Ex Parte Ihle et al

Patent Trials and Appeals Board

Dec 6, 2018

14766405 - (D) (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/766,405 08/06/2015
25962 7590 12/10/2018
SLATER MATSIL, LLP
17950 PRESTON RD, SUITE 1000
DALLAS, TX 75252-5793
FIRST NAMED INVENTOR
Jan Ihle
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.
EPC-297 4448
EXAMINER
LU,FARUN
ART UNIT PAPER NUMBER
2898
NOTIFICATION DATE DELIVERY MODE
12/10/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN IHLE, BERNHARD OS TRICK, and
WOLFGANG SCHREIBER-PRILLWITZ
Appeal2018-000983
Application 14/7 66,405 1
Technology Center 2800
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 17, 19--25, 27, 28, and 31--40. App. Br. 3.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellant is the Applicant, EPCOS AG, which is also identified as the real
party in interest. App. Br. 2.
Appeal2018-000983
Application 14/766,405
BACKGROUND
The subject matter on appeal is directed to various methods of
forming a sensor system which has a monolithical housing body prepared
using a ceramic injection molding method. App. Br. 18, 19 (independent
claims 31, 36, and 40).
According to Appellant's Brief (App. Br. 2), Figure 1 of the
Drawings, shown below, illustrates a sensor system having such a
monolithical housing body.
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3 L 20
Figure 1 depicts a sensor system comprising a sensor chip (1)
mounted on connection material (3) contained within mounting receptacle
(20) formed as a depression within housing body (2). Spec. ,r 47.
Independent claim 31 is illustrative of the appealed subject matter,
and is copied below from the Claims Appendix to the Appeal Brief, with
emphasis added to relevant limitations at issue in this appeal:
31. A method of forming a sensor system, the method
compnsmg:
providing a sensor chip;
forming a housing body having a monolithical structure
and comprising a non-planar three-dimensional surface
topography on a mounting side using a ceramic injection
molding method; and
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mounting the sensor chip over the mounting side of the
housing body, wherein the coefficient of thermal expansion of
the housing body deviates from the coefficient of thermal
expansion of the sensor chip by less than 30% in a temperature
range of greater than or equal to -40°C and less than or equal to
150°c.
App. Br. 18.
REJECTIONS
The claims are rejected as follows under 35 U.S.C. § I03(a):
I. Claims 17, 21-25, 27, 28, 31, and33-37 overGorai (US
2012/0112368 Al) in view ofNagahiro (US 2012/0077023
Al);
II. Claims 19 and 20 over Gorai in view ofNagahiro and further in
view of Hamey (US 2004/0041248 Al);
III. Claims 32 and 39 over Gorai in view ofNagahiro and further in
view of Tominaga (US 4,314,225);
IV. Claim 38 over Gorai in view ofNagahiro and further in view of
Nagata (US 2011/0085317 Al); and
V. Claim 40 over Gorai in view ofNagahiro and further in view of
Kvisteroy (US 2007/0222009 Al).
OPINION
Rejection I
In our discussion of Rejection I, we address the claims separately to
the extent they are so argued by Appellant. As stated by Appellant (App. Br.
3), any claim that is not separately argued stands or falls with the claim from
which it depends. 37 C.F.R. § 4I.37(c)(l)(iv).
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Claims 31 and 3 6
The Examiner finds that Gorai discloses the methods recited in
independent claims 31 and 36 except for the limitation requiring "a ceramic
injection molding method" to form the "housing body having a monolithical
structure" recited in each claim. Final 3-5, 9-11. To address this
difference, the Examiner turns to N agahiro which the Examiner finds
"discloses the ceramic sintered member can be made by injection molding."
Id. at 5, 11 (citing Nagahiro ,r 80). The Examiner determines that the skilled
artisan would have found it obvious to make Gorai' s housing body via
Nagahiro's ceramic injection molding method in order to improve the
ceramic's mechanical strength and heat dissipation characteristics, as well as
lower its production cost. Id. ( citing Nagahiro ,r 5).
Appellant advances several arguments in support of patentability.
App. Br. 4--11. First, Appellant contends that the Examiner has failed to
establish that housing bodies of the relied upon prior art can be considered a
"monolithical structure" within the broadest reasonable construction of this
term consistent with the Specification. Id. at 4--5. Appellant points to
intrinsic and extrinsic evidence to support its argument - namely, that the
prior art structures of Gorai and Nagahiro "are not cast as a single piece."
Id. This line of argument fails to persuade us of reversible error because, as
correctly noted by the Examiner (Final 4, 10; Ans. 2-3), Gorai expressly
states that concave portion 1 Oa may be formed "in a single substrate," and
does not have to be a composite laminated from layers 11, 12, and 13 as
Appellant's argument suggests. Gorai ,r 19; App. Br. 5.
Appellant contends further that N agahiro' s method does not teach the
recited ceramic injection molding method because Nagahiro's methods
"produc[ e] ceramic green sheets[] which are laminated together and which
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form a flat-shaped substrate." Id. at 6-8. Thus, according to Appellant,
Nagahiro's method is not applicable to forming the recited non-planar three-
dimensional topography using ceramic injection molding. Id. at 8. We are
not persuaded of reversible error by this argument. Nagahiro's teaching is
not limited to planar shapes, but expressly indicates that injection molding
can be used to form "a desired shape." Nagahiro ,r 80. The obviousness
analysis "can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421. Here, using no more than
ordinary creativity, the skilled artisan would have recognized that if a three-
dimensional shape was the "desired shape," then a mold in such shape would
need to be used.
Appellant also urges that the combination ofNagahiro and Gorai is
improper because N agahiro "teaches against fusing of the [ceramic]
greensheets to form a monolithic substrate." App. Br. 9. This argument is
unpersuasive because it is premised on a definition of the term "monolithic"
that is unsupported and contrary to the one argued for above. Specifically,
Appellant previously argued (App. Br. 5) that Nagahiro's multilayer process
of preparing ceramic greensheets cannot create a monolithical structure
because such greensheets "are not cast as a single piece ( the only
interpretation that is consistent with the specification)." Appellant's
argument now suggests the opposite - that fusing the greensheets together
may form such a monolithical substrate. Id. at 9. Additionally, this
argument is unpersuasive for the well-stated reason given by the Examiner
in the Answer. Ans. 3--4 (explaining that the rejection relies on Nagahiro's
general teaching that a ceramic substrate may be formed into a desired shape
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by injection molding, not Nagahiro's teaching of multiple stacked ceramic
greensheets ).
Appellant also asserts that the combination "contradicts Nagahiro's
intended purpose," and that there would have been no reasonable
expectation of success or an expectation of obtaining predictable results in
applying Nagahiro's process to Gorai. App. Br. 10. These conclusory
assertions are unpersuasive because, again, the rejection does not rely on
N agahiro' s teaching of multiple stacked ceramic greensheets. Rather, the
Examiner relies on N agahiro 's general teaching that ceramic substrates may
be formed by injection molding. Final 5, 11.
Finally, Appellant takes issue with the Examiner's rationale to
combine Gorai with Nagahiro. App. Br. 10-11; Reply Br. 2. Specifically,
Appellant argues that the Examiner's reliance on paragraph 5 ofNagahiro
"discloses that the addition of yttria, calcia, [ and] magnesia increase
mechanical strength and reduce cost," which "has no relevance to Gorai's
substrate and has no bearing on the motivation to use the molding process in
Nagahiro to form Gorai's substrate." App. Br. 11. This argument does not
persuade us of reversible error in the Examiner's combination of Gorai with
Nagahiro. While Appellant appears to be correct that paragraph 5 of
Nagahiro does not specifically address injection molding when discussing
the benefits of "increased mechanical strength," "high heat dissipation and
low cost," Nagahiro does teach that it was known to prepare a ceramic
substrate by means of injection molding. Nagahiro ,r 80. Nagahiro also lists
several other methods by which a ceramic substrate can be prepared, i.e.,
"mold pressing, cold hydrostatic pressing, ... doctor blade pressing,
extrusion molding, or the like." Id. Based on this teaching, we agree with
the Examiner's determination that using Nagahiro's injection molding
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technique to prepare Gorai's ceramic substrate at least would have been
"obvious to try." Ans. 4--5 (citing KSR Int'! Co. v. Teleflex Inc., 550 US
398,421 (2007)). Here, the skilled artisan would have recognized that
injection molding the ceramic substrate would have been an obvious method
to try based on the limited number of options identified by Nagahiro for
preparing a ceramic substrate. Nagahiro ,r 80.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under§ 103."
KSR, 550 US at 421.
Significantly, the Examiner's determination that injection molding Gorai's
ceramic substrate would have been obvious to try goes uncontested by
Appellant in the Reply Brief. Reply Br., generally.
Because Appellant fails to identify reversible error in the rejection of
independent claims 31 and 36, we sustain the rejection of these claims, as
well as the rejection of claims 17, 21, 22, 33-35, and 37 dependent
therefrom and not separately argued. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 23
Claim 23 depends from claim 3 1, and recites "wherein a signal
processing chip is mounted on a further mounting receptacle of the housing
body." App. Br. 17. The Examiner finds that Gorai discloses this limitation
in Figure 1, noting that "signal processing chip, driving IC 3 is mounted on a
further mounting receptacle 13a of the housing body 10." Final 7.
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Appellant makes two contentions - 1) that Gorai' s IC 3 is not
mounted on a "further mounting receptacle," and 2) that Gorai's IC 3 is not
"a signal processing chip." App. Br. 11-13. Neither of these contentions
persuade us of reversible error in the Examiner's rejection of claim 23.
Regarding contention 1, Appellant specifically contends that Gorai' s
surface 13a is not a "further mounting receptacle of the housing body"
because "both chips [2 and 3] are mounted to the same thing labeled as 13a."
This argument is not persuasive because Appellant points us to no express
definition of the term "receptacle" that requires a separate mounting surface
for the signal processing chip recited in claim 23. In fact, Appellant's
Specification discloses a similar arrangement to that of Gorai, where both
chips 1 and 7 are mounted to the same surface 20, and refers to this same
surface 20 as both the "mounting receptacle" and the "further mounting
receptacle." See Spec. ,r 58 (explaining how sensor chip 1 is located on
"mounting receptacle 20," and signal processing chip 7 is "on a further
mounting receptacle 20 of the ceramic housing body 2 in addition to the
sensor chip 1 on the housing body 2."). Under these circumstances, we
discern no error in the Examiner's finding that "the mounting surface 13a
occupied by IC3 is the further mounting receptacle of the housing body 10."
Ans. 6.
Regarding contention 2, Appellant urges that Gorai's driving IC 3
does not process signals measured at the sensor chip and is, thus, "the
opposite of a signal processing chip [because it] controls the operation of the
sensor chip." App. Br. 12-13. This argument is not persuasive. The
Specification does not limit the definition of "signal processing chip" to only
those exhibiting the functions argued by Appellant. Rather, Appellant's
Specification broadly recognizes that "[ t ]he signal processing chip can be
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embodied for example as an integrated circuit in the form of an individual
chip." Spec. ,r 19. Thus, we discern no error in the Examiner's
determination that Gorai's "IC3 can be interpreted as [a] signal processing
chip." Ans. 6.
For these reasons, and those expressed by the Examiner, we sustain
the rejection of claim 23.
Claims 24 and 25
Claims 24 and 25 depend from claim 31 and recite that the sensor chip
is "mounted directly on a mounting receptacle by a rigid connection material
formed by a glass solder, metallic solder, or an epoxy resin adhesive" ( claim
24) or is mounted to the "mounting receptacle by a flexible connection
material formed by a silicone adhesive" ( claim 25). The Examiner finds that
Gorai teaches each of these limitations. Final 7 ( citing Gorai ,r 21 ). Gorai
teaches that sensor 2 is adhered to substrate 13 "by a resin adhesive 6 such
as an epoxy-based die bonding resin, a silicone-based die bonding resin, or a
fluorine-based die bonding resin." Gorai ,r 21.
Appellant asserts that Gorai fails to recognize whether the connection
between the sensor and the substrate is flexible or rigid, and that a flexible
connection is not guaranteed when using a silicone-based die bonding resin.
App. Br. 13. These arguments lack persuasive merit. Gorai expressly
discloses both epoxy-based and silicone-based resins for adhering the sensor
to the substrate. Gorai ,r 21. Appellant does not assert that the resins
disclosed by Gorai are any different than those encompassed by claims 24
and 25. App. Br. 13. Thus, it is of no moment whether Gorai uses the terms
"flexible" or "rigid" when describing these adhesives because "terms [that]
merely set forth the intended use for, or a property inherent in, an otherwise
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old composition ... do not differentiate the claimed composition from those
known in the prior art." In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974).
Rather,
[ w ]here, as here, the claimed and prior art products are identical
or substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on "inherency" under 35 U.S.C. § 102, on
"prima facie obviousness" under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO' s inability to manufacture products or to
obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted).
Here, Appellant's assertion that "there is no guarantee of forming a
flexible connection when a silicone-based die bonding resin is used" is not
considered to be evidence as "[a]ttomey's argument in a brief cannot take
the place of evidence." Pearson, 494 F.2d at 1405.
It follows that we sustain the Examiner's rejection of claims 24 and
25.
Re} ection II
Appellant argues this rejection as a group (App. Br. 13-14), so we
select claim 19 as representative and decide the propriety of this rejection
based on claim 19 alone. 37 C.F.R. 4I.37(c)(l)(iv).
Claim 19 depends from claim 3 1 and requires the housing body to
comprise "a ceramic material comprising aluminum nitride, silicon carbide
and/or silicon nitride." App. Br. 17. The Examiner relies on the combined
disclosures of Gorai, N agahiro, and Hamey to determine that claim 19
would have been obvious. Final 11-12. Specifically, the Examiner finds
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that "Hamey discloses the material of housing body package 12 can be
aluminum nitride," and that it would have been obvious to use aluminum
nitride in Gorai' s housing body because doing so would "reduce the liner
[ sic, linear] stress" associated with using a different material for die 16
which has a different coefficient of thermal expansion. Id. at 12 (citing
Hamey ,r,r 4, 31 ).
Appellant contends that the combination of Gorai and Hamey "will
not reduce the liner [ sic, linear] stress as suggested" in the rejection because
Gorai teaches that the linear expansion coefficients for the substrate and the
sensor is ideally the same, whereas Hamey teaches that these materials
should be selected so that the coefficients are "relatively close." App. Br.
13-14. This argument lacks persuasive merit because Appellant offers no
evidence to support its position. Pearson, 494 F.2d at 1405. Thus, the
rejection of claims 19 and 20 is sustained.
Rejection III
Appellant argues this rejection as a group (App. Br. 14), so we select
claim 32 as representative and decide the propriety of this rejection based on
this claim alone. 37 C.F.R. 4I.37(c)(l)(iv).
Claim 32 depends from claim 31 and requires the housing body to
comprise mullite. The Examiner rejects claim 32 as obvious over the
combined disclosures of Gorai, Nagahiro, and Tominaga. Specifically, the
Examiner finds that Tominaga discloses a housing body made of mullite and
determines that it would have been obvious to make Gorai's housing body
with Tominaga's mullite to prevent thermal straining of the sensor. Final 13
( citing Tominaga 4:57---62).
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Appellant asserts there is no motivation to combine Gorai with
Tominaga because "Gorai already teaches selecting a material ... so that the
thermal expansion of the MEMS sensor and the substrate are similar." App.
Br. 14. This argument is not persuasive. As stated by the Examiner in the
Answer, and unaddressed by Appellant in the Reply Brief, "[t]he selection of
a known material based on its suitability for its intended use" can support an
obviousness determination. Ans. 7. Here, selecting mullite as a material for
Gorai' s housing would have been obvious to the skilled artisan because
mullite was known to be a suitable housing material. Tominaga 4:61---63.
The skilled artisan would have recognized the desirability of matching the
linear expansion coefficients of the housing and the sensor in order to
prevent thermal straining of the silicon contained in the sensor. Id. at 4:57-
59; see also Gorai ,r 22 (explaining that "[i]t is ideal that the linear expansion
coefficient" of the substrate is the same as that of the sensor's base material).
Gorai' s sensor may contain silicon in its base material. Gorai ,r 21. Thus,
the skilled artisan would have found it obvious to use mullite, whose linear
expansion coefficient is similar to that of silicon (Tominaga 4:57-63), in the
sensor housing if the sensor's base material contained silicon.
It follows that we sustain the rejection of claims 32 and 39.
Re} ections IV & V
We have reviewed the Examiner's findings and conclusions provided
in the Final Action and the Answer for these rejections (Final 14--17; Ans.
5---6, 8), the portions of the cited references relied upon, as well as
Appellant's arguments against the rejections (App. Br. 14--15). Upon
consideration of the respective positions of the Examiner and Appellant, we
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are not persuaded of reversible error in these rejections, and sustain them for
the well-stated reasons provided in the Final Action and the Answer.
DECISION
The Examiner's final decision to reject claims 17, 19-25, 27, 28, and
31--40 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).
AFFIRMED
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