Ex Parte 6,781,231 et al

Patent Trial and Appeal Board

Sep 8, 2015

95001363 (P.T.A.B. Sep. 8, 2015)

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.
95/001,363 06/30/2010 6,781,231 092771-0035 7421
30954 7590 09/09/2015
LATHROP & GAGE LLP
2345 GRAND Boulevard
SUITE 2400
KANSAS CITY, MO 64108
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/09/2015 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
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.
95/001,251 11/24/2009 6,781,231 092771-0021D 6960
30954 7590 09/09/2015
LATHROP & GAGE LLP
2345 GRAND Boulevard
SUITE 2400
KANSAS CITY, MO 64108
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/09/2015 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
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.
95/000,509 10/07/2009 6781231 552681 5895
30954 7590 09/09/2015
LATHROP & GAGE LLP
2345 GRAND Boulevard
SUITE 2400
KANSAS CITY, MO 64108
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/09/2015 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
________________

CIRRUS LOGIC, INC. and CIRRUS LOGIC INT’L (UK) LTD.
Third Party Requesters and Respondents
and
BSE CO., LTD.
Third Party Requester and Respondent

v.

KNOWLES ELECTRONICS LLC
Patent Owner and Appellant
____________

Appeal 2015-004342
Merged Inter Partes Reexamination Control Nos. 95/000,509,
95/001,251, and 95/001,363
Patent US 6,781,231 B2
Technology Center 3900
________________

Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and
ANDREW J. DILLON, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-004342
Merged Inter Partes Reexamination Control Nos. 95/000, 509, 95/001,251,
and 95/001,363
US Patent No. 6,781,231 B2

2
SUMMARY
Background
This proceeding arose from three requests for inter partes
reexamination of US Patent 6,781,231 B2, which is entitled
“MICROELECROMECHANICAL SYSTEM PACKAGE WITH
ENVIRONMENTAL AND INTERFERENCE SHIELD” (issued to Anthony
D. Minervini on Aug. 24, 2004 from Application 10/238,256, filed Sept. 10,
2002) (“the ’231 Minervini Patent”).
1
Inter partes reexamination request
95/000,509 was filed October 7, 2009 by Requester Analog Devices, Inc.
(“Analog Device’s ’509 Request”). Corrected inter partes reexamination
request 95/001,251 was filed November 24, 2009 by Wolfson
Microelectronics plc, now Cirrus Logic, Inc. and Cirrus Logic International
(UK) Ltd. (collectively “Cirrus” and “Cirrus’s ’1251 Request”). Corrected
inter partes reexamination request 95/001,363 was filed June 30, 2010 by
BSE Co., LTD. (“BSE’s ’1363 Request”). The USPTO subsequently
merged these three requests. See Decision, sua sponte, to Merge
Reexamination Proceedings, mailed Dec. 28, 2010.
According to Owner, the ’231 Patent is also the subject to five other
proceedings (PO App. Br. 1): (1) Knowles Electronics LLC v. Akustica Inc.,
2:06cv527 (ED Tex) (dismissed without prejudice); (2) In Re Silicon
Microphone Packages and Products Containing the Same, Inv. No. 337-TA-
629 (ITC) (commission issued Limited Exclusion Order (LEO) based in part
on infringement and validity of Minervini ’231 claims 1 and 2); (3) MEMS

1
Knowles Electronics LLC is asserted to be the real party in interest.
PO App. Br. 1, dated July 1, 2014.
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Technology Berhad v. Int’l Trade Comm’n and Knowles Electronics LLC,
2010-1018 (Federal Circuit) (affirmed LEO in ITC Inv.); (4) Knowels
Electronics LLC v. Analog Devices Inc, 1:09cv6238 (ND ILL) (dismissed
without prejudice); (5) In Re Certain Silicon Microphone Packages and
Products Containing the Same, Inv. No. 337-TA-695 (ITC) (commission
found no violation based in part on finding claim 1 of Minervini ‘231
invalid). To the extent these proceedings are persuasive, we have considered
them.
For reasons explained more fully below, the Examiner conducting the
merged reexamination proceeding ultimately rejected claims 1–4 and 23–27
and confirmed claims 5–22. RAN 1.
2
Owner timely appealed. See
generally PO App. Br. Requesters Cirrus and BSE filed Respondent Briefs.
See generally Cirrus Resp. Br. and BSE Resp. Br. Requester Analog
Devices did not file a respondent brief.
We are aware of the papers styled “Citation of Supplemental Federal
Circuit Authority” filed August 17, 2015; “Amended Citation of
Supplemental Federal Circuit Authority” filed August 18, 2015; and the
response thereto filed August 28.

