Ex Parte Arnold et al

Patent Trials and Appeals Board

Jan 22, 2015

11736910 - (D) (P.T.A.B. Jan. 22, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RON ARNOLD, JOHN STEPHEN ATHERTON,
NIGEL CAMERON, and MATTHEW FRANCIS O'KEEFE

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Appeal 2012-012374
Application 11/736,9101
Technology Center 2800
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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.

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Application 11/736,910

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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
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Application 11/736,910

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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).
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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
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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,
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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.
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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

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