Ex Parte Basavanhally et al

Board of Patent Appeals and Interferences

Jan 12, 2012

11444860 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAGESH R. BASAVANHALLY, CHRISTOPHER D. W.
JONES, and DAVID ANDREW RAMSEY
____________

Appeal 2009-015132
Application 11/444,860
Technology Center 2800
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Before MAHSHID D. SAADAT, ERIC S. FRAHM, and GREGORY J.
GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/444,860

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-20. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary independent claim 1 follows:
1. An apparatus, comprising:
a substrate having a top surface;
a housing having an inner surface, the top and inner surfaces being
located to form a cavity between the housing and the substrate;
a joint between the top surface and the housing;
a micro-electronic structure being exposed to the cavity and being
located between the substrate and housing;
metal electrical feedthroughs traversing the joint and being connected
to the micro-electronic structure;
a dielectric layer located over the substrate, portions of the electrical
feedthroughs being located in trenches in the dielectric layer; and
a capping dielectric layer located on both the electrical feedthroughs
and the dielectric layer, and located in-between the dielectric layer and the
housing,
wherein the metal electrical feedthroughs have a density along
part of the joint of at least 10 per millimeter.

The Examiner rejected claims 6-8, 12, 15, 16, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable based on Dove (US 6,809,931 B2) and
Yasumura (US 7,192,320 B2). (Ans. 3-7.)
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The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a) as
being unpatentable based on Dove, Yasumura, and Jacobs (US 4,811,082).
(Ans. 7-9.)
The Examiner rejected claims 2 and 4 under 35 U.S.C. § 103(a) as
being unpatentable based on Dove, Yasumura, Jacobs, and Steddom (US
2004/0080917 A1). (Ans. 10.)
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable based on Dove, Yasumura, Jacobs, Steddom, and Tatum (US
2004/0076205 A1). (Ans. 11.)
The Examiner rejected claims 9, 13, and 17 under 35 U.S.C. § 103(a)
as being unpatentable based on Dove, Yasumura, and Jacobs. (Ans. 11-13.)
The Examiner rejected claims 10, 11, 18, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable based on Dove, Yasumura, and Tatum. (Ans.
14-15.)
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being
unpatentable based on Dove, Yasumura, Jacobs, Tatum and Steddom.
(Ans. 15.)

