International Business Machines Corporation

Patent Trials and Appeals Board

Dec 30, 2020

2020000121 (P.T.A.B. Dec. 30, 2020)

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.
14/749,161 06/24/2015 Matthew J. BrightSky YOR920140431US2 9247
48813 7590 12/30/2020
LAW OFFICE OF IDO TUCHMAN (YOR)
PO Box 765
Cardiff, CA 92007
EXAMINER
SIDDIQUE, MUSHFIQUE
ART UNIT PAPER NUMBER
2825
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. BRIGHTSKY, SANGBUM KIM,
WANKI KIM, and CHUNG H. LAM
Appeal 2020-000121
Application 14/749,161
Technology Center 2800
Before TERRY J. OWENS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Brief (“Appeal Br.”) filed May 7,
2018, 2.
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Application 14/749,161

2
CLAIMED SUBJECT MATTER
The invention relates to a phase change memory with metastable set
and reset states. Specification (“Spec.”) filed June 24, 2015, ¶ 2.2
Claim 11, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
11. A memory device comprising:
a phase change material having an electrical resistance
and programmable to a set state having a set electrical
resistance and reset state having a reset electrical resistance at
least a factor of 10 greater than the set electrical resistance, the
phase change material including an initial state having an initial
electrical resistance between the set electrical resistance and the
reset electrical resistance, the initial state is at a lower potential
energy than the set state and the reset state;
a first electrode electrically coupled to a first area of the
phase change material; and
a second electrode electrically coupled to a second area
of the phase change material.
Independent claim 1 recites a similar memory device as claim 11,
adding that the electrical resistance of the phase change material
programmed to the set or reset states drifts toward the initial electrical
resistance over time.

2 This Decision also cites the Final Office Action (“Final Act.”) dated
August 25, 2017, the Examiner’s Answer (“Ans.”) dated August 2, 2019,
and the Reply Brief (“Reply Br.”) filed October 2, 2019.
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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Khang et al. (“Khang”) US 8,049,202 B2 Nov. 1, 2011
Cheng et al. (“Cheng”) US 8,946,666 B2 Feb. 3, 2015
Cheng et al. US 2012/0326111 A1 Dec. 27, 2012

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 4 and 14 under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement;
2. Claims 4 and 14 under 35 U.S.C. § 112(b) as indefinite;
3. Claims 1–3, 5–9, 11–13, and 15–20 under 35 U.S.C.
§ 102(a)(1) as anticipated by Cheng;3 and
4. Claim 10 under 35 U.S.C. § 103 as unpatentable over Cheng
in view of Khang.
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)

3 Although the Examiner relies on the 2012 published patent application to
Cheng et al. as the prior art reference in the statements of rejections 3 and 4,
the Examiner cites, without objection, to the 2015 issued patent to Cheng in
supporting these rejections. Therefore, while it is understood that the
published Cheng et al. application is the actual basis for these rejections, we
cite to the Cheng patent in rendering this Decision.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the Examiner’s obviousness rejection. Therefore, we
affirm the stated rejection for substantially the fact findings, reasoning, and
conclusion of obviousness set forth in the Examiner’s Answer, which we
adopt as our own. We offer the following for emphasis only.
Rejection 1: Enablement
The Examiner rejects claims 4 and 14 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement. A complete statement of
the rejection is set forth in the Final Office Action, pages 3–7.
Claims 4 and 14 depend from claims 1 and 11, respectively, and
further require that “the phase change material includes a Ge atomic
concentration of 48.1%, a Sb atomic concentration of 14.9%, a Te atomic
concentration of 27.7%, and an N atomic concentration of 9.3%.”
The Examiner finds that the invention is drawn to a phase change
material with exact concentrations for Ge, Sb, Te, and N (“GST”). Final Act.
4. The Examiner indicates that Appellant stated, during an interview with the
Examiner, that these concentrations were measured using EDS analysis. Id.
However, the Examiner determines that the compound of claims 4 and 14
would not have been reproducible. Id. at 4–5.
In this regard, the Examiner finds that the state of the art does not
suggest an ability to produce/reproduce GST material having 48.1 at.% Ge,
14.9 at.% Sb, 27.7 at.% Te, and 9.3 at.% N. Final Act. 5. The Examiner
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directs attention to Khang and Wong,4 as well as two “independent empirical
calculations,” in support of this finding. Id. The Examiner finds that Khang
teaches Ge2Sb2Te5, but that its atomic concentration can only be
approximated with an inexact range using EDX analysis. Id. The Examiner
finds that Wong does not teach that phase change material can be produced
with exact atomic concentrations with certainty. Id. In addition, the
Examiner finds that the two independent empirical formula calculations
contradict Appellant’s assertion that the empirical formula of the compound
of claims 4 and 14 is Ge481Sb149Te277N93. Id.
The Examiner finds that the invention of claims 4 and 14 is directed to
the field of chemistry and material science, and finds that these are
unpredictable fields. Final Act. 6. With regard to the existence of working
examples and amount of direction or guidance by the Inventors, the
Examiner finds that the Specification merely discloses the phase change
material, in one embodiment, includes a Ge atomic concentration of 48.1%,
a Sb atomic concentration of 14.9%, a Te atomic concentration of 27.7%,
and an N atomic concentration of 9.3%. Id. The Examiner finds that the
Specification does not otherwise provide any details or special
distinguishing characteristics of this specific material with these specific
concentrations. Id. The Examiner finds that the Specification fails to teach
how to use the claimed phase change material without resorting to undue
experimentation to determine that the material with the specified
concentrations is working as a memory element. Id.

