Ex Parte Heschel et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10833428 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MATTHIAS HESCHEL and ARND KILIAN
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Appeal 2009-005831
Application 10/833,428
Technology Center 3700
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Decided: October 19, 2009
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Before: WILLIAM F. PATE, III, STEVEN D.A. MCCARTHY and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3, 6, 10, 19-21, 24 and 27. App. Br. 1. Claims 4, 5, 7-9, 11, 12, 22, 23, 25,
26, 28 and 29 have been withdrawn. App. Br. 1. Claims 13-18 have been
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allowed by the Examiner. Advisory Action Aug. 8, 2008. We have
jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a method of forming an assembly to house
one or more micro components. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of forming an assembly to house one or more
micro components, the method comprising:
providing a first sub-structure having a first through-hole;
and
attaching the first sub-structure to a second sub-structure
having a group of one or more through-holes each of which is
smaller than the first through-hole in the first sub-structure,
wherein the group of smaller through-holes in the second sub-
structure is positioned opposite the through-hole in the first sub-
structure.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ohkuma US 6,139,761 Oct. 31, 2000
Heschel US 2003/0071283 A1 Apr. 17, 2003

Claims 1 and 19 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Ohkuma.
Claims 1-3, 6, 10, 19-21, 24 and 27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Heschel.

OPINION
Appellants contend that the Examiner erred in rejecting claims 1 and
19 as being anticipated by Ohkuma because the holes in Ohkuma’s resin
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layer 7, read as the claimed “second sub-structure,” are not “opposite” the
hole in substrate 1, read as the claimed “first sub-structure.” App. Br. 5, 6.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants contend that the
term “opposite” requires the holes to be in a facing relationship. Reply Br. 3.
We agree with Appellants’ proposed construction. Since the Examiner has
unreasonably interpreted the term “opposite” to include Ohkuma’s holes,
which are not positioned in a facing relationship (See e.g., Fig. 10), we are
constrained to reverse the rejection of claims 1 and 19 as being anticipated
by Ohkuma.
Appellants contend that the Examiner erred in rejecting claims 1 and
19 as being anticipated by Heschel because silicon layer 13, read as the
claimed “first sub-structure” and silicon layer 11, read as the claimed
“second sub-structure” are attached prior to having holes formed therein
(See e.g., Fig. 1a-1j; paras. [0029]-[0040]). Appellants contend that, in
contrast to Heschel’s method, claims 1 and 19 require a through-hole to be
present in the first sub-structure prior to the step of attaching the first and
second sub-structures. App. Br. 6. The Examiner contends that no specific
order of steps is required by the claim. Ans. 4-7.
Determining if the steps of a method claim that do not otherwise recite
an order, must nonetheless be performed in the order in which they are
written involves a two-part test. First, we look to the claim language to
determine if, as a matter of logic or grammar, they must be performed in the
order written. If not, we next look to the rest of the specification to
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determine whether it “directly or implicitly requires such a narrow
construction.” If not, the sequence in which such steps are written is not a
requirement. Altiris, Inc. v. Symantec Corp. 318 F.3d 1363, 1369-1370 (Fed.
Cir. 2003); See also Loral Fairchild Corp. v. Sony Electronics Corp., 181
F.3d 1313, 1321 (Fed.Cir.1999) (holding that the claim language itself
indicated that the steps had to be performed in their written order because
the second step required the alignment of a second structure with a first
structure formed by the prior step.); See also Mantech Envtl. Corp. v.
Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76, (Fed.Cir.1998) (holding
that the steps of a method claim had to be performed in their written order
because each subsequent step referenced something logically indicating the
prior step had been performed).
The language of claims 1 and 19 indicates that the first two steps of
the claimed method must be performed in their written order. The second
step of attaching the first sub-structure requires the presence of the structure
provided by the prior “providing” step. Contrary to the Examiner’s
interpretation, the claimed step of “providing a first sub-structure having a
first through-hole” does not amount to two independent steps of providing a
first sub-structure and providing a first through-hole in the first sub-
structure—where the attaching step may be performed between those steps.
Ans. 5-7. Thus, we agree with Appellants’ claim construction that the step of
“providing a first sub-structure having a first through-hole” is completed
prior to the attaching step. Since Heschel does not perform the claimed steps
in the sequence required by claims 1 and 19, we are constrained to reverse
the rejection of claims 1 and 19, along with dependent claims 2, 3, 6, 10, 20,
21, 24 and 27, as being anticipated by Heschel.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1-3, 6, 10,
19-21, 24 and 27 are reversed.

REVERSED

Vsh

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