Advanced Micro Devices, Inc.

Patent Trials and Appeals Board

Jul 31, 2020

2019004112 (P.T.A.B. Jul. 31, 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.
15/287,255 10/06/2016 Robert N. McLellan AMDI:325\HON 7775
16501 7590 07/31/2020
Timothy M. Honeycutt
Attorney at Law
37713 Parkway Oaks Ln.
Magnolia, TX 77355
EXAMINER
MOVVA, AMAR
ART UNIT PAPER NUMBER
2898
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
elizabethahoneycutt@earthlink.net
timhoney@sprynet.com
timhoneycutt@earthlink.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT N. McLELLAN
____________

Appeal 2019-004112
Application 15/287,255
Technology Center 2800
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request, filed July 23, 2020, for rehearing of
our Decision dated June 1, 2020.
Appellant argues that the Board applied an incorrect claim
interpretation procedure (Req. 2). Appellant contends that the Board
improperly applied an exclusion standard during claim interpretation (Req.
2). Appellant argues that our reviewing court rejected that exclusion
standard in In re Smith International, Inc., 871 F.3d 1375, 1382–83 (Fed.
Cir. 2017) (Req. 2–3). Appellant argues that the proper claim interpretation
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Application 15/287,255

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standard is the broadest reasonable interpretation consistent with the
Specification (Req. 3). Appellant contends that based on Appellant’s
Specification, reading the claimed organic circuit board on the prior art (i.e.,
Starkston) style semiconductor die with an organic layer is not consistent
with “what” and “how” the Inventor describes the invention (Req. 3).
On pages 3 to 4 of the Decision, the Board determined that
Appellant’s Specification does not provide a formal definition of the phrase
organic circuit board. Based on the fact that Appellants have not explicitly
defined the scope of organic circuit board, the Board determined that there
has been no express exclusion of a semiconductor board coated with an
organic layer (Dec. 3–4). Contrary to Appellant’s argument, the Board did
not stop there in the claim interpretation analysis. The Board further
determined that the paragraph 25 of the Specification describes the circuit
board 15 and discloses that resin and ceramic layers may be used to make
the circuit board (Dec. 4). The Board further determined that paragraph 29
of the Specification described that the circuit board configurations may
include “other types of laminations of insulating material” (Dec. 4).
Significantly, the Specification concludes with a disclosure that the specific
embodiments are examples and “it should be understood that the invention is
not intended to be limited to the particular forms disclosed” (Spec. ¶ 38).
The disclosure is broad and thus the interpretation of organic circuit board in
light of the Specification was given its broadest reasonable construction.
The Board’s claim interpretation analysis as a whole is based on the
meaning of organic circuit board consistent with the Specification and is
aligned to our reviewing court’s holding in In re Smith International. See In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
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(“[W]e look to the specification to see if it provides a definition for claim
terms, but otherwise apply a broad interpretation. As this court has
discussed, this methodology produces claims with only justifiable breadth.”).
Appellant argues that the Reply Brief is consistent with
37 CFR § 41.41 (Req. 4). Appellant contends that the Appeal Brief included
arguments against the Examiner’s claim interpretation and interpretation of
Starkston (Req. 4). Appellant contends that the argument on page 6 of the
Reply Brief citing paragraph 29 was merely a continuation of that argument
and was made in response to an argument in the Examiner’s Answer (Req.
4). Appellant contends that the Examiner raised for the first time on page 4
of the Answer the broadest reasonable interpretation standard which
permitted Appellant to respond with a new citation to paragraph 29 of the
Specification (Req. 5).
We are not persuaded by Appellant’s argument. Although the
Examiner may have used the phrase “broadest reasonable interpretation” for
the first time in the Answer, the Examiner applied this standard during the
entire examination process because broadest reasonable interpretation is the
only interpretation standard applied during patent application prosecution.
See, Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(“The Patent and Trademark Office (‘PTO’) determines the scope of claims
in patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”).
Accordingly, the Examiner applied the broadest reasonable interpretation
standard throughout prosecution and not for the first time in the Answer.
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Nevertheless, even if the Examiner only explicitly recited the broadest
reasonable interpretation in the Answer, Appellant’s citation to paragraph 29
in combination with paragraphs 22, 23, and 26 as showing a difference
among chips/dies as in Starkston and circuit boards (e.g., chiplets) as
claimed is not persuasive. Appellant identifies chiplets as being a type of
circuit board (Reply Br. 6). Chiplets are described in the Specification as
follows:
For example, the chiplet 50 may be used to provide large numbers of
electrical pathways between the semiconductor chip 20 and 25 as well
as electrical pathways to and from the semiconductor chips 20 and 25,
through the circuit board 15 and out to the I/O’s 45 if desired.
Spec. ¶ 24.
According to Appellant’s Specification a chiplet may be used to establish
electrical connections between various chips and structures on the circuit.
Similarly, Starkston’s interconnect 104 may include electrically conductive
members 106 disposed, placed or formed in the interconnect 104 (Starkston
¶¶ 13, 14, Fig. 1). In other words, Starkston’s organic coated die corresponds
to a chiplet or organic circuit board, not a chip as argued.
Appellant argues that if the argument made regarding paragraph 29 is
new to the prosecution, the more just procedure to acquire the Examiner’s
views on the subject matter of paragraph 29 would be to remand to the
Examiner rather than affirming and noting an untimely argument (Req. 6).
The Board has discretion in determining whether to remand a case for
consideration of a Reply Brief. See Manual of Patent Examining Procedure
(MPEP) §1211.01. That procedure is usually used when the Reply Brief has
not been considered at all, not for considering new, untimely arguments in a
Reply Brief. In fact, our rule 37 CFR 41.41(b)(2) specifies that “any
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argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer, . . . will not
be considered by the Board for the purposes of the present appeal, unless good
cause is shown.” Because we find that the argument to be untimely we did
not consider it, in accordance with 37 CFR § 41.41(b)(2). Our decision merely
explained one reason why it is important to make all arguments earlier in
prosecution, so that the Examiner may address that argument.
We adhere to our decision for the reasons discussed above.
Appellants’ rehearing request is denied.
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–8 103 Gu, Starkston 1–8

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–8 103 Gu, Starkston 1–8

DENIED