Ex Parte Lamers et al

Patent Trial and Appeal Board

Oct 31, 2012

11502277 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KRISTINA L. LAMERS and R. SHANE FAZZIO
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Appeal 2010-005333
Application 11/502,277
Technology Center 2800
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Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

MCKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 14-28. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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SUMMARY
Appellants appeal from the Examiner‟s rejections of claims 14-28:
Claims 14, 16, 19, 20, 24, and 26-28 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Subramanian (US 2006/0055048 A1; published
Mar. 16, 2006) and Gelorme (US 4,882,245; Nov. 21, 1989).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious over
Subramanian, Gelorme, and Park (US 2005/0230767 A1; published Oct. 20,
2005).
Claims 17, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
obvious over Subramanian, Gelorme, and Cheng (US 6,689,643 B2; Feb. 10,
2004).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious over
Subramanian, Gelorme, and Ozgur (US 2003/0104649 A1; published June 5,
2003).
Claims 22 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious
over Subramanian, Gelorme, and Benavides (US 6,821,819 B1; Nov. 23,
2004).

STATEMENT OF CASE
According to Appellants, the present invention is directed to “[a]n
etch-stop layer and method of use . . . .” (Abstract.) Independent claim 14 is
illustrative and is reproduced below with key disputed limitations
emphasized:
14. A semiconductor device configured for
microfluidic applications, comprising:
a substrate having first and second opposing sides;
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an opening in the substrate configured as a channel for
fluid flow therethrough; and
an etch-stop and photoresist layer disposed on the first
side of the substrate and in contact therewith, the layer being
disposed over the opening, layer comprising a
photolithographically patternable epoxy and having sufficient
structural integrity to span the opening while not sagging into
or over the opening.

CONTENTIONS
The Examiner finds that Subramanian discloses every limitation of
claim 14, except for the disclosed etch stop photoresist layer being
composed of a photolithographically patternable epoxy having sufficient
structural integrity to span the opening while not sagging into or over the
opening. (Ans. 3, 7-8.) The Examiner, however, relies on Gelorme to teach
or suggest this feature. (Ans. 4, 8.)
Appellants contend, inter alia, that Subramanian and Gelorme,
collectively, fail to teach (1) a semiconductor device configured for
microfluidic applications, (2) the semiconductor device comprising an etch-
stop and photoresist layer disposed on a first side of a substrate and in
contact therewith, the layer being disposed over an opening configured as a
channel for fluid flow therethrough, and (3) the layer comprising a
photolithographically patternable epoxy having sufficient structural integrity
to span the opening while not sagging into or over the opening. (App. Br.
41-43; Reply Br. 12-15.)
Appellants also present four arguments as to why one of ordinary skill
would not have combined Subramanian with Gelorme to arrive at the
claimed invention. (App. Br. 44-46; Reply Br. 15-16.) First, Appellants
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contend that there are elements missing from the cited combination. (App.
Br. 44-46; Reply Br. 15-16.) Second, Appellants argue that neither of the
cited references recognizes the problems solved by the claimed invention.
(App. Br. 44-46; Reply Br. 15-16.) Third, Appellants state that there is no
“teaching[,] suggestion[,] or motivation anywhere in the Gelorme or
Subramanian references to produce the claimed invention.” (App. Br. 44-
46; Reply Br. 15-16.) And fourth, Appellants maintain that there is no
suggestion in the cited combination as to the direction of experimentation to
obtain the claimed invention. (App. Br. 44-46; Reply Br. 15-16.)
With respect to the obviousness rejection of dependent claim 15,
Appellants dispute that Parks teaches a sealing layer. (App. Br. 47-51.)

ISSUES
1. Under § 103, has the Examiner erred by finding that Subramanian
and Gelorme collectively would have taught or suggested:
(a) a semiconductor device configured for microfluidic
applications?
(b) an etch-stop and photo-resist layer disposed on a first side of
a substrate and in contact therewith, the layer being disposed over an
opening configured as a channel for fluid flow therethrough?
(c) a layer comprising a photolithographically patternable
epoxy having sufficient structural integrity to span the opening while
not sagging into or over the opening?
2. Is the Examiner‟s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner‟s obviousness conclusion?
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3. Under § 103, has the Examiner erred by finding that Subramanian,
Gelorme, and Park collectively would have taught or suggested a sealing
layer?

ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 14, 16, 19, 20, 24, AND 26-28
Claim 14
On this record, we find no error in the Examiner‟s obviousness
rejection of claim 14.
First, Appellants argue that Subramanian and Gelorme collectively do
not teach “[a] semiconductor device configured for microfluidic
applications.” (App. Br. 41; Reply Br. 12-13.) Notably, this limitation is
recited only in the preamble of claim 14. While “a preamble [may] limit[]
the invention if it recites essential structure or steps, or if it is „necessary to
give life, meaning, and vitality‟ to the claim,” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)),
Appellants present neither argument here. Instead, Appellants merely recite
the preamble language and state that the cited references fail to teach this
feature. This is insufficient to persuade us that the preamble is more than a
statement of intended use or that the language would further structurally
limit the claimed invention. Nonetheless, Subramanian‟s through-wafer vias
are “microfluidic interconnects” in devices, such as MEMS devices or
microfluidic devices. (Ans. 3 (citing Subramanian ¶ [0017]).) Thus,
Subramanian does in fact teach a semiconductor device configured for
microfluidic applications.
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Appellants dispute that Subramanian teaches “a photo-resist layer
disposed on a first side of a substrate and in contact therewith, the layer
being disposed over an opening.” (App. Br. 41.) In response, the Examiner
identifies that Subramanian describes that “a photo-resist can be used as the
mask/etch-stop material . . . .” (Ans. 7, 9 (citing Subramanian ¶ [0019]).)
Appellants fail to rebut this determination, and, accordingly, we see no error
in the Examiner‟s findings.
Next, Appellants contend that Gelorme does not teach an etch stop
layer. (App. Br. 29.) However, the Examiner concludes, and Appellants
admit, that Subramanian discloses the claimed etch stop layer (App. Br. 27);
Gelorme need not also teach this limitation. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants also assert that neither Subramanian nor Gelorme teaches a layer
comprising a photolithographically patternable epoxy having sufficient
structural integrity to span the opening while not sagging into or over the
opening. This argument, however, is unavailing. As identified by the
Examiner, Subramanian depicts a layer over an opening. (Ans. 3, 7 (citing
Subramanian Fig. 4d).) While Subramanian‟s layer does not comprise a
photolithographically patternable epoxy, Gelorme cures this deficiency.
Namely, Gelorme‟s photoresist layer includes precisely the same material,
SU-8, as disclosed in the present Specification. (Ans. 4, 8-9 (comparing
Gelorme col. 4, l. 7 and Examples 1-7 with Spec. ¶ 0016).) Moreover, as
correctly pointed out by the Examiner, Appellants‟ Specification recognizes
that the material of Gelorme, SU-8, is a material having sufficient structural
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integrity to span the opening while not sagging into or over the opening.
(Ans. 4.) Therefore, we agree with the Examiner that Gelorme satisfies this
limitation.
Appellants further quote claim 14‟s language and make blanket,
conclusory statements, without any support, that the cited prior art does not
teach these claim limitations. (App. Br. 43-44; Reply Br. 13-14.) This form
of argument is ineffective in demonstrating error in the Examiner‟s findings
or legal conclusions to establish the patentability of the claims on appeal.
See Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37(c)(1)(vii) (holding that a
statement that merely points out what a claim recites will not be considered
an argument for separate patentability of the claim).
Finally, we are not persuaded by Appellants that the combination of
Subramanian and Gelorme is improper. First, as outlined in detail above, we
agree with the Examiner that the cited combination teaches or suggests the
limitations of claim 14. Thus, we disagree with Appellants that any claim
limitations are missing.
Next, we remain unpersuaded of nonobviousness by Appellants‟
remaining arguments regarding the combination of Subramanian and
Gelorme. Appellants argue that there is no incentive, teaching or suggestion
in the references to produce the claimed invention (App. Br. 44). However,
satisfying the teaching, suggestion, or motivation test is only one way to
demonstrate obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007). It is now well established that alternative reasoning may be used.
For example, a combination may be obvious when, as here, it is merely the
combination of familiar elements according to known methods to yield
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predictable results. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
In the present case, the Examiner first factually identifies that each of
the limitations is taught by either Subramanian or Gelorme. (Ans. 3, 7-9.)
Then, the Examiner determines that the combination would have been
obvious because it was merely the combination of known elements to
achieve predictable results. (Ans. 3-4, 10.) More specifically, the Examiner
articulates that skilled artisans would combine the references because
Subramanian specifically contemplates the use of a photoresist for the etch-
stop layer and a skilled artisan would consider other photoresist materials,
such as Gelorme‟s improved non-brittle and non-distortable photoresist.
(Ans. 10.)
Appellants fail to provide any persuasive evidence or arguments to
rebut these findings. While Appellants assert that Gelorme is directed to a
wholly different field and art, the only distinction identified by Appellants is
that Gelorme is directed to a process of manufacturing a circuit board. To
the contrary, Gelorme is more generally directed to photoresist
compositions. (See Gelorme col. 1, ll. 10-13.) Subramanian, as well as the
present application, describes the use of a photoresist and, as explained by
the Examiner, a skilled artisan would consider other known photoresist
materials. (Ans. 10.) Thus, merely stating that Gelorme‟s photoresist can be
used in manufacturing a printed circuit board fails to explain why a skilled
artisan would discount the known photoresist composition of Gelorme in
view of the Subramanian reference. Therefore, based upon the record before
us, Appellants have not rebutted the prima facie case of obviousness
presented by the Examiner.
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Accordingly, we find no error in the Examiner‟s findings and sustain
the obviousness rejection of claim 14.

Claims 16, 19, 20, 24, and 26-28
Because Appellants present the same arguments with respect to claims
16, 19, 20, 24, and 26-28 (App. Br. 41-46), we also sustain the Examiner‟s
obviousness rejection of claims 16, 19, 20, 24, and 26-28 (Ans. 3-10) for the
reasons noted above.

THE OBVIOUSNESS REJECTION OF CLAIM 15
Claim 15
We also sustain the obviousness rejection of claim 15. (Ans. 4-5, 10-
11.) Appellants argue that Parker does not disclose a sealing layer because
the seal layer identified by the Examiner is compressible. (App. Br. 34.)
We do not address this argument because we find that Subramanian itself
discloses a sealing layer. (See Subramanian Fig. 4d, item 32.) Note that in
sustaining a multiple-reference rejection under 35 U.S.C. § 103(a), the
Board may rely on a subset of the cited references without designating the
affirmance as a new ground of rejection. In re Boyer, 363 F.2d 455, 458 n.2
(CCPA 1966) (citing In re Bush, 296 F.2d 491, 496 (CCPA 1961)).

THE REMAINING OBVIOUSNESS REJECTIONS
Claims 17, 18, 21-23, and 25
Because Appellants present the same arguments with respect to claims
17, 18, 21-23, and 25 (App. Br. 52-66), we also sustain the Examiner‟s
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obviousness rejections of claims 17, 18, 21-23, and 25 (Ans. 5-7, 11-12) for
the reasons noted above.

DECISION
The Examiner‟s decision rejecting claims 14-28 is affirmed.

AFFIRMED

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