10742055 (B.P.A.I. Jun. 30, 2009)

Ex Parte Artmann et al

Board of Patent Appeals and InterferencesJun 30, 2009

10742055 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte HANS ARTMANN, THORSTEN PANNEX, HANS-PETER TRAH, and FRANZ LAERMER ________________ Appeal 2009-001,024 Application 10/742,055 Technology Center 2800 ________________ Decided:1 July 1, 2009 ________________ Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and ELENI MANTIS MERCADER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-001,024 Application 10/742,055 This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of claim 18.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of this claim. INVENTION The invention is directed to a structural element that contains a porous silicon or porous silicon oxide with a cover layer. See Spec. 1-4. Claim 18 is representative of the invention and reproduced below: 18. A mass-flow sensor in a component for the thermal decoupling of sensor and/or actuator structures or a gas sensor, comprising: a structural element having a region of one of porous silicon or porous silicon oxide which has been obtained via polarization, the structural element including at least largely crystalline silicon having a crystal orientation that, starting from an edge area, differs from a <100> orientation, wherein: the region is at least regionally provided with a cover layer, at least one of sensor elements, actuator elements, and circuit- trace elements being regionally arranged directly on the cover layer. 2 Appellants elected to have claims 1-10 and 18 examined in response to the Requirement for Restriction/Election filed 1 September 2005. As a result, claims 11-17 were withdrawn from consideration. Claims 4, 8, and 11-17 were subsequently cancelled in an Amendment/Request for Reconsideration After a Non-Final Rejection filed 6 February 2006. Claims 2 and 7 were subsequently cancelled in an Amendment After Final filed 16 January 2007. Claims 1, 3, 5, 6, 9, and 10 have been indicated as allowable subject matter by the Examiner in the Advisory Action mailed 13 February 2007. 2 Appeal 2009-001,024 Application 10/742,055 REFERENCES Chan US 2003/0231304 A1 Dec. 18, 2003 (filed Jun. 12, 2002) REJECTION AT ISSUE The Examiner rejected claim 18 under 35 U.S.C. § 102(e) as being anticipated by Chan. ISSUES Rejection of claim 18 under 35 U.S.C. § 102(e) as being anticipated by Chan Claim 18 Appellants argue on pages 4-5 of the Appeal Brief and pages 1-2 of the Reply Brief that the Examiner’s rejection of claim 18 is in error. Appellants argue that Chan does not disclose porous silicon or porous silicon dioxide with a region that is at least partially provided with a cover layer. App. Br. 4; Reply Br. 1. In addition, Appellants argue that Chan does not disclose sensor elements, actuator elements, or circuit-trace elements located directly on the cover layer. App. Br. 4-5; Reply Br. 1-2. Thus, with respect to claim 18, Appellants’ contentions present us with two issues. (1) Have Appellants shown that the Examiner erred in finding that Chan teaches a porous silicon or porous silicon dioxide that is at least partially covered by a cover layer? (2) If so, have Appellants shown that the Examiner erred in finding that Chan teaches sensor elements, actuator elements, or circuit-trace elements located directly on the cover layer? 3 Appeal 2009-001,024 Application 10/742,055 FINDINGS OF FACT (FF) 1. Chan teaches a method and apparatus that are used for identifying and detecting analytes. ¶ [0009]. 2. The apparatus comprises a porous silicon substrate that can be coated with metal by any known method in the art. The metal coating can be gold, silver, platinum, copper, or aluminum. ¶ [0026] and 3, ¶ [0033]. 3. The porous silicon substrate may be incorporated into a larger system and/or apparatus. In certain circumstances, the substrate may be incorporated into a micro-electromechanical system (MEMS). ¶ [0043]. 4. The MEMS components comprise sensors, actuators, and electronics. These components may be manufactured on a common chip, comprising silicon based or equivalent substrate. ¶ [0043]. 5. The MEMS components may also be fabricated using known integrated circuit (IC) processes. For example, the components can be fabricated by etching away parts of the silicon wafer or by adding new structural layers to form the MEMS. ¶ [0044]. 