Ex Parte HO

Patent Trial and Appeal Board

Aug 2, 2016

12885330 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/885,330 09/17/2010
53897 7590 08/02/2016
DUANE MORRIS LLP - San Diego
750 B Street
Suite 2900
SAN DIEGO, CA 92101-4681
FIRST NAMED INVENTOR
GAVIN HO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Rl514-00006 8486
EXAMINER
ROSENAU, DEREK JOHN
ART UNIT PAPER NUMBER
2837
MAILDATE DELIVERY MODE
08/02/2016 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 GA VIN HO
Appeal2014-007176
Application 12/885,330 1
Technology Center 2800
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision finally rejecting claims 1-9. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellant, the real party in interest is the inventor, Gavin Ho.
Br. 2.
2 Our decision refers to Appellant's Specification (Spec.) filed September
17, 2010, Appellant's Appeal Brief (Br.) filed January 29, 2014, and the
Examiner's Answer (Ans.) mailed April 9, 2014.
Appeal2014-007176
Application 12/885,330
STATEMENT OF THE CASE
The invention relates to an apparatus including a substrate with a
cavity and a network, wherein the network has a resonator formed on the
substrate and enclosed within the cavity, a capacitive device formed on the
substrate and connected in series with the resonator, and at least two open-
ended electrical contacts on the substrate for an off-substrate electrical
connection. Spec. i-f 35.
Sole independent claim 1, reproduced below from the Claims
Appendix to Appellant's Brief, is illustrative of the subject matter on appeal:
1. An apparatus comprising:
an electrical oscillator further comprising a substrate
with a resonator cavity;
an electrical network further comprising:
a resonator formed on the substrate, the resonator
enclosed within the resonator cavity; and
a capacitive device formed on the same substrate, the
capacitive device being connected in series with the resonator
the capacitive device operates as a capacitive device and not
as a resonator or inductive device; and
the substrate comprises an electrically-conductive
feature associated with accumulating the capacitance of the
capacitive device disposed external to the resonator cavity,
and
the substrate comprises at least two open-ended
electrical contacts for an off-substrate electrical connection.
The Rejections
The Examiner maintains, and Appellant requests review of, the
following grounds of rejection:
2
Appeal2014-007176
Application 12/885,330
A. Claims 1-3, 5-7, and 9 under 35 U.S.C. § 102(b) as anticipated
by Fukiharu; 3
B. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Fukiharu in view of Takeuchi; 4 and
C. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Fukiharu in view of Koyama. 5
ANALYSIS
Appellant does not separately argue either the claims or the rejections,
instead arguing the limitations of claim 1. We, therefore, focus our
discussion of Appellant's arguments on claim 1. The remaining claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vi)(2013).
Appellant's arguments raise the following issue which is dispositive
of the anticipation rejection in this case: Did the Examiner reversibly err in
finding that Fukiharu teaches a substrate with a resonator cavity, a resonator
enclosed within the resonator cavity; and a capacitive device all located on
or within the substrate? For the reasons provided in the Answer and below,
we answer this question in the negative and affirm the Examiner's rejection.
The Examiner's fact-findings are thoroughly set forth in the Answer. We
adopt those findings hereby as our own without repetition.
The Examiner finds Fukiharu teaches, inter alia, a substrate 302, 304,
304A 6 with a resonator cavity, a resonator 1 enclosed within the cavity (Fig.
3 US 5,952,894, issued September 14, 1999.
4 US 8,031,013 B2, issued October 4, 2011.
5 US 2006/0238080 Al, published October 26, 2006.
6 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Application 12/885,330
9), and a capacitive device 2 all located on or within the substrate. Ans. 2.
Appellant argues that the Examiner erred in finding seam ring 302 is part of
the substrate. Br. 4. Appellant asserts that claim 1 recites only a single
substrate, and that the resonator cavity, the resonator, and the capacitive
device are all located on or within this single substrate. Id. Appellant also
argues that Fukiharu's capacitive device is attached to, rather than formed
on, the substrate. Id.
We do not find Appellant's arguments persuasive. Although
Appellant asserts that claim 1 recites a single substrate, Appellant appears to
be interpreting claim 1 's recitation of "a substrate" as a unitary or monolithic
substrate. However, we find no such restriction in claim 1, nor does
Appellant direct our attention to any disclosure in the Specification that
would provide such a special meaning to "a substrate. "7 The Examiner
broadly defines "substrate" to mean "an underlying base material," and
further finds, based on this definition, that eiements 302, 304, and 304A
together comprise the substrate. Ans. 5. Appellant does not challenge this
definition; no Reply Brief has been filed. The Examiner further finds that
element 302 need not be interpreted to be part of the substrate, as elements
304 and 304A alone also define a resonator cavity in which the resonator is
enclosed and on which the capacitive device is formed. Id. Appellant also
does not dispute this finding. As such, Appellant has not identified
7 Indeed, Appellant discloses that bonding of more than one substrate of
similar or differing materials produces a substrate that can then be processed
as a single substrate. Spec. i-f 81. This disclosure undermines Appellant's
argument that Fukiharu's elements 302, 304, and 304A cannot together
comprise "a substrate."
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Application 12/885,330
reversible error in the Examiner's finding that Fukiharu teaches a resonator
enclosed within a resonator cavity and a capacitor, all located on or within a
substrate.
In addition, Appellant attempts to distinguish over Fukiharu, arguing
that Fukiharu's capacitive device 2 is attached to, rather than formed on, the
substrate. Br. 4. We do not find this argument persuasive of reversible
error. Neither the Examiner nor Appellant proffer a definition of the term
"form" in the context of the disclosed invention. 8 We find the term "form"
includes a process of assembling or attaching two or more parts together. 9
We further find that this definition is consistent with Appellant's use of the
term in the Specification. See, for example, Spec. i-f 18 ("resonators are
formed by disposing a piezoelectric film on a substrate"); i-f 19 ("the cavity
can be formed by bonding an additional substrate on the first substrate"); i-f
84 ("[ s ]ubstrates formed by bonding a plurality of substrates"); i-f 118
("[f]orming ioad capacitors 70 on substrate 10 is considered. In one
8 It is axiomatic that during examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Although claims are to be interpreted in light of the specification, limitations
from the specification are not to be read into the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). An applicant seeking a
narrower construction must either show why the broader construction is
unreasonable or amend the claim to expressly state the scope intended. In re
Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
9 See http://www.dictionary.com/browse/formed, last accessed July 21, 2016
(as a verb, "to construct or frame"). See also,
http://www.dictionary.com/browse/construct, last accessed July 21, 2016 (as
a verb, "to build or form by putting together parts; frame; devise") .
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Appeal2014-007176
Application 12/885,330
embodiment, load capacitors 70 are disposed on or near the surface of
substrate 10"). This definition supports the Examiner's finding that
Fukiharu's capacitive device is formed on the substrate.
Thus, a preponderance of the evidence supports the Examiner's
findings.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1-3, 5-7, and 9
under 35 U.S.C. § 102(b) as anticipated by Fukiharu, and claims 4 and 8
under 35 U.S.C. § 103(a) as unpatentable over Fukiharu in view of Takeuchi
and Koyama, respectively, is 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)(l ).
AFFIRMED
6