11865122 (P.T.A.B. Oct. 23, 2012)

Ex Parte Theuss

Patent Trial and Appeal BoardOct 23, 2012

11865122 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/865,122 10/01/2007 Horst Theuss I550.232.101/2007P51957US 4686 25281 7590 10/24/2012 DICKE, BILLIG & CZAJA FIFTH STREET TOWERS 100 SOUTH FIFTH STREET, SUITE 2250 MINNEAPOLIS, MN 55402 EXAMINER BAISA, JOSELITO SASIS ART UNIT PAPER NUMBER 2832 MAIL DATE DELIVERY MODE 10/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HORST THEUSS ____________ Appeal 2011-006244 Application 11/865,122 Technology Center 2800 ____________ Before THU A. DANG, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006244 Application 11/865,122 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-21 (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary Claim 1 follows: 1. A chip device comprising: a first substrate comprising at least one first conductive strip line having end terminals at a surface of the first substrate; a second substrate comprising at least one second conductive strip line having end terminals at a surface of the second substrate, wherein a pitch of the end terminals on the first substrate corresponds to a pitch of the end terminals on the second substrate; and conductive studs connecting the end terminals on the first substrate with the end terminals on the second substrate to form an inductor loop such that a magnetic field generated in the center of the inductor loop is oriented substantially parallel to the surfaces of the first and second substrates. Claims 1-4, 6-8, 12, 14, 15, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Noriaki (JP2000182851, Jun. 30, 2000) in view of Shield (U.S. 3,614,554, Oct. 19, 1971) (Ans. 3-7). Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Noriaki in view of Shield and Cha (U.S. 6,387,747 B1, May 14, 2002) (Ans. 5-6). Appeal 2011-006244 Application 11/865,122 3 Claims 9-11 and 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Noriaki in view of Shield and Ahn (U.S. 6,817,087 B2, Nov. 16, 2004) (Ans. 3-7). FACTUAL FINDINGS We adopt the Examiner’s factual findings as set forth in the Answer (Ans. 3, et seq.). ISSUE Appellant’s responses to the Examiner’s positions present the following issue: Did the Examiner err in finding that the combination of Noriaki and Shield teaches or suggests “connecting the end terminals on the first substrate with the end terminals on the second substrate to form an inductor loop such that a magnetic field generated in the center of the inductor loop is oriented substantially parallel to the surfaces of the first and second substrates,” as recited in claim 1, and as similarly recited in claims 12 and 20? ANALYSIS We disagree with Appellant’s assertions regarding the Examiner’s obviousness rejections of claims 1-21. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer (Ans. 3- 13) in response to arguments made in Appellant’s Appeal Brief and Reply Brief. We concur with the conclusion reached by the Examiner. We highlight and address certain findings and arguments below. Appeal 2011-006244 Application 11/865,122 4 Appellant contends that the Examiner erred in rejecting independent claims 1, 12, and 20 as obvious because neither Noriaki nor Shield teach the claim limitation emphasized above (App. Br. 7-9). Appellant argues that the magnetic field of Noriaki is not parallel to the substrate surfaces and that Noriaki does not teach a “single inductive element that is distributed over the two substrates” (id. at 10). Appellant also argues that the each of the two levels of parallel metal strips in Shield is not formed on a substrate and that Shield instead discloses that “the second level of parallel metal strips is formed over the insulating layer” (id. at 10). Appellant’s arguments are not persuasive because Appellant is arguing the references separately, rather than considering what they teach together. We agree with the Examiner’s finding that the combination of Noriaki and Shield renders obvious the claim limitation in dispute (Ans. 12- 13). In particular, Shield discloses the formation of a single inductor by conductive strip lines (14a-h) on a level 12 (FIG. 1) that are connected to conductive strip lines (26a-g) on another level 20 (FIG. 4) through “feedback holes 22a-h and 24b-h filled with metal” (col. 2, ll. 62-63). Even Appellant acknowledges that a current through Shield’s coil “results in a magnetic field which is oriented parallel to the substrate surface” (App. Br. 10 (emphasis omitted)). Moreover, Noriaki discloses the formation of inductors by conductive strip lines 101 on a first substrate 100 that are connected to conductive strip lines 105 on a second substrate 104 by studs 108 and 109 (FIG. 1). Accordingly, we find that the claim limitation of forming an inductor by connecting conductive strips from two substrate levels having a magnetic field that is parallel to the substrate surface is a combination of Shield’s Appeal 2011-006244 Application 11/865,122 5 teaching of the connection of conductive strips from two levels forming an inductor with a parallel magnetic field and Noriaki’s teachings of forming conductive strips on two substrate levels that yields predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Accordingly, we find no error in the Examiner’s rejection of independent claims 1, 12 and 20. We also find no error in the Examiner’s rejection of the remaining claims on appeal (i.e., claims 2-11, 13-19, and 21) because Appellant did not set forth any separate and distinct arguments for those claims (see App. Br. 12-13). DECISION We affirm the Examiner’s decision rejecting claims 1-21 as obvious. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Vsh