INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Feb 28, 2020

15068891 - (D) (P.T.A.B. Feb. 28, 2020)

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.
15/068,891 03/14/2016 Jean AUDET FIS920140054US2 1038
45988 7590 02/28/2020
Roberts Calderon Safran & Cole, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
PARENDO, KEVIN A
ART UNIT PAPER NUMBER
2819
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEAN AUDET, EDMUND D. BLACKSHEAR,
MASAHIRO FUKUI, CHARLES L. REYNOLDS,
KENJI TERADA, and TOMOYUKI YAMADA
__________________

Appeal 2019-003105
Application 15/068,891
Technology Center 2800
____________________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–14 and 16–19. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

1 Our Decision refers to the Specification filed Mar. 14, 2016 (“Spec.”);
Final Office Action dated May 11, 2018 (“Final Act.”); Appellant’s Appeal
Brief filed Oct. 15, 2018 (“Appeal Br.”), Examiner’s Answer dated Jan. 8,
2019 (“Ans.”), and Appellant’s Reply Brief filed Mar. 8, 2019 (“Reply
Br.”).
2 Appellant is the Applicant, International Business Machines Corporation,
which, according to the Appeal Brief, is the real party in interest. Appeal
Br. 2.
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The subject matter on appeal relates to “a multi-layer substrate with
metal layers as a moisture diffusion barrier for reduced electrical
performance degradation over time after moisture exposure and methods of
design and manufacture.” Spec. ¶ 1. The Specification discloses that
moisture can enter the package of an electronic circuit because organic
substrate materials are sensitive to moisture. Id. ¶ 2. As a result, moisture
can propagate to an underlying signal line, which causes insertion loss and
degraded electrical performance. Id. According to the Specification,
conventional methods (e.g., the use of dry environments and the use of
chemicals to prevent degradation) to address this issue have been
problematic. Id. ¶ 3.
In view of the above, the Specification discloses a method that
includes determining a diffusion rate of water through an insulator material
between an upper metal layer and an underlying signal line and calculating a
diffusion distance between a plane opening of the upper metal layer and the
underlying signal line by using a diffusion coefficient of the insulator
material and the diffusion rate. Id. ¶ 4. The method can further include
establishing environmental conditions, establishing a time in which an
electrical circuit will maintain a predetermined electrical performance, and
calculating a lateral offset distance between the plane opening and the
underlying signal line using the diffusion coefficient, environmental
conditions, and time. Id.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized and
some indentation added.
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1. A method, comprising:
determining a diffusion coefficient of an insulator
material provided between an upper metal layer and an
underlying signal line;
determining a time for moisture to travel a certain
distance through the insulator material provided between the
upper metal layer and the underlying signal line based on the
diffusion coefficient;
estimating environmental conditions;
providing a time in which an electrical circuit will
maintain a predetermined electrical performance;
calculating a lateral offset distance between a plane
opening of the upper metal layer and the underlying signal line
using the diffusion coefficient, environmental conditions and
time; and
manufacturing a semiconductor structure which is
composed of the insulator material provided between the upper
metal layer and the underlying signal line and the lateral offset
distance between the plane opening of the upper metal layer and
the underlying signal line, the manufacturing being based on
the steps of the determining the diffusion coefficient, the time
for moisture to travel a certain distance through the insulator
material, the environmental conditions, the providing of the
time, and the calculating of the lateral offset distance.

REJECTIONS ON APPEAL
I. Claims 1–14 and 16–19 under 35 U.S.C. § 112(a) as
failing to comply with the written description
requirement and the enablement requirement; and
II. Claims 1–14 and 16–19 under 35 U.S.C. § 112(b) as
being indefinite.

