. The
Examiner finds that Ovshinsky describes a refresh mechanism for
calculating a refresh pulse to refresh the resistance of memory element 30 as
the resistance drifts over time from its initially set value. Ans. 4 (citing
Ovshinsky col. 20, ll. 25-41). The Examiner finds that Gilton similarly
describes a refresh mechanism for a resistive memory (i.e., a read voltage to
refresh a resistive cell). Ans. 4 (citing Gilton ¶ 0039). Gilton’s refresh
mechanism uses a read voltage intended to read the resistive state of a
resistive memory for two purposes: (1) reading the data in a resistive
memory; and (2) refreshing the resistive memory’s resistive state. Gilton
¶ 0039. The Examiner finds that Sinning describes a feature for extending
the cycle life of solid state memories, such as EEPROM, by reducing the
number of writes performed on a memory. Ans. 5 (citing Sinning p. 2; Abs.).
The Examiner determined that it would have been obvious to one with
ordinary skill at the time of the invention to incorporate Gilton’s refresh
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mechanism into Ovshinsky’s design, enabling the refresh mechanism of
Ovshinsky’s resistive memory cell with a read voltage. Ans. 5. The
Examiner further determined that it would have been obvious to one with
ordinary skill in the art at the time of the invention to incorporate Sinning’s
cycle life extending feature into Ovshinsky’s memory design to increase the
useful life of the memory. Id.
Appellants challenge the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to include Gilton’s refresh
mechanism in Ovshinsky’s design, alleging that there is no motivation for
combining Gilton’s refresh mechanism with Ovshinsky’s memory element
30. App. Br. 4-5; Reply Br. 5. According to Appellants, because Ovshinsky
describes a refresh mechanism, one of ordinary skill would not turn to any
further teachings for implementing a refresh mechanism. App. Br. 4-5;
Reply Br. 5.
We are unpersuaded by Appellants’ arguments that one with ordinary
skill in the art would look no further than Ovshinsky to address resistance
drift in memory cells. Appellants do not direct us to objective evidence, such
as expert testimony, to support their arguments. Rather than Appellants’
suggested myopic review of Ovshinsky’s teachings, it often necessary to
look to the interrelated teachings of multiple patents, the effects of demands
known to the design community or marketplace and the background
knowledge of one with ordinary skill in the art in order to determine whether
there is an apparent reason to combine the known elements. See KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Similarly,
inferences and creative steps that one with ordinary skill in the art would
have employed can be taken into account in determining whether the
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claimed subject matter would have been obvious. Id. One with ordinary skill
in the art is a person of ordinary creativity, not an automaton. KSR, 550 U.S.
at 421. At the time the invention was made, one with ordinary skill in the art
would have understood that Gilton provides an alternative solution to
address resistance drift and would have been able to apply their ordinary
skill and creativity to substitute Gilton’s refresh mechanism for Ovshinsky’s
refresh mechanism. The substitution of one element for another known in
the field is likely to be obvious unless yields more than a predictable result.
KSR, 550 U.S. at 416. Appellants do not direct us to objective evidence to
demonstrate that the substitution of Gilton’s refresh mechanism for
Ovshinsky’s refresh mechanism would yield an unpredictable result or that
such a substitution would have been beyond the skill and ordinary creativity
of one with ordinary skill in the art.
We are also unpersuaded by Appellants’ related argument that using
Gilton’s refresh mechanism would inappropriately change the function of
Ovshinsky’s refresh mechanism. App. Br. 5-6 (citing MPEP § 2143.02).
Under the aforementioned substitution rationale, any changes to Ovshinsky’s
refresh mechanism becomes irrelevant, as the purpose of the substitution is
to replace Ovshinsky’s refresh mechanism with the refresh mechanism
described by Gilton.
Appellants next argue that one of ordinary skill in the art at the time of
the invention would have no reasonable expectation of success in combining
Gilton’s refresh mechanism with Ovshinsky’s memory element 30. App. Br.
5-6. To support this view, Appellants allege that the Final Office Action
does not provide any indication that Gilton’s refresh mechanism would work
with Ovshinsky’s memory element 30. App. Br. 6; Reply Br. 5-6. Appellants
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further allege that Gilton’s refresh mechanism may lack the precision
necessary to refresh Ovshinsky’s resistive memory, or may otherwise
corrupt the data stored in a resistive memory. Reply Br. 6.
We are not persuaded by Appellants’ argument since Appellants do
not direct us to objective evidence, such as expert testimony, to demonstrate
that Gilton’s refresh mechanism: 1) lacks the precision necessary to refresh
Ovshinsky’s resistive memory; and 2) would corrupt the data stored in
Ovshinsky’s resistive memory. At most, Appellants offer mere speculation
on the effects of incorporating Gilton’s refresh mechanism with Ovshinsky’s
resistive memory. See Reply Br. 6. Argument of counsel cannot take the
place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775,
782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Moreover, “the ultimate determination of obviousness ‘does not
require absolute predictability of success . . . . [A]ll that is required is a
reasonable expectation of success.’” Brown & Williamson Tobacco Corp. v.
Phillip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (quoting In re
O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)). Ovshinsky and Gilton
describe resistive memories and alternative mechanisms for refreshing such
resistive memories. Ovshinsky col. 8, ll. 44-52; col. 20, ll. 25-41; Gilton
¶¶ 0009, 0039; Abs. These commonalities between Ovshinsky and Gilton
indicate that one of ordinary skill would have had at least a reasonable
expectation that Gilton’s refresh mechanism could be predictably combined
with Ovshinsky’s resistive memory to refresh the contents of Ovshinsky’s
memory.
