International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMay 28, 20202019004581 (P.T.A.B. May. 28, 2020) Copy Citation 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. 14/973,928 12/18/2015 Babar A. Khan FIS920150208US1 1652 29371 7590 05/28/2020 CANTOR COLBURN LLP - IBM FISHKILL 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER HO, HOANG QUAN TRAN ART UNIT PAPER NUMBER 2818 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BABAR A. KHAN, ARVIND KUMAR, and KMAL K. SIKKA Appeal 2019-004581 Application 14/973,928 Technology Center 2800 Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, 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 1–4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Br. 2. Appeal 2019-004581 Application 14/973,928 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to stacked multiwafer computing structures and communication of information and power to and from such structures. Spec. ¶¶ 1, 4–5. Claim 1 is the only independent claim on appeal and is illustrative. We reproduce claim 1 below with emphasis added to recitations at issue on appeal: 1. A computing device including: a wafer having a top layer and a curved outer edge; two or more shaped retainer elements each shaped to mate with and at least partially surround at least the top of the wafer and in electrical contact with one or more chips disposed on a top of the top layer; a holding device that mates with the retainer elements to provide power to one of the retainer elements and data to another one of the retainer elements; wherein the retainer elements are curvilinear. REJECTION AND REFERENCE On appeal, the Examiner maintains (Ans. 3) the rejection of claims 1– 4 under 35 U.S.C. § 102 as anticipated by Cloud et al., US 5,714,802, Feb. 3, 1998 (“Cloud”). 2 In this Decision, we refer to the Final Office Action dated July 13, 2018 (“Final Act.”), the Appeal Brief filed February 4, 2019 (“Appeal Br.”), the Examiner’s Answer dated March 21, 2019 (“Ans.”), and the Reply Brief filed May 21, 2019 (“Reply Br.”). Appeal 2019-004581 Application 14/973,928 3 OPINION The Examiner finds, among other things, that Cloud components 66 and 68 are retainer elements (as claim 1 recites). Final Act. 5 (citing Cloud). The Examiner finds that Cloud component 82 is a holding device “that mates with the retainer elements . . . to provide power to one of the retainer elements and data to another one of the retainer elements.” Id. Appellant argues that Cloud does not teach that its clamp 82 provides power to Cloud elements 66 and 68 (i.e., solder 66 and noble metal 68 (Cloud 6:20–24)). Appeal Br. 3–5. Appellant’s argument persuades us of Examiner error. Cloud teaches that clamp 82 has “conductive traces 86 to transfer the signal from the circuitry 40 to leads 80.” Cloud 7:10–11. Appellant concedes that Cloud’s clamp 82 carries data. Appeal Br. 4. Appellant emphasizes, however, that Cloud does not teach that clamp 82 is capable of providing power to one retainer element and data to another retainer element as claim 1 requires. Id. The Examiner provides a series of citations to Cloud to try to refute Appellant’s argument. Ans. 6–8. But these citations only relate to the Cloud device in a general sense. While the Examiner’s citations may generally teach that Cloud’s device requires power, the citations do not teach that clamp 82 provides a power signal to solder 66 or to noble metal 68. As Appellant argues, even if the Cloud device needs power to function, this does not necessarily mean that power must follow from clamp 82 to solder 66 or noble metal 68. Reply Br. 3–4. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 Appeal 2019-004581 Application 14/973,928 4 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citation and quotes omitted). Because the Examiner has not adequately established that Cloud teaches “a holding device that mates with the retainer elements to provide power to one of the retainer elements and data to another one of the retainer elements,” we do not sustain the Examiner’s rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4 102 Cloud 1–4 REVERSED Copy with citationCopy as parenthetical citation