Ex Parte Daamen et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201713471609 (P.T.A.B. Feb. 22, 2017) 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. 13/471,609 05/15/2012 Roel Daamen 090922-0380 6045 31824 7590 02/24/2017 MCDERMOTT WILL & EMERY LLP The McDermott Building 500 North Capitol Street, N.W. Washington, DC 20001 EXAMINER YEMELYANOV, DMITRIY ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 02/24/2017 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): mweipdocket @ mwe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROEL DAAMEN, CASPER JUFFERMANS, JOSEPHUS FRANCISCUS ANTONIUS MARIA GUELEN, and ROBERTUS ANTONIUS MARIA WOLTERS Appeal 2015-006669 Application 13/471,609 Technology Center 2800 Before JAMES C. HOUSEL, GEORGE C. BEST, and BRIAN D. RANGE, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 5, 6, and 8 of Application 13/471,609 as anticipated under 35 U.S.C. § 102(e); rejected claims 1, 2, 5, 6, and 8 under 35 U.S.C. § 103(a) as obvious; and rejected claim 1 under 35 U.S.C. § 112, 2 as indefinite. Final Act. (September 30, 2014). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 NXP B.V. is identified as the real party in interest. Appeal Br. 1. Appeal 2015-006669 Application 13/471,609 BACKGROUND One common type of integrated circuit (IC) comprises a metallization stack that connects a plurality of circuit elements and a sensor. Spec. 1. Many of the various types of sensors—e.g., moisture sensors, CO2 sensors, O2 sensors,—have to be in communicative contact with the environment. Id. at 1-2. This increases the risk that the IC will be exposed to moisture and malfunction. Id. at 2. The ’609 Application describes an IC comprising a cost-effective sensor which is protected from moisture penetrating the metallization stack from the sensor. Id. at 3. Claim 1—the only independent claim on appeal—is representative of the ’609 Application’s claims and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An integrated circuit comprising: a substrate carrying a plurality of circuit elements; a metallization stack interconnecting said plurality of circuit elements, said metallization stack comprising a patterned upper metallization layer comprising at least one sensor electrode portion and a bond pad portion; a passivation stack covering the metallization stack, said passivation stack comprising a first trench exposing the at least one sensor electrode portion and a second trench exposing the bond pad portion, wherein said first trench is filled with a sensor active material; and a moisture barrier film between the metallization stack and the passivation stack, wherein the moisture barrier film is a chemical vapor deposited (CVD) film having high conformality and high resistance to cracking. Appeal Br. 13. 2 Appeal 2015-006669 Application 13/471,609 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claim 1 is rejected as indefinite pursuant to 35 U.S.C. § 112, 2. Final Act. 2. 2. Claims 1, 5, 6, and 8 are rejected under 35 U.S.C. § 102(e) as anticipated by Merz ’9122 as evidenced by Wang.3 Final Act. 3. 3. Claims 1, 2, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ponomarev4 and Merz ’211,5 as evidenced by Matsuzawa.6 Final Act. 6. 4. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Merz ’912 and Ponomarev. Final Act. 10. DISCUSSION I. Indefiniteness Rejection 1. Claim 1 requires, in relevant part, “a moisture barrier film between the metallization stack and the passivation stack, wherein the moisture barrier film is a chemical vapor deposited (CVD) film having high conformality and high resistance to cracking.” The Examiner concluded that this provision renders claim 1 indefinite. Final Act. 2. In particular, the Examiner determined that the limitation requiring the moisture barrier film 2 US 2011/0296912 Al, published December 8, 2011. 3 US 6,167,834 Bl, issued January 2, 2001. 4 US 2011/0018097 Al, published January 27, 2011. 5 US 2011/0012211 Al, published January 20, 2011. 6 US 2006/0064873 Al, published March 30, 2006. 3 Appeal 2015-006669 Application 13/471,609 to have “high conformality and high resistance to cracking” was unclear. The Examiner stated: It is unclear how high should “high conformality” be for the claim language to be met or how high should “resistance to cracking” be for the claim language to be met? Examiner further notes that the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Id.', see also Advisory Act. 2-3 (December 4, 2014). Appellants respond that the Examiner is mistaking claim breadth for indefiniteness and that a person of ordinary skill in the art would understand what is claimed when the claim language is interpreted in light of the ’609 Application’s Specification. Appeal Br. 3. We disagree, and we, therefore, affirm the Examiner’s rejection of claim 1 as indefinite. The use of relative terms does not automatically render a patent claim indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012). The Federal Circuit has approved of the use of terms such as “about,” “substantially,” or “approximately.” See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012); Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). In those cases, the relative term is used to provide some “wiggle room” around a readily ascertainable limit, such as a strict numerical limit. E.g., Deere & Co., 703 F.3d at 1359 (concluding “substantially planar” was definite in the context of the patent at issue); Ecolab, 264 F.3d at 1366-67 (concluding “substantially uniform” was definite in the context of the patent at issue); cf. Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217-18 (Fed. Cir. 1995) (discussing the use of “about” in the context of an infringement 4 Appeal 2015-006669 Application 13/471,609 determination). In this case, however, claim l’s language, viewed in light of the ’609 Application’s Specification does not provide a readily ascertainable baseline for the relative comparison called for by the use of the terms “high conformality” and “high resistance to cracking.” In particular, a person of ordinary skill in the art would not know whether the baseline for comparison is the average conformality and resistance to cracking of a film deposited by any deposition method, the conformality and resistance to cracking of films deposited by methods other than CVD, or the average conformality and resistance to cracking of CVD films in general. Nor does the explanation proffered by Appellants in their Reply Brief suffice to render claim 1 definite. In their Reply Brief, Appellants state their interpretation of the claim language: Appellant respectfully submits that one of ordinary skill in the art understands the claimed “a chemical vapor deposited (CVD) film having high conformality and high resistance to cracking” as a CVD film inherently featuring higher conformality and higher resistance to cracking than other types of films. Therefore, “high conformality and high resistance to cracking ” is understood by one of ordinary skill in the art as such degree of conformality and resistance to cracking that is commonly achieved by a CVD film. In particular, by specifying a CVD film, one of ordinary skill in the art directly and clearly obtains information about the necessary and sufficient degree of conformality and resistance to cracking according to the integrated circuit of claim 1. Consequently, beyond the knowledge of one of ordinary skill in the art, an explicit standard for ascertaining the requisite degree is not necessary in order to understand the scope of claimed integrated circuit. Reply Br. 3 (emphasis added). If we were to accept Appellants’ explanation, claim 1 would still be drafted in a way that creates problems. Appellants’ proffered claim construction makes the phrase “having high conformality and high resistance 5 Appeal 2015-006669 Application 13/471,609 to cracking” redundant. As we have explained, redundancy can also create indefiniteness. See, e.g., Ex parte Fina Tech., Inc., No. 2013-006005, 2015 WL 1938856 (PTAB April 20, 2015) (available at http://bit.ly/21ko8j9). The problem arises because “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also In re Wilder, 429 F.2d 447, 450 (CCPA 1970) (“[Ejvery limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines.”); In re Miller, 441 F.2d 689, 694 (CCPA 1971). In view of the foregoing, we affirm the rejection of claim 1 under 35 U.S.C. § 112, Tj 2 as indefinite. II. Prior Art Rejections In many cases, our affirmance of an indefmiteness rejection of the only independent claim on appeal would end our analysis because addressing prior art rejections under § 102 and § 103 would require undue and improper speculation. See In reAoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011); In re Steele, 305 F.2d 859, 862 (CCPA 1962). In this case, however, for the sake of judicial efficiency we will exercise our discretion to reach the prior art rejections despite the indefmiteness of claim 1. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991). Rejection 2. The Examiner rejected claims 1, 5, 6, and 8 as anticipated by Merz ’912 as evidenced by Wang. Final Act. 3. Appellants present substantive arguments for reversal of this rejection with respect to claim 1 only. Appeal Br. 5-6. Claims 5, 6, and 8 are alleged to be patentable solely based upon their dependence from an allowable base claim. 6 Appeal 2015-006669 Application 13/471,609 Id. at 7. Accordingly, we limit our discussion to claim 1. Claims 5, 6, and 8 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Appellants argue that the rejection of claim 1 should be reversed because Merz ’912 does not describe an IC comprising a moisture barrier film deposited by CVD techniques. Appeal Br. 5-6; Reply Br. 4-5. In particular, Appellants argue that the Examiner erred by concluding that the phrase “chemical vapor deposited (CVD) film” was a product-by-process limitation. See Appeal Br. 5 (citing Final Act. 4); Reply Br. 4 (citing Answer 3). Appellants argue that rather than being a product by process limitation, a person having ordinary skill in the art would have understood claim l’s reference to “a chemical vapor deposited (CVD) film” as referring to a specific thing. Appeal Br. 5. Because of this error, Appellants argue, the Examiner failed “to provide any evidence that films produced by such ‘other [deposition methods]’ result in a film being identical to a CVD film.” Reply Br. 4. Appellants further argue that “processes for depositing a thin film differing from CVD inevitably result in films having different properties than a CVD film, which commonly can be a reason for choosing a process differing from CVD.” Id. (emphasis added). We are not persuaded by Appellants’ argument for reversal of the rejection of claim 1 for two reasons. First, we agree with the Examiner that the phrase “chemical vapor deposited (CVD) film” is a product-by-process limitation. We conclude that a person having ordinary skill in the art at the time of the invention would have understood this phrase to mean a film that has been deposited by a CVD process. Second, assuming arguendo that the Examiner erred by concluding that a “chemical vapor deposited (CVD) film” is a product-by-process 7 Appeal 2015-006669 Application 13/471,609 limitation, that error would have been harmless. If this phrase is not a product-by-process limitation, its ordinary meaning would be “a film having the properties of a film deposited by a CVD process.” If we had adopted this claim interpretation, the Examiner could still require Appellants to demonstrate that the film described in Merz ’912 differed from the claimed CVD film. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“However, when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). The Examiner’s ability to impose this requirement on a patent applicant is appropriate because the PTO lacks the resources to perform the requisite testing in-house. In view of the foregoing, we affirm the Examiner’s rejection of claim 1 as anticipated by Merz ’912. Because we have affirmed the rejection of claim 1, we also affirm the rejection of claims 5, 6, and 8 as anticipated by Merz ’912. Rejection 3. The Examiner rejected claims 1, 2, 5, 6, and 8 as unpatentable over the combination of Ponomarev and Merz ’211 as evidenced by Matsuzawa. Final Act. 6. Appellants present substantive argument for reversal of this rejection only with respect to claim 1. Appeal Br. 8-10. Dependent claims 2, 5, 6, and 8 are alleged to be patentable solely by basis of their dependence from an allowable base claim. Id. at 10. We, therefore, limit our discussion to claim 1; claims 2, 5, 6, and 8 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that the rejection of claim 1 as unpatentable over the combination of Ponomarev and Merz ’211 as evidenced by Matsuzawa 8 Appeal 2015-006669 Application 13/471,609 should be reversed because it relies upon an erroneous factual finding. In particular, Appellants argue that Ponomarev does not describe a moisture barrier film. Appeal Br. 9. In rejecting claim 1, the Examiner found that Ponomarev describes an IC comprising a moisture barrier film (32) between a sensor active material (40) and a metallization stack (20). Final Act. 6 (discussing Ponomarev Fig. 4; 42). Appellants argue that “the Examiner has taken this excerpt from paragraph [0042] out of context, ignoring Ponomarev’s teaching of both acquiring water and then retaining that water.” Appeal Br. 9. We reproduce ^ 42 below: If required, the IC may further comprise a liquid barrier layer for protecting the metallization stack 20 and the circuit elements in the substrate 10 from liquid exposure, and in particular from water exposure. FIG. 4 shows an embodiment in which a liquid barrier layer 32 is present in between the metal portions 30. Such a barrier layer may be formed over the metallization stack 20 and subsequently patterned to form the holes in which the metal portions 30 are formed, after which the metal portions 30 may be formed in these patterned holes. In an alternative embodiment (not shown), the liquid barrier layer 32 extends over the metallization stack 20 such that the metal portions 30 are formed on top of the water barrier layer 32. In this embodiment, the water barrier layer 32 should have a high enough dielectric constant in case the measurement circuit 50 is formed in the substrate 10 to facilitate a conductive communication between the metallization stack 20 and the metal portions 30 and to prevent interference with a capacitance measurement of the liquid immersion sensor formed by the metal portions 30 and the portion of the liquid retention layer 40 separating these metal portions. Non-limiting examples of suitable materials for the water barrier layer 32 in this embodiment include silicon oxide, silicon nitride, silicon carbide and tantalum pentoxide materials. Ponomarev ^ 42. 9 Appeal 2015-006669 Application 13/471,609 As can be seen, Ponomarev’s ^ 42 discloses a moisture barrier layer. We, therefore, are not persuaded by Appellants’ argument7 and affirm the rejection of claim 1. Thus, we also affirm the rejection of claims 2, 5, 6, and 8. Rejection 4. The Examiner rejected claim 2 as unpatentable over the combination of Merz’912 and Ponomarev. Final Act. 10. Appellants’sole argument for reversal of this rejection is the dependence of claim 2 from an allowable base claim, i.e., claim 1. See Appeal Br. 11. Because we have affirmed the rejection of claim 1 as anticipated by Merz ’912, we also affirm the rejection of claim 2 as unpatentable over the combination of Merz ’912 and Ponomarev. CONCLUSION For the reasons set forth above, we (1) affirm the rejection of claim 1 as indefinite under 35 U.S.C. § 112, 2, (2) affirm the rejection of claims 1, 5, 6, and 8 as anticipated by Merz ’912, (3) affirm the rejection of claims 1, 2, 5, 6, and 8 as unpatentable over the combination of Ponomarev and Merz 7 In the Reply Brief, Appellants argue for the first time that there are “several differences[] between the integrated circuit of claim 1 and Ponomarev[] that have not been appreciated by the Office.” These arguments could have been, but were not presented in Appellants’ Appeal Brief. Under regulations governing appeals to the Board, a new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative); 37 C.F.R. §§ 41.37; 41.41. Because the record contains no such showing, we will not consider the new arguments in the Reply Brief. 10 Appeal 2015-006669 Application 13/471,609 ’211 as evidenced by Matsuzawa, and (4) affirm the rejection of claim 2 as unpatentable over the combination of Merz ’912 and Ponomarev. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 11 Copy with citationCopy as parenthetical citation