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Appellants also attack the Examiner’s determination that it would
have been obvious to one of ordinary skill at the time of the invention to
incorporate Sinning’s comparison mechanism with Ovshinsky’s resistive
memory. App. Br. 7; Reply Br. 6-7. Specifically, Appellants allege that
Sinning is non-analogous art since it relates to EEPROMs which is not in the
same field as the inventor’s endeavor and is completely different from and
operates in a different manner from resistivity changing memories. App. Br.
7; Reply Br. 7. Appellants further argue that one skilled in the art would not
consider EEPROM technology to modify read/write operations using a
refresh voltage in a resistivity changing memory because Sinning’s
EEPROMs do not require a refresh voltage and use a read voltage of 5V in
contrast to refresh signals in the range of 100 mV. App. Br. 7. Appellants
also argue that Ovshinsky distinguishes EEPROMs from resistivity changing
memory cells by highlighting the shortcomings of EEPROMs and pointing
out that EEPROMs are not a truly non-volatile memory in the sense of a
resistivity changing memory cell. Reply Br. 6-7.
We are unpersuaded by Appellants’ arguments as they narrowly focus
on the field of endeavor test and the asserted differences between EEPROMs
and resistivity changing memory. Appellants do not meaningfully or
persuasively explain the inventor’s particular problem or why the teachings
of Sinning are not reasonably pertinent to that particular problem. See In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellants’ argument that one
with ordinary skill in the art would not look to EEPROM technology to
modify read/write operations using a refresh voltage in a resistivity changing
memory cell and the observations that Sinning’s EEPROMs and use a read
voltage of 5V in contrast to Ovshinsky’s 100 mV refresh signal are
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misplaced. The rejection does not rely on Sinning to modify read/write
operations using a refresh voltage or to modify the resistive memory’s
operating voltage or refresh mechanism. Rather, the rejection relies on
Sinning to teach a cycle life extending mechanism that extends a solid-state
memory cycle life by reducing the number of writes performed on the
memory cell. Ans. 5.
Appellants also argue that Ovshinsky teaches away from adding
Sinning’s cycle life extending mechanism to Ovshinsky’s memory element
30 because Ovshinsky’s memory element 30 is directly overwritable. App.
Br. 8. Appellants assert that adding Sinning’s cycle life extending
mechanism would change the principle of operation of Ovshinsky’s memory
element 30 because it is directly overwritable, such that one can write the
memory without first verifying memory cell status (i.e., in a programmed
state or empty). App. Br. 8. Appellants further argue that the addition would
increase the overall write time of Ovshinsky’s memory element 30,
rendering it unfit for its intended purpose of providing fast switching time.
App. Br. 8.
Appellants do not meaningfully or persuasively explain how
Ovshinsky’s description of an overwritable memory suggests that any
developments flowing from its disclosure is unlikely to produce the
objective of Appellants’ invention (i.e., enhancing the data retention of a
programmable memory cell as disclosed in paragraphs 0007-8 of
Appellants’ Specification). See Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d
1371, 1380 (Fed. Cir. 2005). We are also unpersuaded by Appellants’
arguments that utilizing Sinning’s comparison mechanism with Ovshinsky’s
memory cell would disturb the overwritable nature of Ovshinsky’s memory
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cell, such as by forcing the erasure or resetting of the memory cell before
writing a new value to the memory cell. Appellants do not direct us to
objective evidence to support their arguments. Likewise, we are also
unpersuaded by Appellants’ argument that the proposed modification would
increase the overall write time of Ovshinsky’s memory element 30 since it
amounts to mere speculation concerning the overall write time of
Ovshinsky’s memory cells 30. App. Br. 8; Reply Br. 7. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner, 549 F.2d
at 782; see also Pearson, 494 F.2d at 1405.
Moreover, Ovshinsky describes overwritable memory cells that can be
set (i.e., written) to a new resistance value without first erasing/resetting the
cell. Ovshinsky col. 4, ll. 27-39; col. 8, ll. 44-65. Sinning describes a
comparison mechanism intended to reduce the number of write operations
performed on a memory cell, potentially increasing the useful life of the
memory cell. Sinning pp. 2-3. At the time of the invention, one with
ordinary skill in the art would have recognized that the application of
Sinning’s technique of using a comparison mechanism to reduce the number
of write operations to potentially increase the useful life of a memory cell to
Ovshinsky’s overwritable memory cells would improve Ovshinsky’s
memory cells in the same way. If a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417.
For the first time in the Reply Brief, Appellants argue that: (1) Gilton
does not describe and teaches away from the application of a refresh voltage
prior to each write (Reply Br. 3-4); (2) Ovshinsky does not describe and
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teaches away from periodically applying a refresh voltage (Reply Br. 5, 8);
(3) applying a refresh voltage at a predetermined time (Reply Br. 8); and (4)
a timer or autorefresh (Reply Br. 9). The aforementioned arguments are not
presented in Response to the Examiner’s Answer and could have been raised
in the Appeal Brief. Compare Ans. 4-5, 8, 16-18 with FOA 2-5, 7, 15. Since
the new arguments in the Reply Brief could have been presented in the
Appeal Brief to rebut the rejections made in the Final Office Action,
Appellants’ arguments are deemed waived and are not considered. Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”).
For all of the foregoing reasons, we sustain the rejections of claims 1-
5, 7-13, 15-20 and 22-24.
DECISION
We AFFIRM the rejection of claims 1-3, 5, 7-13, 15-20 and 22-24
under 35 U.S.C. § 103(a) as unpatentable over Ovshinsky, Gilton and
Sinning.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Ovshinsky, Gilton, Sinning and IEEE.
TIME PERIOD
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

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