Boozarjomehr Faraji et al.

Patent Trials and Appeals Board

Sep 28, 2020

13097399 - (D) (P.T.A.B. Sep. 28, 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.
13/097,399 04/29/2011 Boozarjomehr Faraji S611-USA 6449
28284 7590 09/28/2020
SECOND SIGHT MEDICAL PRODUCTS, INC.
12744 SAN FERNANDO ROAD
Suite 400
SYLMAR, CA 91342
EXAMINER
ANTISKAY, BRIAN MICHAEL
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
MMARSH@2-SIGHT.COM
SCOTTD@2-SIGHT.COM
revans@2-SIGHT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOOZARJOMEHR FARAJI, ROBERT J. GREENBERG,
JAMES S. LITTLE, JERRY OK, NEIL HAMILTON TALBOT, and
DAVID DAOMIN ZHOU
Appeal 2020-001516
Application 13/097,399
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 24, and 25.2 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

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 Second
Sight Medical Products, Inc. Appeal Br. 1.
2 Claims 2–10 have been canceled, and claims 11–23 have been withdrawn
from consideration. Amdt. (Feb. 19, 2019); Final Act. 1 (Office Action
Summary).
Appeal 2020-001516
Application 13/097,399

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “an improved method for
attaching a flexible circuit, such as attaching an electrode array to an
implantable hermetic package, as for packaging electronics.” Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An implantable device comprising:
a hermetic package enclosing electronics having a set of
hermetic vias through the hermetic package, a first set of
platinum electrical contact pads on a first surface of the
hermetic package, and traces connecting the first set of
platinum electrical contact pads to the set of hermetic vias
through the hermetic package;
a flexible circuit including a second set of platinum
electrical contact pads on a second surface of the flexible circuit
aligned with said first set of contact pads;
a roughened fractal platinum gray surface electroplated
on, and extending from, a platinum surface, beyond at least one
platinum electrical contact pad of at least one of said first set of
platinum electrical contact pads or said second set of platinum
electrical contact pads, the roughened fractal platinum gray
surface having a critical load strength greater than
60 millinewtons; conductive adhesive interlocking with the
roughened fractal surface extending from the platinum surface
to engage the conductive adhesive between said first set of
platinum electrical contact pads and said second set of platinum
electrical contact pads;
wherein the roughened fractal platinum gray surface
improves physical and electrical contact between said at least
one platinum electrical contact pad and the conductive
adhesive;
the first surface or second surface being roughened to
improve adhesion; and
nonconductive adhesive underfill between said hermetic
package and said flexible circuit around said conductive
adhesive.
Appeal 2020-001516
Application 13/097,399

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mishra US 5,826,586 Oct. 27, 1998
Egitto US 6,613,184 B1 Sept. 2, 2003
Zhou US 2003/0192784 A1 Oct. 16, 2003
Greenberg US 2007/0005112 Al Jan. 4, 2007
REJECTION
Claims 1, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Greenberg, Zhou, Egitto, and Mishra.
OPINION
Appellant argues against the rejection without specifically referencing
any particular claims. See Appeal Br. 3–7. We decide this appeal on the
basis of independent claim 1, and dependent claims 24 and 25 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select
a single claim to decide the appeal as to a single ground of rejection of a
group of claims argued together).
The Examiner finds that Greenberg discloses an implantable device
substantially as recited in claim 1, but that Greenberg “does not specifically
disclose a roughened surface on the contact pads, the surfaces that contact
the conductive adhesive are roughened, or that the first surface or second
surface is roughened to improve adhesion.” Final Act. 3. The Examiner
finds that Zhou teaches a roughened fractal surface with platinum gray
electroplated on and extending from a platinum surface beyond a contact
pad. Id. at 3–4. The Examiner determines it would have been obvious to
create a roughened surface as taught by Zhou on the platinum contact pads
Appeal 2020-001516
Application 13/097,399

4
of Greenberg in order to increase the contact area of the contact pads without
increasing their size. Id. at 4.
Relying on Egitto’s teaching that it was a common practice in the art
to roughen metal surfaces to enhance adhesion between the metal and
polymer adhesive systems, the Examiner determines it would have been
obvious to use the roughened surface of the combination of Greenberg and
Zhou to allow for better surface adhesion of the contact pads to the adhesive
due to the increase in surface area. See Final Act. 4. The Examiner finds
that “due to the material nature of the roughened surface of Zhou as well as
Egitto, the material would have inherently interlocked with the adhesive as
the protruding fractal surface would have random gaps between the highest
peaks and by extension would have adhesive fill said gaps even if only on
the micron scale.” Id. The Examiner explains that “[t]he resultant
combination of Greenberg, Zhou, and Egitto would have included a set of
electrical contact pads electrically connected by a conductive adhesive (of
Greenberg) with contacts including roughened platinum gr[a]y on top of a
platinum surface (of Zhou) via the interlocking conductive adhesive (of
Egitto).” Id. at 4–5.
The Examiner finds that Mishra teaches roughening outer surfaces of
a medical implant to improve adhesion. Final Act. 5. The Examiner
determines it would have been obvious to roughen the first surface of the
housing (hermetic package) or the second surface of the flexible substrate to
enhance adhesion. Final Act. 5.
Appellant emphasizes that the limitation that “a roughened fractal
platinum gray surface is electroplated on, and extending from, a platinum
surface” is a structural limitation. Appeal Br. 5. Be that as it may, this
Appeal 2020-001516
Application 13/097,399