4 Appeal 2009-001,024 Application 10/742,055 PRINCIPLES OF LAW Office personnel must rely on Appellants’ disclosure to properly determine the meaning of the terms used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc). “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). It is well settled that in order for the Examiner to establish a prima facie case of anticipation, each and every element of the claimed invention, arranged as required by the claim, must be found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477; Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458 (Fed. Cir. 1984). ANALYSIS Rejection of claim 18 under 35 U.S.C. § 102(e) as being anticipated by Chan Claim 18 Appellants’ contentions have not persuaded us that the Examiner’s rejection of claim 18 is in error. Independent claim 18 recites “a structural element having a region of one of porous silicon or porous silicon dioxide…wherein: the region is at least regionally provided with a cover 5 Appeal 2009-001,024 Application 10/742,055 layer, at least one of sensor elements, actuator elements, and circuit-trace elements being regionally arranged directly on the cover layer” (emphasis added). Thus, the terms “at least” do not preclude the region of porous silicon or porous silicon dioxide from having a cover layer that covers the entire region. In addition, the scope of the claim only requires a sensor element, an actuator element, or a circuit trace element located directly on the cover layer. Appellants argue that the Examiner, in the Final Office Action, indicated that oxidization of the porous silicon substrate creates a cover layer and now, in the Examiner’s Answer, the Examiner interprets the metal coating to be the cover layer. App. Br. 4; Reply Br. 1. It is true that the Examiner originally associated the silicon oxide formed on the surface of the porous silicon substrate with the cover layer. Ans. 4. However, upon further clarification in the Examiner’s Answer, the Examiner associated the metal coating as the cover layer. Ans. 4. Appellants have not provided any arguments or evidence to contradict this finding. Appellants merely argue that even if the silicon oxide is the cover layer, Chan does not teach oxidizing only a portion or layer to form a cover layer. App. Br. 4. We already addressed the argument with respect to the cover layer supra. We will now address Appellants’ general argument that Chan does not teach a cover layer that covers at least a region of the porous silicon or porous silicon dioxide. App. Br. 4; Reply Br. 1. Chan teaches a method and apparatus that are used for identifying and detecting analytes. FF 1. In one embodiment, the apparatus comprises a porous silicon substrate that can be coated with a metal by any known method in the art. FF 2. Since the metal is considered to be the cover layer, 6 Appeal 2009-001,024 Application 10/742,055 Chan does in fact teach a porous silicon substrate that is coated with a metal cover layer. Appellants additionally argue that Chan does not teach arranging a sensor element, actuator element, or circuit trace element directly on the cover layer. App. Br. 4; Reply Br. 1. Appellants argue that Chan teaches porous silicon substrate incorporated into a micro-electromechanical system (MEMS) and not on the cover layer. App. Br. 4-5; Reply Br. 2. We agree that Chan does teach that type of apparatus. However, we also find that Chan teaches the MEMS on the cover layer. Chan teaches a porous silicon substrate that is incorporated into a larger system and/or apparatus. FF 3. The substrate, in certain circumstances, is incorporated into MEMS. FF 3. The MEMS components, comprising sensors, actuators, and electronics may be manufactured on a common chip, comprising silicon based or equivalent substrate. FF 4. The MEMS electronic components can also be fabricated using integrated circuit (IC) processes. FF 5. In this respect, the components can be fabricated by etching away parts of the silicon wafer or by adding new structural layers to form the MEMS. FF 5. Therefore, after the porous silicon substrate receives its metal coating, i.e., cover layer, a new structural layer that includes the MEMS components (actuators and/or sensors) may be added on top of the metal layer. Thus, the actuators and/or sensors (of which the claim requires but one) is arranged directly on top of the cover layer. Accordingly, Appellants have not persuaded us that the Examiner erred in finding that Chan teaches a sensor element, actuator element, or circuit-trace element arranged directly on the cover layer. As such we sustain the Examiner’s rejection of claim 18. 7 Appeal 2009-001,024 Application 10/742,055 CONCLUSIONS OF LAW Under 35 U.S.C. § 102(e), Appellants have not shown that the Examiner erred in finding that Chan teaches a porous silicon or porous silicon dioxide that is at least partially covered by a cover layer. Under 35 U.S.C. § 102(e), Appellants have not shown that the Examiner erred in finding that Chan teaches sensor elements, actuator elements, or circuit-trace elements located directly on the cover layer. SUMMARY The Examiner’s rejection of claim 18 is affirmed. 8 Appeal 2009-001,024 Application 10/742,055 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED ELD KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 9