2
In addition to the above-mentioned Requests, we also refer to various other
documents throughout this Opinion, including (1) the Right of Appeal
Notice, mailed March 19, 2014 (“RAN”); (2) Patent Owner’s Amended
Appeal Brief, filed July 1, 2014 (“PO App. Br.”); (3) Requester Cirrus’s
Respondent Brief, filed July 15, 2014 (“Cirrus Resp. Br.”); (4) Requester
BSE’s Respondent Brief, filed July 31, 2014 (“BSE Resp. Br.”); (5) the
Examiner’s Answer, mailed September 24, 2014 (incorporating the RAN by
reference) (“Ans.”); and (6) Patent Owner’s Rebuttal Brief, filed October 24,
2014 (PO Reb. Br.”).
Appeal 2015-004342
Merged Inter Partes Reexamination Control Nos. 95/000, 509, 95/001,251,
and 95/001,363
US Patent No. 6,781,231 B2

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We have jurisdiction under 35 U.S.C. §§ 134 and 315. We review the
appealed rejections for error based upon the issues identified by Appellants,
and in light of the arguments and evidence produced thereon. Cf. Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
An oral hearing was conducted July 22, 2015. The hearing transcript
(Tr.) was entered into the record August 20, 2015.
We affirm.
The Invention and Claims
The ’231 Patent describes the invention as follows:
A microelectromechanical system package has a
microelectromechanical system microphone, a substrate, and a
cover. The substrate has a surface for supporting the
microelectromechanical microphone. The cover includes a
conductive layer having a center portion bounded by a
peripheral edge portion. A housing is formed by connecting the
peripheral edge portion of the cover to the substrate. The center
portion of the cover is spaced from the surface of the substrate
to accommodate the microelectromechanical system
microphone. The housing includes an acoustic port for
allowing an acoustic signal to reach the microelectromechanical
system microphone.
Abstract.
Independent claim 1 is illustrative of the appealed claims:
1. A microelectromechanical system package comprising:
a microelectromechanical system microphone;
a substrate comprising a surface for supporting the
microelectromechanical microphone;
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a cover comprising a conductive layer having a center
portion bounded by a peripheral edge portion; and
a housing formed by connecting the peripheral edge
portion of the cover to the substrate, the center portion of the
cover spaced from the surface of the substrate to accommodate
the microelectromechanical system microphone, the housing
including an acoustic port for allowing an acoustic signal to
reach the micro electromechanical system microphone wherein
the housing provides protection from an interference signal.
The Rejections
1. Claims 24–27 stand rejected under 35 U.S.C. § 314(a) as enlarging
the scope of the claims of the patent being reexamined. RAN 15–16.
2. Claims 23–27 stand rejected under 35 U.S.C. § 112, ¶ 1, for lacking
adequate written description. RAN 16–17.
3. Various combinations of all of claims 1–4 and 23–27 stand rejected
as unpatentable under 35 U.S.C. §§ 102 and 103 based upon
approximately 39 combinations of multiple prior-art references. See
RAN 18–37 (setting forth the seven adopted rejections that were
proposed by Requester Analog Devices in the ’509 Request);
RAN 37-66 (setting forth the nine adopted rejections that were
proposed by Requester Cirrus in the ’1,251 Request); and
RAN 67–113 (setting forth the 23 adopted rejections that were
proposed by Requester BSE in the ’1,363 Request). These adopted
art-based rejections include the rejection of claims 1–4, 23, 24, 26,
and 27 under 35 U.S.C. § 102(b) as being anticipated by van Halteren
(WO 01/414497 A1; published June 7, 2001).

