Ex Parte Scherabon et al

Patent Trial and Appeal Board

Jul 31, 2014

12303705 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN SCHERABON,
ANTON SALFENER, WOLFGANG STEINBAUER,
and JOACHIM HEINZ SCHOBER
____________

Appeal 2012-010290
Application 12/303,705
Technology Center 2800
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Before TERRY J. OWENS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On October 18, 2011, the Examiner finally rejected claims 8–10 and
12–22 of Application 12/303,705 under 35 U.S.C. § 103(a) as obvious.
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE and enter a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).

1 NXP B.V. is identified as the real party in interest. (App. Br. 3.)
Appeal 2012-010290
Application 12/303,705
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BACKGROUND
The ’705 Application describes an apparatus comprising a
semiconductor chip and an antenna that can be used as a transponder and a
method for making the transponder. Spec. 1. Claim 8 is representative of
the ’705 Application’s claims and is reproduced below:
8. A transponder, comprising:
a semiconductor chip, the chip comprising:
a chip substrate with a surface;
chip terminals arranged on said surface; and
a passivation layer having a first side and an
opposite second side, wherein the first side of the
passivation layer is in contact with said surface
and said chip terminals, the passivation layer
completely covering said chip terminals, and the
opposite second side of the passivation layer
provides an exposed exterior surface of the
semiconductor chip; and
an antenna with antenna terminals attached to the second
side of the passivation layer of said chip above said chip
terminals, so that said chip terminals, said passivation
layer and said antenna terminals form first capacitors to
capacitively couple the antenna and the chip terminals.
(App. Br. 16 (Claims App’x) (emphasis added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 8, 10, 12, 15, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ferguson.2 (Ans. 5.)

2 US Patent Application Publication 2005/0001785 A1, published January 6,
2005.
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Application 12/303,705
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2. Claims 9, 13, 14, and 16-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ferguson and Shindo.3
(Ans. 8.)
DISCUSSION
Appellants present separate arguments for the reversal of the
rejections of independent claims 8 and 12. (App. Br. 6.) Appellants do not
present separate arguments for the patentability of any of the dependent
claims. (Id. at 6, 14.) Accordingly, we address claims 8 and 12 separately
below. The appeal of the rejection of each dependent claim stands or falls
with the independent claim from which the dependent claim ultimately
depends. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Claim 8. Claim 8 is directed to a transponder in which, in relevant
part, “the first side of the passivation layer is in contact with said surface and
said chip terminals.” The Examiner found that
Ferguson teaches a transponder (see Figure 25A, item 700),
comprising: a semiconductor chip, the chip comprising: a chip
substrate (Figure 25A, item 710) with a surface; chip terminals
(not explicitly disclosed, but Ferguson teaches such terminals
are well known in the art for connection with lead elements
(¶0121)) arranged on said surface; and a passivation layer
(Figure 25A, item 718) having a first side and an opposite
second side, wherein the first side of the passivation layer is in
contact with said surface and completely covering said chip
terminals . . . .
(Ans. 5.)