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DISCUSSION
Rejection I
Claims 1–14 and 16–19 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement and the
enablement requirement. We separately address the written description and
enablement issues below.
Written Description Rejection
The Examiner finds claim 1 fails to comply with the written
description requirement because the Specification lacks an actual reduction
to practice of the claimed invention or a specific and concrete detailed
description of the claimed invention, as evidenced by formulas, flow-charts,
sequences of specific and concrete method steps, or multiple complete
specific embodiments, which would show Appellant was in possession of
the claimed invention as a whole. Final Act. 3–4; Ans. 5. For instance, the
Examiner finds the Specification lacks specific teachings (e.g., specific
formulas or specific sequences of steps) of how to perform the limitation
“calculating a lateral offset distance between a plane opening of the upper
metal layer and the underlying signal line using the diffusion coefficient,
environmental conditions and time.” Final Act. 6; Ans. 11. The Examiner
also finds the Specification lacks a specific and detailed description of how
to accomplish the limitation “the manufacturing being based on the steps of
the determining the diffusion coefficient, the time for moisture to travel a
certain distance through the insulator material, the environmental conditions,
the providing of the time, and the calculating of the lateral offset distance.”
Final Act. 5.
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Appellant contends the Examiner does not provide evidence or
reasons why a person skilled in the art would not recognize that Appellant’s
written description provides support for the claims. Appeal Br. 7. Appellant
cites specific paragraphs of the Specification and drawings to support the
argument that the Specification demonstrates Appellant had possession of
the claimed invention at the time the application was filed. Id. at 8–12;
Reply Br. 4–6. For instance, Appellant asserts that paragraph 15 of the
Specification discloses that the lateral offset distance takes into account
various factors, including diffusion coefficient, humidity, temperature, and
time. Appeal Br. 12. Appellant also argues that the Specification includes
examples, a flow chart, and equations. Id. at 13–14; Reply Br. 3–4. In
addition, Appellant contends that the combination of the example disclosed
in paragraph 35 and the context provided by paragraphs 15–25 of the
Specification and Figure 2 supports the limitation requiring manufacturing a
semiconductor structure based on the steps of claim 1. Appeal Br. 12; Reply
Br. 3–4.
Appellant’s arguments are persuasive. The Examiner’s rejection fails
to sufficiently explain why one skilled in the art would not recognize
from the Specification’s disclosure that the inventors were in possession of
the claimed invention. With regard to the Examiner’s position that the
Specification lacks an actual reduction to practice, our reviewing court has
“made clear that the written description requirement does not demand either
examples or an actual reduction to practice; a constructive reduction to
practice that in a definite way identifies the claimed invention can satisfy the
written description requirement.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598
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F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (citing Falko-Gunter Falkner v.
Inglis, 448 F.3d 1357, 1366–67 (Fed. Cir. 2006)).
The Examiner’s finding that the Specification lacks a specific and
concrete detailed description of the claimed invention is also insufficient to
explain why one skilled in the art would not recognize from the
Specification’s disclosure that the inventors were in possession of the
claimed invention. An express disclosure of the claimed subject matter is
not required because the original specification need not describe the claimed
subject matter “in haec verba” in order to satisfy the written description
requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, the
test for sufficiency of a written description is whether the disclosure
“‘clearly allow[s] persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’” Ariad Pharms., Inc., 598 F.3d at 1351
(quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991)). The disclosure must “reasonably convey[ ] to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” Id. at 1351. Possession means “possession as shown in the
disclosure” and “requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.”
Id.
Here, Appellant’s disclosure reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter. For
instance, paragraphs 25–34 explain that the diffusion coefficient of an
insulator material (e.g., polyimide) can be measured through
experimentation or via calculations, such as calculations using Fick’s laws of
diffusion, which are discussed in the Specification. Paragraphs 16 and 24
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disclose that the time for moisture to travel a certain distance can be
determined from the diffusion rate for moisture in the material. Paragraphs
22, 23, and 39 disclose determining environmental conditions, particularly
humidity levels and temperature. Paragraph 20 discloses shelf life as a
target time before degradation in electrical performance occurs, paragraph
39 discussing an estimated shelf life for a device, and paragraph 16 discloses
calculating shelf life based upon a given diffusion coefficient. Paragraphs
15–25 disclose determining a lateral offset based on various factors, such as
the diffusion coefficient, humidity and temperature (e.g., environmental
conditions), and time. Furthermore, we agree that the combination of the
example disclosed in paragraph 35 and the context provided by paragraphs
