Ex Parte Den Dekker et al

Patent Trial and Appeal Board

Jul 29, 2013

11579679 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ARNOLDUS DEN DEKKER,
JOHANNES FREDERIK DIJKHUIS,
NICOLAS JONATHAN PULSFORD,
JOZEF THOMAS MARTINUS VAN BEEK, FREDDY ROOZEBOOM,
ANTONIUS LUCIEN KEMMEREN, JOHAN HENDRIK KLOOTWIJK,
and MAARTEN DIRK-JOHAN NOLLEN
____________________

Appeal 2011-002767
Application 11/579,679
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002767
Application 11/579,679

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 12. Claims 11 and 14 have been canceled. Claim 13 has
been objected to as containing allowable subject matter, and allowable if
rewritten to contain all of the features recited in independent claim 1 from
which it depends (Final Rej. 10). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:
1. An electronic device comprising a network of at least
one thin-film capacitor and at least one inductor on a first side
of a substrate of a semiconductor material, the substrate having
a resistivity sufficiently high to limit electrical losses of the
inductor and being provided with an electrically insulating
surface layer on its first side; wherein a first and a second
lateral pin diode are defined in the substrate, each of the pin
diodes having a doped p-region, a doped n- region and an
intermediate intrinsic region arranged laterally between the
doped p-region and the doped n-region of each pin diode, and
of which pin diodes the intrinsic region of the first pin diode
having a larger width than that of the second pin diode, and a
resistance of the first pin diode is larger than a resistance of the
second pin diode; and wherein a crystal lattice of the substrate
includes crosstalk-mitigating lattice defects created by
irradiation of the substrate, the crosstalk-mitigating lattice
defects configured to prevent crosstalk between the first pin
diode and the second pin diode.

Appeal 2011-002767
Application 11/579,679

3
The Examiner’s Rejections1
The Examiner rejected:
(1) claims 1-5 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Heston (U.S. 4,810,980), Babcock (U.S. 2002/0100950 A1), and
Adlerstein (U.S. 4,474,623) (Ans. 3-9);
(2) claims 6-8 under 35 U.S.C. § 103(a) as being unpatentable over
Heston, Babcock, Adlerstein, and Peichl (U.S. 2004/0119130 A1) (Ans. 7-
8);
(3) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Heston, Babcock, Adlerstein, and LaFleur (U.S. 2003/0170950 A1) (Ans. 8-
9); and
(4) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Heston, Babcock, Adlerstein, Park (U.S. 2004/0094815 A1), and Leipold
(U.S. 6,348,718 B1) (Ans. 9-10).
Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting claims 1-10
and 12 for numerous reasons, including:
(1) with respect to claims 1-5 and 10, Heston is a GaAs substrate,
while Babcock uses a silicon-on-insulator (SOI) substrate (App. Br. 5-8;
Reply Br. 4-8);2, 3

1 In the Final Rejection mailed December 21, 2009, claim 14 was rejected
under § 112(1) for lack of written description support (Final Rej. 2), and
claim 10 was rejected under § 112(2) for indefiniteness (Final Rej. 2-3).
These rejections were withdrawn as indicated in the Advisory Action mailed
February 17, 2010 (Advisory Action, 2). Accordingly, the rejections under
§§ 112(1) and (2) are not before us.
2 Appellants only present arguments on the merits with regard to
independent claim 1 and dependent claim 3 (see App. Br. 5-8; Reply Br. 4-
Appeal 2011-002767
Application 11/579,679

4
(2) with respect to claims 6-8, Heston is a GaAs substrate, while
Peichl polysilicon (App. Br. 8); and
(3) with respect to claim 9, LaFleur’s capacitor is made of oxides that
will not interact with GaAs and the oxides of Heston (App. Br. 8-9); and
(4) with respect to claim 12, Heston and Park’s GaAs substrate and
the silicon substrate taught by Leipold are not compatible (App. Br. 9).
Appellants also object to the alleged new grounds of rejection applied
by the Examiner (Reply Br. 2-4). However, this is petitionable, and not
appealable, therefore, is not within our jurisdiction.
Issues on Appeal
Did the Examiner err in rejecting claims 1-10 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over the various combinations of references
because:
GaAs substrate based apparati (i.e., Heston) are not properly
combinable with (a) SOI or polysilicon/silicon based apparati (Babcock),
and/or (b) capacitors made of oxides (e.g., LaFleur) will not interact
properly with GaAs substrates or oxides of GaAs (e.g., Heston)?