4 Phase Change Memory, IEEE, 2010.
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Therefore, based on the above factors, the Examiner determines that
an undue quantity of experimentation would be necessary to make the GST
material of claims 4 and 14. Final Act. 6–7. As such, the Examiner
concludes that invention recited in claims 4 and 14 was not enabled at the
time of filing. Id. at 7.
Appellant argues that the Examiner has failed to satisfy the initial
burden of setting forth a reasonable explanation of why claims 4 and 14 are
not enabled. Appeal Br. 6. Appellant asserts that Khang’s EDX analysis is
used to detect, not produce, phase change material. Id. Appellant contends
that the Examiner fails to explain why a method to detect phase change
materials demonstrates an inability to produce such materials, in particular at
the concentrations recited in claims 4 and 14. Id. at 7. Appellant also asserts
that Khang evidences that an ordinary artisan would be able to produce
Ge2Sb2Te5 without undue experimentation, and thus, that EDX can be used
to detect reproducible GST material. Id. Appellant next contends that
Wong’s lack of disclosure of exact atomic concentrations does not establish
lack of enablement. Id. at 8. Appellant urges that claims 4 and 14 do not
recite producing the phase change material with exact atomic concentration
with certainty. Id. With regard to the Examiner’s position that failure to
provide an empirical formula supports a lack of enablement to reproduce the
claimed compound, Appellant notes that ethyl alcohol and gun powder were
reproducible for millennia prior to their empirical formulae being
discovered. Id. at 9–10.
Appellant’s arguments are not persuasive of reversible error because
Appellant fails to direct our attention to any teaching in the Specification of
a method to form a GST material, much less a method to form the GST
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material having the specific atomic concentrations of claims 4 and 14, nor do
we find any. In addition, the Examiner has established a reasonable basis to
believe that a method of forming the GST material having the specific
atomic concentrations of claims 4 and 14 was neither generally known in the
art, nor within the ordinary skill in the art without undue experimentation.
“The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art to
make and use the invention without ‘undue experimentation.’” In re Vaeck,
947 F.2d 488, 495 (Fed. Cir. 1991) (citing In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988)). “Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached by weighing
many factual considerations.” Wands, 858 F.2d at 737. Some
experimentation, even a considerable amount, is not “undue” if, e.g., it is
merely routine, or if the specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed.
Factors to consider to aid in assessing whether undue experimentation is
necessary include: “(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” Id. “When
rejecting a claim under the enablement requirement of section 112, the PTO
bears an initial burden of setting forth a reasonable explanation as to why it
believes that the scope of protection provided by that claim is not adequately
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enabled by the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of enablement. If
the PTO meets this burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed enabling.” In re
Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
As indicated above, Appellant fails to provide any direction or
guidance, such as by working examples, as to how to make any GST
material, much less the GST material of claims 4 and 14. In addition,
Appellant fails to assert, much less show, that making a GST material with
specific atomic concentrations as recited in claims 4 and 14 would have been
within the ordinary skill in the art. Thus, Wands factors 2 and 3 weigh
against enablement.
With regard to the nature of the invention, the Examiner finds without
dispute that the invention is a phase change material with exact atomic
concentrations (to the tenth of a percent) for Ge, Sb, Te, and N. The
Examiner also finds that the state of the prior art does not suggest an ability
to produce/reproduce the GST material of claims 4 and 14. Although there is
some dispute between the Examiner and Appellant regarding the importance
of characterizing this GST material’s empirical formula, we note that
Appellant fails to disclose any method or technique for measuring the exact
atomic concentrations of a GST material. The Examiner finds, without
dispute, that the known technique for measuring atomic concentrations, the
EDX analysis, merely approximates atomic concentrations with a range, but
is not sufficiently precise to measure exact atomic concentrations. If one is
not able to measure exact atomic concentrations, it would not be possible to
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know if one had actually produced the GST material of claims 4 and 14.
Thus, we find that Wands factors 4 and 5 weigh against enablement.
We note that neither the Examiner nor Appellant addresses the
relative level of skill of those in the art. However, we find that the skill level