15–25 of the Specification and Appellant’s Figure 2 supports the limitation
of “the manufacturing being based on the steps of the determining the
diffusion coefficient, the time for moisture to travel a certain distance
through the insulator material, the environmental conditions, the providing
of the time, and the calculating of the lateral offset distance.”
The Examiner also finds that certain limitations of claim 1 are broad
in scope and that the Specification does not provide “a detailed specific
teaching that would encompass the entirety of the claimed invention, in its
entire breadth.” Final Act. 5; Ans. 9. In other words, the Examiner finds a
lack of written description support for the full scope of the claims the
Examiner envisions. For instance, the Examiner finds the limitation
“estimating environmental conditions” encompasses “any condition,” such
as the highest or lowest temperature over a period of time, average humidity
over a period of time, highest wind speed over a period of time, average
level of atmospheric carbon dioxide over a period of time, amount of total
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rainfall over a period of time, the pH of a chemical bath the semiconductor
structure is submerged in, pollen levels, UV index, average noise level, and
the amount of radiation. Final Act. 6; Ans. 6–7. The Examiner further finds
the limitation “providing a time in which an electrical circuit will maintain a
predetermined electrical performance” “is also incredibly broad, as any time
whatsoever is acceptable.” Final Act. 3–5.
The Examiner’s findings, however, do not properly evaluate whether
Appellant’s disclosure reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter because it views the
claimed subject matter in an overly broad manner. As noted above, the
Examiner finds that environmental conditions can encompass conditions
such as radiation, pollen levels, and average noise level. Ans. 6. However,
the Examiner also finds “[t]here is not even any evidence that one could
perform [the claimed invention] for environmental conditions related to
moisture diffusion, such as average humidity level, lowest temperature that
causes the moisture to diffuse, etc.” Id. at 20. The latter statement
demonstrates a reasonable scope of environmental conditions that one of
ordinary skill in the art would consider for moisture diffusion when
evaluating whether Appellant’s disclosure reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter. This comports with Appellant’s assertion that paragraphs 22, 23,
and 39 of the Specification disclose determining environmental conditions,
such as humidity levels and temperature. Appeal Br. 13, 15.
The Examiner’s treatment of the limitation “providing a time in which
an electrical circuit will maintain a predetermined electrical performance” as
encompassing “any time whatsoever” is also overly broad. Appellant’s
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arguments that paragraph 20 discloses shelf life as the time, paragraph 39
discusses an estimated shelf life for a device, and paragraph 16 discloses
calculating shelf life based upon a given diffusion coefficient identify a
reversible error in the Examiner’s rejection. Appeal Br. 13. These portions
of Appellant’s disclosure, in combination with the other portions Appellant
cites, reasonably convey that the inventors possessed the claimed invention
at the time the application was filed.
Accordingly, we do not sustain the Examiner’s § 112(a) rejection of
claims 1–14 and 16–19 as failing to comply with the written description
requirement.
Enablement Rejection
The Examiner concludes Appellant “has not enabled one of ordinary
skill in the art as how to make or use the claimed invention,” citing the
reasons described for the written description rejection. Final Act. 12. The
Examiner, however, has not met the initial burden for setting forth a
rejection for failing to comply with the enablement requirement.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (citation omitted). “Whether undue experimentation is needed is
not a single, simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.” In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Some experimentation, even a considerable amount, is not
“undue” if, e.g., it is merely routine, or if the specification provides a
reasonable amount of guidance as to the direction in which the
experimentation should proceed. Id. at 736–37. Factors to consider for
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enablement include “(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” Id. at 737.
Here, the Examiner does not explain why Appellant’s Specification
does not enable one of ordinary skill in the art to use the claimed invention
without undue experimentation. For instance, Examiner cites the Wands
factors and states they “have been considered in the decision of non-
enablement,” but does not explain how any individual Wands factor applies
to claim 1, or how the balance of the factors weighs in favor of rejecting
claim 1 for lack of enablement. Final Act. 13. Although such an analysis is
not necessarily required, it is a useful tool for demonstrating the
experimentation needed to make and use the full scope of a claimed
invention would be undue.
To the extent the Examiner’s comments evaluate some considerations
for enablement, such the breadth of the claims, the comments are insufficient
to meet the Examiner’s initial burden of setting forth a rejection for lack of
enablement.3 For instance, the Examiner summarizes the enablement
rejection of claim 1 by stating “[t]he issue is an enablement of the entirety of
the claim, for the entire breadth of the claim.” Ans. 10. However, as
discussed above with regard to the written description rejection, the
Examiner’s evaluation of the claim limitations, such as the environmental