Appeal 2015-004342
Merged Inter Partes Reexamination Control Nos. 95/000, 509, 95/001,251,
and 95/001,363
US Patent No. 6,781,231 B2

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THE REJECTION UNDER 35 U.S.C. § 314
“Claims 24–27 are rejected under 35 U.S.C. § 314(a) as enlarging the
scope of the claims of the patent being reexamined.” RAN 15. Independent
claim 24, newly added during the reexamination proceeding (see
Amendments and Response, filed June 18, 2012), is illustrative of the claims
subject to this rejection:
24. A micro electromechanical system package comprising:
a microelectromechanical system microphone;
a cover comprising a conductive layer having a center
portion bounded by a peripheral edge portion; and
a substrate comprising:
an upper surface for supporting the
microelectromechanical system microphone, the upper
surface comprising:
an inner portion comprising a plurality of
bond pads electrically connected to the
microelectromechanical system microphone; and
an outer portion configured to electrically
and mechanically attach to the cover; and
a lower surface, the lower surface comprising a
plurality of solder pads configured to mechanically attach
and electrically connect the package to a surface of an
external printed circuit board using a solder reflow
process;
wherein the peripheral edge portion of the cover and the
outer portion of the upper surface of the substrate are
electrically and mechanically attached to form a housing, the
center portion of the cover being spaced from the upper surface
of the substrate to accommodate the microelectromechanical
system microphone, the housing capable of providing
protection from an interference signal and further comprising at
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least one acoustic port for allowing an acoustic signal to reach
the microelectromechanical system microphone.

Contentions
The Examiner concludes that claims 24–27 improperly broaden the
scope of the patent claims because these newly added claims omit the
limitation of a chamber—a limitation that appears in each of independent
patent claims 2–4. RAN 15–16. The Examiner also finds that claim 24
omits limitations of independent claim 5, relating to the first and second
metal cup with an interposed environmental barrier (RAN 122), as well as
the limitation of independent claim 4 relating to the acoustic ports along a
surface of a cover (RAN 122–23).
Owner argues that it is irrelevant whether newly added claim 24 is
broader than original claims 2–4 because claims 2–4 are narrower than at
least original claim 1, and “the Examiner has never identified any elements
of Claim 1 that are not also found in Claim 24.” PO App. Br. 54.
The Examiner does not dispute that claim 1 is broader than claims 2–
4. See, e.g., RAN 15–16. Rather, with respect to claim 1, the Examiner
summarily concludes without explanation that “the Patent owner has also
changed the language used in claim 1 in a number of ways that raise further
questions as to whether claim 24 broadens the scope of claim 1.” RAN 15.
Principles of Law
The Federal Circuit’s oft-quoted standard for broadening is as
follows:
A claim of a reissue application is broader in scope than
the original claims if it contains within its scope any
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conceivable apparatus or process [that] would not have
infringed the original patent. In re Self, 671 F.2d 1344 (CCPA
1982); In re Ruth, 278 F.2d 729 (CCPA 1960). A reissue claim
that is broader in any respect is considered to be broader than
the original claims even though it may be narrower in other
respects. In re Bennett, 766 F.2d 524 (Fed.Cir.1985); Ball
Corp. v. United States, 729 F.2d 1429 (Fed.Cir.1984).
Tilloston, Ltd. V. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir.
1987).
The same broadening test is applied to claims in reexamination.
Anderson v. International Eng’g & Mfg., 160 F.3d at 1349.
Analysis
The Examiner’s summary conclusion regarding the breadth of claim
24 relative to that of claim 1 is not supported by any facts or a technical
rationale. Furthermore, our review of the claims fails to evince any
limitations of claim 1 that are absent from claim 24. As such, the Examiner
has failed to establish that claim 24 contains within its scope any
conceivable apparatus that would not have infringed the original patent.
Accordingly, the Examiner has not established that independent claim 24 or
dependent claims 25–27 improperly enlarge the scope of the originally filed
claims.
Requester Cirrus does assert that numerous differences exist between
newly added claim 24 and original claim 1:
There are numerous differences in the language between
claim 1 and claim 24. For example, the “housing” is positively
recited as an element in claim 1, but is only indirectly
referenced in claim 24. The peripheral portion of the cover is
connected to the substrate in claim 1, while in claim 24, the
peripheral portion of the cover is electrically and mechanically
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attached to the substrate. Furthermore, the term “an acoustic
port” in claim 1 has been changed to “at least one acoustic
port,” in claim 24. In claim 1, the housing “provides
protection,” while claim 24 merely states that the indirectly
recited housing is “capable of” protecting. These different
terms do not necessarily have the same meaning, raising doubt
as to whether the claims have the same scope and raising
substantial questions as to whether claim 24 is broader in these
respects, as there are reasonable constructions of these terms
that result in claim 24 being broader in scope than claim 1.
Cirrus Resp. Br. 19.
At oral argument, Requester Cirrus elaborated on this argument.
According to Requester Cirrus, the fact that claim 24 uses different words
than does claim 1 raises a presumption that Owner intends the scope of
claim 24 to be different from that of claim 1. Tr. 42. Cirrus further argues
that by not sustaining the broadening rejection, the Board would enable
Owner to argue later during litigation that claim 24 is broader than claim 1.
Id.
Requester Cirrus is correct that differences in claims’ respective
wording may raise a presumption that different claim scopes are intended,
but this presumption is not irrebuttable. In the present case, Cirrus has not
provided sufficient evidence that any of the differences in wording
reasonably may be interpreted as intending to establish different claim
scopes. For example, Cirrus has not provided sufficient evidence that claim
1’s term “connected” is any narrower than claim 24’s term “attached.” We
find no persuasive evidence that either term is limited to a direct mechanical
or electrical connection or attachment. Rather, both of the terms appear to
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be synonymous, encompassing indirect connections and attachments, as
well.
In summary, Requester has not provided any reasonable examples of
subject matter that would infringe newly added claim 24 but not infringe
original claim 1. Cirrus merely demonstrates that the original and new
claims do not employ identical terminology. However, the claimed subject
matter need not be described “in haec verba” in the original specification in
order to satisfy the written description requirement. In re Wright, 866 F.2d
422, 425 (Fed. Cir. 1989). Accordingly, Cirrus’s arguments are not
persuasive.
For these reasons, we do not sustain the rejection of claims 24–27
under 35 U.S.C. § 314(a) for enlarging the scope of the claims of the patent
being reexamined.