in this art, computer memory devices comprising programmable phase
change materials, is likely high and requires knowledge both of material
sciences and electrical engineering. As such, we find that Wands factor 6
likely weighs in favor of enablement.
The Examiner next finds, without dispute, that the invention of claims
4 and 14 are directed to chemistry and material science, which are
unpredictable arts. Although the Examiner does not direct attention to
support of this finding, we note that not only does Appellant fail to disclose
any method for making (or measuring) the GST material of claims 4 and 14,
but also that Appellant fails to dispute the Examiner’s findings that the
known technique for measuring GST material is incapable of measuring
exact atomic concentrations. Therefore, producing any GST material of
exact atomic concentrations would be unpredictable because it would not be
possible to verify that the material produced actually has those exact atomic
concentrations. Thus, we find that Wands factor 7 weighs against
enablement.
The breadth of the claims is not in dispute. Indeed, claims 4 and 14
are directed to a GST material of exact atomic concentrations and, therefore,
have a very narrow breadth. Thus, we find Wands factor 8 weighs in favor of
enablement.
Finally, we note that neither the Examiner nor Appellant addresses
Wands factor 1. However, it appears that the quantity of experimentation in
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order to arrive at a GST material having the specific atomic concentrations
of claims 4 and 14 would be indeterminate because, according to the
Examiner, it would be possible only to measure the GST material’s atomic
concentrations, within ranges, rather than to tenths of a percent. As such,
Wands factor 1 weighs against enablement.
Weighing the Wands factors together, wherein two factors weigh in
favor of enablement (relative skill of those in the art and claim breadth) and
six factors weigh against enablement, we determine that a preponderance of
the evidence supports the conclusion that the Specification, as filed, fails to
teach those skilled in the art how to make and use the phase change material
of claims 4 and 14 without undue experimentation. In reaching this
determination, we find both the fact that the Specification fails to teach any
method to form (or measure) a GST material, much less a method to form
(or measure) the GST material having the specific atomic concentrations of
claims 4 and 14, as well as the fact that it is not possible to measure a GST
material’s exact atomic concentration, to weigh most heavily against
enablement, as it would not be possible to know that one has obtained the
claimed GST material without undue experimentation.
Accordingly, we sustain the Examiner’s enablement rejection of
claims 4 and 14.
Rejection 2: Indefiniteness
The Examiner rejects claims 4 and 14 under 35 U.S.C. § 112(b) as
indefinite. A complete statement of this rejection is set forth in the Final
Office Action, pages 7–8.
The Examiner determines that these claims are “ambiguous in light of
the ‘admission of facts’ in [the] Remarks page 9 (third para) and also in light
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of [the] declaration under 37 CFR § 1.132 page 3 (point 11).” Final Act. 8.
In particular, the Examiner notes that Appellant states that claims 4 and 14
recite material “with tolerances and percent variations.” Id. However, the
Examiner notes that these claims recite “exact atomic concentration” and
finds that the Specification does not provide a standard for ascertaining the
requisite degree of tolerance and variation such that those skilled in the art
are reasonably apprised of the scope of the claimed invention. Id.
Appellant argues that the Examiner fails to explain what in the
language of claims 4 and 14 is regarded as ambiguous. Appeal Br. 12.
Appellant also asserts that the Examiner misquotes Appellant. Id. Appellant
instead urges that the Examiner fails to provide any evidence that the
material of claims 4 and 14 “cannot be produced without undue
experimentation within tolerances recognized by one of ordinary skill in the
relevant art.” Id. Appellant also urges that the Examiner inaccurately finds
that claims 4 and 14 require “producing a Phase Change Material with exact
atomic concentrations with certainty.” Id.
Subsection (b) of 35 U.S.C. § 112 requires the specification to
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112(b) (2017). Section 112(b) contains two requirements: first, the
claim must set forth what the applicant regards as the invention, and second,
it must do so with sufficient particularity and distinctness, i.e., the claim
must be sufficiently definite. Allen Eng’g Corp. v. Bartell Indus., 299 F.3d
1336, 1348 (Fed. Cir. 2002). “As the statutory language of ‘particular[ity]’
and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as
opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d
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1307, 1313 (Fed. Cir. 2014). Exact precision, however, is not required. The
test for determining the question of indefiniteness may be formulated as
whether the claims “set out and circumscribe a particular area with a
