11263105 (B.P.A.I. May. 29, 2012)

Ex Parte Dewes et al

Board of Patent Appeals and InterferencesMay 29, 2012

11263105 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/263,105 10/31/2005 Brian E. Dewes DP-313691 3028 22851 7590 05/29/2012 Delphi Technologies, Inc. M/C 480-410-202 P.O. Box 5052 Troy, MI 48007 EXAMINER VAN, LUAN V ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 05/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN E. DEWES, PEDRO E. CASTILLO-BORELLY, JOHN C. CHRISTENSON, and DAVID B. RICH __________ Appeal 2010-012550 Application 11/263,105 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-012550 Application 11/263,105 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 2, 5-12, and 15-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to an infrared detecting device with a circular membrane and cavity (Spec. paras. [0001], [0025]). Claim 1 is illustrative: 1. An infrared sensor comprising: a semiconductor material including a circular cavity surrounded by a frame; a circular membrane positioned over the circular cavity and having a perimeter supported by the frame, the circular membrane having a first surface for receiving thermal radiation and an oppositely-disposed second surface, the circular membrane including at least one infrared absorbing layer; and at least one thermopile comprising a plurality of thermocouples having a plurality of serially connected thermocouple junctions, wherein each of the thermocouple junctions has dissimilar electrically-resistive materials that define measurement junctions which are positioned on the circular membrane and reference junctions which are positioned on the frame, the thermocouple junctions being radially arranged, and each of the thermocoupled junctions being at a substantially similar point between the measurement and reference junctions. Appellants appeal the following rejections: 1. Claims 1, 5-11, and 15-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kubo (US 2002/0069909 A1 published June 13, 2002) in view of Johannessen (Erik a. Johannessen et al., A Appeal 2010-012550 Application 11/263,105 3 Suspended Membrane Nanocalorimeter for Ultralow Volume Bioanalysis, 1 IEEE TRANSACTIONS ON NANOBIOSCIENCE 1 (2002)). 2. Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kubo in view of Johannessen and Wise (US 5,059,543 issued Oct. 22, 1991). ISSUE Did the Examiner reversibly err in finding that Kubo inherently teaches a circular cavity or in finding that Johannessen teaches a circular membrane positioned over a circular cavity as recited in the claim? We decide this issue in the affirmative. FACTUAL FINDINGS AND ANALYSIS Appellants argue that neither Kubo nor Johannessen teach the claim feature that requires that a circular membrane is positioned over a circular cavity (App. Br. 9-12). Appellants contend that Kubo’s Figure 4 embodiment relied upon by the Examiner teaches a circular membrane placed over a rectangular cavity (id. at 10). Appellants further contend that Johannessen discloses a conventional square cavity with a membrane (id. at 11). The Examiner finds that Kubo inherently teaches a circular cavity because the shape of the resulting cavity is defined by the shape of the membrane (Ans. 4). Assuming that Kubo does not inherently teach a circular cavity, the Examiner finds that Johannessen’s Figure 1a depicts a circular cavity with a circular membrane. Id. Based on this finding, the Examiner concludes that it would have been obvious to have used a circular Appeal 2010-012550 Application 11/263,105 4 cavity for forming a circular membrane with a reasonable expectation of success (id. at 4-5). The preponderance of the evidence favors Appellants’ argument of nonobviousness. The Examiner’s reliance on Kubo as inherently teaching a circular cavity because Kubo’s Figure 4 membrane is circular is contrary to the express teachings of Kubo. As cited by Appellants, Kubo discloses the Figure 4 embodiment is the same as Figure 1 with the exception of a circular diaphragm 14 and absorptive film 24 (Kubo, para. [0027]). Kubo further discloses that the Figure 1 embodiment has a hollow part 12a (i.e., cavity) formed in a rectangle in plan view (id. at para. [0020]). Accordingly, Appellants’ argument that Kubo does not inherently teach a circular cavity is supported by Kubo’s disclosure. The Examiner’s reliance on Johannessen’s Figure 1a to teach a circular membrane over a circular cavity appears to be also contrary to Johannessen’s teachings. Specifically, Johannessen teaches that Figure 1a shows film calibration heater 1 in a circular reaction vessel 2 (Johannessen Fig. 1 caption). Johannessen’s Figure 2 describes the structure of the circular reaction vessel, where it is shown that the circular reaction vessel is formed in a polyimide film on top of the silicon nitride membrane and over an air pocket (i.e., cavity). Therefore, the Examiner’s unexplained position regarding Johannessen’s Figure 1a can only be reasonably understood as relying on the circular reaction vessel as the cavity. However, the circular reaction vessel is formed on the silicon nitride membrane which is over the air pocket (i.e., cavity). Thus, Johannessen does not teach “a circular membrane positioned Appeal 2010-012550 Application 11/263,105 5 over the circular cavity” as required by the claims. The Examiner makes no finding regarding the shape of the air pocket (i.e., cavity) in Johannessen. Even if combined, the prior art would not have rendered obvious the “circular membrane positioned over the circular cavity” as required by the claims. Rejection (2) includes only dependent claims 2 and 12 and the Examiner does not rely on Wise to satisfy this deficiency. For this reason and on this record, we reverse the Examiner’s § 103 rejections (1) and (2). DECISION The Examiner’s decision is reversed. ORDER REVERSED bar