THE REJECTION UNDER 35 U.S.C. § 112, ¶ 1
Claims 23–27 stand rejected under 35 U.S.C. § 112, ¶ 1, for lacking
adequate written description in the Specification. The language of each
claim that is found to be lacking adequate written description is “wherein the
solder pads are configured to mechanically attach and electrically connect
the package to a surface of an external printed circuit board using a solder
reflow process” (“the reflow limitation”). RAN 16–18.
Owner does not dispute that the Specification fails to recite the reflow
limitation expressly. See PO App. Br. 49–52. Instead, the Specification
merely sets forth solder pads for connection to a separate printed circuit
board without expressly stating that the solder pads are connected. See
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’231 Patent, col. 4, ll. 2–4 (“The substrate 14 further comprises solder pads
31 for electrical connection to an end user’s board”). Nonetheless, Owner
maintains that the Specification provides adequate written description
because “the disclosure ‘allow[s] one skilled in the art to visualize or
recognize the identity of the subject matter purportedly described.’”
PO App. Br. 50 (citing Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956,
968 (Fed. Cir. 2002)).
Owner’s statement of the law regarding the written description
requirement is taken out of context and incomplete. The Enzo Biochem
court more fully explained that “The purpose of the ‘written description’
requirement is broader than to merely explain how to ‘make and use’; the
applicant must also convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Enzo Biochem, Inc., 323 F.3d 956 at 969 (citing Vas–Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.Cir.1991)(emphasis added).
The Enzo Biochem court made the statement cited by Owner within
the context of addressing the question of whether an originally filed
specification necessarily satisfied the written description requirement simply
by virtue of the fact that the Specification provided express support for a
disputed genus claim. Enzo Biochem, Inc., 323 F.3d 956 at 968. The court
held that “[t]he appearance of mere indistinct words in a specification or a
claim, even an original claim, does not necessarily satisfy [the written
description] requirement . . . . The disclosure must [additionally] allow one
skilled in the art to visualize or recognize the identity of the subject matter
purportedly described.” Id.
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The situation addressed in Enzo Biochem is distinguishable from the
present situation. In the present appeal, Owner does not contend that a
solder reflow process is the only way to connect or attach a solder pad to an
external printed circuit board or contend that all solder pad materials must be
capable of being connected using a solder reflow method. See PO App. Br.
49–52. Restated, Owner does not dispute that a solder pad can be connected
to an external board by methods other than a solder reflow process. In fact,
Owner appears to have added the reflow limitation specifically for the
purpose of narrowing claims 23–27 so as to not encompass all solder pads
that are connectable by any other solder process, and thereby attempt to
achieve the further purpose of overcoming cited prior art.
[A]t most, BGA solder pads from Yamamura ’071 to
Hietanen ’249 would result only in a circuit board with solder
pads on its lower surface, not a package with solder pads on its
lower surface. More particularly, it would still be surrounded
by the telephone housing 15, and as such, those solder pads
would not be “configured to mechanically attach and
electrically connect the package to the surface of an external
printed circuit board using a solder reflow process.”
Amendments and Response 35–36, filed June 18, 2012.
We therefore conclude that the Specification’s disclosure of “solder
pads 31 for electrical connection to an end user’s board” (’231 Patent, col. 4,
ll. 2–4) is not an inherent disclosure of a solder pad that is capable of
connection to a printed circuit board using a solder reflow process, as recited
by the claims. “Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745
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(Fed. Cir. 1999) (citations and internal quotation marks omitted). We
instead find that solder reflow is but one of multiple specific methods or
species for connecting solder pads to a printed circuit board.
Owner similarly argues
A specification need not include a detailed explanation for
every word of a claim. MPEP §2163(II)(A)(1) (“The absence
of definitions or details for well-established terms or procedures
should not be the basis of a rejection under 35 U.S.C. 112,
para.1, for lack of adequate written description.”). Information
which is well known in the art need not be described in detail in
the specification. See MPEP §2163(II)(A)(2) (“Generally, there
is an inverse correlation between the level of skill and
knowledge in the art and the specificity of disclosure necessary
to satisfy the written description requirement.”).
PO App. Br. 49–50.
These arguments are likewise unpersuasive. The present situation is
not one wherein the Specification recites a well-established term, but fails to
provide a definition or details for the recited term. That is, we are not faced
with the case that the present Specification discloses the claimed structure of
a solder pad that can be connected to a board by use of a reflow process, and
then merely fails to provide any details of what compositions and methods
can be used to undertake the disclosed reflow solder process. Rather, the
present Specification merely discloses a genus—solder pads that are capable
of being connected to a board. But the Specification fails completely to
disclose the newly claimed species of such pads—pads that are connectable
to a board specifically by using a reflow process.
“[O]ne cannot disclose a forest in the original application, and then
later pick a tree out of the forest and say here is my invention.” Purdue
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Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000).
Rather, the Specification must provide some guides or “blaze marks” that
disclose the claimed invention “‘specifically, as something appellants
actually invented.’” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1348 (Fed. Cir. 2010).
Owner further argues that the Specification provides adequate written
description for the reflow limitation because “one of ordinary skill in the art
would understand that [Minervini’s package] would be connected to a
printed circuit board one of two ways—either by inserting package pins into
holes in the board or else placing the package pins or pads onto the surface
of the printed circuit board.” PO App. Br. 50–51 (supporting citations
omitted). Owner then contends that “[o]ne of ordinary skill in the art would
understand that solder reflow was a well-known ‘surface mount technology’
for surface mounting a package having pads.” PO App. Br. 51–52
(supporting citations omitted).
This argument is not persuasive because the argument is merely
directed to what would have been understood objectively by one of ordinary
skill in the art. Such an argument may be relevant to proving that one of
ordinary skill would have known how to make and use the invention, and
thereby satisfy the enablement requirement of 35 U.S.C. § 112 , ¶ 1. But
that test is not applicable to the written-description prong of 35 U.S.C.
§ 112, ¶ 1. Rather, as explained above, the relevant test for the written
description prong, is whether the Specification reasonable conveys that the
applicant—not one of ordinary skill in the art—was in possession of the
claimed subject matter.
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To summarize, Owner has not established that the Examiner erred in
finding that the ’231 Patent fails to provide adequate written description for
the reflow process limitation, newly added in claims 23–27. Accordingly,
we sustain the Examiner’s rejection of these claims.
Because we sustain the written description rejection of claims 23–27,
we need not address the further written description rejection under 35 U.S.C.
§ 112, ¶ 1, which the Examiner issued because claim 27 recites “at least one
acoustic port is located in the substrate.” RAN 18–19. See In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after
upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742
F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single dispositive issue of
numerous resolved by the presiding officer; there is no need for the
Commission to decide all issues decided by the presiding officer).