reasonable degree of precision and particularity.” In re Moore, 439 F.2d
1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one
must consider the language in the context of the circumstances. Packard,
751 F.3d at 1313. Language is an imprecise method of drawing boundaries
delineating patent rights, thus, unreasonable precision cannot be demanded.
Id. On the other hand, the claims must notify the public of what they are
excluded from making and using. Id. For this reason, an applicant is required
to use language as precise as the subject matter reasonably permits. Id.
Claims 4 and 14, by their language, set forth a GST phase change
material of exact atomic concentration to the tenth of a percent. Thus, based
solely on the language of these claims, claims 4 and 14 would appear to
circumscribe a particular scope with significant precision and particularity.
However, Appellant appears to indicate that the scope of claims 4 and 14
extend at least to some extent beyond this particularly circumscribed scope.
Indeed, Appellant’s argument indicates that this extension encompasses
“tolerances recognized by one of ordinary skill in the relevant art.” Appeal
Br. 12. Appellant also urges “that all real-world measurements have
tolerances and are infinitely precise.” Reply Br. 6. As such, Appellant
disputes that claims 4 and 14 actually circumscribe a GST material with
exact atomic concentration. Id. at 7. In doing so, Appellant fails to disclose
or even explain what tolerances would be recognized by those skilled in the
art, which is especially problematic given that claims 4 and 14 recite atomic
concentrations to a tenth of a percent, while the evidence of record indicates
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that determining GST material atomic concentrations to that level was not
possible.
Therefore, these claims present what may be a unique problem of
claiming a scope of a precision that is beyond the ordinary skill in the art,
while at the same time, allegedly permitting some tolerance that is not
possible to quantify. Accordingly, we determine that claims 4 and 14 fail to
comply with the requirements of § 112(b).
Rejection 3: Anticipation by Cheng
The Examiner rejects claims 1–3, 5–9, 11–13, and 15–20 under 35
U.S.C. § 102(a)(1) as anticipated by Cheng. A complete statement of this
rejection is set forth in the Final Office Action, pages 8–15.
Appellant argues all the claims together, focusing on the limitations of
claim 1. We select claim 1 as representative; claims 3, 5–9, 11–13, and 15–
20 stand or fall with claim 1. 37 C.F.R. §41.37(c)(1)(iv) (2017).
The Examiner finds that Cheng teaches a memory device comprising
a phase change material including 30–65 % Ge, 13–27 % Sb, and 20–45 %
Te, wherein the material is programmable from an initial state to a set state
and a reset state. Final Act. 9. The Examiner further finds that the reset
electrical resistance is at least a factor of 10 greater than the set electrical
resistance, and the initial electrical resistance is between the set and reset
electrical resistances. Id. The Examiner also finds that the initial state is at a
lower potential energy because Cheng teaches converting from the initial
state to the set or reset states requires the application of electrical energy. Id.
at 10. As such, the Examiner finds that the electrical resistance of the
material programmed to the set or reset states drifts toward the initial state
over time, wherein such drift property is inherent to Ge-rich GST materials
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such as Ge-rich GST-212 having atomic concentrations of 30–65 % Ge, 13–
27 % Sb, and 20–45 % Te. Id.
Appellant argues that Cheng fails to teach three properties of the
phase change material recited in claim 1: 1) an initial electrical resistance
that both lies between the set and reset electrical resistances; 2) an initial
state with a lower potential energy that the set and reset states; and 3) when
programmed to a set or reset state, electrical resistance drifts toward the
initial electrical resistance over time. Appeal Br. 14–22. Appellant contends
that Cheng fails to disclose that the material has an initial electrical
resistance between the set and reset electrical resistances. Id. at 14–15.
Appellant addresses two publications the Examiner refers to in the
Final Office Action—Gao (Failure Analysis of Nitrogen-Doped Ge2Sb2Te5
Phase Change Memory, IEEE Transactions on Device And Materials
Reliability 16, No. 1, March 2016) and Ciocchini (Modeling Resistance
Instabilities of Set and Reset States in Phase Change Memory with Ge-Rich
GeSbTe, IEEE Transactions on Electron Devices 61, No. 6, June 2014).
Appeal Br. 15–16. Appellant notes that Gao does not qualify as prior art and
illustrates electrical measurements from 100 different memory cells in ten
different dies. Id. at 15. However, Appellant urges that Gao fails to disclose
a phase change material whose initial resistance is between the set and reset
resistances and whose initial state is at a lower potential energy than the set
and reset states. Id. Appellant likewise urges that Ciocchini also fails to
disclose a phase change material with either of these properties. Id. at 16.
Appellant asserts that Cheng, Figure 13, illustrates the bits counts as a
