Ex Parte Teh et al

Patent Trial and Appeal Board

Nov 29, 2016

13539444 (P.T.A.B. Nov. 29, 2016)

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.
13/539,444 06/30/2012 Weng Hong Teh 42P44872 4178
45209 7590 12/01/2016
RT AKFT Y SOKOT OFF TAYT OR fr 7.AFMAN
EXAMINER
c/o CPA Global SYLVIA, CHRISTINA A
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2895
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
inteldocs_docketing @ cpaglobal. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENG HONG TEH, ZUOMING MING ZHAO, and DANNY R.
SINGH
Appeal 2015-004903
Application 13/539,444
Technology Center 2800
Before CHUNG K. PAK, BRIAN D. RANGE, and MICHAEL G.
McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 5, 7—10, 12—14, and 16—19
of Application 13/539,444 under 35 U.S.C. § 103(a) as obvious. Final Act.
2—7 (mailed Dec. 18, 2013). 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 Intel Corporation is identified as the real party in interest. Appeal Br. 3.
Appeal 2015-004903
Application 13/539,444
BACKGROUND
Application 13/539,444 describes certain packaging for
microelectromechanical systems (MEMS) devices and a method for making
same.
Claims 1 and 9 are representative of the pending claims and are
reproduced below:
1. An apparatus comprising:
a carrier comprising multiple build-up layers including
dielectric layers and conductive layers;
a die embedded in the carrier, the die comprising a first
side and an opposite second side comprising a device side with
contact points and lateral sidewalls defining a thickness of the
die, the carrier coupled to the second side of the die; and
at least one microelectromechanical system (MEMS)
device within the carrier, the at least one MEMS device
comprising a static portion and a free portion and an anti-stiction
material disposed between the static portion and the free portion.
9. A method comprising:
forming a first portion of a build-up carrier adjacent a
device side of a die, the first portion comprising at least one layer
of patterned conductive material coupled to a contact point of the
die;
forming a second portion of the build-up carrier on the first
portion, the second portion comprising at least one
microelectromechanical system (MEMS) device within the
second portion in an area pre-determined to be void of a
patterned layer of conductive material, the at least one MEMS
device comprising a static portion and a free portion; and
disposing an anti-stiction material between the static
portion and the free portion of the MEMS device.
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Application 13/539,444
Appeal Br. 12—13 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1,3,5, 7—10, 13—14, and 17—19 are rejected under 35
U.S.C. § 103(a) as obvious over Drews et al. (US 2010/0207216 Al, pub.
Aug. 19, 2010) (“Drews”) in view of Fillion et al. (US 2011/0299821 Al,
pub. Dec. 8, 2011) (“Fillion”), and further in view of Lutz et al. (US
6,930,367 B2, iss. Aug. 16, 2005) (“Lutz”) and Hammond et al. (US
8,314,467 Bl, iss. Nov. 20, 2012) (“Hammond”). Final Act. 3.
2. Claims 2, 12, and 16 are rejected under 35 U.S.C. § 103(a) as
obvious over Drews, in view of Fillion, Lutz, and Hammond, and further in
view of Chen et al. (US 7,580,174 B2, iss. Aug. 25, 2009) (“Chen”). Final
Act. 7.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 3, 5, 7—10, 13—14 and
17—19 as obvious over Drews, in view of Fillion, Lutz and Hammond.
Appellants allege several bases of error in the rejection. First, Appellants
argue that the Drews reference does not teach a “carrier.” Appeal Br. 8.
Second, Appellants assert that the Examiner has not stated a proper basis to
combine the teachings of Drews and Fillion. Id. at 9. Third, Appellants
contend that the Examiner has not stated a motivation to use an anti-stiction
material with the micro viscosimeter of Drews. Id.
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Application 13/539,444
Drews ’ Teaching of a “Carrier ”
Appellants argue that the Drews reference does not teach a “carrier.”
