Ex Parte Arnold et alDownload PDFPatent Trial and Appeal BoardJan 22, 201511736910 (P.T.A.B. Jan. 22, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RON ARNOLD, JOHN STEPHEN ATHERTON, NIGEL CAMERON, and MATTHEW FRANCIS O'KEEFE ____________ Appeal 2012-012374 Application 11/736,9101 Technology Center 2800 ____________ Before MATTHEW R. CLEMENTS, WESLEY B. DERRICK, and KIMBERLY J. McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3–13, 24, and 25. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is RFMD (UK) Limited, which is a subsidiary of RF Micro Devices Inc. App. Br. 1. Appeal 2012-012374 Application 11/736,910 2 BACKGROUND Appellants’ invention is directed to an apparatus comprising an electrically conductive track. See App. Br. 2, 12 (Claims App’x). Claim 1 is the only independent claim on appeal and is reproduced below. 1. An apparatus comprising: an electrically conducting bond pad; a semiconductor substrate; a dielectric layer sandwiched between the electrically conducting bond pad and the semiconductor substrate; and an electrically conducting resistor track disposed in a plane between the semiconductor substrate and the dielectric layer, such that the plane is about parallel to the electrically conducting bond pad, the electrically conducting resistor track comprises a plurality of bends, and the plurality of bends is beneath the electrically conducting bond pad. App. Br. 12 (Claim App’x). THE REJECTIONS R1. Claims 1, 4, 8, 9, 11, 13, 24, and 25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Segawa et al. (U.S. Patent 6,083,785, issued July 4, 2000). R2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Segawa. R3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Segawa and Watanabe (U.S. Publication 2005/0218478 A1, published Oct. 6, 2005). R4. Claims 6, 7, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Segawa and Nishitsuji (U.S. Patent 5,440,174, issued Aug. 8, 1995). R5. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being Appeal 2012-012374 Application 11/736,910 3 unpatentable over Segawa and Kudo (U.S. Patent 4,309,626, issued Jan. 5, 1982). ANALYSIS Claims 1, 4, 8, 9, 11, 24, and 252 Appellants argue the Examiner erred in finding independent claim 1 and dependent claims 4, 8, 9, 11, 24, and 25 anticipated by Segawa because the reference does not disclose an “electrically conducting resistor track compris[ing] a plurality of bends, and the plurality of bends is beneath the electrically conducting bond pad” as required by the claims. App. Br. 6–7, 12. In particular, Appellants assert that “beneath” means “fully covered” and that Segawa’s bends are not “beneath” the bond pad because they extend outside the edges of the bond pad. App. Br. 6–7. This argument is not persuasive. The claims do not preclude the bends from extending outside the edges of the bond pad. During prosecution, claims must be given their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). As “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. The Examiner’s construction is consistent with the Merriam-Webster definition of “beneath”3 as “in or to a lower position.” Appellants have not directed us to any language in the 2 Appellants omit dependent claim 13 from the claim listings in the Appeal Brief. App. Br. 6. Even assuming that Appellants intended to challenge dependent claim 13, the rejection is sustained for the same reasons as dependent claims 4, 9, 11, 24, and 25. 3 http://www.merriam-webster.com/dictionary/beneath (last accessed on January 13, 2015). Appeal 2012-012374 Application 11/736,910 4 Specification that supports construing the term “beneath” to mean “fully covered.” As such, Appellants have not persuaded us of Examiner reversible error. Claim 8 Appellants next argue that Examiner erred in rejecting claim 8 because Segawa does not teach a resistor track comprising a semiconductive material. App. Br. 7. This argument is not persuasive because the Examiner found, and Appellants have not rebutted, that resistor track 4a of Figs 5(e) and 6(c) is a semiconductor material. Ans. 5, citing Segawa Figs. 5(e), 6(c), col. 11:8–13, col. 13:45–63; Ans. 11–12. Segawa teaches that resistor film 4a is formed from polysilicon film 4 implanted with arsenic ions and then a resist film is formed on conductor film 4 and used as a mask in dry etching for patterning first conductor film 4 into resistor film 4a. Segawa col. 13:45–63. The Examiner found that it is well known in