Ex Parte Detecheverry et al

Patent Trial and Appeal Board

Mar 26, 2013

10564582 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CELINE JULIETTE DETECHEVERRY and WIBO DANIEL
VAN NOORT
____________________

Appeal 2010-010731
Application 10/564,582
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

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1, 6, 7, and 17, which are reproduced below with
emphases added:
1. A semiconductor device comprising a plurality of layers, the
semiconductor device comprising:
a substrate having a first major surface,
an inductive element fabricated on the first major surface of the
substrate the inductive element comprising at least one conductive line,
a plurality of tilling structures in at least one layer, the plurality of
tilling structures arranged to improve manufacturability of the
semiconductor device,
wherein the plurality of tilling structures are electrically connected
together and arranged in a geometrical pattern so as to substantially inhibit
an inducement of an image current in the tilling structures by a current in
the inductive element.
6. A semiconductor device according to claim 1, wherein the
geometrical pattern of tilling structures does not substantially inhibit
inductive coupling between the inductive element and the substrate, and
wherein the tilling structures are connected to a DC potential.
7. A semiconductor device according to claim 1, wherein the
geometrical pattern of tilling structures does not substantially block
penetration into the substrate of electric field lines generated by the
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inductive element, and wherein the tilling structures are a plurality of
slender elongate elements.
17. A semiconductor device according to claim 16, wherein the
capacitive element comprises two capacitor electrodes at least one of the
capacitor electrodes being formed by a plurality of tilling structures.
The Examiner’s Rejections
(1) The Examiner rejected claims 1-3, 5-7, 9, and 11-22 under 35
U.S.C. § 103(a) as being unpatentable over Ballantine (US 6,489,663 B2) in
view of Minami (US 6,730,983 B2).1 Ans. 3-7.
(2) The Examiner rejected claims 4, 8, and 10 under 35 U.S.C. §
103(a) as being unpatentable over Ballantine, Minami, and Kuroda (US
6,693,315 B2). Ans. 7-8.
Appellants’ Contentions
(1) Appellants contend (App. Br. 4-7; Reply Br.3 -5) that the
Examiner erred in rejecting claims 1-3, 5-7, 9, and 11-22 under 35 U.S.C. §

1 Appellants do not present separate patentability arguments for claims 1-3,
5, 9, 11-16, and 20-22 (App. Br. 4-7; Reply Br. 3-5). Appellants’ arguments
are drawn to the feature recited in independent claim 1 of “wherein the
plurality of tilling structures are electrically connected together and arranged
in a geometrical pattern so as to substantially inhibit an inducement of an
image current in the tilling structures by a current in the inductive element,”
and as similarly recited in remaining independent claim 22. In view of the
foregoing, we select claim 1 as representative of the group of claims 1-3, 5,
and 11-22.
Appellants present separate arguments with respect to (i) claims 6 and
7 (App. Br. 7-8; Reply Br. 5-6), (ii) claims 17-19 (App. Br. 8-9; Reply Br. 6-
7), and (iii) claims 4, 8, and 10 rejected under § 103(a) over Ballantine,
Minami, and Kuroda (App. Br. 9; Reply Br. 7-8).