THE ANTICIPATION REJECTION BASED UPON VAN HALTEREN
I.
Contentions
As noted above, independent claims 1 and 24, as well as dependent
claims 2–4, 23, 26, and 27, stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Halteren. See, e.g., RAN 18–19, 34–36, 37–41, and 99.
Owner argues that the rejection is improper because van Halteren does not
disclose a “package,” as required by each of the claims.
Owner points out that “van Halteren ’497 discloses a ‘flexible
substrate transducer assembly that integrates a transducer or transducer
system . . . and a flexible substrate.’” PO App. Br. 18. Owner contends that
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van Halteren’s structure constitutes an “assembly,” as opposed to a
“package.” Id. 19. According to Owner, one of ordinary skill in the art
would understand that “package” is a term of art having a specific meaning
(id. 5) and this meaning of “package” requires a second-level mechanical
and electrical connection to a printed circuit board by either through-hole or
surface mounting (id. 20).
Owner contends the expert testimony of Dr. Ken Gilleo describes the
meaning of “package,” as it would be understood by one of ordinary skill:
Minervini ’231 Claims 1–4 all require a “package.” This term
has a specific meaning to those of ordinary skill in the field of
electronics packaging. Generally speaking, an electronics
package is a “housing” whose functions include protecting the
electronics (for example, [an] integrated circuit chip or a
microelectromechanical device) from mechanical and
environmental stress and providing electrical interconnection.
In order to protect the IC chip or MEMS device, most packages
provide a full enclosure (for example, plastic encapsulation),
although some have only a partial enclosure (for example,
MEMS ink jet devices). In order to provide electrical
interconnections, the package must have a device-to-package
electrical connection along with a package-to-printed-circuit-
board electrical connection. The device-to-package connection
is referred to as the “first-level” connection and the package-to-
printed-circuit-board connection is referred to as the “second-
level” connection.
PO App. Br. 6 (citing Rule 1.132 Declaration of Dr. Kenneth Burton
Gilleo ¶ 5; filed Jan. 28, 2010) (the “Gilleo Decl.”).
Dr. Gilleo provides the further opinion,
A “package” is not required for every application incorporating
an integrated circuit or MEMS device. For example; in “chip-
on-board” or “chip-on-flex” technology, the silicon die is
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mechanically and electrically connected directly to the printed
circuit board instead of going through a first level device-to-
package connection. If there is only one connection level, then
there is no “package.”
Gilleo Decl. ¶ 6.
Based upon this narrow construction of the claim term “package,”
Owner urges
Since nothing in van Halteren ’497 suggests that its exposed
contact pads were intended to be (or even could be) inserted
into plated through-holes in a printed circuit board or soldered
to lands on a printed circuit board, and since in fact van
Halteren ’497 expressly discloses a different mechanism, van
Halteren ’497 does not disclose the required “package.”
PO App. Br. 21.
Owner additionally cites to approximately ten external references—
technical handbooks, standards, and dictionaries—which all purportedly
support Dr. Gilleo’s position that a “package” must include first-level and
second-level connections. Id. 6–7. Owner further urges that our reviewing
court, considering an appeal from the International Trade Commission, has
already interpreted the term “package” as used in the ’231 Minervini patent
to mean “a self-contained unit that has two levels of connection to the device
and to the circuit or other system.” Tr. 7–8.
The Examiner finds Owner’s narrow interpretation of the term
“package” to be unsupported by evidence, and the Examiner therefore
interprets “package” more broadly, according to the broadest-reasonable-
interpretation standard. RAN 114–15. More specifically, the Examiner
disagrees with Owner’s assertion that the second level interconnection
necessarily must be “accomplished only by pins inserted into the printed
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circuit board or by mounting pins or pads to the surface of the printed circuit
board.” Id. The Examiner instead finds these two methods to be mere non-
exhaustive examples. Id. at 115.
Issue
Has Owner demonstrated sufficiently that the broadest reasonable
interpretation of the claim term “package” necessarily requires that a
second-level connection to a printed circuit board be made only by either
through-hole mounting or surface mounting?
Analysis
The technical references cited by Owner may well evidence that
skilled artisans usually, or at least commonly, understand chip packages to
possess second-level connection pins that are soldered by a through-hole or
surface mounting process. See PO App. Br. 9–13. However, this extrinsic
evidence does not demonstrate that chip packages necessarily must possess
one of these two types of second-level connections. In fact, Owner’s
extrinsic evidence indicates the opposite—that the term “package” should
not be limited to such a narrow interpretation.
The passages quoted by Owner in the main brief contain various
qualifiers that indicate a chip package does not necessarily have to possess
such second-level connections. PO App. Br. 9 (citing Tummula
Fundamentals,
3
“In general, IC packages can be classified into two
categories: 1) through-hole, and 2) surface mount.”) (emphasis added).

