Ex Parte Biegelsen et al

Patent Trial and Appeal Board

Jul 31, 2017

12819022 (P.T.A.B. Jul. 31, 2017)

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.
12/819,022 06/18/2010 David K. Biegelsen 20090858-US-NP/8538P022 9096
81941 7590 08/01/2017
PARC -XEROX/B S TZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
CHIN, EDWARD
ART UNIT PAPER NUMBER
2813
MAIL DATE DELIVERY MODE
08/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID K. BIEGELSEN and RAJ B. APTE
Appeal 2016-005958
Application 12/819,022
Technology Center 2800
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—5 and 11—14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed June 18, 2010, the Final
Office Action mailed February 18, 2015 (“Final Act.”), the Appeal Brief
filed September 2, 2015 (“Br.”), and the Examiner’s Answer mailed March
15, 2016 (“Ans.”).
2 Appellants identify the real party in interest as Palo Alto Research Center
Incorporated. Br. 3.
Appeal 2016-005958
Application 12/819,022
The subject matter on appeal relates to thermal layers in
semiconductor devices. Spec. 11. Claim 1, reproduced below from the
Claim Appendix of the Appeal Brief, is illustrative of the claims on appeal.
1. A device comprising:
a plurality of blocks grown sequentially on each other, the
plurality of the blocks being interconnected by vertical vias filled
with thermally conducting material, wherein each of the blocks
comprises
a semiconductor layer being deposited on an insulating
layer below,
a thermally insulating layer being deposited on the
semiconductor layer below, and
a buried thermally conductive layer being deposited on the
thermally insulating layer below; and
a thermally conductive layer bonded to bottom or top of the
plurality of blocks as a ground plane or a heat extraction layer,
the thermally conductive layer having a high thermal
conductivity.
Br. 16 (Claim Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal.
Rejection 1: Claims 1—5 stand rejected under 35 U.S.C. § 102(b) as
anticipated over Tuominen et al. (US 8,076,586 B2, issued December 13,
2011) (“Tuominen”) (Final Act. 2—5); and
Rejection 2: Claims 9 and 11—14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tuominen (Final Act. 5—9).
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Appeal 2016-005958
Application 12/819,022
DISCUSSION
Rejection 1
Appellants present arguments directed to independent claim 1, and
dependent claim 2, and provide no additional argument as to claims 3—5.
Therefore, we focus our discussion below on claims 1 and 2 to resolve the
issues on appeal.
Claim 1
The Examiner finds that Tuominen’s Figure 11, reproduced below,
discloses a device as recited in Appellants’ claim 1. Final Act. 2—3.
Figure 11 depicts a cross-section of one electronic module, which includes
several installation bases on top of each other, and in which thermal
conductors are made around one micro-circuit.
The Examiner finds that the electronic module depicted in
Tuominen’s Figure 11 includes semiconductor layer 6 on insulating layer 5
below, thermally insulating layer 1 deposited on semiconductor layer 6
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Appeal 2016-005958
Application 12/819,022
below, and buried thermally conductive layer 19 deposited on thermally
insulating layer 1 below. Final Act. 3. The Examiner additionally finds that
Tuominen discloses thermally conductive layer 19 (between layers 1 and 32)
bonded to top of the plurality of blocks 1/6/19/32 as a ground plane or a heat
extraction layer, the thermally conductive layer having a high thermal
conductivity. Id.
Appellants argue that layer 1 in Tuominen is never deposited on
component 6. Br. 8. Thus, Tuominen fails to disclose “each of the blocks
comprises ... a thermally insulating layer being deposited on the
semiconductor layer below” as in Appellants’ claim 1. Id.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. The Examiner finds that Touminen’s Figure 6,
reproduced below, shows that insulating layer 1 is placed over
semiconductor layer 6 by forming a unified layer 1. See Touminen 5:37—40
(“layers 1[ and 11] ... are pressed with the aid of heat and pressure, in such
a way that the polymer (in the layers 1 and 11) forms a unified and tight
layer around the components 6 between the conductor layers 4 and 9.”).
Figure 6 depicts a cross section of certain layers of Tuominen’s electronic
module.
Appellants do not dispute these findings as set forth in the Answer.
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Appeal 2016-005958
Application 12/819,022
Appellants also argue that Tuominen teaches away from “[a] device
comprising: a plurality of blocks grown sequentially” because it does not
“describe ‘material growth of a monolithic structure.’” Br. 10 (emphasis
omitted).
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. First, the question whether a reference “teaches
away” from the invention is inapplicable to an anticipation analysis. In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974). In addition, as the Examiner
points out in the Answer (Ans. 3), claim 1 does not recite “‘material growth
of a monolithic structure.’” Thus, Appellants are arguing limitations not
recited in the claim (id.). In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“Many of appellant’s arguments fail from the outset because, as the
solicitor has pointed out, they are not based on limitations appearing in the
claims.”).
For the reasons discussed above, Appellants do not persuade us of
error in the Examiner’s anticipation rejection of representative independent
claim 1, or dependent claims 3—5, not separately argued with particularity.
Br. 6—12. Accordingly, we sustain the Examiner’s anticipation rejection of
claims 1 and 3—5.
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Appeal 2016-005958
Application 12/819,022
Claim 2
Claim 2, reproduced from the Claim Appendix of the Appeal Brief,
reads:
2. The device of claim 1 wherein
the insulating layer is an amorphous thermally insulating
substrate, wherein the semiconductor layer is patterned for
electrical interconnects, and
wherein the amorphous thermally insulating substrate is
different in composition from the thermally insulating layer.
Appellants argue that although Tuominen’s device includes multiple
occurrences of layer 1, the layers are made of the same material such that
they are not “different in composition,” and thus, the Examiner has not
established a prima facie case of anticipation as to claim 2. Br. 11.
As clarified in the Answer, the Examiner finds that the claimed
“thermally insulating layer” in claim 2 corresponds with Tuominen’s
adhesive 5 and the “amorphous thermally insulating layer” recited in claim 2
corresponds with Tuominen’s layer 1. Ans. 4; see also Tuominen’s Figure 6
(reproduced above). The Examiner finds that Tuominen discloses that
adhesive layer 5 is “different in composition” from insulating material
layer 1. Id. at 5 (citing Tuominen 4:27—35, disclosing that adhesive layer 5
is typically a heat-cured epoxy, and 5:15—20, disclosing that insulating
material layer 1 can be, for example, a pre-preg base, which is made from a
glass-fibre mat and b-state epoxy). Appellants do not dispute these findings
as set forth in the Answer. Thus, Appellants do not persuade us of a
reversible error in the Examiner’s anticipation rejection of claim 2.
Accordingly, we sustain the Examiner’s anticipation rejection of claim 2.
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Appeal 2016-005958
Application 12/819,022
Rejection 2
Appellants’ arguments regarding Rejection 2 are essentially the same
as the arguments discussed above with respect to Rejection 1. Br. 12—14.
Thus, we are not persuaded of reversible error in the Examiner’s
obviousness rejection of claims 9 and 11—14 for the same reasons as
discussed above with respect to Rejection 1. Accordingly, we sustain the
Examiner’s obviousness rejection of claims 9 and 11—14.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—5, 9, and
11—14 are affirmed.
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
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