the art of semiconductors that a polysilicon material or film is the basic material of choice in semiconductor manufacturing and devices and that the resistor track 4a is a semiconductor material. Ans. 11–12. Appellants do not rebut this finding other than to argue that because the Examiner has not provided a definition of one of ordinary skill in the art, it is impossible to ascertain what would be reasonable to an undefined hypothetical person. App. Br. 7. This argument is not persuasive because the Appellants have not explained (1) why the references did not reflect an appropriate level of skill or (2) how the ultimate conclusion of obviousness was impacted by the manner in which skill level determination was avoided. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specifying a particular level of skill is not necessary where the prior art itself reflects an appropriate level); Custom Appeal 2012-012374 Application 11/736,910 5 Accessories v. Jeffrey-Allan Indus., 807 F.2d 955, 963 (Fed. Cir. 1986) (stating “it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error”). As such, Appellants have not persuaded us of Examiner error. Claim 5 Appellants argue the Examiner erred in rejecting claim 5 because the Examiner made no finding that the resistivity of the electrically conducting resistor track of Segawa fell within the claimed “order of magnitude less than resistivity of the semiconductor substrate.” App. Br. 7–8. This argument is not persuasive. The Examiner found that optimizing the resistivity of the resistor track would be the result of routine experimentation by one of ordinary skill in the art. Where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955) (claim reciting a temperature of between 40ºC and 80ºC and an acid concentration between 25% and 50% held to be prima facie obvious over a reference that disclosed a temperature of 100ºC and an acid concentration of 10%). Appellants have not provided any argument or evidence to challenge the Examiner’s finding. Nor have Appellants provided any evidence or argument that the claimed resistivity of the resistor track is critical or provided evidence of unexpected results arising from varied resistivity. As such, we are not persuaded the Examiner erred in rejecting claim 5. Claims 3, 6, 7, 10, and 12 Appellants assert that the Examiner erred in rejecting claims 3, 6, 7, Appeal 2012-012374 Application 11/736,910 6 10, and 12 because the Examiner has not defined the level of ordinary skill in the art. App. Br. 8–10. As explained above, this argument is not persuasive. Appellants also argue that the Examiner erred in rejecting claims 3, 6, 7, 10, and 12 because the Examiner has not provided any evidence to support its reason to combine the references. Id. We disagree. For each of these claims, the Examiner articulated a reason with rational underpinnings to modify the references. See Ans. 8–10. For example, with respect to claim 3, which recites “wherein the electrically conducting bond pad is a metal,” the Examiner found that it would have been obvious to combine the bond pad of Segawa with the bond pad of Watanabe, which is comprised of metal, so that initial accuracy, low temperature coefficient, and lower noise can be provided. Ans. 8. Appellants have not provided persuasive evidence to rebut these findings. Appellants also contend that Examiner erred in combining Watanabe with Segawa, alleging that if the Watanabe structure is substituted into Segawa, the fringe portions 4a3 would not be exposed and Segawa would not have the same control over the resistance of the fringe portion 4a3 and would therefore not work as intended. App. Br. 9. We disagree. Claim 3 limits the electrically conducting bond pad of claim 1 to be “a metal.” Segawa is silent as to whether the conducting bond pad is made of metal or not. Ans. 8, 12. Watanabe was cited for teaching that a bonding pad can comprise metal. Ans. 8, 12. The mere use of a metal material in the bonding pad does not render Segawa unsuitable for its intended purpose. For the foregoing reasons, we are unpersuaded of error and sustain the Examiner’s rejections. Appeal 2012-012374 Application 11/736,910 7 DECISION The Examiner’s decision rejecting claims 1, 4, 8, 9, 11, 13, 24, and 25 under 35 U.S.C. § 102 and claims 3, 5, 6, 7, 10, and 12 under 35 U.S.C. § 103(a) 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)(iv). AFFIRMED cdc Copy with citationCopy as parenthetical citation