Ex Parte Jakovlev et al

Patent Trial and Appeal Board

Apr 28, 2017

14021298 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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.
2178-0857 5548
EXAMINER
INOUSSA, MOULOUCOULAY
ART UNIT PAPER NUMBER
2818
MAIL DATE DELIVERY MODE
14/021,298 09/09/2013
10800 7590 05/01/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Oleg Jakovlev
05/01/2017 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 OLEG JAKOLEV,
ALEXANDER BUHMANN, and ANDO FEYH
Appeal 2016-003135
Application 14/021,298
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—6 of Application 14/021,298
under 35 U.S.C. § 102(b) as anticipated. Final Act. (February 13, 2015).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Robert Bosch Tool Corp. and Robert Bosch GmbH are identified as the
real parties in interest. Appeal Br. 2.
Appeal 2016-003135
Application 14/021,298
BACKGROUND
The ’298 Application describes micromechanical sensor devices with
movable gates and methods for making such devices. Spec. 1. Claims 1 and
5 are representative of the ’298 Application’s claims and are reproduced
below from the Claims Appendix of the Appeal Brief with the limitations in
dispute italicized.
Claim 1. A micromechanical sensor device with movable
gate, the micromechanical sensor device comprising:
a field effect transistor including a drain region;
a source region;
a channel region arranged between the field effect
transistor and the source region and including a first doping
type, the channel region having longitudinal sides; and
a movable gate separated from the channel region by an
interspace,
wherein the drain region, the source region, and the
channel region are arranged in a substrate, and
wherein the substrate includes an oxide region at least at
the longitudinal sides of the channel region.
Appeal Br. 16 (emphasis added).
Claim 5. A method for producing a micromechanical sensor
device with a movable gate, the method comprising:
forming a field effect transistor having a drain region, a
source region, a channel region arranged between the drain
region and the source region and including a first doping type,
and a movable gate separated from the channel region by an
interspace, wherein the drain region, the source region, and the
channel region are arranged in a substrate; and
providing an oxide region in the substrate at least at
longitudinal sides of the channel region.
Id. at 17 (emphasis added).
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Appeal 2016-003135
Application 14/021,298
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 102(b) as
anticipated by Heyers.2 Final Act. 2.
2. Claims 1 and 3—6 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mizukoshi.3 Final Act. 3.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, 4, and 5 as
anticipated by Heyers. Final Act. 2. The Examiner must establish a prima
facie case of anticipation under § 102 by showing, as a matter of fact, that all
elements arranged as specified in a claims are disclosed within the four
comers of a reference, either expressly or inherently, in a manner enabling
one skilled in the art to practice an embodiment of the claimed invention
without undue experimentation. ClearValue, Inc. v. Pearl River Polymers,
Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex
Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008).
Appellants argue for reversal of this rejection on the basis of
limitations found in independent claims 1 and 5. Appeal Br. 4—10. Claims 2
and 4 are alleged to be patentable by virtue of their dependence from claim
1. Id. at 10. Thus, we limit our discussion to independent claims 1 and 5.
Claims 2 and 4 will stand or fall with claim 1.
Claim 1. Appellants argue that the rejection of claim 1 should be
reversed because Heyers does not describe a micromechanical sensor device
2 US 2002/0005530 Al, published January 17, 2002.
3 US 5,503,017, issued April 2, 1996.
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Appeal 2016-003135
Application 14/021,298
with movable gate “wherein the substrate includes an oxide region at least at
the longitudinal sides of the channel region.” Appeal Br. 4—7.
We begin by considering the proper interpretation of the claim
language in question. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331,
1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness require
comparison of the properly construed claims to the available prior art).
During prosecution, the PTO gives the language of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
any definitions or other enlightenment provided by the written description
contained in the application’s specification. In re Morris, 127 F.3d 1048,
1054—55 (Fed. Cir. 1997).
In rejecting claim 1, the Examiner concluded that
the terms “at the longitudinal sides of’ and “above and along
the longitudinal sides of’ are not mutually exclusive. It is
therefore reasonable to consider an oxide region that is above
and in physical contact with the channel region along the
longitudinal sides thereof to be “at the longitudinal sides of the
channel region”.
Answer 2—3.
Appellants argue that the rejection should be reversed because the
Examiner’s claim construction is erroneous. Appellants contend that the
proper interpretation of the phrase “an oxide region at least at the
longitudinal sides of the channel region” requires that the oxide region be
laterally adjacent to or displaced from the longitudinal sides of the channel
region. See Appeal Br. 4—6. Under this interpretation, an oxide region
above and in physical contact with the channel region would not be
considered to be at the longitudinal sides of the channel region.
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Application 14/021,298
One commonly used dictionary defines the word “at” as follows:
“used as a function word to indicate presence or occurrence in, on, or near.”
Webster’s Ninth New Collegiate Dictionary 111 (Merriam-Webster Inc.
1985) (emphasis added); see also At \ Define At at Dictionary.com,
Dictionary.com (last visited April 27, 2017) available at
http://www.dictionary.com/browse/at (“(used to indicate a point or place
occupied in space); in, on, or near: to stand at the door; at the bottom of the
barrel.”).
Moreover, the ’298 Application’s Specification does not define the
phrase at the longitudinal sides of the channel region in a manner that is
inconsistent with the ordinary meaning of the word at as indicating “in, on,
or near.” We recognize that the ’298 Application’s Specification only shows
embodiments of the claimed invention in which the oxide region is laterally
displaced from the longitudinal sides of the channel region. In construing a
claim’s language, however, we are not to read limitations derived from
preferred embodiments described in an application’s specification into the
claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(en banc) (“[Although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”).
In view of the foregoing, we conclude that the Examiner correctly
construed the phrase “an oxide region at least at the longitudinal sides of the
channel region,” as requiring that the oxide region be in, on, or near the
longitudinal sides of the channel region. We, therefore, agree with the
Examiner’s finding that Heyers describes a micromechanical sensor device
having an oxide region at least at the longitudinal sides of the channel
region.
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Application 14/021,298
Our inquiry, however, does not end here as the limitation at issue
requires the claimed oxide region to be included in the substrate. See Claim
1 (“wherein the substrate includes an oxide region . . (emphasis added)).
The Examiner found that that Heyers describes a micromechanical sensor
device having a substrate that includes an oxide region. Final Act. 2
(“Heyers discloses, in figs. 1—2, micromechanical sensor device . . . wherein
the drain region (12), the source region (13), and the channel region (21) are
arranged in a substrate (10 and 15). . . .”). In characterizing Heyers
description of its device in this manner, the Examiner is attempting to steal a
march. In fact, Heyers clearly describes the micromechanical sensor device
depicted in Figure 1 as being comprised of a substrate 10. Heyers 123.
Heyers further states that “a thin insulating layer or passivation layer 15 is
applied” to at least the so-called channel region 21 of integrated circuit 30 on
the surface of substrate 10. Id. 124. Heyers, therefore, clearly distinguishes
between substrate 10 and insulating silicon oxide layer 15. See also id. 126.
And the Examiner does not establish in some other way that a person having
ordinary skill in the art would have considered insulating layer 15 to be
included in substrate 10.
Thus, the Examiner’s finding that Heyers describes a substrate
including an oxide region is erroneous. On the record before us, therefore,
we are constrained to reverse the rejection of claims 1, 2, and 4 as
anticipated by Heyers.
Claim 5. Appellants argue that the rejection of claim 5 should be
reversed because Heyers does not describe the step of “providing an oxide
region in the substrate at least at longitudinal sides of the channel region.”
Appeal Br. 8—10.
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Application 14/021,298
We find that Appellants are correct. In particular, silicon oxide
insulating layer 15 is described as being on substrate 10. Heyers, therefore,
does not describe the step of providing an oxide region in a substrate. On
the record before us, we are constrained to reverse the rejection of claim 5 as
anticipated by Heyers.
Rejection 2. The Examiner rejected claims 1 and 3—6 as anticipated
by Mizukoshi. Final Act. 3. Appellants argue for reversal of this rejection
by pointing to imitations in independent claims 1 and 5. We, therefore, will
limit our discussion to these claims; dependent claims 3, 4, and 6 will stand
or fall with their parent independent claim.
Claim 1. Appellants argue that the rejection of claim 1 as anticipated
by Mizukoshi should be reversed because, inter alia, Mizukoshi does not
describe a substrate that includes an oxide region. Appeal Br. 14.
As is shown in Mizukoshi Figure 2a, oxide region 207 is deposited on
substrate 201. The Examiner, therefore, reversibly erred by finding that
Mizukoshi describes an apparatus comprising a substrate that includes an
oxide region. Accordingly, we reverse the rejection of claim 1 as anticipated
by Mizukoshi.
Claim 5. Appellants argue that the rejection of claim 5 as anticipated
by Mizukoshi should be reversed for the same reasons set forth with regard
to claim 1. Appeal Br. 13. In particular, Appellants argue, inter alia, that
the Examiner erred by finding that Mizukoshi describes an oxide region
provided in a substrate. Id. at 14.
For the reasons discussed in connection with the rejection of claim 1 as
anticipated by Mizukoshi, we find that Examiner reversibly erred by finding
that Mizukoshi describes the step of providing an oxide region in a substrate.
We, therefore, reverse the rejection of claim 5.
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Application 14/021,298
* * *
For the reasons set forth above, we reverse the rejection of claims 1
and 3—6 as anticipated by Mizukoshi.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 2,
4, and 5 as anticipated by Heyers. We also reverse the rejection of claims 1
and 3—6 as anticipated by Mizukoshi.
REVERSED
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