function of reset resistance for a memory cell array after the memory cells
are baked at 190°C for various lengths of time. Appeal Br. 16. Appellant,
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therefore, urges that the depicted “Rini” resistance is a reset resistance, not
an initial resistance between set and reset resistances. Id. Appellant also
asserts that Cheng teaches changing between set and rest states, not between
an initial state to set or reset states, by the application of energy. Id. at 17.
Appellant also contends that the Examiner fails to provide any support
for concluding that the recited drift property is an inherent property of Ge-
rich GST material. Appeal Br. 19. Appellant acknowledges that Ciocchini
discloses such drift for Ge-rich GST phase change material, but asserts that
the Examiner fails to explain how Ciocchini establishes that such drift
property is inherent to Ge-rich GST materials. Id. at 20. In this regard,
Ciocchini discloses drift resistance for both set and reset states increases
rather than converges to an initial state at room temperature. Id. Appellant
also asserts that Wong, Figure 5, shows relatively constant resistance in the
set state, though resistance in the reset state drifts away from the set
resistance over time for a conventional GST material. Id.
Further, in response to the Examiner’s position that each of these three
properties is inherent to Cheng’s Ge-rich GST phase change material
because it has the same chemical composition as Appellant’s (see Ans. 7–
11), Appellant argues that the Examiner fails to establish that these
properties necessarily flow from Cheng’s range of Ge-rich GST materials.
Reply Br. 9. According to Appellant, the differences between Cheng and the
GST phase change material are structural, rather than functional, limitations.
Id. at 9–10. Appellant also states that “claim 1 does not recite a memory
device with the same GST concentrations disclosed in Cheng.” Id. at 10.
Appellant’s arguments are not persuasive of reversible error. A
reference anticipates a claim if it “disclose[s] each and every element of the
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claimed invention, whether it does so explicitly or inherently.” In re Gleave,
560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation omitted).
Initially, we note that although claim 1 does not recite the composition
of the phase change material, the Specification teaches that a Ge-rich GST
phase change material, in particular, having a Ge atomic concentration
within a range from 30% to 70%, a Sb atomic concentration within a range
from 10% to 30%, and a Te atomic concentration within a range from 20%
to 50% has the three properties recited in claim 1. See Spec. ¶ 20; see also
id. ¶¶ 6, 7, 16, 17. In addition, claim 2, which depends from claim 1, recites
this same phase change material. Therefore, because there is no dispute that
Cheng teaches a Ge-rich phase change material having atomic
concentrations of Ge, Sb, and Te that are encompassed by the ranges
disclosed in the Specification and recited in claim 2, the Examiner has
established a reasonable basis for believing that Cheng’s Ge-rich phase
change material would necessarily or inherently possess the same properties
as recited in claim 1.
An examiner’s belief is reasonable where the prior art materials and
processing are so similar to those Appellant discloses that it appears that the
claimed properties would naturally result when conducting the process as
taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Where, as here, a claimed
product appears to be identical or substantially identical to a product
disclosed or suggested by the prior art, the burden is properly shifted to
Appellant to show that the prior art product does not necessarily or
inherently possess the properties recited in claim 1. See Spada, 911 F.2d at
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708; Best, 562 F.2d at 1254–56; cf. In re Crish, 393 F.3d 1253, 1259 (Fed.
Cir. 2004).
In this regard, we note that Appellant does not rely on Gao, Ciocchini,
or Wong to establish otherwise, nor does Appellant provide evidence or
persuasive technical reasoning as to why Cheng’s phase change material,
having the same composition as disclosed and claimed, would not have been
expected to inherently possess the same properties as recited in claim 1. In
re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of
patent law, a compound and all of its properties are inseparable; they are one
and the same thing.”).
Accordingly, we sustain the Examiner’s anticipation rejection based
on Cheng.
Rejection 4: Obviousness over Cheng in view of Khang
For this rejection, Appellant relies on the same reasons for claim 1,
which we did not find persuasive as discussed above. See Appeal Br. 22–23.
Accordingly, for the same reasons discussed above, we likewise sustain the
Examiner’s obviousness rejection based on Cheng and Khang.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–20 is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
4, 14 112(a) Enablement 4, 14
4, 14 112(b) Indefiniteness 4, 14
1–3, 5–9, 11–
13, 15–20
102(a)(1) Cheng 1–3, 5–9, 11–
13, 15–20

10 103 Cheng, Khang 10
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED