Infineon Technologies AGDownload PDFPatent Trials and Appeals BoardOct 26, 202014518013 - (D) (P.T.A.B. Oct. 26, 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. 14/518,013 10/20/2014 Thoralf Kautzsch INFAP620US 5600 51092 7590 10/26/2020 Eschweiler & Potashnik, LLC. Rosetta Center 629 Euclid Ave., Suite 1000 Cleveland, OH 44114 EXAMINER MAI, ANH D ART UNIT PAPER NUMBER 2829 NOTIFICATION DATE DELIVERY MODE 10/26/2020 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): docketing@eschweilerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THORALF KAUTZSCH Appeal 2019-006913 Application 14/518,013 Technology Center 2800 Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s August 16, 2018 final decision to reject claims 1, 3, 5, 9, 21, and 23 (“Final Act.”). Claims 2, 4, 6, 8, and 10–20 have been cancelled. Claims 7 and 22 have been withdrawn. 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(a). Appellant identifies the real party in interest as Infineon Technologies AG (Appeal Br. 1). Appeal 2019-006913 Application 14/518,013 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to an electronic device based on a single crystal semiconductor substrate (Abstract). In particular, the disclosure is directed to a micro-electro-mechanical system (MEMS), which combines electronic functionality with mechanical actions, and which can be used, inter alia, for accelerometers or energy harvesters in which movement of a suspended mass is converted into electrical energy (Spec. ¶ 2). The claimed invention is an electronic device containing a cavity 110, which is fully enclosed in a semiconductor substrate 100, as shown in FIG. 1 below: Fig. 1 schematically illustrates an electronic device according to an embodiment of the disclosure of the application on appeal. A movably suspended mass 120, which is part of the semiconductor substrate 100 is suspended in the cavity 100 (Spec. ¶¶ 5, 23). The claimed structure may be more easily understood by reference to a portion of FIG. 8, which is reproduced below with additional labeling of suspended mass 120 and cavity 110: A portion of FIG. 8 from the application on appeal shows cavity schematic view of the claimed structure. Appeal 2019-006913 Application 14/518,013 3 The claimed device also contains a specific arrangement of electrodes. Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 1. An electronic device, comprising: a single, unitary semiconductor substrate; a cavity embedded within the single, unitary semiconductor substrate, such that the single, unitary semiconductor substrate surrounds each surface of the cavity; a movably suspended mass defined in the single, unitary semiconductor substrate by one or more trenches extending from one side of the single, unitary semiconductor substrate to the cavity; a first electrode layer on the suspended mass; and a cover layer covering the suspended mass and including a second electrode layer arranged opposite to, and vertically above, the first electrode layer and spaced therefrom by a gap, wherein the first electrode layer includes a first set of comb like first electrode fingers; wherein the second electrode layer includes a second set of comb like second electrode fingers, wherein the first set of comb like electrode fingers comprises a first subset of first electrode fingers connected to a first voltage terminal and a second subset of first electrode fingers connected to a second, different voltage terminal, wherein the second set of comb like electrode fingers comprises a first subset of second electrode fingers operable to be charged according to a first polarity and a second subset of second electrode fingers operable to be charged according to a second polarity which is opposite to the first polarity, and wherein the first electrode layer comprises recesses separating electrode fingers of the first set of comb like electrode fingers, and wherein the recesses extend into the movable suspended mass. Appeal 2019-006913 Application 14/518,013 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Renna et al. US 8,101,448 B2 January 24, 2012 Mabuchi et al. US 8,212,450 B2 July 3, 2012 Altena et al., “Design, Modeling, Fabrication and Characterization of an Electret-Based MEMS Electrostatic Energy Harvester,” IEEE Transducers 2011, pp. 739–42. REJECTION Claims 1, 3, 5, 9, 21, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Altena, in view of Renna and Mabuchi. DISCUSSION The Examiner finds that Altena discloses each of the limitations of claim 1, except that Altena does not disclose that its semiconductor substrate is a unitary semiconductor substrate, or that the first and second electrode fingers comprise first and