5
limitation does not distinguish over the structure resulting from the
combination of Greenberg, Zhou, Egitto, and Mishra set forth in the
rejection. Zhou’s roughening process, which the Examiner proposes to
apply to Greenberg’s platinum contact pads, is an additive process of
electroplating a surface coating of platinum gray onto a platinum surface,
which results in a roughened fractal platinum gray surface extending from
the platinum surface. See Zhou ¶¶ 12, 33.
Appellant argues that Zhou gives no indication “that platinum gray
would be a superior material to interlock with an adhesive or any other
physical structure.” Appeal Br. 5. According to Appellant, the use of
platinum gray “for an electrode to increase capacitance and improve charge
injection capability,” as taught by Zhou, “does not render obvious the use of
platinum gr[a]y in a structure to create a physical interconnection with a
conductive adhesive.” Id.
This line of argument is not persuasive. Zhou teaches that the “rough
and porous fractal structure” of the platinum gray surface coating “increases
the electrochemically active surface area of the platinum surface” without
increasing the size of the electrode, thereby improving the ability of the
electrode to transfer current. Zhou ¶¶ 6, 27. Greenberg’s platinum contact
pads (contacts 222 or bond pads 232) transfer current between rigid
integrated circuit 244 and flexible circuit 218 through conductive adhesive
281. See Greenberg ¶ 54; Fig. 6. Thus, the benefit of increased surface area
afforded by the electroplated platinum gray surface coating taught by Zhou
would likewise be applicable to Greenberg’s contact pads. This alone would
have provided ample incentive to a person having ordinary skill in the art to
electroplate a platinum gray coating on Greenberg’s contact pads. The fact
Appeal 2020-001516
Application 13/097,399

6
that Appellant may have identified an additional benefit to providing such a
coating does not nullify the obviousness of doing so. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007). “Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining elements in the manner claimed.” Id. The reason to
modify a reference may often prompt a person of ordinary skill in the art to
do what the inventors have done, but for a different purpose or to solve a
different problem. It is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). As a
rule, unrecognized advantages that flow naturally from structure otherwise
obvious from the teachings of the prior art do not render the obvious
structure patentable. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Moreover, the Examiner cites Egitto as evidence that roughening of
surfaces was a known technique for enhancing adhesion between metals and
polymer adhesives. Final Act. 4; see Egitto 1:50–53. Appellant concedes
that the “simple fact [that a rough surface is better for use with an adhesive]
is known in the art.” Reply Br. 3. Thus, considering the known advantages
of a roughened surface formed by an electroplated platinum gray coating
with respect to improved electrical contact, as taught by Zhou, and the
known advantages of a roughened metal surface formed in a manner that
does not produce a thick oxide layer with respect to improved adhesion with
Appeal 2020-001516
Application 13/097,399

7
an electrically conductive adhesive, as taught by Egitto (see Egitto 1:50–58),
a person having ordinary skill in the art would have had a reasonable
expectation of success in applying Zhou’s platinum gray electroplating
technique to Greenberg’s platinum contact pads.
Appellant contends that “Egitto teaches that roughening is
inadequate” for interconnecting with adhesive. Reply Br. 3. This
mischaracterizes what Egitto teaches. Egitto teaches that “when the bond
must be electrically conductive, treatments that improve adhesion by
producing a thick oxide layer, such as phosphoric acid or chromic acid
anodization, are not suitable because of the poor electrical properties of the
thick oxide layers.” Egitto 1:54–58 (emphasis added). This teaching does
not apply to roughening an electrode (or contact pad) by electroplating a
platinum gray coating onto the electrode or contact pad surface, as taught by
Zhou. Zhou’s platinum gray electroplating process is an additive process in
which the workpiece (the electrode) acts as a cathode. Further, as discussed
above, Zhou teaches that such a surface provides a good electrical interface.
In contrast, the anodization treatments that Egitto characterizes as unsuitable
when the bond must be electrically conductive are subtractive processes in
which the workpiece acts as an anode.
Finally, Appellant argues that, “[e]ven assuming a seamless
combination of all four references, the combination does not teach a
structure extending from a bond pad to interlock with an adhesive,” and that
“nothing in the prior art teaches the motivation for the present invention,
which is to focus an improved biocompatible bond.” Appeal Br. 6. This
argument appears to be merely a re-packaging of the arguments discussed
above and, for the same reasons, is not persuasive.
Appeal 2020-001516
Application 13/097,399

8
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1 as unpatentable over Greenberg, Zhou, Egitto, and
Mishra. Accordingly, we sustain the rejection of claim 1, and of claims 24
and 25, which fall with claim 1, as unpatentable over Greenberg, Zhou,
Egitto, and Mishra.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 24, 25 103(a) Greenberg, Zhou,
Egitto, Mishra
1, 24, 25

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