Ex Parte Lewis

Patent Trials and Appeals Board

Mar 29, 2019

14329129 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/329, 129 07/11/2014
45851 7590 04/02/2019
Treyz Law Group
15279 N. Scottsdale Rd., Suite 250
Scottsdale, AZ 85254
FIRST NAMED INVENTOR
David Lewis
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.
A03281Cl 4430
EXAMINER
THOMAS, LUCY M
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LEWIS
Appeal2018-003697
Application 14/329,129
Technology Center 2800
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3-12, 14--17, 19, and 20 of
Application 14/329,129 as unpatentable under 35 U.S.C. §§ 102(b) and
103(a). Final Act. 3-16 (Nov. 18, 2016). Appellant 1 seeks 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 The Appellant is the Applicant, Altera Corporation, which is also identified
as the real party in interest. Appeal Br. 2.
Appeal2018-003697
Application 14/329,129
BACKGROUND
The Specification relates to integrated circuits with configurable
multi-gate circuitry. Spec., Abstract. More particularly, the Specification
relates to multi-gate electromechanical switches that can be configured to
store desired switch states. Id. at 1.
Claim 1 is representative of the '129 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A multi-gate switch, comprising:
a source terminal formed on a substrate;
a drain terminal formed on the substrate;
first and second control gates formed on a surface of the
substrate between the source and drain terminals, wherein the
first control gate is entirely interposed between the second
control gate and the source terminal, and wherein the second
control gate is entirely interposed between the first control gate
and the drain terminal; and
a flexible conductive structure that flexes to connect the
source terminal to the drain terminal in response to voltages
directly applied on the first control gate and the second control
gate, wherein the source and drain terminals are formed on a
surface that is coplanar with the surface on which the first and
second control gates are formed, and wherein the multi-gate
switch comprises a single-pole single-throw switch.
Appeal Br. 29 (Claims App.).
2
Appeal2018-003697
Application 14/329,129
REJECTION
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 4--7 are rejected under 35 U.S.C. § 102(b) (pre-
AIA)2 as anticipated by Zavracky. 3 Final Act. 3-5.
2. Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Shen. 4 Id. at 5---6
3. Claims 3, 8-12, 14--17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Zavracky in view of Smith. 5 Id. at
7-11.
4. Claims 8-12, 14--17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Shen in view of Zavracky '839, 6
and Smith. Id. at 11-16.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 4--7 as anticipated
by Zavracky. Id. at 3-5. Appellant asserts error on several bases.
First, Appellant argues that Zavracky does not teach a multi-gate
switch "wherein the first control gate is entirely interposed between the
2 We refer to the pre-AIA version of the statute as the application claims
priority to Application No. 12/579,792, filed Oct. 15, 2009, which precedes
the March 16, 2013, effective date of the AIA.
3 US 5,638,946, issued June 17, 1997 ("Zavracky").
4 US 6,639,493 B2, issued Oct. 28, 2003 ("Shen").
5 US 6,509,605 Bl, issued Jan. 21, 2003 ("Smith").
6 US 6,153,839, issued Nov. 28, 2000 ("Zavracky '839").
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Application 14/329,129
second control gate to the source terminal," and "wherein the second control
gate is entirely interposed between the first control gate and the drain
terminal." Appeal Br. 6. The Examiner relies upon Figure 3A of Zavracky
as teaching these claim elements. Final Act. 3--4. Figures 3A and 3B of
Zavracky are reproduced below.
F1G. 3A
Figure 3A is a top view of a micromechanical switch. Zavracky, 5: 12-13.
Figure 3B is a side view of the same micromechanical switch depicted in
Figure 3A. Id. at 5: 14--15.
The Examiner finds that control gate 64' is entirely interposed
between source terminal 62 (not shown in Figure 3A) and second control
gate 64". Final Act. 3. The source terminal is understood to be located on
the left side of Figure 3A underneath the left side of beam 72 as shown in
Figure 3B.
Appellant argues that "plate 64' is at most partially interposed between
source 62 and plate 64", and plate 64" is at most partially interposed
between plate 64' and drain 66B." Appeal Br. 7.
