Ex Parte Lee et al

Patent Trials and Appeals Board

Dec 18, 2018

14286600 - (D) (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/286,600 05/23/2014
23494 7590 12/20/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Dok Won Lee
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.
TI-72547 7181
EXAMINER
PARK, SAMUEL
ART UNIT PAPER NUMBER
2818
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOK WON LEE,
WILLIAM D. FRENCH, and ANN GABRYS
Appeal2018-001844
Application 14/286,600
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claim 6 under 35 U.S.C. § 103 as unpatentable over
Sturcken2 in view of Gouchi et al. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is Applicant, Texas Instruments Incorporated, which also is identified
as the real party in interest. Appeal Brief dated August 7, 2017 ("App. Br."), at 2.
2 US 2014/0068932 Al, published March 13, 2014 ("Sturcken").
3 US 2014/0043196 Al, published February 13, 2014 ("Gouchi").
Appeal2018-001844
Application 14/286,600
Claim 6 is reproduced below from the Claims Appendix to the Appeal Brief.
The limitation at issue is italicized.
6. A method of forming an integrated magnetic device,
compnsmg:
forming an insulating layer above a silicon wafer;
forming a polymer layer above the insulating layer;
forming an inductor coil within the polymer layer and along a
vertical cross-section of the polymer layer, the inductor coil having a
coil member parallel to a horizontal cross-section of the polymer
layer, such that the horizontal cross-section is perpendicular to the
vertical cross-section; and
forming an integrated circuit with the insulating layer, the
polymer layer, and the inductor coil positioned above an active region
of the silicon wafer.
App. Br. 15.
B. DISCUSSION
The Examiner finds that Sturcken discloses a method of forming an
integrated magnetic device as recited in claim 6, with the exception of forming a
polymer layer. Instead, the Examiner finds that Sturcken discloses forming a
dielectric layer that corresponds to the claimed polymer layer. Final Act. 4--5. 4
Annotated Sturcken Figure 3A, reproduced below, illustrates the Examiner's
findings. Final Act. 3.
4 Final Office Action dated May 8, 2017.
2
Appeal2018-001844
Application 14/286,600
J.·•t:::
(.-,m.;<\ ;;() 2tr':';i:'iil ( .. , .. ~·~"'"'""'\ r;~;;;~:;,;;:;;;;;··1
~ J ,: ,,>;;:-::,. ...................... ~«,-...:........_\ -:, "- { :.:: f"..:,.
, ,, . , .. ·. ~ "~''''"'"'"'""''"'~"'~''*""'~'"'' '"''"''·•··~",2\;,];!:ft::::J});,;,,t,.ec
L:::!:::J I ~"\iJ,:; i~1, ...... ) 1 I '···~'L::~~:~:::~~E]
Annotated Sturcken Fig. 3A is a schematic
cross-sectional view of a planar magnetic core
inductor integrated into a multilevel wiring network.
Gouchi discloses an antenna device comprising a magnetic substance and a
coil conductor. Gouchi ,r 3. The Examiner finds that Gouchi discloses a polymer
resin polyimide which is a dielectric material that can be incorporated as the
material for Sturcken's dielectric layer. Final Act. 5 (citing Gouchi ,r 78). The
Examiner finds that the combination of Sturcken and Gouchi is a simple
substitution of one known dielectric material for another known dielectric
material. 5 Final Act. 5---6; see also In re Fout, 675 F.2d 297,301 (CCPA 1982)
("Express suggestion to substitute one equivalent for another need not be present to
render such substitution obvious."). As additional support for that finding, the
Examiner directs our attention to Figure 4 and column 5, line 35 to line 67 of
5 The Examiner also concludes that it would have been obvious to one of ordinary
skill in the art to incorporate Gouchi's polyimide material as the first, second,
third, and fourth dielectric material of Sturcken "because the combined integrated
magnetic device would provide a thermoplastic resin having plasticity, which
provides high rigidity and is more resistant to breakage." Final Act. 5 (citing
Gouchi ,r,r 78, 126). Appellant argues that the Examiner's conclusion is erroneous.
It is not necessary to address Appellant's argument in view of our alternative
reasons for sustaining the obviousness rejection on appeal.
3
Appeal2018-001844
Application 14/286,600
Kossives et al., 6 Figure 4 and paragraph 47 of Feygenson et al.,7 and Figures 2-3
and paragraph 56 of Hiatt et al. 8 Adv. Act. 7-8. 9
Appellant does not dispute that the polymer resin polyimide disclosed in
Gouchi is a dielectric material and thus has insulating properties. Rather,
Appellant argues that "the fabrication process of the Sturcken small-scale device is
drastically different from that of the Gouchi large-scale antenna." App. Br. 9. The
Appellant argues:
On the one hand, Sturcken teaches an integration circuit fabrication
scheme that requires fine precision deposition and etching of the
dielectric layers, which has a tolerance margin of only a few
microns. . . . And on the other hand, Gouchi teaches a fabrication
scheme for large-scale standalone antenna device, which employs a
process that does not require the same precision as in Sturcken. As an
example, instead of depositing the resin layers, Gouchi teaches simply
laminating the resin layers on top of each other and perform either a
thermocompression process or an adhesive process to bind these resin
layers together.
App. Br. 9.
In response, the Examiner explains that the combination of Sturcken and
Gouchi is based on the substitution of one known dielectric material for another
known dielectric material, not an incorporation of Gouchi' s fabrication method
into the method of Sturcken. Ans. 12. 10 The Examiner relies on Kossives,
Feygenson, and Hiatt as additional evidence that Sturcken's dielectric material and
Gouchi's polymer resin polyimide are known equivalents and that Gouchi's
polymer is easily fabricated with fine precision. Id. at 13; see also e.g., Kossives,
6 US 6,118,351, issued September 12, 2000 ("Kossives").
7 US 2002/0037434 Al, published March 28, 2002 ("Feygenson").
8 US 2003/0005569 Al, published January 9, 2003 ("Hiatt").
9 Advisory Action dated July 25, 2017.
10 Examiner's Answer dated October 23, 2017.
4
Appeal2018-001844
Application 14/286,600
col. 5, 11. 54--58 (disclosing that insulative layers may be formed from an inorganic
composition (e.g., silicon-dioxide), an organic polymer (e.g., a polyimide) or any
other insulating material); Hiatt ,r,r 56-57 (disclosing that an insulating layer of
polymer is deposited and then defined by standard thin film techniques to create a
trench). Significantly, the Appellant does not raise any procedural objection to the
citation of these references and does not address the Examiner's findings relating
to Kossives, Feygenson, or Hiatt in either the Appeal Brief or the Reply Brief. In
any event, selecting a known material (a polyimide dielectric material as disclosed
in Gouchi) based on its expected suitability as a dielectric material in Sturcken
would have been obvious to a person having ordinary skill in the art. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ) ("The combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.").
Based on the foregoing, a preponderance of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the obviousness rejection is
sustained.
C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
5