second subsets of electrode fingers (Final Act. 3). The Examiner further finds that Renna teaches an electronic device comprising a single unitary semiconductor substrate 20, a cavity 30a or 30d embedded with the single unitary semiconductor substrate so that it surrounds each surface of the cavity, and a movably suspended mass 38a or 38d defined by one or more trenches, as shown in FIG. 26B: Appeal 2019-006913 Application 14/518,013 5 Renna’s FIG. 26B shows a view of a portion of the semiconductor substrate during its manufacture. The Examiner determines that “it would have been obvious . . . to form the movably suspended mass of Altena in the single, unitary semiconductor substrate as taught by Renna for the same intended purpose of forming the suspended mass within a semiconductor substrate” (Final Act. 4). The Examiner further determines that the claimed electrode finger structure would have been obvious in view of Mabuchi’s teachings (Final Act. 5–6). Appellant argues, inter alia, that the cited art does not teach or suggest “a cavity embedded within a single unitary semiconductor substrate, such that the single unitary semiconductor surrounds each surface of the cavity” (Appeal Br. 5). In particular, Appellant argues that the claimed moveably suspended mass corresponds to the part of the semiconductor substrate which covers the cavity (Appeal Br. 5, citing Spec. ¶¶ 22, 23). Appellant further argues that the tops of the cavities in Altena and Renna are not part of the substrate and, therefore, neither reference teaches or suggests a single, unitary semiconductor substrate that surrounds each surface of the cavity (Appeal Br. 5–7). With regard to Altena, Appellant argues that the top of the cavity is defined by an electret layer, not the MEMS wafer, as shown in FIG. 1(b): Appeal 2019-006913 Application 14/518,013 6 Altena’s FIG. 1(b) shows a schematic illustration of the design of its energy harvester. Appellant’s argument regarding Altena’s structure is supported by the evidence, as shown above. The Examiner determines that the electret wafer in combination with the MEM wafer forms a “single semiconductor substrate” and, therefore, meets the terms of the claim (Ans. 4). However, we agree with Appellant that, in light of the disclosure of the Specification – which states that the movably suspended mass is a part of the semiconductor substrate (Spec. ¶ 23) – the entire semiconductor substrate which surrounds the cavity must be “unitary,” meaning that it comes from the same original materials. This construction is consistent with the disclosure in the Specification, as required when construing a claim term. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In view of this construction, Altena’s structure, in which the top of the cavity is bound by the electret wafer while the bottom is bound by the MEM wafer, does not meet the requirements of the claim. With regard to the disclosure of Renna, Appellant argues that the top of its cavity is defined by dielectric layer 52 and, therefore, the single, unitary semiconductor substrate does not surround each surface of the cavity (Appeal Br. 7). While this argument is persuasive with regards to whether the combination of dielectric layer 52 and substrate 20 would constitute a unitary, semiconductor substrate surrounding the cavity,2 the Examiner specifically finds that suspended dielectric membrane 38 corresponds to the 2 A dielectric layer is not a semiconductor, and thus dielectric layer 52 cannot combine to form a unitary, semiconductor substrate which surrounds each side of the cavity. Appeal 2019-006913 Application 14/518,013 7 claimed movably suspended mass (Ans. 5–6). However, as explained by Appellant, dielectric membrane 38 is completely oxidized and is, therefore, an insulator, and not a semiconductor (Reply Br. 3, citing Renna 7:7–9). Thus, Renna does not teach a cavity “embedded within [a] single, unitary semiconductor substrate such that the single, unitary semiconductor substrate surrounds each surface of the cavity” because the top of Renna’s cavity 30 is an insulator, not a semiconductor. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, the evidence of record does not support the Examiner’s determination that the cited art would have rendered obvious “a cavity embedded within the single, unitary semiconductor substrate, such that the single, unitary semiconductor substrate surrounds each surface of the cavity.” Accordingly, we do not sustain the rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 9, 21, 23 103 Altena, Renna, Mabuchi 1, 3, 5, 9, 21, 23 Appeal 2019-006913 Application 14/518,013 8 REVERSED Copy with citationCopy as parenthetical citation