3
FUNDAMENTALS OF MICROSYSTEMS PACKAGING, 67 (Tummula ed., 2001).
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PO App. Br. 9–10 (citing the Tummula Handbook,
4
“There are two basic
types of connections between the first- and second-level packages: those
with pins, requiring plated-through-hole (PTH), and others with pins or pads
meant for surface mounting the device (SMD) by the use of Surface
Mounting Technology (SMT).”) (emphasis added). PO App. Br. 10 (citing
Pecht,
5
“The external connections of a chip carrier serve to classify the
component into one of the two major technological categories: through hole
components (THC) and surface mount components.”) (emphasis added).
Additional extrinsic evidence cited by Owner, but not expressly
quoted in the main brief, also supports the conclusion that a “package” need
not necessarily have a through-hole or surface mount second-level
connection. For example, Owner cites an industry standard issued by the
Electronic Industries Alliance JEDEC Solid State Technology Association.
PO App. Br. 6 (citing JDEC Standard JESD99A (Feb. 2000), “Terms,
Definitions, and Letter Symbols for Microelectronic Devices”). This JDEC
standard includes the following entry: “package (of a semiconductor
device): An enclosure for one or more semiconductor chips (dice), film
elements, or other components, that allows electrical connection and
provides mechanical and environmental protection.” JDEC Standard
JESD99A, p. 1–28.
This definition provides clear evidence that the meaning of the term
“package” is not limited to chip assemblies that possess either through-hole

4
MICROELECTRONICS PACKAGING HANDBOOK, 42 (Tummula et al. eds.,
1989).
5
HANDBOOK OF ELECTRONIC PACKAGE DESIGN, 4 (Pecht ed. 1991).
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mounting or surface mounting as a means of providing second level
mechanical and electrical connection to a printed circuit board. Rather, this
industry definition indicates that the meaning of “package” is broader—it
may refer to chip assemblies that possess any type of second-level
connection mechanism. In fact, this industry definition provides evidence
that a package need not even necessarily include any second-level
connection at all. According to this definition, the term “package” would
include chip assemblies that do not possess any second-level electrical
connection, such as is the case for a Radio Frequency Identification (RFID)
tag, which communicates with external devices wirelessly.
Owner additionally cites to the definition of “package” as set forth by
the Harper Dictionary:
6

Package (1) An enclosure for electronic components and
hybrid circuits consisting of a header, a lid, and hermetically
sealed feedthrough terminal leads. Packages are made of metal,
ceramic, and plastic. (2) An enclosure or housing used to
contain any level of electronic system or subsystem.
Harper, p. 138 (cited by PO App. Br. 7).
Neither of Harper’s definitions requires that a second level connection
be made to a PCB specifically by means of a through-hole mounting or
surface mounting technique. Moreover, the second definition, which is
broader than the first, does not even require that the package possess second-
level connections.

6
Charles A. Harper, ed., ELECTRICAL PACKAGING AND INTERCONNECTION
HANDBOOK, 3d, McGraw-Hill (1993).
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To summarize, it is immaterial whether the narrow interpretation of
“package” urged by Owner might constitute a commonly accepted
definition, or even constitute the most commonly accepted definition. In
reexamination proceedings, the Board is to give claims their broadest
reasonable interpretation, consistent with the specification. In re Yamamoto,
740 F.2d 1569, 1571 (Fed Cir. 1984). The extrinsic evidence indicates that
under the broadest reasonable interpretation, a chip package need not
possess a second-level connection to a printed circuit board that is made
specifically by either through-hole mounting or surface mounting. Rather, a
package may be connected to an external component such as a wiring board
or printed circuit board by any electro-mechanical connection means.
7

Accordingly, Owner has not established that the Examiner’s interpretation of
the claim term “package” was improper. As such, Owner has not
established that the Examiner erred finding that van Halteren discloses a
package, as recited in the claims.
We are likewise unpersuaded by Owner’s argument that we should
give deference to the narrow interpretation of “package” that the Federal
Circuit adopted. Tr. 6. While the Board has fully considered the Circuit
Court’s claim constructions, precedent makes clear that the USPTO is not
bound in reexamination proceedings by claim constructions produced by a
court. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (2007). See
also Tr. 8 (wherein Owner’s Counsel acknowledges that the Circuit Court’s

7
In fact, the extrinsic evidence additionally seems to indicate that a chip
package need not even possess any second-level connection at all. However,
we need not reach this finding to resolve the present appeal.
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interpretation of “package” is not binding on the Board). As noted above, in
reexamination proceedings, the Board is to give claims their broadest
reasonable interpretation, consistent with the specification. In re Yamamoto,
740 F.2d at 1571. This standard differs from the standard that was followed
by the court. See Tr. 8 (wherein Owner’s Counsel acknowledges that the
relevant standard before the Circuit Court on appeal from the decision of the
International Trade Commission is the narrower District court standard—not
the broadest-reasonable-interpretation standard). Accordingly, we disagree
with the Patent Owner that “the Examiner must address and apply MEMS
Technology’s interpretation of the claim term package and conclusions
regarding the Baumhauer reference.” Amended Submission, August 18,
2015, page 1. Under these circumstances, Owner’s request for remand of
this proceeding to the Examiner (id.) is unnecessary and therefore denied.
II.
Owner additionally argues that van Halteren does not anticipate newly
added claims 23–27 because, in addition to not disclosing a package (which
we addressed in Section I, above), “[van Halteren] lacks the requisite ‘solder
pads’ element. See also §7.2.1.1 [of Owner’s Appeal Brief] (addressing
unsuitability of van Halteren’s ‘contact pads’ for use as ‘solder pads.’).”
PO App. Br. 22, fn 44 [sic: 4].
In view of our having already sustained the rejection of newly added
claims 23–27 under 35 U.S.C. § 112, ¶ 1, we need not reach this remaining
argument. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching other rejections after upholding an anticipation rejection); see also
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a
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single dispositive issue of numerous resolved by the presiding officer; there
is no need for the Commission to decide all issues decided by the presiding
officer). We likewise do not reach any of the other remaining art-based
rejections.
We instead sustain the Examiner’s 102(b) anticipation rejection over
van Halteren only with respect to claims 1–4.

DECISION
The Examiner’s decision rejecting claims 1–4 and 23–27 is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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Patent Owner:

LATHROP & GAGE LLP
2345 GRAND Boulevard
SUIlE 2400
KANSAS CITY, MO 64108

Third Party Requester:

SUNSTEIN KANN MURPHY & TIMBERS LLP
125 SUMMER STREET
BOSTON, MA 02110

WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210

LADAS & PARRY Y. LLP
224 SOUTH MICHIGAN AVENUE
SUITE 1600
CHICAGO, IL 60604