8). We, therefore, select claim 1 as representative of the group of claims 1-5
and 10. 37 C.F.R. § 41.37(c)(1)(vii).
3 Although claim 14 is included in the heading or statement of rejection as
being rejected under § 103(a) over the combination of Heston, Babcock, and
Adlerstein along with claims 1-5 and 10 (Ans. 3), and the body of the
rejection (Ans. 6-7) includes claim 14 in the discussion of the merits of the
rejection, claim 14 has been canceled and we find this to be harmless error.
We consider only claims 1-5 and 10 to stand rejected under § 103(a) over
Heston, Babcock, and Adlerstein, and to be before us on appeal.
Appeal 2011-002767
Application 11/579,679

5
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 4-10) and the Reply Brief (Reply
Br. 2-9) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Ans. 3-10), as well as the Advisory Action
mailed February 17, 2010, and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 10-
18). We highlight and amplify certain teachings and suggestions of the
applied references as follows.
We agree with the Examiner’s findings and determinations (Ans. 10-
18), including that Park’s paragraph [0004] teaches that GaAs and silicon
substrates are alternatives (Ans. 14). Paragraph [0004] of Park discloses the
following:
Electrostatic [Radio Frequency Microelectro-Mechanical
System (RF MEMS] devices also may require additional
fabrication steps, particularly RF MEMS devices requiring high
quality frequency performance. Such devices are typically
fabricated using RF-compatible substrate materials such as
GaAs, ceramics, and high resistivity silicon.

(Park, ¶ [0004]) (emphases added). Accordingly, Appellants’ contentions
that GaAs and silicon substrates are not combinable are not persuasive.
Thus, we agree with the Examiner (Ans. 14) that Park’s paragraph [0004]
teaches GaAs and Si are alternatives (although Park is not used in the
rejection, but is only used to rebut Appellants’ arguments).
In view of our finding that GaAs and silicon substrates are
Appeal 2011-002767
Application 11/579,679

6
alternatives, we find:
(1) With respect to Rejection (1) (claims 1-5 and 10 rejected under
§ 103(a) over Heston, Babcock, and Adlerstein (Ans. 3-7)),
Appellants’ argument that Heston uses a GaAs substrate, while
Babcock uses a SOI substrate, and therefore cannot be compatible
or combinable (App. Br. 5-8; Reply Br. 4-8) is not persuasive;
(2) With respect to Rejection (2) (claims 6-8 rejected under § 103
overHeston, Babcock, Adlerstein, and Peichl (Ans. 7-8)),
Appellants’argument (App. Br. 8) that Heston’s GaAs substrate
teaches away from Peichl’s poly-silicon substrate, is not
persuasive.
(3) With respect to Rejection (3) (claim 9 rejected under § 103 over
Heston, Babcock, Adlerstein, and LaFleur (Ans. 8-9)), Appellants’
argument (App. Br. 8-9) that LaFleur’s capacitor is made of oxides
that will not interact with the GaAs and the oxides of Heston, is not
persuasive.
(4) With respect to Rejection (4) (claim 12 rejected under 103 over
Heston, Babcock, Adlerstein, Park, and Leipold (Ans. 9-10)),
Appellants’ argument (App. Br. 9), is not persuasive.
Furthermore, Appellants’ arguments (Reply Br. 5-8) concerning the
methods or methodology of the references are not persuasive in view of the
fact that claims 1-10 and 12 are apparatus claims.
Finally, and most notably, the claims on appeal (including
representative and sole independent claim 1) do not specify GaAs or SOI,
they just define the substrate by function.
“‘A reference may be said to teach away when a person of ordinary
Appeal 2011-002767
Application 11/579,679

7
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.’” Ricoh Co. v. Quanta Computer,
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted).
A person of ordinary skill, upon reading Heston, would not be
discouraged from following either path set out in Babcock or LaFleur (i.e.,
using a silicon based substrate or oxides), or would not be led in a direction
divergent from the path that was taken by Appellants. Ricoh, 550 F.3d at
1332. This is especially true in light of Park’s disclosure (¶ [0004]) that
GaAs and silicon substrates are alternatives.
In summary, Appellants’ arguments in the Appeal Brief and Reply
Brief do not convince us that the issues concerning SOI or silicon substrate
devices do not have any relevance to GaAs substrate devices, and/or that the
combinations of references would fail to operate to mitigate cross talk as
recited in the claims on appeal.

CONCLUSION
The Examiner did not err in rejecting claims 1-10 and 12 as being
unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1-10 and 12 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)(1)(iv).

AFFIRMED
Appeal 2011-002767
Application 11/579,679

8

llw