James Thomas. Doyle et al.

Patent Trials and Appeals Board

Dec 26, 2019

13794558 - (D) (P.T.A.B. Dec. 26, 2019)

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.
13/794,558 03/11/2013 James Thomas Doyle 123626 6622
112246 7590 12/26/2019
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
EXAMINER
LIAN, MANG TIN BIK
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES THOMAS DOYLE, FARSHEED MAHMOUDI, and
AMIRALI SHAYAN ARANI,

Appeal 2018-008874
Application 13/794,558
Technology Center 2800
____________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1−4, 8, 9, 11, 13−17, 21, 22, 24, 26,
40−44, 46−51, 53−61, and 63−72. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
QUALCOMM Incorporated. Appeal Br. 2.
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Appellant’s invention is directed to structure having an in-substrate
coupled inductor structure (Spec. ¶ 2; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A structure, comprising:
an inductor structure having
an electrically conductive first inductor winding,
first and second terminals integral with respective ends of
the electrically conductive first inductor winding,
an electrically conductive second inductor winding, and
third and fourth terminals integral with respective ends of
the electrically conductive second inductor winding;
a first substrate in which the electrically conductive first
and second inductor windings are embedded and laterally co-
planar therein, wherein the first and second terminals and the
third and fourth terminals are through substrate vias (TSVs) with
at least one of the TSV terminals and the end of each respective
inductor winding forming an L-shape with a flat TSV terminal
portion.
Appellant appeals the following rejections:
1. Claims 66, 69, and 72 are rejected under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement.
2. Claims 1−4, 13−17, 26, 49−51, 53, 54, and 64−722 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Sin (US
2012/0068301 A1, published Mar. 22, 2012) in view of Tung

2 Examiner’s rejection only lists claims 1−4, 13−17, 49−51, 53, and 54 as
being rejected under § 103 over Sin in view of Tung and Hashemi (Final
Act. 5). The body of the rejection, however, clearly specifies that claims 26
and 64−72 are rejected under the same combination of references (Final Act.
9, 10−12). We find the Examiner’s omission of claims 26, and 64−72 from
the statement of rejection is harmless error.
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(US 6,794,978 B2, issued Sept. 21, 2004) and Hashemi (US
6,512,285 B1, issued Jan. 28, 2003).
3. Claims 8, 9, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sin in view of Tung, Hashemi and Knott (US
2009/0079529 A1, published Mar. 26, 2009).
4. Claims 11, 24, 55, and 56 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sin in view of Tung, Hashemi, and Pan (US
2011/0215863 A1, published Sept. 8, 2011).
5. Claims 40−43 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sin in view of Tung, Hashemi, and Lin (US
2013/0075936 A1, published Mar. 28, 2013).
6. Claim 44 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sin in view of Tung, Hashemi, Lin, and Gardner (US
2010/0001826 A1, published Jan. 7, 2010).
7. Claims 46−48, 59−61, and 63 are rejected under 35 U.S.C. §
103(a) as unpatentable over Sin in view of Tung and Pan.
8. Claims 57 and 58 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sin in view of Tung, Pan, and Hashemi.
FINDINGS OF FACT & ANALYSIS
REJECTION (1): Written Description
As stated above, the Examiner rejects claims 66, 69, and 72 under 35
U.S.C. § 112, ¶ 1 as failing to comply with the written description
requirement.
Claim 66 depends from claim 1 and recites “wherein at least a portion
of the at least one TSV terminal that forms part of the L-shape is curved to
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match a curved shape of the end of its each respective inductor winding.”
Claims 69 and 72 recite the same limitation and depend from claims 14 and
46, respectively.
The Examiner’s findings regarding the rejection of claims 66, 69, and
72 are located on page 4 of the Final Action. The Examiner finds that the
Specification does not disclose, and Figure 2 of the drawings do not show,
the L-shaped terminals being curved (Ans. 3). The Examiner finds that the
L-shaped terminals as shown in Figure 2 are rectangular (Ans. 3).
Appellant argues that Figure 2 of the Specification shows that a
portion of the curved inductor windings where the curved shape continues
into the portion of the structure that forms the L-shape (and which forms the
TSV terminals) (Appeal Br. 19). We agree. Figure 2, as annotated by
Appellant on page 3 of the Reply Brief, shows that Appellant was in
possession of a portion of the through substrate vias (TSV) terminal that
forms part of the L-shape is curved to match a curved shape of the end of its
each respective inductor winding as recited in claims 66, 69, and 72:

Appellant’s annotated FIG. 2 shows, via the added arrows, the L-shaped
terminals recited in the claims.
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Figure 2 shows that at least a portion of the L-shaped terminal ends (208,
210, 212, 214) follow the curve of the inductor 204 or 206. The inner
inductors 204 and 206 show lines getting closer together, which demonstrate
that the structure is curved.
On this record, we reverse the Examiner’s §112, ¶ 1 lack of written
description rejection.

Rejections (2) to (8): Obviousness
The Examiner rejects claims 1−4, 13−17, 26, 49−51, 53, 54, and
64−72 under 35 U.S.C. § 103(a) as unpatentable over Sin in view of Tung
and Hashemi (Rejection (2)). Appellant argues the claims under rejection (2)
as a group. Therefore, we select claim 1 as representative of the group. 37
C.F.R. §41.37(c)(iv).
The Examiner adds various prior art references to reject further claims
(Rejections (3) to (8)). Appellant’s arguments regarding rejections (3) to (8)
rely on arguments made regarding claim 1 or the independent claims 14 or
46 (Appeal Br. 25−27). Appellant’s only argument regarding rejection (7) is
that Pan does not cure the alleged deficiencies of Sin and Tung (Appeal Br.
27). Accordingly, the claims under rejections (3) to (8) will stand or fall
with our analysis of the rejection of claim 1.
The Examiner’s findings and conclusions regarding the teachings of
Sin, Tung and Hashemi are located on pages 5 to 7 of the Final Action. The
Examiner finds that Sin teaches the inductor structure but does not teach the
end of the respective inductor winding forming an L-shape with a flat TSV
terminal portion, a die on a first surface of the second substrate and wherein
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the inductor structure is electrically coupled to the die (Final Act. 6). The
Examiner finds that Tung teaches in Figure 3A a L-shaped terminal end with
a flat TSV terminal portion 52b (Final Act. 6). The Examiner relies on
Hashemi to teach placing an inductor on a second substrate with a die and
electrically coupling the inductor to the die (Final Act. 6). The Examiner
concludes that it would have been obvious to incorporate the L-shape with a
flat TSV terminal portion as taught by Tung and the inductor structure
electrically coupled to a die through the second substrate as taught by
Hashemi to the inductor structure of Sin to facilitate manufacturing and or to
meet space usage requirements (Final Act. 6).
Appellant argues that Tung is directed to high speed RF
communication and requires a layered, planar, inductor whereas Sin’s
inductor is used in power modules (Appeal Br. 21). Appellant argues that
Tung’s feed-through via 52b is used to couple the inductive layer 50 to a
ground layer 60, which is orthogonal to the inductor (Appeal Br. 23).
Appellant argues that Tung’s feed-through via 52b is not integral to the
inductive layer 50 (Appeal Br. 23). Appellant argues that Tung’s layered
structure permits movement of the inductor layer relative to the ground layer
to adjust inductive values (Appeal Br. 23). Appellant argues that there is no
reason to combine Sin with Tung (Appeal Br. 23). Appellant contends that
Sin does not disclose terminals that are integral with the respective ends of
the electrically conductive windings (Appeal Br. 24). Appellant contends
that Tung uses a trace inductor which would require a separate structure
such as feed-through via 52b to couple the inductor coil from the surface of
the substrate to other structures (Appeal Br. 24). Appellant argues that one
skilled in the art would never incorporate the physical feed-through via 52b
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structure of Tung designed for trace elements on the surface of a substrate
into an embedded inductor configuration as disclosed in Sin (Appeal Br. 24).
Appellant argues that Hashemi does not cure the deficiencies of Sin and
Tung (Appeal Br. 24). Appellant contends that the combination of Sin,
Tung and Hashemi is based on impermissible hindsight (Appeal Br. 25).
Contrary to Appellant’s arguments, the Examiner finds that Sin
teaches first, second, third, and fourth terminals (i.e., 306A and 306B) that
are integral with respective ends of the electrically conductive first and
second inductor windings (Final Act. 5). The Examiner defines integral as
“consisting or composed of parts that together constitute a whole” (Ans. 4).
Appellant does not challenge or dispute this definition (Reply Br. generally).
Sin teaches that vias 306A and 306B are formed by depositing metal in the
hole formed between the inductor and the top of the substrate (¶¶ 9, 42, 43,
50). The vias permit the induction coil to be connected to the other side of
the substrate (¶ 34). The vias are coupled to the embedded inductors so as to
connect the inductors the opposite surface of the substrate (¶¶ 34, 50). Tung
shows that the feed-through via 52b connects the inductor 50 with other
portions of the structure (col. 3, ll. 64-67). Therefore, once the vias are
formed so that the vias electrically connect the inductor with the other
surface, the via and inductor would be coupled to the inductor so that the via
and inductor together constitute a whole inductor (i.e., the metal filled via is
integral with the inductor).
The Examiner’s rejection is based on using Tung’s L-shaped
arrangement of the feed-through via 52b and the inductor 50 as teaching of
how Sin’s via would have been coupled to the inductors. As noted above,
Sin teaches forming vias to couple the inductors to the opposite side of the
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substrate (¶¶ 9, 42, 43, 50). In light of Tung’s teaching on how to arrange a
via and an inductor, it would have been obvious to implement Tung’s L-
shaped via/inductor coupling with Sin’s via/inductor arrangement to
facilitate manufacturing and meet space usage requirements as stated by the
Examiner (Final Act. 6). The Examiner’s rejection is based on the teachings
of the references, not impermissible hindsight.
Appellant’s arguments regarding Hashemi are misplaced as we do not
find any reversible error or deficiencies in the Examiner’s combination of
Sin and Tung (Appeal Br. 24). The Examiner cites Hashemi to teach that it
is known to couple an inductor to second substrate having die to which the
inductor is electrically coupled. Appellant argues that Hashemi teaches
away from utilizing a discrete inductor but instead discloses an inductor
package (Appeal Br. 24-25). Hashemi’s inductor package includes,
however, an inductor on a substrate and electrically coupling the inductor to
a capacitor or die on the substrate (col. 4, ll. 18-46). Hashemi does not
discourage the combination of an inductor with a circuit structure.
On this record, we affirm the Examiner’s §103 rejections (2) to (8)
listed above.
CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
66, 69, 72 §112, ¶ 1 66, 69, 72
1−4, 13−17, 26,
49−51, 53, 54,
64−72
§ 103 Sin, Tung,
Hashemi 
1−4, 13−17,
26, 49−51, 53,
54, 64−72

8, 9, 21, 22 § 103 Sin, Tung,
Hashemi, Knott
8, 9, 21, 22
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Claims
Rejected
Basis  Affirmed Reversed
11, 24, 55, 56 § 103 Sin, Tung,
Hashemi, Pan
11, 24, 55, 56
40−43 § 103 Sin, Tung,
Hashemi, Lin
40−43
44 § 103 Sin, Tung,
Hashemi, Lin,
Gardner
44
46−48, 59−61, 63 § 103 Sin, Tung, Pan 46−48, 59−61,
63

57, 58 § 103 Sin, Tung,
Pan, Hashemi
57, 58
Overall Outcome 1−4, 8, 9, 11,
13−17, 21, 22,
24, 26, 40−44,
46−51, 53−61,
63−72

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