3 US Patent Application Publication 2005/0093090 A1, published May 5,
2005.
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As Appellants argue (App. Br. 7–9), Figure 25A of Ferguson shows
that chip 710 is not in physical contact with the alleged passivation layer
718. The Examiner, however, concludes that the broadest reasonable
interpretation of the term “contact” as used in the ’705 Application’s claims
includes both electrical and physical contact. (Ans. 13–14.) Appellants
argue that the Examiner’s construction is unreasonably broad. (App. Br. 9–
12.) For the following reasons, we agree with Appellants.
We begin by noting that, in normal use, the term contact means “the
act or state of touching.” Contact, DICTIONARY.COM,
http://dictionary.reference.com/browse/contact?s=t. In the context of
electricity, however, contact can mean “a junction of electric conductors,
usually metal, that controls current flow, often completing or interrupting a
circuit.” Id.
Next, we turn to the ’705 Application’s Specification to determine
how a person of ordinary skill in the art would understand the term in the
context of the present application. As the Examiner notes (Ans. 15), the
Specification only uses the words “contact” twice. In each instance, the
word is used as part of the phrase “electrical contact.” See Spec. 4 (“The
conductive glue assures a good electrical contact . . . .”), 7–8 (“[T]he glue
comprises conductive particles . . . , so that an electrical contact is
established . . . .”).
We disagree with the Examiner’s conclusion that these appearances of
the term “contact” support the Examiner’s broad construction of the term.
First, the Specification’s use of the term “electrical contact” would
have led a person of ordinary skill in the art to conclude that the term
“contact” without the accompanying adjective was not intended to invoke
the electrical/electronics-specific meaning of the term.
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Second, both instances of the use of the term “electrical contact” occur
in the Specification’s description of the attachment of the antenna substrate
to the second side of the passivation layer. A person of ordinary skill in the
art, reading the Specification’s description of the relationship between the
chip substrate and the passivation layer and the method of making the
claimed invention, would have understood the passivation layer in the
claimed invention to be in direct physical contact with the chip substrate.
E.g., Spec. 6 (“[A] passivation layer 22 is deposited on the substrate surface
5 . . . .”). We, therefore, conclude that the term “contact” as used in the ’705
Application’s claims requires direct physical contact between the passivation
layer and the surface of the chip substrate.
For the reasons set forth above, we agree that Ferguson does not
describe or suggest the claimed passivation layer in contact with a surface of
the chip substrate. Thus, the Examiner has not established a prima facie case
of obviousness, and we reverse the rejection of claim 8 as obvious over
Ferguson. Because claims 9, 10, and 15–22 ultimately depend from claim 8,
we also reverse the rejection of those claims.
Claim 12. Claim 12 is reproduced below:
12. A method of manufacturing a transponder, the method
comprising:
depositing chip terminals on a chip substrate of a
semiconductor chip;
depositing a passivation layer on a surface of the chip
substrate, wherein the passivation layer has a first side
and an opposite second side, wherein the first side of the
passivation layer is in contact with the surface the chip
terminals, the passivation layer completely covering said
surface and covering said chip terminals, and the
opposite second side of the passivation layer provides an
exposed exterior surface of the semiconductor chip; and
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attaching antenna terminals of an antenna to the opposite
second side of the passivation layer above said chip
terminals, wherein said chip terminals, said antenna
terminals, and said passivation layer constitute first
capacitors to capacitively couple the antenna to the chip
terminals.
(App. Br. 12–13 (Claims App’x) (emphasis added).)
We begin by looking to the language of claim 12. In particular, we
note that Appellants appear to have omitted a preposition from the phrase
“wherein the first side of the passivation layer is in contact with the surface
the chip terminals.” Appellants state that “it may be useful to note that the
language of the claim may be improved by inserting the word ‘and’ between
‘the surface’ and ‘the chip terminals’ at the end of the second underlined
phrase.” (App. Br. 12–13.) The Examiner, on the other hand, argues that
the phrase could also be understood to read “‘the surface [of] the chip
terminals.’” (Ans. 15.) The Examiner further asserts that this reading would
result in a claim limitation with a different scope from claim 8, while
Appellants’ proposal would create a claim limitation with the same scope as
that of claim 12. (Id. at 15–16.) Appellants do not contest the Examiner’s
analysis of the relative scope of the two proposed readings of this limitation.
(See Reply Br. 6–7.)
Because claim 12’s language is unclear and could be interpreted in at
least two plausible ways, the claim does not comply with 35 U.S.C.
§ 112(b). See, e.g., In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009); Ex
parte Miyazaki, 2008 WL 5105055, *5 (BPAI Nov. 19, 2008). We,
therefore, reject claim 12—and claims 13 and 14, which depend from claim
12—under 35 U.S.C. § 112, ¶ 2 as indefinite. This is a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).
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The Examiner rejected claim 12 as obvious over Ferguson. In making
this rejection, the Examiner assumed that the indefinite limitation discussed
above had the same scope as the corresponding language in claim 8, i.e., as
if it read “‘the surface [and] the chip terminals,’” as proposed by Appellants.
(Ans. 15.) Appellants argue that this rejection is improper and should be
reversed. (App. Br. 12–14.)
In this case, the Examiner and Appellants both agree that the word
“and” should be inserted into the indefinite claim limitation. We, therefore,
exercise our discretion to review the merits of the Examiner’s obviousness
rejection of claim 12. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI
1991) (exercising discretion to reach art rejections despite indefiniteness
where nature of case permitted).
The rejection of claim 12 is premised on the assumption that the
portions of the claim requiring that the passivation layer contact the chip
substrate have the same scope as the corresponding language in claim 8. As
discussed above, Ferguson neither describes nor suggests such a structure.
We, therefore, reverse the rejection of claim 12 as obvious over Ferguson
and of claims 13 and 14 as obvious over the combination of Ferguson and
Shindo.4

4 We emphasize that our reversal is based on the assumption—made by both
Appellants and the Examiner—that the indefinite portion of claim 12 should
be interpreted as if it read “the surface [and] the chip leads.” If Appellants
resolve the indefiniteness rejection by amending this limitation in a different
manner, nothing in this opinion precludes the Examiner from using Ferguson
and Shindo (alone or in combination with each other or with additional prior
art) as the basis for a prior art rejection of the amended claim.
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CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 8,
10, 12, 15, 21, and 22 as obvious over Ferguson and of claims 9, 13, 14, and
16–20 as obvious over the combination of Ferguson and Shindo. We also
newly reject claims 12–14 as indefinite under 35 U.S.C. § 112(b).

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)

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