Appeal Br. 8. Rather, Appellants assert, Drews “appears analogous to a die,
not a carrier of a die.” Id. In the Answer, the Examiner notes that, “in the
Final Rejection, Drews et al. were relied upon for teaching a ‘carrier’ having
the claimed build-up layers and the MEMS within (see FR 3). Drews et al.
teach [a] device that has a series of build-up layers that ‘carry,’ inter alia,
the circuit component 102.” Answer 3 (footnote omitted).
The Appellants do not propose a definition of the term “carrier,” nor
does the Specification provide an explicit definition. The Specification
does, however, provide that “[cjarrier 120 includes multiple build-up layers
including dielectric layers 130 and conductive layers 140 (connected with
conductive vias or the like) that provide connectivity to the die (power,
ground, input/output, etc.).” Spec. 128. The Specification further provides
that “the carrier is made of multiple layers or levels of patterned conductive
material such as copper that are separated from adjacent layers by dielectric
or insulating material. It is appreciated that the patterning of conductive
layers separated by dielectric material offers space (area and volume) for
additional devices.” Spec. 131.
The Examiner asserts that the MEMS structure of Drews is a
“carrier.” The Examiner finds that such structure includes “multiple build­
up layers including dielectric layers [ ](106.5-8) and conductive layers
(106.1-4).” Final Act. 3; see also Drews 157. “[Djuring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). Giving the term “carrier” its broadest reasonable interpretation,
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Application 13/539,444
it is apparent that it encompasses the multilayer structure encompassing a
MEMS device (108) depicted in Figure 1 of Drews.
Combination of Drews and Fillion
For their second argument, Appellants assert that the Examiner has
not stated a proper basis to combine the teachings of Drews and Fillion.
Appeal Br. 9. The Examiner determined that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the carrier layer of
Drews to include the embedded [l]ogic device/die of Fillion for
the purpose of providing means for one or more logical
operations on one or more input signals.
Final Act. 4. In contesting such finding, Appellants assert that “[i]t is not clear
where a die would be positioned on such a substrate.” Appeal Br. 9.
A preponderance of the evidence supports the Examiner’s finding that
there is “sufficient guidance to a person having ordinary skill in the art at the
time of the invention to place the die within the carrier with a reasonable
expectation of success.” Answer 3^4. Further, it is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements. In re Etter, 756
F.2d 852, 859 (Fed. Cir. 1985) (enbanc) (“Etter’s assertions that Azure
cannot be incorporated in Ambrosio are basically irrelevant, the criterion
being not whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review”). Accordingly, Appellants’
argument regarding the positioning of the die is not persuasive.
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Appellants further assert that there is no reason to combine the die of
Fillion because “active region 118 associated with the substrate of Drews
can presumably achieve the objective of providing logical operations or
input signals.” Appeal Br. 9. In response, the Examiner provides as
follows:
It seems that if Drews et al. active region were purposed for logic
operations, as Appellants appear to assert, a person having
ordinary skill in the art at the time of the invention would have
also appreciated the benefit of a completed logic die having
functionality to operate in tandem with the Drews et al. MEMS
device. The combination provides a package that would allow
the end user the capability of taking the MEMs sensor data, and
through the logic die of Fillion provide means to manipulate and
control the sensor data.
Answer 5. That is, the known die of Fillion could be substituted for
the active region of Drews. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution
of one element for another known in the field, the combination must
do more than yield a predictable result.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007), citing U.S. v. Adams, 383 U.S. 39, 50-
51 (1966). Here, there is no allegation that anything more than a
predictable result is achieved. Accordingly, we find that the
Appellants have not shown error in the Examiner’s combination of the
teachings of Drews and Fillion.
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Motivation to Use an Anti-Stiction Material
Appellants further contend that the Examiner has not stated a
motivation to use an anti-stiction material with the microviscosimeter of
Drews. Appeal Br. 9.
The Examiner found as follows:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the microelectro­
mechanical switching device of Hammond to provide anti-
stiction material to all active members of the mechanical
structures; in order to “minimize, overcome and/or avoid the
debilitating effects of stiction . . .