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Application 14/329,129
In the Answer, the Examiner seems to argue for a broad interpretation
of "entirely interposed. " 7 Answer 3. The Examiner asserts that "as shown
in the instant application Figure 3A, only side surfaces of the first control
gate 30 are entirely interposed between source 34 and second control gate
32, top surface of 30 is not interposed between either 32 or 34." Id. The
Examiner makes a similar argument relating to gate 32. Id. Figure 3A of
the Application is reproduced below.
38
SUBSTRATE
28
............................... ··'""""'""""""""-~-------~""""""'""'"
The Specification indicates that "FIG. 3A is a schematic cross-sectional side
view of an illustrative multi-gate electro-mechanical switch in accordance
with an embodiment of the present invention." Spec. 5: 1 7-19.
In view of the foregoing, the Examiner determines that
7 The Panel notes that the term "entirely interposed" is not defined by, nor
even included in, the Specification. At present, the Panel takes no position
as to whether the Specification provides adequate written descriptive support
for the "entirely interposed" limitations to comply with the requirements of
35 U.S.C. § 112 ,r 1.
5
Appeal2018-003697
Application 14/329,129
"first control gate 64' is entirely interposed between 62 and 64" with
left/vertical side surface of 64' spaced from 62 and top/horizontal side
surface spaced from 64" as shown in Figure 3A." The Examiner further
determines that gate 64" "is entirely interposed between 64' and 66B, with
right/vertical side surface of 64" spaced from 66B and bottom/horizontal
side surface spaced from 64' as shown in Figure 3A." Answer 4. This
determination is in error.
Claim 1 requires that the control gates be "entirely interposed"
between the enumerated structures. The control gates (plates 64' and 64") of
Zavracky have only a minimal portion located between the source/drain and
other control gate. This does not qualify as "entirely interposed." Further,
the Examiner's determination that "entirely interposed" must be read
broadly in view of Specification Figure 3A (Answer 3--4) is unpersuasive.
In light of the foregoing, Appellant has shown reversible error in the
Examiner's determination that Zavracky teaches a multi-gate switch
"wherein the first control gate is entirely interposed between the second
control gate to the source terminal," and "wherein the second control gate is
entirely interposed between the first control gate and the drain terminal."
Appellant additionally argues that Zavracky does not teach "a single-
pole single-throw switch" as required by claim 1. Appellant asserts that "[a]
single-pol[ e] single-throw switch is commonly understood to be a switch
with a single input and a single output ( e.g., a single source and a single
drain)." Appeal Br. 8. Appellant argues that the Examiner has not shown
that the switch shown in Figure 3A of Zavracky is a single-pole, single-
throw switch. Id. In the Answer, the Examiner determines that the multi-
gate switch described in Figure 3A of Zavracky has a single source ( 62) and
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Application 14/329,129
a single drain (66 comprised of contacts 66A and 66B). Answer 4.
Appellant did not submit a Reply Brief.
Once the Examiner has set forth a prima facie case of unpatentability,
Appellant has the burden on appeal to demonstrate error in the Examiner's
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Here,
Appellant's argument is insufficient to demonstrate error by the Examiner.
Appellant additionally argues that Zavracky does not teach "a flexible
conductive structure that flexes to connect the source terminal to the drain
terminal." Appeal Br. 9. Appellant asserts that Zavracky teaches that beam
72 is made of nonconductive materials. Id. (citing Zavracky, 6:59---60 which
provides that "the beam 72 is fabricated of insulative materials").
In the Answer, the Examiner determines that the beam includes
conductive portions including upper isolated electrode 7 4 and beam contact
7 6, therefore, "the beam body of the flexible conductive structure comprises
conductive metals." Answer 6.
Claim 1 requires, in part, "a flexible conductive structure that flexes to
connect the source terminal to the drain terminal in response to voltages." In
Figure 3A of the Specification, the flexible conductive structure is bridge 38
( shown, supra), which connects that source and drain. The term
"conductive" must be read in the context of the claim. See Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[W]e look to
the words of the claims themselves, both asserted and nonasserted, to define
the scope of the patented invention."). The limitation at issue requires a
conductive structure that electrically connects the source and drain. The
structure taught by Zavracky has not been shown to be adapted for such
function. Accordingly, Zavracky does nto teach "a flexible conductive
structure that flexes to connect the source terminal to the drain terminal."