3 The Examiner bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by
that claim is not adequately enabled. In re Wright, 999 F.2d at 1561–62.

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conditions and the time in which an electrical circuit will maintain a
predetermined electrical performance, is overly broad. Further, to the extent
the Examiner considers the quantity of experimentation to be large, some
experimentation, even a considerable amount, is not “undue” if, e.g., it is
merely routine, or if the Specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed. In
re Wands, 858 F.2d at 736–737.
Certain statements by the Examiner also indicate that one of ordinary
skill in the art would be capable of performing the individual limitations of
claim 1. Specifically, when referencing the limitations of “determining a
diffusion coefficient” (the limitation the Examiner identifies as “L1”)
through “manufacturing a semiconductor structure” (the limitation the
Examiner identifies as “L6”), the Examiner finds that “[o]ne can perform
each individual step L1 through L6, in isolation from the entirety of the
claim scope, based on the skill of one of ordinary skill in the art.” Final Act.
3, 5, 7; Ans. 5. The Examiner also indicates that “many companies
manufacture semiconductor structures with upper metal layers and
underlying signal lines.” Id. at 7. These findings indicate enablement,
especially when the individual limitations are not viewed as broadly as in the
§ 112(a) rejection.
Accordingly, we do not sustain the Examiner’s § 112(a) rejection of
claims 1–14 and 16–19 as failing to comply with the enablement
requirement.

Rejection II
Claims 1–14 and 16–19 are rejected under 35 U.S.C. § 112(b)
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as being indefinite.
Claims 1–6, 8–10, 12–14, and 16–19
The Examiner concludes claim 1 is indefinite because the metes and
bounds of the limitation “lateral offset distance” cannot be determined.
Final Act. 13–14. Specifically, the Examiner finds the limitation is not a
term of art and claim 1 and the Specification do not provide an unambiguous
definition. Id. at 14. The Examiner finds that paragraph 23 of the
Specification describes a lateral offset distance as “e.g., diffusion distance
D1” but, because diffusion would occur in all directions at the same average
rate, all distances along metal layer 14 in Appellant’s Figure 2 would be
diffusion distances. Id. at 15. The Examiner also finds that paragraph 23
describes “E(max)= E(typ) + diffusion distance D1” but, when treating the
arrows in Figure 2 as vectors, the vector from the E(typ) arrowhead is not
equal to the sum of the vectors for E(typ) and D1. Id. The Examiner also
finds Figure 2 depicts E(max) in the same position as D1 and, therefore,
equivalent to one another, which conflicts with E(max)= E(typ) + diffusion
distance D1, as described in paragraph 23 of the Specification. Id. The
Examiner rejects claims 2–6, 8–10, 12–14, and 16–19 for the same reasons
as claim 1. Id.
Appellant asserts that paragraph 23 of the Specification “defines that
the lateral offset distance is a diffusion distance D1 calculated from the
opening of the outer metal layer 14a to the signal line 14, and can be
calculated from the function of E(max)= E(typ) + diffusion distance D1.”
Appeal Br. 34–35. Appellant also argues that Figure 2 clearly defines the
“lateral offset distance” with respect to a device and that it is inaccurate to
note from the drawings alone that one would use vector mathematics to
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determine the claimed distances. Id. at 35–36. Appellant further contends
that one of ordinary skill in the art would readily understand from the
Specification that D1, E(max), and E(typ) are distances. Reply Br. 14.
Appellant’s Figure 2 is reproduced below.

Figure 2 shows a partial cross-sectional view of a multi-layer
substrate.
Appellant’s arguments are persuasive. The Specification describes
Figure 2 as depicting outer metal layer 14a, opening or via 18 in outer metal
layer 14a, signal line 14, and insulator layer 16 between outer metal layer
14a and signal line 14. Spec. ¶¶ 21–22. Paragraph 23 describes “the lateral
offset distance, e.g., diffusion distance D1” as “from the opening 18 of the
reference plane (e.g., outer metal layer) 14a to the signal line 14.”
Therefore, the “lateral offset distance” is the lateral component of the
distance from opening or via 18 to signal line 14. This is depicted in Figure
2 as the cross-hatched section of signal line 14 between the tip of the
arrowhead for E(typ) and the tip of the arrowhead for D1.
The Examiner’s explanation at page 21 of the Answer confirms this
understanding by stating “[h]owever, D1 (the distance along the right arrow)
is not ‘lateral’ in any sense of the word, as ‘lateral’ would most reasonably
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be interpreted as a distance along 14.” The premise of this statement
appears to treat the arrow for D1 in Figure 2 as depicting the distance along
the length of the arrow (i.e., a distance having a horizontal component and a
vertical component in Figure 2). However, the latter portion of the
statement is correct by proposing that the “lateral offset distance” is
reasonably interpreted as the lateral extent of the distance along signal line
14.
In view of the above, the arrow for D1 in Figure 2 is used as a drafting
tool to indicate the end of the lateral diffusion distance D1 along signal line
14, not to indicate a vector. Paragraph 23 of the Specification describes D1,
E(max), and E(typ) as distances, not vectors. Further, to the extent the
Examiner rejects claim 1 because the “lateral offset distance” can be various
distances along signal line 14 in Figure 2, a claim cannot be rejected merely
because it might be broad in scope. “[B]readth is not to be equated with
indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971).
For these reasons, we do not sustain the Examiner’s § 112(b) rejection
of claims 1–6, 8–10, 12–14, and 16–19.
Claims 7 and 11
Claim 7 is rejected under § 112(b) because the limitation “the
diffusion distance” lacks proper antecedent basis and it is unclear what
distance this refers to. Final Act. 15–16. Similarly, claim 11 is rejected
under § 112(b) because the limitation “the diffusion rate” lacks proper
antecedent basis and it is unclear what this limitation refers to. Id. at 16.
Appellant asserts that amendments were submitted for claims 7 and 11
on October 5, 2018, to overcome these rejections, but the Advisory Action
of October 15, 2018, did not enter the amendments. Appeal Br. 37, 39. In
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other words, Appellant does not dispute that the limitations lack antecedent
basis, but indicates claim amendments would address these rejections.
Appellant also argues that Appellant’s Specification describes “diffusion
rate” as a separate concept from diffusion time and diffusion distance. Id. at
37–40. The Examiner responds that claims 7 and 11 nevertheless lack
proper antecedent basis. Ans. 22.
Because the antecedent basis issues remain for the limitation “the
diffusion distance” in claim 7 and the limitation “the diffusion rate” in claim
11, we sustain the Examiner’s rejections of claims 7 and 11 under § 112(b).

DECISION
On the record before us and for the reasons given in Appellant’s
Appeal Brief and above, we affirm-in-part the Examiner’s rejections.
In summary:
Claims
Rejected 35 U.S.C.§ References/Basis Affirmed Reversed
1–14, 16–19 112(a) Written Description 1–14, 16–19
1–14, 16–19 112(a) Enablement 1–14, 16–19
1–14, 16–19 112(b) Indefiniteness 7, 11 1–6, 8–10, 12–14, 16–19
Overall
Outcome
7, 11 1–6, 8–10, 12–14, 16–19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART