California Institute of Technology

Patent Trials and Appeals Board

Jan 12, 2021

2020000833 (P.T.A.B. Jan. 12, 2021)

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.
15/331,544 10/21/2016 Yu-Chong Tai 086544-1024484-020210US 6713
104488 7590 01/12/2021
California Institute of Tech / Kilpatrick Townsend
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LEE, AIDEN Y
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
01/12/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU-CHONG TAI, WEI WANG, and DONGYANG KANG
Appeal 2020-000833
Application 15/331,544
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 32–38, 40–50, 52, and 53.3

1 This Decision includes citations to the following documents: Specification
filed Oct. 21, 2016 (“Spec.”); Final Office Action dated Mar. 19, 2019
(“Final Act.”); Appeal Brief filed July 23, 2019 (“Appeal Br.”); Examiner’s
Answer dated Sept. 9, 2019 (“Ans.”); and Reply Brief filed Nov. 12, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as California
Institute of Technology. Appeal Br. 4.
3 We have jurisdiction under 35 U.S.C. § 6(b).

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Application 15/331,544

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We reverse.
CLAIMED SUBJECT MATTER
Claims 32 and 41, reproduced below, are illustrative of the claimed
subject matter:
32. A parylene deposition metering apparatus
comprising:
a base;
a removable cover configured to mate and seal with the
base to create an enclosed, core deposition chamber and define
an inside and an outside of the core deposition chamber, the
base and the cover configured to withstand an internal vacuum
pressure relative to the outside of at least 3.0 Pa; and
a conduit through a top of the cover and about a center of
the top of the cover, the conduit defined at least in part by a first
fixed portion of the cover and a second fixed portion of the
cover, the first fixed portion spaced apart from the second fixed
portion by a distance between 50 μm and 6000 μm, the conduit
having a lumen connecting the inside to the outside of the core
deposition chamber, the lumen having a length and a cross-
section, the cross-section having a width equal or smaller to the
distance between the first fixed portion and the second fixed
portion of the cover, the length being less than 140 times the
cross-section width.
Appeal Br. 31 (Claims App.) (emphases added).
41. The parylene deposition metering apparatus of
claim 32, wherein the base comprises a rigid, removable tray
that is opposite to the cover and that is configured to mate and
seal with the base and to retain a substrate inside the core
deposition chamber.
Id. at 32 (emphasis added). Claim 48, the only other independent claim on
appeal, recites “[a] parylene deposition system comprising . . . a core
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deposition chamber.” Id. at 34. The chamber includes features similar to
those recited in claim 32. See id.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Miller US 1,543,506 June 23, 1925
Baranow US 3,515,095 June 2, 1970
Foss US 4,572,846 Feb. 25, 1986
Cretzler US 5,393,103 Feb. 28, 1995
Hatem US 2008/0169427 A1 July 17, 2008

Rene P. von Metzen et al., Diffusion-Limited Deposition of Parylene C, 20
Journal of Microelectromechanical Systems, 239–250 (2011) (“Von
Metzen”).

Anup Ramachandran et al., A Study of Parylene C Polymer Deposition
Inside Microscale Gaps, 30 IEEE Transactions of Advanced Packaging
(2007) (“Ramachandran”).

REJECTIONS
1. Claims 32 and 41 are rejected under 35 U.S.C. § 112(b) as
indefinite.
2. Claims 32, 35–38, 40–44, 48, 52, and 53 are rejected under 35
U.S.C. § 103 as unpatentable over Foss in view of Von Metzen.
3. Claim 33 is rejected under 35 U.S.C. § 103 as unpatentable
over Foss and Von Metzen in view of AAPA (Applicant’s Admitted Prior
Art, Specification ¶ 14 (see Final Act. 21)).
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4. Claim 34 is rejected under 35 U.S.C. § 103 as unpatentable
over Foss and Von Metzen in view of Cretzler and Miller.
5. Claim 40 is rejected under 35 U.S.C. § 103 as unpatentable
over Foss and Von Metzen in view of Ramachandran.
6. Claim 45 is rejected under 35 U.S.C. § 103 as unpatentable
over Foss and Von Metzen in view of Baranow.
7. Claims 46, 47, 49, and 50 are rejected under 35 U.S.C. § 103 as
unpatentable over Foss, Von Metzen, and Baranow in view of Hatem.

OPINION
Rejection under 35 U.S.C. § 112
Claim 32 recites “a conduit through a top of the cover and about a
center of the top of the cover” and claim 41 recites “wherein the base
comprises a rigid, removable tray.” Appeal Br. 31–32 (emphases added).
The Examiner determines that the terms “about” and “rigid” are relative
terms that render the claims indefinite. Final Act. 6; Non-Final Office Action
dated Sept. 19, 2018, at 5.
General principles of claim construction apply when determining
indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332–
33 (Fed. Cir. 2010). “[T]he definiteness of the language employed must be
analyzed—not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.” In re Moore,
439 F.2d 1232, 1235 (CCPA 1971). “When a word of degree is used . . . the
patent’s specification [must] provide[] some standard for measuring that
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degree” to be definite. Seattle Box Co. v. Indus. Crating & Packing, Inc.,
731 F.2d 818, 826 (Fed. Cir. 1984).
Referring to Figure 2B, the Specification discloses an embodiment in
which cover 220 includes a single conduit 222 that “is through a top of the
cover 220 and proximate a center of the top of the cover 220 (e.g., located
about the center).” Spec. ¶ 87 (emphasis added). Referring to Figure 2C, the
Specification describes an embodiment in which cover 220’ includes a
plurality of conduits 222’ that are uniformly distributed across the top of
cover 220’. Id. ¶ 88. The distribution of conduits 222’ can be uniform or
random. Id. “[I]n one example, one of the conduits is centered at the top of
the cover 220, while the remaining conduits are uniformly distributed along
the center.” Id. The Specification discloses that “[t]he conduit is defined by a
tube,” id. ¶ 23, and claim 32 recites “the conduit having a lumen connecting
the inside to the outside of the core deposition chamber,” Appeal Br. 31.
We determine that the ordinary artisan, upon reviewing the written
description, the claim language, and the figures, would understand that the
term “about” in the claim 32 phrase “a conduit . . . about a center of the top
of the cover” means that the conduit surrounds the center point of the
cover’s top.
In describing the base, the Specification does not use a modifier other
than “rigid” or explicitly define the term “rigid.” However, in describing a
tube extending through the cover, the Specification discloses that it “can be
rigid, pliable, or elastic.” Spec. ¶ 115. Given this disclosure, we determine
that the Specification provides the requisite standard for measuring the
degree of firmness of the removable tray. In other words, the ordinary
artisan would understand the claim 41 term “rigid” as meaning that the tray
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is not pliable or elastic. The fact that the term “rigid” still may encompass
varying degrees of firmness, does not render the claim indefinite. See In re
Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated
with indefiniteness.”).
For the above reasons, we do not sustain the Examiner’s rejection of
claims 32 and 41 as indefinite.

Rejections under 35 U.S.C. § 103
Claims 32 and 48 recite “a removable cover configured to mate and
seal with [a] base to create an enclosed, core deposition chamber.” See
Appeal Br. 31, 34. As to the “removable cover,” the Examiner finds that
Foss discloses a cover (14) that seals a top portion of a metal container (15).
Final Act. 7 (citing Foss Fig. 1). The Examiner finds that the cover is
removable because it “is a separate part from the body of the container.” Id.
at 7–8. The Examiner further finds that “the cover would have been
removable, for the purpose of taking the electronic package 17 to be coated
in/out of the inner chamber.” Id. at 8.
The Appellant argues that even if the upper surface of Foss’s metal
container meets the claim requirement of a “cover,” the upper surface is not
removable because it is welded to the other surfaces of Foss’s container.
Appeal Br. 17. The Appellant disputes the Examiner’s finding that Foss’s
cover must be removable to enable removal of electronic components 17,
arguing that Foss does not “coat electronic components 17 by placing them
in and then taking them out from an inner chamber of the electronic package
14. Instead, the electronic components 17 are retained inside the electronic
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package 14 which is a hermetically sealed along the welds 16.” Appeal Br.
17–18; see also Reply Br. 7.
The Appellant’s arguments are persuasive. The Specification
distinguishes between a single part deposition chamber comprising an
integrally formed cover and base, and a two piece deposition chamber
comprising separable cover and base portions. Spec. ¶¶ 85, 106, 107. In the
latter embodiment, illustrated in Figure 3B, “cover 352 can be rigid and
removable from the base 350. For instance, the cover 352 releasably mates
with the base 350. The mating can include screw-top, twist-top, clamping,
taping, or other means for securely attaching the cover 352 to the base 350
and for sealing the resulting deposition chamber.” Id. ¶ 107.
Foss discloses that electronic “[p]ackage 14 typically comprises a
metal container 15 which has been partially sealed by welds 16. Electronic
components 17 are disposed within container 15 . . . .” Foss 2:15–18. A
sealable port in the container’s wall provides access to its interior. Id. at
2:19–21. Foss discloses sealing electronic package 14 in a deposition
chamber, and introducing a vapor into the deposition chamber, a portion of
which enters electronic package 14’s sealable port. Id. at 3:5–7. “As this
process proceeds, a void free continuous film is formed on all surfaces inside
package 14. Any small leaks which existed prior to deposition of such film,
such as in welds 16 or around connector 18 are sealed. As the film is
deposited, the material polymerizes.” Id. at 3:8–13.
The above disclosures in the Specification and in Foss support the
Appellant’s position that the parts of Foss’s electronic package 14 are not
separable and, therefore, Foss does not disclose a removable cover as
claimed.
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In the Answer, the Examiner responds that “the cover part of [Foss’s]
container can be mated with the side wall of the container by bolting with a
seal-ring, thus when bolting is used, the cover part clearly can be removable
from the container.” Ans. 18. As pointed out by the Appellant, the problem
with the Examiner’s position is that such modification would render Foss’s
invention unsatisfactory for its intended purpose of providing hermetically
sealed electronic packages. See Reply Br. 4. Moreover, given the lack of
support for the Examiner’s finding that electronic components 17 are
removed from container 15 after the vapor deposition process, the Examiner
has not explained sufficiently why the ordinary artisan would have modified
Foss’s container to include a removable cover.
Because the Examiner relies on the same, unsupported fact finding
and reasoning in rejecting all of the appealed claims, we do not sustain the
rejections under 35 U.S.C. § 103.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32, 41 112 Indefiniteness 32, 41
32, 35–38,
40–44, 48,
52, 53
103 Foss, Von Metzen 32, 35–38,
40–44, 48,
52, 53
33 103 Foss, Von Metzen,
AAPA
33
34 103 Foss, Von Metzen,
Cretzler, Miller
34
40 103 Foss, Von Metzen,
Ramachandran
40
45 103 Foss, Von Metzen,
Baranow
45
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
46, 47, 49,
50
103 Foss, Von Metzen,
Baranow, Hatem
46, 47, 49,
50
Overall
Outcome:

32–38, 40–
50, 52, 53

REVERSED