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103(a) as being unpatentable over the combination of Ballantine and Minami
for numerous reasons, including:
(a) Ballantine and Minami fail to teach plural tilling structures
are arranged in a geometrical pattern to substantially inhibit
inducement of image current in the tilling structure by a current in
inductive element, as claimed (App. Br. 4-5);
(b) Ballantine fails to teach that vias 28 are arranged to (i)
substantially inhibit inducement of an image current in vias 28 by a
current in inductor 16, and (ii) prevent the flow of image current in
vias 28 (App. Br. 5-6);
(c) Minami’s dummy elements 12 neither teach nor suggest
being arranged to prevent inducement of an image current in the
dummy elements 12, and Minami fails to cure the deficiencies of
Ballantine (App. Br. 6);
(d) Ballantine teaches away from the combination with
Mimami (App. Br. 6-7), and modifying Ballantine with Minami
would render Ballantine unfit for its intended purpose of coupling
substrate 12 and inductor 16 because vias 28 will pass high-frequency
energy into the substrate 12 as taught by Minami (App. Br. 7; Reply
Br. 4-5);
(e) with regard to claims 6 and 7, Ballantine expressly teaches
that vias 28 block penetration of electric field lines from inductor 16
to substrate 12, and Ballantine fails to teach the limitations recited in
claims 6 and 7 (App. Br. 7-8);
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(f) with regard to claims 6 and 7, Ballantine’s column 5, ll. 14-
16 and column 6, lines 56-67 teach the opposite of what is recited
(App. Br. 8; Reply Br. 5-6); and
(g) with regard to claims 17-19, Ballantine uses vias 28 to
prevent the IC 200 from functioning as a capacitor between inductor
16 and ground strips, therefore Ballantine fails to teach that vias 28
and ground strips 26 form capacitor electrodes of a capacitive element
as asserted by the Examiner (App. Br. 8-9; Reply Br. 6-7).
(2) Appellants contend (App. Br. 9; Reply Br. 7-8) that the Examiner
erred in rejecting claims 4, 8, and 10 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ballantine, Minami, and Kuroda
because:
(a) Ballantine teaches away from the combination with Minami,
and Kuroda fails to cure the deficiencies of Ballantine and Minami
(App. Br. 9); and
(b) Kuroda fails to disclose the specific shapes as claimed,
which inhibit the induction of current (Reply Br. 7-8).
Issues on Appeal
(1) Did the Examiner err in rejecting claims 1, 2, 3, 5, 11-16, and 20-
22 as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Ballantine and Minami because Ballantine fails to teach or suggest the
limitation “wherein the plurality of tilling structures are electrically
connected together and arranged in a geometrical pattern so as to
substantially inhibit an inducement of an image current in the tilling
structures by a current in the inductive element,” as recited in representative
claim 1?
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(2) Did the Examiner err in rejecting claims 6, 7, and 9 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ballantine
and Minami because Ballantine fails to teach or suggest the limitations of (i)
“wherein the geometrical pattern of tilling structures does not substantially
inhibit inductive coupling between the inductive element and the substrate”
as recited in claim 6, and (ii) “wherein the geometrical pattern of tilling
structures does not substantially block penetration into the substrate of
electric field lines generated by the inductive element” as recited in claims 7
and 9?
(3) Did the Examiner err in rejecting claims 17-19 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ballantine
and Minami because the combination of references fails to teach or suggest
the capacitive element comprised of capacitor electrodes, as recited in claims
17-19?
(4) Did the Examiner err in rejecting claims 4, 8, and 10 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ballantine,
Minami, and Kuroda because (i) the combination fails to teach or suggest the
limitations at issue, or (ii) Ballantine teaches away from the combination
with Minami?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 4-10) and the Reply Brief (Reply
Br. 3-8) that the Examiner has erred.
With regard to claims 6 and 7, we agree with Appellants’ above
Contentions (1)(e) and (1)(f) (see App. Br. 7-8; Reply Br. 5-6) that
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Ballantine (column 5, lines 14-16 and column 6, lines 56-67) teaches the
opposite of what is claimed. Claims 6 recites that “the geometrical pattern
of tilling structures does not substantially inhibit inductive coupling” (claim
6) (emphasis added), and claim 7 recites that “the geometrical pattern of
tilling structures does not substantially block penetration” (claim 7)
(emphasis added). Ballantine discloses (i) orienting “conducting vias 28 in a
position to intercept and terminate the electric field emanating from spiral
inductor 16” (col. 5, ll. 14-16), (ii) decreasing capacitance between inductor
16 and ground strips 26 (col. 5, ll. 43-44), and (iii) using vias 28, which
connect inductor 16 to the ground strips 26, to prevent the flow of image
current by decreasing inducement and terminating the electric field (col. 6,
ll. 59-62 and 64-67). Thus, Appellants’ Contentions (1)(e) and (1)(f) are
persuasive, and we do not sustain the Examiner’s rejection of claims 6 and 7,
nor do we sustain the Examiner’s rejection of claim 9 which depends from
claim 7 and therefore contains the limitations of claim 7.
With regard to claims 1-3, 5, and 11-22, however, we concur with the
conclusions reached by the Examiner, and 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 in response to the Appellants’ Appeal Brief (Ans. 3-7
and 9-12). We highlight and amplify certain teachings and suggestions of
Ballantine, as well as certain ones of Appellants’ arguments as follows.
With regard to representative claim 1, we agree with the Examiner
(Ans. 3 and 9-10) that (i) Ballantine (Figures 1 and 2) provides evidence that
conducting vias 28 are composed of horizontal (30) and vertical (32)
interconnect sections that act as tilling structures, and (ii) the conducting
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vias 28 are used to prevent image current (col. 3, ll. 38-41; col. 4, ll. 39-42;
col. 6, ll. 59-64) by optimizing the number, placement, and/or arrangement
of vias 28 (col. 3, ll. 59-64; col. 5, ll. 1-8 and 57-64) to decrease capacitance
by intercepting and terminating the electric field emanating from inductor 16
(col. 4, l. 53 to col. 5, l. 1; col. 5, ll. 13-15; col. 6, ll. 64-67). Appellants
have not rebutted the Examiner’s findings with probative evidence. Rather,
only attorney argument was presented regarding whether or not the
properties in Ballantine are the same as the properties recited in
representative claim 1 (see App. Br. 4-6; Reply Br. 3-4). Attorney argument
is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can
it take the place of evidence lacking in the record. Meitzner v. Mindick, 549
F.2d 775, 782 (CCPA 1977).
Appellants’ Contentions (1)(a), (1)(c), and (1)(d) are not persuasive
inasmuch as Ballantine alone teaches or suggests the limitations of
representative claim 1, and Minami is superfluous. A disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under
35 U.S.C. § 103, for "anticipation is the epitome of obviousness." Jones V.
Hardy, 727 F.2d 1524, 15292 (Fed. Cir. 1984). See also In re Fracalossi,
681 F.2d 792,794 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402
(CCPA 1974). In view of the above discussion, it is our view that since
Ballantine reasonably teaches or suggests using tilling structures (composed
of conducting vias 28 and interconnect sections 30 and 32 as shown in
Figures 1 and 2) to inducement of image current as recited in claim 1,
Minami is not actually necessary for a proper rejection under 35 U.S.C. §
103 of representative claim 1, as Ballantine discloses all that is claimed. The
Board may rely on less than all of the references applied by the Examiner in
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an obviousness rationale without designating it as a new ground of rejection.
In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458
n.2 (CCPA 1966). Likewise, Appellants’ Contention (2)(a) concerning
Minami is not persuasive for similar reasons.
With regard to claims 4, 8, and 10, Appellants’ Contention (2)(b) is
not persuasive because Kuroda (col. 17, ll. 34-44) teaches or suggests (i) the
triangular shaped pattern (claim 8), (ii) other possible shapes and
arrangements (claims 4 and 10), and (iii) Ballantine is relied upon, not
Kuroda, as disclosing (Fig. 1) tilling structures (including vias 28) oriented
perpendicular to a conductive line of an inductive element 16. Appellants
(Reply Br. 7-8) have not shown otherwise.
In view of the foregoing, we sustain the Examiner’s rejection of (i)
representative claim 1, and claims 2, 3, 5, 11-16, and 20-22 grouped
therewith, and (ii) claims 4, 8, and 10.
With regard to claims 17-19, Appellants’ Contention (1)(g) that
Ballantine fails to teach that vias 28 and ground strips 26 form capacitor
electrodes of a capacitive element as asserted by the Examiner (see App. Br.
8-9; Reply Br. 6-7) is unpersuasive in light of the Examiner’s findings
regarding Ballantine (Ans. 6-7 and 11-12). Appellants have not sufficiently
demonstrated that a capacitance is not shown to exist between Ballantine’s
ground circuit 26 and spiral conductor 16. Therefore, we also sustain the
Examiner’s rejection of claims 17-19.

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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-3, 5, and 11-22 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of
Ballantine and Minami because Ballantine alone discloses the limitations (i)
“wherein the plurality of tilling structures are electrically connected together
and arranged in a geometrical pattern so as to substantially inhibit an
inducement of an image current in the tilling structures by a current in the
inductive element,” as recited in representative claim 1, and (ii) the
capacitive element comprised of capacitor electrodes, as recited in claims
17-19.
(2) The Examiner erred in rejecting claims 6 and 7, as well as claim 9
which depends from claim 7, as being unpatentable under 35 U.S.C. §
103(a) over the combination of Ballantine and Minami because Ballantine
teaches the opposite of what is recited in claims 6 and 7.
(3) The Examiner did not err in rejecting claims 4, 8, and 10 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ballantine,
Minami, and Kuroda because (i) Ballantine alone discloses the limitations of
claims 1, 4, 8, and 10, thus Minami is not required for the combination, and
(ii) Kuroda discloses the specific shapes for inhibiting induction of current
as recited in claims 4, 8, and 10.

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DECISION2
(1) The Examiner's rejection of claims 6, 7, and 9 is reversed.
(2) The Examiner's rejections of:
(i) claims 1-3, 5, and 11-22 over Ballantine and Minami; and
(ii) claims 4, 8, and 10 over Ballantine, Minami, and Kuroda
are affirmed.

AFFIRMED-IN-PART

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2 We have decided the appeal before us. However, should there be further
prosecution of claim 6 (which recites “wherein the geometrical pattern of
tilling structures does not substantially inhibit inductive coupling between
the inductive element and the substrate”), claim 7 (which recites “wherein
the geometrical pattern of tilling structures does not substantially block
penetration into the substrate of electric field lines generated by the
inductive element”), and claim 9 depending from claim 7, the Examiner’s
attention is directed to 35 U.S.C. § 112, first paragraph regarding written
description.
Specifically, claims 6 and 7 appear to lack a written description under
35 U.S.C. § 112, ¶ 1, particularly insofar as the originally filed Specification
(Spec. 3:22-25) and claims (originally filed claims 6 and 7 found at Spec.
16:27 to 17:2) do not describe the geometrical pattern 14 of tilling structures
11 and 12 shown in Figures 1 and 2 as not inhibiting inductive coupling
between the inductive element 11 and the substrate 20 (as recited in claim 6
on appeal), and/or not blocking penetration into the substrate 20 of electric
field lines generated by the inductive element 11 (as recited in claims 7 and
9 on appeal).