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner establish that it is proper to combine Dove and
Yasumura?
2. Did the Examiner establish that the combination of Dove, Yasumura,
and Jacobs teaches “wherein the joint, housing, and substrate hermetically
seal the cavity,” as recited in claim 4?
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3. Did the Examiner establish that it is proper to combine Tatum with
Dove, Yasumura, Jacobs, and Steddom?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief) that the Examiner has erred. We disagree with
Appellants’ conclusion regarding the obviousness of claims 1-20. We adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 3-19) in response to the
Appellants’ Appeal Brief. We concur with the conclusion reached by the
Examiner. But we highlight and address specific findings and arguments
regarding the combination of Dove and Yasumura, the combination of
Tatum with Dove, Yasumura, Jacobs and Steddom, and the claimed
limitation that “the joint, housing, and substrate hermetically seal the
cavity.”
Issue 1 – Obviousness Rejection of Claim 1
Appellants contend that claim 1 is not obvious because the Examiner
did not show that it is proper to combine Dove and Yasumura. (App. Br. 8-
12.) Appellants argue that Dove teaches away from Yasumura’s channels
because “inadvertent gaps 165 or open spaces between his heat sink 115 and
conductive layer 145 (also serving a ground plane) provides an opening
through which electromagnetic signals can radiate.” (App. Br. 9, citing
Dove 3:64 – 4:1.) The cited portions of Dove, however, indicate that Dove’s
apparatus does indeed contain open spaces. (Dove 3:64-4:1.) Moreover,
Dove also teaches that these open spaces could be closed by attachment of a
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plate to prevent “radiation of the electromagnetic signals through the open
space … ” (Dove 4:1-7.) Accordingly, in a similar manner, any additional
open spaces that may be introduced into Dove’s apparatus by Yasumura’s
channels may also be closed. Thus, Dove does not teach away from the
channels or feedthroughs of the claimed invention.
Appellants also contend that “[t]here is no reasonable expectation of
success of introducing Yasumura’s electrical interconnections into Dove’s
apparatus.” (App. Br. 11-12.) In support of their contention, Appellants
provide a description of certain components of Dove’s apparatus and their
interconnections. (App. Br. 11-12; Reply Br. 3.) As explained by the
Examiner, however, a channel with a conductive lead, as taught by
Yasumura could be cut out of Dove’s apparatus. (Ans. 17.) And Appellants
did not explain why their description of Dove’s components and
interconnections indicates otherwise. (See App. Br. 11-12; Reply Br. 3.)
Appellants also contend that the Examiner did not cite any art to
support his finding that one would be motivated to include Yasumura’s
channels in Dove’s device to reduce its size and stabilize its integrity. (App.
Br. 12.) As explained by the Examiner, however, one could integrate the
conductors on the surface of Dove’s device into channels within the device
(Ans. 17.) It is reasonable to conclude that this integration of the conductors
from the surface of the device to channels within the device would at least
decrease its size because the conductors would no longer take up space on
the device’s surface. And Appellants did not explain why such an
integration, that decreases the size of the device, would not be desirable.
(See App. Br. 12.)
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For these reasons and the reasons expressed in the Examiner’s
Answer, we sustain the Examiner’s rejections of claim 1.
Issue 2 – Obviousness Rejection of Claim 4
Appellants also contend that Dove does not teach that “the joint,
housing, and substrate hermetically seal the cavity.” (App. Br. 13.) As
explained by the Examiner, however, Dove teaches the sealing of a metal
cover to a cavity using a conductive epoxy. (Ans. 18.) It is reasonable to
conclude that such a structure would secure against the entry of water vapor
and foreign particles. Accordingly, we find that the Examiner, giving the
claim its broadest reasonable meaning consistent with the Specification, In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), properly reasons that the
meal cover and conductive epoxy of Dove hermetically seal a cavity by
preventing entry of water vapor and foreign particles. We also note that
Appellants did not explain why the structure of Dove would not hermetically
seal the cavity. (See App. Br. 13-14.) .

Issue 3 – Obviousness Rejection of Claim 5
Appellants also argue that the Examiner “does not present reasoning
with rational underpinnings to explain why one of ordinary skill in the art
would replace, or add to, Dove’s integrated circuit, an array of Tatum’s
vertical cavity surface emitting lasers.” (App. Br. 14-15.) To support their
argument, Appellants provide a short description of Dove’s apparatus.
(App. Br. 15.) But coupling Tatum’s lasers to Dove’s apparatus would at
least add to Dove’s features the ability to communicate with optical devices.
(See e.g., Ans. 18.) And Appellants have not explained why their
description of Dove would dissuade one of ordinary skill in the art from
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adding lasers to Dove’s apparatus. (See App. Br. 15.) We will also sustain
the Examiner’s rejections of the remaining claims (i.e., claims 2-3, and 6-20)
because Appellants did not set forth any different and separate patentability
for those claims. (See App. Br. 12-19.)
For these reasons and the reasons expressed in the Examiner’s
Answer, we sustain the Examiner’s obviousness rejection of independent
claims 1 and 13 as well as the claims that depend from claims 1 and 13 (i.e.,
claims 2-12, 14-16, and 18-24) because Appellants did not set forth any
separate patentability arguments for those claims. (See App. Br. 9-10.)
Appellants also present arguments for the first time in the Reply Brief
that “a person of ordinary skill in the art would have no motivation to
combine Challenger with Speakman.” (Reply Br. 7-8.) Because Appellants
could have raised these arguments in the Appeal Brief to rebut the rejections
made in the Final Office Action and did not do so, they waived these
arguments, and therefore, we will not consider them. Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[T]he reply brief
[is not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).

DECISION
We affirm the Examiner’s decision rejecting claims 1-20 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
ELD