Final Action 4—5; see also Answer at 7 (“the ground of rejection involves a
substitution of the Hammond et al. MEMS device in place of Drews et al.
MEMS device”).
That is, the Examiner found that one of ordinary skill in the art would
be motivated to use an anti-stiction material with the device of Hammond,
while the Appellants argue that there is no motivation to use an anti-stiction
material with the device of Drews. In their Reply Brief, Appellants assert
that their argument regarding Drews is equally applicable to Hammond: “the
MEMs device of Hammond would function similarly to the device of
Drews.” Reply Br. 2—3 (emphases omitted). We do not find this persuasive.
Rather, we adopt the Examiner’s finding that the switch of Hammond (rather
than the micro viscosimeter of Drews) “must be able to not just make
contact, but also release, or deflect. ... As such, an anti-stiction material
would have been recognized by a person having ordinary skill in the art as
beneficial in the Hammond et al. MEMS device as well.” Answer 8.
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Accordingly, Appellants have not identified harmful error in the
Examiner’s finding regarding the motivation of one of ordinary skill in the
art to use an anti-stiction material with the MEMS device of Hammond.
Claims 9 and 13
The Appellants assert that the Examiner erred in rejecting claims 9
and 13. With regard to claim 9, they assert that “[tjhere is no indication of a
possible location for a die with the microviscosimeter [of Drews]” (Appeal
Br. 10), and that “[t]he asserted combination does not describe forming a
carrier adjacent a die and a MEMS device within a carrier” (id.).
This essentially reiterates Appellants’ prior argument regarding the
combination of Drews and Fillion. As above, a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements. Etter, 756 F.2d at 859. Further,
the Examiner specifically finds that Drews teaches a carrier including a
MEMS device and “Fillion discloses a first portion [of a build-up carrier] is
adjacent a device side of a die (40), in the lower portion of a carrier (37).”
Final Act. 5—6. Accordingly, Appellants have failed to show error in the
rejection of claim 9.
With regard to claim 13, Appellants repeat certain arguments made in
regard to claim 1, and further assert that “Drews does not specifically
describe a package so the combination of references do not describe a die
and MEMS device in a package or carrier.” Appeal Br. 10 (emphasis
omitted). In doing so, Appellants do not offer a definition of “package” nor
respond to the Examiner’s finding, in the Answer, that “[t]he combination
provides a package that would allow the end user the capability of taking the
MEMs sensor data, and through the logic die of Fillion provide means to
manipulate and control the sensor data.” Answer 5. We further note the
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Application 13/539,444
statement in the Specification that “[microelectronic devices, including
MEMS devices, are typically contained in a package that allows a
connection to another device” (Spec. 1 5), suggesting that it is well known to
include a MEMS device within a package.
Accordingly, Appellants have not identified harmful error in the
Examiner’s finding or determination in this regard.
Rejection 2. The Examiner rejected claims 2, 12, and 16 as obvious
over Drews, in view of Fillion, Lutz, and Hammond, and further in view of
Chen. Appellants assert that these claims are not obvious at least for the
reasons stated in regard to the claims from which they depend, discussed
supra. Appeal Br. 11. Appellants further assert that one of skill in the art
would not be motivated to incorporate the teaching of Chen to use a
dielectric as an anti-stiction material. Id.; see also Final Act. 7.
Specifically, Appellants assert that one of ordinary skill in the art would not
be motivated to use an anti-stiction material with the micro viscosimeter of
Drews. As discussed above, the Rejection does not posit a combination that
includes the micro viscosimeter of Drews. Rather, the combination includes
the MEMS device of Hammond. Answer 7—8.
Accordingly, as with Appellants’ argument regarding the teaching of
the use of anti-stiction material of Lutz (Appeal Br. 9), the present argument
fails to identify harmful error by the Examiner.
CONCLUSION
The rejections of claims 1—3, 5, 7—10, 12—14, and 16—19 of
Application 13/539,444 under 35 U.S.C. § 103(a) as obvious are affirmed.
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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
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