Ex Parte Wicker

Board of Patent Appeals and Interferences

Sep 29, 2010

11400632 (B.P.A.I. Sep. 29, 2010)

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.
11/400,632 04/07/2006 Guy Wicker OVX.0005US 2423
21906 7590 09/29/2010
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
WHALEN, DANIEL B
ART UNIT PAPER NUMBER
2829
MAIL DATE DELIVERY MODE
09/29/2010 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 GUY WICKER
____________

Appeal 2009-011739
Application 11/400,632
Technology Center 2800
____________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011739
Application 11/400,632

2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7 and 10-20, which constitute all the claims pending in the
application as claims 8 and 9 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a phase change memory made of a
chalcogenide alloy including a relatively lean amount of germanium, less
than about 15% (atomic percent) (Spec. 3:1-5). Claim 1, which is
illustrative of the invention, reads as follows:
1. A phase change memory comprising:
a chalcogenide including selenium and less than about 15
atomic percent of germanium.

The Examiner relies on the following prior art in rejecting the claims:
Maimon US 6,613,604 B2 Sep. 2, 2003
Lu US 6,850,432 B2 Feb. 1, 2005

Claims 1-7 and 10-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maimon and Lu.
We make reference to the Briefs (Appeal Brief filed Aug. 25, 2008,
and Reply Brief filed Nov. 24, 2008) and the Answer (mailed Oct. 14, 2008)
for their respective details. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2009-011739
Application 11/400,632

3
ISSUE
The pivotal issue before us is whether the Examiner erred in
determining that combining Maimon’s (TeaGebSb100-(a+b))cTMdSe100-(c+d)
composition with the atomic percent of Te, Ge, and Sb disclosed by Lu
would have taught all the claimed elements and the combination would have
been obvious to one of ordinary skill in the art.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
Furthermore,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-88; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981).

ANALYSIS
Appellant does not challenge the Examiner’s reliance on Maimon for
disclosing a general composition for chalcogenide elements and on Lu for
Appeal 2009-011739
Application 11/400,632

4
disclosing a range between 5% and 50% atomic percent for germanium in a
chalcogenide material. However, Appellant contends that one of ordinary
skill in the art would not have combined Maimon with Lu because Maimon
does not suggest using lean amounts of germanium with selenium, nor does
Lu suggest the possibility of using selenium (App. Br. 9). Appellant further
asserts that the proposed combination would require excessive “picking and
choosing” among the available elements to arrive at the claimed
composition, whereas neither reference provides any reason why one of
ordinary skill in the art would attempt to select the “most useful alloy”
among the disclosed choices (id.).
Contrary to Appellant’s contentions, the combination proposed by the
Examiner is not based on picking and choosing elements from the disclosed
chalcogenide compositions disclosed by the references. In fact, Maimon
discloses a phase-change memory material having both germanium and
selenium which includes Te, Ge, Sb, Se, and a transition metal (TM) having
a ratio specified by (TeaGebSb100-(a+b))cTMdSe100-(c+d) where the subscripts are
in atomic percentages (col. 13, ll. 31-41). Therefore, contrary to Appellant’s
assertion (App. Br. 9; Reply Br. 1), Maimon not only lists eleven
chalcogenide elements to choose from, but discloses the general composition
which includes both germanium and selenium and allows for various
composition ratios for the mixture.
The relied on portion of Lu, in column 3, lines 1-49, discloses various
chalcogenide compositions including the family of Ge/Sb/Te alloys where a
wide range of alloys or variations such as TeaGebSb100-(a+b) may be workable
(col. 3, ll. 5-7). Lu further discloses that concentrations of Ge may be varied
from 8% to 50% specifically for the TeGeSb class of chalcogenides (col. 3,
Appeal 2009-011739
Application 11/400,632

5
ll. 12-16). Lu also provides examples of memory materials, such as Te-Ge-
Sb-S or Ge39Sb9Te52-M (M = Se, S, Sn, Si), which suggest using selenium
and germanium together in a chalcogenide material (col. 3, ll. 29, 47-48).
Therefore, we find that one of ordinary skill in the art would have
recognized and appreciated that the chalcogenide material (TeaGebSb100-
(a+b))cTMdSe100-(c+d) disclosed in Maimon may benefit from the specific low
ratio of germanium suggested by Lu. Specifically, since Lu recognizes and
allows a wide range of alloys and variations thereof for this particular class
of chalcogenide material (TeGeSb), applying Lu’s identified composition
ratio for germanium to the chalcogenide material of Maimon constitutes a
combination of familiar element which is obvious. “‘The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.’” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550
U.S. at 416).

CONCLUSION
Based on the analysis above, we conclude that the Examiner did not
err in determining that combining Maimon’s (TeaGebSb100-(a+b))cTMdSe100-
(c+d) composition with the atomic percent of Te, Ge, and Sb disclosed by Lu
would have taught all the claimed elements and the combination would have
been obvious to one of ordinary skill in the art. Accordingly, the
combination of Maimon and Lu renders obvious the subject matter recited in
claim 1 as well as claims 2-7 and 10-20, which are argued together with
claim 1 as one group (Br. 9).

Appeal 2009-011739
Application 11/400,632

6
ORDER
The decision of the Examiner rejecting claims 1-7 and 10-20 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

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TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631