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Application 14/329,129
In view of the foregoing, Appellant has shown error in this regard.
Rejection 2. The Examiner rejected claims 1, 4, 5, and 7 as
anticipated by Shen. Final Act. 5---6. In support of this rejection, the
Examiner relies primarily on Figures 8A-8C of Shen. These figures are
reproduced below for convenience.
FIG .. 8A
FIG. 88
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Application 14/329,129
Htl
;
./
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' ~12
FIG.SC
Figures 8A-8C illustrate "detailed views of a micro-machined RF switch
600 with an electrostatic actuation mechanism." Shen, 15 :2-3. Figure 8A
shows a top view and Figures 8B and 8C show cross-sectional views of
micro-machined RF switch 600. Id. at 15:4--6.
The Examiner found that reference signals 818 and 820 teach the
"source terminal" limitation, RF signal transmission line 816 and 822 teach
the "drain terminal" limitation, and gate metals 810 and 812 teach the first
and second control gates. Final Act. 5. The Examiner further found that
Shen teaches that first and second control gates (810, 812) are formed
between the source (818) and drain (822) terminals. Id.
Shen teaches that cantilever 112 can be in three separate
conformations as follows:
As illustrated in FIGS. 8A-8C, cantilever 112 can have
three states. FIG. 8C shows a first state for cantilever 112, FIG.
8B shows a second state for cantilever 112, and a third state
(not shown) for cantilever 112 is similar to the first state shown
in FIG. 8C. In the third state, however, cantilever 112 rotates in
the opposite direction. Cantilever 112 switches into the first
state, which is shown in FIG. 8C, by applying a voltage to first
gate metal 812 to induce an electrostatic attraction between first
gate metal 812 and conducting layer 120. Similarly, cantilever
112 switches into the third state by applying a voltage to second
gate metal 810 to induce an electrostatic attraction between
second gate metal 810 and conducting layer 120. Cantilever
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Application 14/329,129
112 switches into the second state, which is shown in FIG. 8A,
by removing from, or not applying the voltage to both of first
and second gate metals 812 and 810. The second state for
cantilever 112 is essentially a free standing state.
Shen, 15 :48---64. That is, the cantilever of Shen has a "seesaw" like motion
where one end of the cantilever may be in a raised position while the
opposite end is in contact with the conductive elements (as shown in Figure
8C). In the alternative (in the "second state" shown in Figure 8B), both ends
may be in an intermediate position not in contact with the conductive
elements.
Appellant argues that Shen does not teach that the "the first control
gate is entirely interposed between the second control gate and the source
terminal, and wherein the second control gate is entirely interposed between
the first control gate and the drain terminal." Appellant further argues that
Shen does not teach "a flexible conductive structure that flexes to connect
the source terminal to the drain terminal in response to voltages directly
applied on the first control gate and the second control gate." Appeal Br.
10-12.
Appellant does not directly contest the Examiner's finding that gates
(810, 812) are formed between source terminal 818 and drain terminal 822.
Rather, Appellant argues that the claim requires that the gates be located
between the "source" and "drain" actually connected by the cantilever
(bridge) structure. Thus, while Shen teaches a conductive structure that
connects a source and a drain, there is no control gate between such source
and drain. Likewise, Shen teaches control gates interposed between a source
and a drain, but such source and drain are not taught to be connected. The
Examiner's finding in the Answer (Answer 7) that drain 822 and source 818
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Application 14/329,129
are connected by the ground lines is not persuasive as the claim requires that
they be connected by the conductive bridge. Thus, the structure of Shen
cannot be seen to meet both of the limitations quoted above.
Accordingly, Appellant has shown error in this regard.
Appellant additionally argues that Shen does not teach "a single-pole
single-throw switch" as required by claim 1. Appeal Br. 13-14. Appellant
cites Shen's teaching that "[i]n the embodiment shown in FIGS. 8A-8C, RF
switch 600 is shown as a latching single-pole double-throw switch." Appeal
Br. 13; Shen, 16:47--48.
In the Answer, the Examiner determines that "a single-pole double-
throw switch comprises a single-pole single-throw switch (with a single/one
throw at least one switch is being closed/open) and meets the limitation."
Answer 9. We further note that Shen teaches that "in alternative
embodiments, single-pole single-throw and other configurations for a
electrostatically actuated RF switch 600 are also possible, as would be
understood by persons skilled in the relevant art( s) from the teachings
herein." Shen, 16:49-53.
Given Shen's teaching regarding single-pole, single-throw
configurations, we discern no error in the Examiner's determination that
Shen teaches a single-pole, single-throw switch.
In view of our determinations that Shen does not teach the "entirely
interposed" limitation nor the "flexible conductive structure" limitation, we
reverse the rejection of claims 1, 4, 5, and 7 as anticipated by Shen.
Rejection 3. The Examiner rejected claims 3 and 8-20 as obvious
over Zavracky in view of Smith. Final Act. 7-11. Appellant argues that this
rejection should be reversed on several bases. Appeal Br. 14--20.
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Application 14/329,129
First, Appellant argues that the rejection of claim 3 should be reversed
in view of its dependency from claim 1 and Appellant's arguments
submitted regarding claim 1. As the Examiner relies upon the same portions
of Zavracky in rejecting claim 3 and we have found Appellant's arguments
regarding claim 1 sufficient to justify reversal, we similarly determine that
the rejection of claim 3 should be reversed.
Second, Appellant argues that the references do not teach a switch
having "a conductive structure having a proximal end that is shorted to the
source terminal" as required by claim 8. The Examiner relies on Zavracky
as teaching this claim element. Final Act. 7; Answer 11-12. Figure 3B of
Zavracky (reproduced above) shows beam 72 attached to source 62. Beam
72 is taught to made of insulative materials apart from isolated electrode 7 4
and beam contact 7 6. Thus, the portion of beam 72 in contact with source
62 is not conductive. Accordingly, the conductive structure (beam/bridge) is
not "shorted to the source terminal."
Third, Appellant argues that the rejection of claim 8 should be
reversed because the applied references, Zavracky and Smith, are not
properly combinable. Appeal Br. 17-19.
Smith teaches a switch having a floating gate where "[ c ]harge can be
applied to the floating gate by urging the cantilever 8 into contact with the
floating gate 6, allowing charge to be transferred from the cantilever 8."
Smith, 2:64---67. Figure 2B of Smith is reproduced below.
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Application 14/329,129
8
2
Figure 2B of Smith is a schematic diagram of a flash memory element with
the cantilever 8 in contact with the floating gate 6. Smith, 2:33-34, 64---67.
Appellant argues that the switch of Smith is fundamentally different
from that of Zavracky. Appeal Br. 17. Appellant argues that the cantilever
of Smith is specifically designed not to be in contact with drain 4 and
therefore operates in a manner "fundamentally different" from Zavracky. Id.
This arguments is unpersuasive. Both Smith and Zavracky teach a
bridge/cantilever that is electrically insulated from the terminal below.
Further, Appellant has not addressed the Examiner's finding that "in
MOSFET technology, source and drain terminals are interchangeable
depending on the type/operation mode of switch." Thus, the lack of
electrical connectivity between the cantilever and the drain does not
represent a fundamental difference as argued by Appellant.
Appellant further argues that,
[i]f the switch of Zavracky '946 were somehow modified in
view of Smith as suggested in the Office Action to have only a
single drain rather than two drains 66A and 66B, such a
modification would render Zavracky '946 inoperable for its
intended purpose of enabling electrical communication between
the two drain contact electrodes 66A and 66B.
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Application 14/329,129
Appeal Br. 18. This is unpersuasive. The intended purpose of Zavracky is
to act as a multi-gate switch, not to connect drain contact electrodes.
Accordingly, Appellant has not shown reversible error in the Examiner's
stated reason to combine the teachings of Zavracky and Smith.
Because Appellant has shown error in the rejection of claim 1
("entirely interposed" and "flexible conductive structure" limitations) from
which claim 3 depends, the rejection of claim 3 is reversed. Appellant has
additionally shown error in the rejection of claim 8 ("shorted to the source
terminal" limitation) and claims 9-12 and 14 which depend therefrom.
Appellant has additionally shown error in the rejection of claim 15 ("entirely
interposed" and "flexible conductive structure" limitations) and claims 16,
17, 19, and 20 which depend therefrom. Accordingly, the rejection of
claims 3, 8-12, 14--17, 19, and 20 over Zavracky in view of Smith is
reversed.
Rejection 4. The Examiner rejected claims 8-12, 14--17, 19, and 20
as obvious over Shen in view of Zavracky '839 and further in view of Smith.
Final Act. 11-16. Appellant argues that such rejection is in error on several
bases.
Appellant argues that the Examiner has not stated an adequate reason
to combine the teachings of Shen and Zavracky '839, Appeal Br. 21-22, and
that the teachings of Shen and Zavracky '839 are incompatible, id. at 22-24.
In rejecting these claims, the Examiner found that Shen does not teach "a
conductive structure [bridge] having a proximal end that is shorted to the
source terminal." Final Act. 12. The Examiner found, however, that such
limitation is taught by Zavracky '839 which discloses a switch having a
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Application 14/329,129
flexible conductive structure "having a proximal end that is shorted to a
source terminal." Id.
In the Final Rejection, the Examiner briefly indicated that one of
ordinary skill in the art would have had reason to combine the teachings of
Shen and Zavracky '839 "as the configuration of the flexible conductive
structure/beam is based on the type of switch." Final Act. 13. The
Examiner further expanded and modified the stated reason to combine in the
Answer. Answer 14--16. In the Answer, the Examiner relied upon Figures
IA and IB of Shen which teach a latching relay where the cantilever 112 is
shorted to "conductive staging layer 110" (source). The Examiner's findings
regarding Shen Figures IA and IB do not support the Examiner's
determination regarding reason to combine the the teachings of Shen Figures
8A-8C in view of the significant differences between the two structures.
Appellant additionally argues that claim 15 and its dependents ( claims
16, 17, 19, and 20) were rejected in error. Appeal Br. 25-27. Claim 15
requires "a flexible conductive structure that flexes in response to high
voltages simultaneously applied to both the first control gate and the second
control gate, wherein the switch comprises a single-pole single-throw
switch." The Examiner finds that Shen does not teach such feature. Final
Act. 14--15. The Examiner further finds that Zavracky '839 does teach a
bridge structure that flexes in response to simultaneously applied voltages.
Id. at 15. The Examiner determines that one of ordinary skill in the art
would have had reason to combine the teachings of Shen and Zavracky '839
as follows:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to provide in the switch of Shen,
the high voltages also simultaneously applied to both control
gates, as the mode/timing of application of voltages to the control
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Application 14/329,129
gates is based on the configuration of switch terminals and the
type of switch (see Shen, Column 16, lines 47-53) and Zavracky
'439 teaches a switch configuration having the first and second
control gates on the same substrate and having one source and
drain terminal and applying high voltages to control gates
simultaneously ....
Id. at 15. The core of this determination is that "the mode/timing of
application of voltages to the control gates is based on the configuration of
switch terminals and the type of switch." Id. This is merely conclusory.
See Kahn, 441 F.3d at 988 ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."). More detailed analysis is necessary to show
how and why one of skill in the art would have combined the teachings of
two references with meaningful differences.
In the Answer, the Examiner determined that Shen's teaching to
achieve the "second state," where neither end of the cantilever touches a
contact "by removing from or not applying voltages to the first and second
gate metals," is the same as applying "zero volts." Answer 17. On this
basis, the Examiner additionally determines that Shen teaches the claimed
"high voltages simultaneously applied to both the first control gate and the
second control gate." This is in error at least because zero is not a "high
voltage."
Accordingly, Appellant has shown error in the Examiner's stated
reason to combine the teachings of Shen and Zavracky '839.
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CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1,
3-12, 14--17, 19, and 20.
REVERSED
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