Ex Parte Nguyen et al

Patent Trial and Appeal Board

Dec 9, 2015

12032069 (P.T.A.B. Dec. 9, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/032,069 02/15/2008 Vinh N. Nguyen
63796 7590 12/11/2015
DINSMORE & SHOHL LLP
P.O. BOX 7021
TROY, MI 48007-7021
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.
TTC-55802/08dws 3705
EXAMINER
STEVENS, GERALD D
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
12/11/2015 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@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINH N. NGUYEN, SERDAR H. YON AK, DAVID R. SMITH,
and JUNGSANG KIM 1
Appeal2014-000687
Application 12/032,069
Technology Center 2800
Before RICHARD E. SCHAFER, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11and15-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the Real Party in Interest is Toyota Motor
Engineering & Manufacturing North America, Inc. App. Br. 1.
Appeal2014-000687
Application 12/032,069
CLAIMED SUBJECT MATTER
The invention relates to metamaterials having tunable properties.
Spec. i-f 1; Claim 1. Claim 1, reproduced below from page 10 (Appendix A)
of the Appeal Brief, is representative of the claims on appeal:
1. A metamaterial, the metamaterial comprising a plurality of
resonant circuits supported by a substrate,
at least one resonant circuit being a tunable resonant circuit
including a variable capacitor having a variable air gap
capacitance formed by a pair of electrodes, the pair of
electrodes being a first electrode and a deformable electrode,
the first electrode being located on the substrate,
the deformable electrode being spaced apart from the substrate
and supported by a deformable electrode support,
the deformable electrode being deformable by an electrical
control signal so as to vary the width of an air gap located
between said first electrode and said deformable electrode by
urging the electrodes together and pushing the electrodes apart
as a function of the polarity and magnitude of the control
signal, which varies the variable air gap capacitance of the
variable capacitor, and thereby to modify electromagnetic
properties of the resonant circuit,
the deformable electrode support being electrically insulating
and disposed so as to prevent physical contact between the first
electrode and the deformable electrode,
the air gap being defined by opposed surfaces of the first
electrode and the deformable electrode support supporting the
second electrode.
Musolf et al.
Rule et al.
Scardelletti
EVIDENCE RELIED ON BY THE EXAMINER
US 6,625,004 B 1
US 7,525,711 Bl
US 7,583,169 Bl
2
Sept. 23, 2003
Apr. 28, 2009
Sept. 1, 2009
Appeal2014-000687
Application 12/032,069
ANALYSIS
Claims 1-11and15-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rule in view of Musolf and Scardelletti. The
Appellants do not argue the claims separately, so the claims stand or fall
together. 37 C.F.R. § 41.37(c)(l)(iv). We treat claim 1, reproduced above,
as representative of the claims on appeal.
After review of the evidence in the appeal record and the opposing
positions of the Appellants and the Examiner, we determine that the
Appellants have not identified reversible error in the Examiner's rejection.
Accordingly, we affirm the rejection largely for reasons set forth by the
Examiner in the Final Rejection and in the Answer. See generally Final
Rejection at 2-7; Ans. 3-7. We add the following primarily for emphasis.
The Examiner concluded that the subject matter of claim 1 would
have been obvious in view of Rule, Musolf, and Scardelletti. The Examiner
found, inter alia, (1) that Rule teaches a metamaterial comprising a plurality
of resonant circuits supported by a substrate, at least one resonant circuit
being a tunable resonant circuit including a variable capacitor, (2) that Rule
fails to teach each variable capacitor having first and deformable electrodes
with the deformable electrode being supported by a deformable structure
spaced apart from the substrate, (3) that Musolf teaches a first electrode and
a deformable electrode constituting a variable capacitor having a variable air
gap capacitance, and that an insulating dielectric layer prevents physical
contact between the first electrode and the deformable electrode, and (4) that
Scardelletti teaches the use of SiC as a cantilever support to prevent contact
with a transmission line disposed below the cantilever. Final Rejection at 2-
4. The Examiner concluded that it would have been obvious to substitute
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Application 12/032,069
the variable capacitor of Musolf for the variable capacitor of Rule "because
the variable capacitance elements of Rule and Musolf et al perform the same
art recognized equivalent function." Id. at 4. The Examiner concluded that
it would have been obvious to provide an insulating layer on the bottom of
the cantilever (as opposed to on the substrate) in light of Scardelletti because
"these elements alternatively and equivalently perform the same art
recognized equivalent function of preventing contact between a cantilever
and bottom electrode." Id.
The Appellants present several arguments in opposition to the
Examiner's rejection, which we address in tum below.
1. The Appellants argue that the "combination of Rule and Musolf
fails to teach Applicant's claimed invention." App. Br. 7. Specifically, they
argue that claim 1 "define[ s] that the deformable electrode is electrically
insulated from the substrate mounted electrode in order to prevent contact
between them," and "[t]here is no corresponding structure in Musolf'
because Musolf teaches a dielectric layer on the electrode located on the
substrate rather than on the cantilever (deformable electrode). Id.
We are not persuaded by that argument because the Examiner did not
rely on Rule or Musolf for the teaching of the claim limitation at issue. The
Examiner relied on Scardelletti for the teaching of using a layer to support a
cantilever and to prevent contact with elements below the cantilever. See
Final Rejection at 4 ("It would have been further obvious ... to have
alternatively and equivalently used the layer of SiC such as taught by
Scardelletti in the place of the dielectric layer such as taught by the above
combination of Rule et al and Musolf et al since these elements alternatively
and equivalently perform the same art recognized equivalent function of
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Appeal2014-000687
Application 12/032,069
preventing contact between a cantilever and bottom electrode."). "[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references." In re Keller,
642 F.2d 413, 426 (CCPA 1981).
2. The Appellants argue that "there is absolutely no motivation, other
than hindsight, to combine the Musolf and Rule patents together in the
fashion suggested by the Patent Examiner." App. Br. 7. While conceding
that both references "are directed to MEMS devices with variable
capacitors," the Appellants assert that "to substitute the Musolf variable
capacitor for the light activated variable capacitors of Rule would
completely modify the mode of operation of the Rule device." Id. at 7-8
We are not persuaded that the Examiner's findings concerning
motivation to combine Rule and Musolf constitute reversible error. As
explained by the Examiner in the Answer, "there is no complete
modification to the mode of operation of the Rule device since the
combination thereof merely results in the replacement of one variable
capacitance device (the photo-capacitive regions in Rule) with an
alternative, functionally equivalent variable capacitance device (the MEMS
variable capacitance device in Musolf)." Ans. 4--5. The Appellants do not
dispute the Examiner's findings that both types of variable capacitors were
known in the art or that a person of ordinary skill in the art would have
known that they serve equivalent functions. Nor do the Appellants argue
that it would have been beyond the level of ordinary skill in the art to replace
the variable capacitors of Rule with those of Musolf. We are not persuaded
that the substitution of Rule's light-activated variable capacitors for the
MEMS variable capacitors of Musolf "modif-1 ies] the mode of operation" in
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Appeal2014-000687
Application 12/032,069
a way that supports a reversal of the obviousness rejection where both types
of variable capacitors were known in the art, and were known to serve the
same function. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416-17
(2007) ("[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result."); cf
In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (affirming decision that
"the difference in the circuitry---electrical versus optical---does not affect
the overall principle of operation of a programmable arithmetic processor").
3. The Appellants argue that "Scardelletti adds little, if anything, to
the Patent Examiner's combination of Rule and Musolf." App. Br. 8.
We are not persuaded by the Appellants' argument concerning
Scardelletti because it does not address the Examiner's findings concerning
Scardelletti. The Examiner relied on Scardelletti for its teaching of a layer
of SiC beneath a cantilever. See Final Rejection at 4; Scardelletti at Fig. 7 A;
see also Ans. 6-7. The Examiner determined that it would have been
obvious to move the insulating layer from the substrate, as taught by Musolf,
to the cantilever, as taught by Scardelletti. See Final Rejection at 4; Ans. 6-
7; see also Scardelletti at 9:57---62 (suggesting that SiC and insulating film
serve similar functions because both are resistant to stiction). The
Appellants' limited argument does not establish reversible error in those
findings and conclusions. See KSR, 550 U.S. at 417 ("[W]hen a patent
'simply arranges old elements with each performing the same function it had
been known to perform' and yields no more than one would expect from
such an arrangement, the combination is obvious.").
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4. In the Reply Brief~ the Appellants argue that the combination of
Rule, Musolf, and Scardelletti would not have rendered the claimed
invention obvious because the SiC layer taught by Scardelletti "is a
semiconductor material, not a dielectric." Reply Br. 2. Therefore, according
to the Appellants, "none of the references relied upon by the Patent
Examiner disclose the dielectric material underlying the cantilever arm .... "
Id.
That argument was not raised in the opening Appeal Brief, despite the
fact that the Examiner expressly relied on Scardelletti's teaching of an SiC
layer on a cantilever in the Final Rejection. See Final Rejection at 4. The
failure to timely raise the argument precluded the Examiner from addressing
the issue in the Answer. The Appellants have not made an effort to establish
good cause for raising the argument for the first time in the Reply Brief.
Accordingly, we consider it to be waived. See 37 C.F.R. § 41.41(b)(2).
In any event, it would not have established reversible error in the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious. Musolf teaches the use of a dielectric layer to prevent contact
between electrodes. See Final Rejection at 3 (citing Musolf at 7:2-5, Fig. 1).
While Musolf teaches placement of the dielectric layer on the substrate,
rather than on the cantilever, see Fig. 1, movement of the layer to the
cantilever constitutes mere rearrangement of known elements performing
known functions to achieve predictable results. Such rearrangements do not
result in nonobvious subject matter. See KSR, 550 U.S. at 417. Scardelletti
simply confirms that placement of a protective layer on a cantilever, rather
than on an element below the cantilever, is a known and viable alternative.
E.g., Scardelletti at 9:57----62, Fig. 7 A.
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CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-11 and 15-18.
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
lp
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