Texas Instruments Incorporated et al.

Patent Trials and Appeals Board

Dec 1, 2020

2020001317 (P.T.A.B. Dec. 1, 2020)

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.
15/162,888 05/24/2016 Matthew David Romig TI-75681 5914
23494 7590 12/01/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
PAPE, ZACHARY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
12/01/2020 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW DAVID ROMIG, ROBERT CLAIR KELLER,
MING LI, and YIQI TANG
Appeal 2020-001317
Application 15/162,888
Technology Center 2800
Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed May 24, 2016 (“Spec.”); Final Office Action mailed March 8, 2019
(“Final Act.”); Advisory Action mailed May 31, 2019 (“Adv. Act.”); Appeal
Brief filed August 12, 2019 (“Appeal Br.”); and Examiner’s Answer mailed
October 2, 2019 (“Ans.”).
Appeal 2020-001317
Application 15/162,888

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21–27, 29–35, 37, and 38.
Appeal Br. 4–8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to an antenna for high-
frequency, wireless electronic circuits. Spec. ¶ 1. Claim 21, reproduced
below, is illustrative of the claimed subject matter (Appeal Br., Claims
Appendix 10):
21. An apparatus comprising:
a substrate;
at least one integrated circuit attached to the substrate;
an antenna attached to the at least one integrated circuit; and
a first heat spreader composed of a dielectric material attached to the
antenna.

Claim 33 is also independent and recites an apparatus having similar
recitations as recited in claim 21. Id. at 11.

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Texas Instruments Incorporated as the
real party in interest. Appeal Br. 3.
Appeal 2020-001317
Application 15/162,888

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kuo et al.
hereinafter “Kuo”
US 8,357,345 B1 January 22, 2013
Deem et al.
hereinafter “Deem”
US 2010/0211059 A1 August 19, 2010
REJECTIONS3
1. The Examiner rejected claims 21–23, 25–27, 29–35, 37, and 38
under 35 U.S.C. § 103 as unpatentable over Applicant’s
Admitted Prior Art (hereinafter “AAPA”), and Kuo. Final Act.
3–5.
2. The Examiner rejected claim 24 under 35 U.S.C. § 103 as
unpatentable over AAPA, Kuo, and Deem. Final Act. 6.

OPINION
Rejection 1
Appellant presents separate, but similar arguments with respect to
independent claims 21 and 33 subject to this rejection. See Appeal Br. 4–8.
We select claim 21 as representative for disposition of this rejection. 37
C.F.R. § 41.37(c)(1)(iv).

3 The Examiner indicated the rejection of claims 39 and 40 (see Final Act.
6–7) has been overcome as a result of those claims being cancelled.
Advisory Action mailed May 31, 2019 1 (Box 5).
Appeal 2020-001317
Application 15/162,888

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The Examiner’s Rejection
In rejecting claim 21 over AAPA and Kuo, the Examiner found
AAPA discloses an apparatus as recited in claim 21 with the exception of a
heat spreader that is comprised of a dielectric material. Final Act. 3; citing
AAPA, Spec. ¶ 6, Fig. 1C. The Examiner found Kuo discloses a heat
spreader made of aluminum nitride. Kuo, col. 1, ll. 31–40. The Examiner
determined it would have been obvious to have made the heat spreader of
AAPA out of aluminum nitride, because Kuo discloses such heat spreaders
have a high heat transfer coefficient, high insulation resistivity, excellent
mechanical strength, and vibration-resistance. Final Act. 3.

Appellant’s Contentions
Appellant contends Kuo is not analogous art. Appeal Br. 4–6. In
particular, Appellant contends Kuo discloses a method for removing oxygen
from aluminum nitride by carbon in an oven, which is not in the same field
of endeavor as an integrated circuit packaged electronic circuit with an
antenna used in a wireless application. Id. at 4–5. Appellant argues Kuo is
not reasonably pertinent because it does not address the same problem or
serve the same purpose as the device of claim 21. Id. at 5. Appellant argues
the LED device of Kuo does not have an antenna, and as such, Kuo does not
address the problem identified in the Specification of degradation of wireless
signals transmitted from an antenna when a heat spreader is attached to the
antenna. Id. Appellant argues the problems and improvements in an oven
with extremely high operating temperature disclosed in Kuo do not apply to
an electronic circuit, much less to the problem of degradation of wireless
Appeal 2020-001317
Application 15/162,888

5
signals transmitted from an antenna when a heat spreader is attached to the
antenna. Id. at 6.

Issue
Did Appellant demonstrate reversible error in the Examiner’s
determination that Kuo is analogous art?

Discussion
We are not persuaded by Appellant’s arguments.
Determining whether a reference is non-analogous art is a two-fold
inquiry. First, we must decide if the reference is within the field of the
inventor’s endeavor; if it is not, we proceed to determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir.
1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “‘A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.’” In re ICON Health and Fitness, 496 F.3d 1374,
1379–80 (Fed Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)).
In the instant case, we are not persuaded by Appellant’s argument that
AAPA and Kuo are from different fields of endeavor. In particular, Kuo
discloses LED devices that are used as backlights for cell phones, which
have heat dissipation issues. Kuo, col. 1, ll. 15–40. Appellant’s
Specification discloses wireless chips for mobile applications requiring heat
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Application 15/162,888

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dissipation. Spec. ¶¶ 1–3. Appellant has not sufficiently explained why
Kuo’s use of an oven in the method of producing the aluminum nitride heat
sinks disclosed therein (Kuo, col. 1, ll. 59–62), means that Kuo is in a
different field of endeavor. That is, Appellant’s argument compares a
method of making of a component in the prior art to an end use of an
assembled device in the Specification. Appellant has not sufficiently
explained the relevance of such a comparison where both Kuo and the
Specification involve mobile electronic devices.
We are also unpersuaded by Appellant’s argument that Kuo is not
reasonably pertinent to the problem faced by the inventor. Kuo discloses
that the aluminum nitride heat sink exhibits a high heat transfer coefficient, a
high insulation resistivity, an excellent mechanical strength, and is refractory
and vibration-resistant. Kuo, col. 1, ll. 31–35. Appellant has not sufficiently
explained why the properties of the aluminum nitride heat sink disclosed in
Kuo, in particular, a high heat transfer coefficient and high insulation
resistivity, would not have logically commended the inventor’s attention in
addressing heat dissipation and degradation of wireless signals transmitted
from an antenna array with a copper heat spreader bonded thereto. See Final
Act. 3; Ans. 4–5; Spec. ¶ 6.
Accordingly, we affirm the Examiner’s rejection of claim 21 as well
as claims 22, 23, 25–27, 29–35, 37, and 38.

Rejection 2
Appellant does not separately argue claim 24, which depends from
claim 21 and is the subject of Rejection 2. Appeal Br. 6. Accordingly, we
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Application 15/162,888

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affirm the Examiner’s rejection of claim 24 for similar reasons as discussed
above with respect to claim 21.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–23, 25–
27, 29–35,
37, 38
103 AAPA, Kuo 21–23, 25–
27, 29–35,
37, 38

24 103 AAPA, Kuo,
Deem
24
Overall
Outcome
21–27, 29–
35, 37, 38

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED