STMicroelectronics S.R.L.

Patent Trials and Appeals Board

Feb 26, 2020

14980373 - (D) (P.T.A.B. Feb. 26, 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.
14/980,373 12/28/2015 Enri Duqi 15CA0094US01/810063.502 5639
38106 7590 02/26/2020
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
MORELLO, JEAN F
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ENRI DUQI, SEBASTIANO CONTI, and SONIA COSTANTINI
____________

Appeal 2019-003229
Application 14/980,373
Technology Center 2800
____________

Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–8 and 19–31 under 35 U.S.C. 103(a)
as being unpatentable over at least the combined prior art of Combi (US
2008/0315333 A1; pub. Dec. 25, 2008) and Silverbrook (US 2006/0081042

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies STMicroelectronics S. r. l. as the
real party of interest (Appeal Br. 2).

Appeal 2019-003229
Application 14/980,373

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A1; pub. Apr. 20, 2006).2 We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.

Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key disputed limitations):
1. A pressure sensor configured to detect a value of
ambient pressure of an environment external to the pressure
sensor, comprising:
a first semiconductor body having an inner buried cavity
and a membrane suspended over the buried cavity, a first
surface of the membrane defining a top of the buried cavity;
a second semiconductor body different from the first
semiconductor body and having a recess, the second
semiconductor body being hermetically coupled to the
first semiconductor body in such a way that said recess faces a
second surface of the membrane opposite to the first surface,
thus defining a sealed cavity having an internal pressure value
that provides a pressure-reference value; and
a channel formed at least in part in the first
semiconductor body and configured to set the buried cavity in
fluidic communication with the environment external to the
pressure sensor,
said membrane being configured to undergo deflection as
a function of a pressure difference between the pressure-
reference value in the sealed cavity and a pressure value in
the buried cavity.

2 An additional reference, Robert (US 2013/0000411 A1; pub. Jan. 3, 2013),
was applied to dependent claims 8 and 28 and is listed in the Summary
Table located at the end of this Decision. A discussion of this reference is
not needed for disposition of this appeal.

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Application 14/980,373

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Independent claims 19 and 24 are also directed to a pressure sensor
having similar structure of a buried cavity with a membrane suspended over
it, a sealed cavity opposite and overlapping the buried cavity, and a channel
configured to set the buried cavity in fluidic communication with the
external environment (Appeal Br. Claims Appendix 26, 27).

ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
After review of the respective positions provided by Appellant and the
Examiner, we conclude that the preponderance of the evidence supports
Appellant’s position that the Examiner has not met the burden in this case
for substantially the reasons set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on
appeal.
We add the following primarily for emphasis.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
As stated in In re Smith,
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The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.”
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Cf. Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). (“[T]he specification ‘is
always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’”
(Internal citation omitted)).
We agree with Appellant that the broadest reasonable interpretation of
“an inner buried cavity,” with a membrane suspended thereover as recited in
claim 1 (and claims 19 and 24) and consistent with the Specification does
not encompass Combi’s “empty space 25” which “remains over the
membrane 4” and which “is delimited partly by the walls of the sensor
cavity 24” (Combi ¶ 39) orientated upside down as proposed by the
Examiner, as the “inner buried cavity” must be inner and buried. As pointed
out by Appellant, Combi’s cavity 24/25 is exposed to body 20 that is
external to body 21 such that it is not an inner buried cavity to body 21
(Appeal Br. 17; Reply Br. 5, 6).
Thus, the Examiner’s reliance on Figure 5 of Combi orientated upside
down to teach or suggest the claimed inner cavity with a membrane
suspended over the buried cavity is unfounded. The Examiner does not
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proffer sufficient reasoning or rely upon any other reference to cure these
deficiencies.
The Examiner also offers some obviousness reasoning with regards to
e.g., Figure 6 of Combi, appearing to alternatively assert that one would
have closed the channel/access duct 26 that goes to empty space 24/25 and
relying on channel 30 in communication with buried cavity 3 in the Figure 6
embodiment (Ans. 5, 6). However, as pointed out by Appellant, Combi
teaches that the access duct 26 is required such that the Examiner’s proposed
modification appears to be based on an impermissible hindsight
reconstruction of Combi (Appeal Br. 20, e.g., Combi ¶71; Reply Br. 9). A
preponderance of the evidence supports Appellant’s position that the
proposed modification of Combi to close off channel 26 would be based on
improper hindsight reconstruction for the reasons discussed by Appellant in
the Briefs. The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421 (citing Graham v.
John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).

Accordingly, we reverse the rejections of claims 1–8 and 19–31 which
all rely upon the Examiner’s flawed interpretation of the claim language or
on an impermissible hindsight reconstruction.

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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 19–27,
29–31 103 Combi, Silverbrook
1–7, 19–
27, 29–31
8, 28 103 Combi, Silverbrook, Robert

8, 28
Overall
Outcome
1–8, 19–31

REVERSED